national arbitration forum

 

DECISION

 

Hard Rock Cafe International (USA), Inc. v. Peter Bouzianis

Claim Number: FA1306001507576

PARTIES

Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by Rebecca Roby of Hard Rock Cafe International (USA), Inc., Florida, USA.  Respondent is Peter Bouzianis (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrockhoteldaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2013; the National Arbitration Forum received a hard copy on July 1, 2013.

 

On July 1, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrockhoteldaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On July 2, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) Rules for the U.S. Department of Commerce’s usTLD Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant, Hard Rock Care International (USA), Inc., is a Florida corporation that has been engaged in the business of leisure and entertainment using its HARD ROCK mark in the United States since at least as early as 1978. Complainant successfully expands its brand and operations through a myriad of music-related ventures including, but not limited to, restaurants, hotels, casinos, merchandising, and live music events.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HARD ROCK mark (e.g., Reg. No. 2,478,328, registered August 14, 2001); for the HARD ROCK CASINO mark (e.g., Reg. No. 2,499,114, registered October 16, 2001); for the HARD ROCK HOTEL mark (e.g., Reg. No. 1,909,483, registered August 1, 1995).
    3. Respondent’s disputed domain names incorporate the terms HARD ROCK, HARD ROCK CASINO, and HARD ROCK HOTEL, rendering the disputed domain names identical, or at a minimum confusingly similar to the Complainant’s marks. Furthermore, the slight differences between the disputed domain names and Complainant’s family of marks are inconsequential, because the differences relate solely to geographic descriptors.
    4. Respondent is not commonly known by any of the disputed domain names.
    5. The disputed domain names are parked for free and resolve to a mixture of home pages provided by the Registrar, with various ad links, or resolve to a page with an error notice, or connect to a USA Today website article discussing a settlement of a complainant at one of Complaint’s licensed properties, “Hard Rock Hotel and Casino Las Vegas.”
    6. Respondent has registered or has acquired the domain names primarily for the purpose of selling the domain name registrations to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names.
    7. Respondent registered the disputed domain names in order to prevent Complainant from reflecting its marks in corresponding domain names.
    8. Respondent has engaged in a pattern of bad faith conduct due to Respondent’s registration of multiple domain names that relate to Complainant.
    9. Respondent registered the domain names primarily for the purpose of disrupting the business of Complainant.
    10. Respondent has failed to use any of the disputed domain names to operate a website which is also evidence of bad faith.
    11. Respondent knew the domain names embodied registered trademarks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the HARD ROCK, HARD ROCK CASINO and HARD ROCK HOTEL marks.  Respondent’s domain names are confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrockhoteldaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names, and that Respondent registered and uses the domain names in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered or is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Preliminary Issue: Consent to Transfer

 

The National Arbitration Forum was copied on documentation submitted from Respondent to Complainant in the form of e-mail messages.  In these documents, Respondent purports to consent to the transfer of the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrockhoteldaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names.  Respondent allegedly consents to transfer the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrockhoteldaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names to Complainant.  In other emails Respondent requests Complainant to pay a varying sum of $100.00 to $225.00 dollars for these domain names.

 

Given the lack of an express and affirmative statement on part of Respondent that it will in fact unconditionally surrender the domain names to Complainant, the Panel concludes that the evidence is insufficient to find that Respondent has unequivocally consented to the transfer of the disputed domain names. Therefore, the Panel will proceed to analyze the case under the elements of the UDRP. 

 

Identical and/or Confusingly Similar

Complainant argues that it is a Florida corporation that has been engaged in the business of leisure and entertainment using its HARD ROCK mark in the United States since at least as early as 1978. Complainant contends that it successfully expanded its brand and operations through a myriad of music-related ventures including, but not limited to, restaurants, hotels, casinos, merchandising, and live music events. Complainant asserts that it is the owner of trademark registrations with the USPTO for the HARD ROCK mark (e.g., Reg. No. 2,478,328, registered August 14, 2001); for the HARD ROCK CASINO mark (e.g., Reg. No. 2,499,114, registered October 16, 2001); for the HARD ROCK HOTEL mark (e.g., Reg. No. 1,909,483, registered August 1, 1995).  Thus, the Panel concludes that Complainant’s registration of the HARD ROCK, HARD ROCK CASINO, and HARD ROCK HOTEL marks with the USPTO sufficiently proves its rights in the marks pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant asserts that Respondent’s disputed domain names incorporate the terms HARD ROCK, HARD ROCK CASINO, and HARD ROCK HOTEL, rendering the disputed domain names identical, or at a minimum confusingly similar.  Complainant argues that the slight differences between the disputed domain names and Complainant’s family of marks are inconsequential, because the differences relate solely to geographic descriptors. Respondent incorporates Complainant’s HARD ROCK mark and adds the geographic descriptors “daytonabeach,” “lasvegas,” or “vegas” in its <hardrockdaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names. Respondent’s addition of geographic descriptors to Complainant’s HARD ROCK mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel notes that Respondent removes the space in Complainant’s HARD ROCK mark and adds the country-code top-level domain (“ccTLD”) “.us” to its <hardrockdaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names. Respondent’s removal of spaces and addition of ccTLDs to its domain names is inconsequential to a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a TLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel concludes that Respondent’s <hardrockdaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names are confusingly similar to Complainant’s HARD ROCK mark under Policy ¶ 4(a)(i).

 

Respondent incorporates Complainant’s HARD ROCK CASINO mark in its <hardrockcasinodaytonabeach.us> domain name and adds the geographic term “daytonabeach.” Respondent’s inclusion of a geographic term to Complainant’s mark in its domain name does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Respondent removes the spaces in Complainant’s HARD ROCK CASINO mark and adds the ccTLD “.us” to its <hardrockcasinodaytonabeach.us> domain name. The Panel holds that Respondent’s omission of spaces and inclusion of ccTLDs to its domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”); Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of space does not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel concludes that Respondent’s <hardrockcasinodaytonabeach.us> domain name is confusingly similar to Complainant’s HARD ROCK CASINO mark pursuant to Policy ¶ 4(a)(i).

 

Respondent incorporates Complainant’s HARD ROCK HOTEL mark in its <hardrockhoteldaytonabeach.us> domain name and added the geographic term “daytonabeach.” Respondent’s addition of a geographic descriptor to its domain name does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). Respondent omits the spaces in Complainant’s HARD ROCK HOTEL mark and adds the ccTLD “.us” to its <hardrockhoteldaytonabeach.us> domain name. Respondent’s omission of spaces and inclusion of ccTLDs to its domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a TLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Consequently, the Panel concludes that Respondent’s <hardrockhoteldaytonabeach.us> domain name is confusingly similar to Complainant’s HARD ROCK HOTEL mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

No evidence exists in the record to demonstrate that Respondent owns any service marks or trademarks that reflect the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrockhoteldaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names.  Moreover, Complainant asserts that Respondent is not a licensee, partner, or affiliate of Complainant’s HARD ROCK Cafes or HARD ROCK Hotel and Casino in Las Vegas. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Therefore, the Panel holds that Respondent is not commonly known by the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrockhoteldaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names under Policy ¶ 4(c)(iii).

 

Complainant contends that the disputed domain names are parked for free and resolve to a mixture of home pages provided by the Registrar, with various ad links, or resolve to a page with an error notice, or connect to a USA Today website article discussing a settlement of a complainant at one of Complaint’s licensed properties, “Hard Rock Hotel and Casino Las Vegas.” Respondent’s <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, and <hardrocklasvegas.us> domain names resolve to a webpage featuring unrelated hyperlinks titled “Sell Your Business,” “Florida Foreclosure,” “Attention Investors,” and others. Respondent’s use of the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, and <hardrocklasvegas.us> disputed domain names to feature unrelated hyperlinks is not a Policy ¶ 4(c)(ii) bona fide offering of goods and services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel agrees that no Policy ¶ 4(c)(ii) bona fide offering, or Policy ¶ 4(c)(iv) legitimate noncommercial or fair use arises from Respondent’s <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, and <hardrocklasvegas.us> domain name.

 

Respondent’s <hardrockhoteldaytonabeach.us> domain name resolves to an error page, stating “Oops! Google Chrome could not find http.” Inactive holding of a domain name does not qualify as a bona fide offering or legitimate noncommercial use of the domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to UDRP ¶ 4(c)(iii).”) The Panel concludes that there is no Policy ¶ 4(c)(ii) bona fide offering, or Policy ¶ 4(c)(iv) legitimate noncommercial or fair use through the inactive holding of the <hardrockhoteldaytonabeach.us> domain name.

 

Finally, Respondent’s <hardrockvegas.us> domain name resolve to a USA Today website featuring an article about Complainant.  The use of this domain name to send Internet users to content that is critical of Complainant’s organization is not considered a protected use under Policy ¶ 4(a)(ii). See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

Complainant argues that Respondent registered the disputed domain names in order to prevent Complainant from reflecting its marks in corresponding domain names. Complainant also argues that Respondent has engaged in a pattern of bad faith conduct due to Respondent’s registration of multiple domain names that relate to Complainant. A respondent’s use of a domain name to prevent a complainant from reflecting its marks in a domain name or to engage in a pattern of bad faith registration demonstrates bad faith use and registration of a disputed domain name. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”). Accordingly, the Panel holds that Respondent has registered and is using the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrockhoteldaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names in bad faith under Policy ¶ 4(b)(ii).

 

Complainant claims that Respondent registered the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names primarily for the purpose of disrupting the business of Complainant. Respondent’s <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, and <hardrocklasvegas.us> domain names resolve to a webpage featuring unrelated hyperlinks titled “Sell Your Business,” “Florida Foreclosure,” “Attention Investors,” and others.  Respondent’s <hardrockvegas.us> domain name resolves to a USA Today website featuring an article about Complainant.  The Panel holds that Respondent is using the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names to divert Internet users away from Complainant’s business, thus disrupting Complainant’s business and evidencing bad faith use or registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration or use under Policy ¶ 4(b)(iii)).

 

Complainant asserts that failure to use any of the disputed domain names to operate a website is also evidence of bad faith.  Respondent’s <hardrockhoteldaytonabeach.us> domain name resolves to an error page, stating “Oops! Google Chrome could not find http.” In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel concluded that respondent’s failure to make active use of its domain name in the three months after its registration indicated that respondent registered the disputed domain name in bad faith. Accordingly, the determines that Respondent’s failure to make an active use of the <hardrockhoteldaytonabeach.us> domain name demonstrates bad faith use or registration pursuant to Policy ¶ 4(a)(iii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hardrockcasinodaytonabeach.us>, <hardrockdaytonabeach.us>, <hardrockhoteldaytonabeach.us>, <hardrocklasvegas.us>, and <hardrockvegas.us> domain names be TRANSFERRED from Respondent to Complainant. 

 

 

Bruce E. Meyerson, Panelist

Dated:  August 5, 2013

 

 

 

 

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