New Tropicana Holdings, Inc. v. Raymond Miller a/k/a Ray Miller a/k/a Go Main Domains a/k/a Raymond miller
Claim Number: FA1309001518371
Complainant is New Tropicana Holdings, Inc. (“Complainant”), represented by Joanna M. Myers of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is Raymond Miller a/k/a Ray Miller a/k/a Go Main Domains (“Respondent”), Pennsylvania, USA.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain name at issue are <tropicanablackjack.com>, registered with Wild West Domains, LLC; and <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2013; the National Arbitration Forum received payment on September 6, 2013.
On September 9, 2013, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <tropicanablackjack.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 9, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@actropicanablackjack.com, postmaster@actropicanapoker.com, postmaster@actropicanaslots.com, postmaster@tropicanaslots.com, postmaster@tropicanablackjack.com. Also on September 17, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received on October 7, 2013, and determined to be deficient. The Response in this case was received with a total file size over the 50MB limit. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, in its discretion, chooses to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
On October 14, 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) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "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 ICANN Policy, ICANN 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the WHOIS records for the domain names are quite similar to one another, with each of the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> domain names identifying “Raymond Miller,” “Ray Miller,” and “Go Main Domains” as the administrative and technical contact, while the <tropicanablackjack.com> domain name identifies “Ray Miller” as the registrant. While the physical address for the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> domain names differ from the address for the <tropicanablackjack.com> domain name, the telephone number associated with the <tropicanablackjack.com> domain name varies by only one number from the telephone number provided for the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> domain names. Further, Complainant argues that in e-mail communications with Complainant, Respondent’s e-mail address was nearly identical to the one used in the <tropicanablackjack.com> domain name, and Respondent did not deny ownership of that domain name. Complainant claims that Raymond Miller offered to transfer registration of all the domain names in question to Complainant.
Respondent counters Complainant’s allegations with the claim that the domain names are not all registered to the same individual, as three separate identities appear in the WHOIS information, as well as three different birth dates. Respondent claims that it represents one owner, the registrant of the <actropicanapoker.com> and <actropicanaslots.com> domain names. Respondent submits evidence in the form of copies of two driver’s licenses, both bearing similar names “Raymond Davis Miller” on one, and “Raymond Scott Miller” on the other. Respondent alleges that it cannot be sued for something that Respondent itself does not own.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
A. Complainant including Complainant’s Additional Submission
1. Complainant owns several trademarks using the TROPICANA mark, each registered with the United States Patent and Trademark Office (“USPTO”), including the TROPICANA mark (e.g., Reg. No. 1,572,514 registered December 19, 1989).
2. Complainant’s principal place of business is Las Vegas, Nevada, where it operates gaming, hotel, and entertainment services. Complainant also owns and operates numerous resort hotel casinos in New Jersey, Indiana, Louisiana, and Mississippi. Since 1957, Complainant has continuously used the TROPICANA mark in connection with its hotel and casino services, and makes extensive use of the mark. Through Complainant’s widespread use of the mark, consumers have come to recognize the TROPICANA marks as representative of Complainant’s hotel and casino services.
3. Respondent registered each of the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, <tropicanaslots.com>, and <tropicanablackjack.com> domain names, and each domain name is confusingly similar to Complainant’s TROPICANA mark. Respondent has no rights or legitimate interests in the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, <tropicanaslots.com>, and <tropicanablackjack.com> domain names, as it does not make a legitimate noncommercial use of the domain names, and fails to make a bona fide offering of goods or services, nor does it appear to have the intention of doing so, as the <tropicanablackjack.com> domain name resolves to a website providing pay-per-click links.
4. Respondent registered and is using the disputed domain names in bad faith, based on the fact that Respondent owns at least 147 other domain name registrations either individually or through its company, many of which wholly incorporate trademarks belonging to other well-known casino properties throughout the United States, indicating that Respondent is a serial cybersquatter.
5. Respondent likely receives referral fees when Internet users click on the links offered at the resolving website. Due to the longstanding existence of Complainant’s TROPICANA marks, Respondent was provided with constructive notice of the marks; additionally, Respondent registered domain names containing the entirety of the TROPICANA mark, and used the domain names to advertise goods and services of third parties.
B. Respondent including Respondent’s Additional Submission
1. Respondent denies any wrongdoing with regard to the disputed domain names, and claims that Complainant has engaged in unfair business practices with no regard for the law that entitles Respondent to out-of-pocket expenses.
2. Respondent claims to request $4.96 total for the disputed domain names, amounting to approximately $0.99 per name, but states that the offer was refused, because purchasing the domains from Respondent was “against [Complainant’s] policy.”
3. Respondent claims that the disputed domain names are not all registered to the same entities, and Respondent owns <actronicanaslots.com> and <actropicanapoker.com>. Respondent also claims to have based its website on a template, and denies having profited from alleged links displayed at the disputed domain names.
4. Respondent states that Complainant has failed to prove “that the one domain name listed as having a website and is producing profits to the respondent.”
5. Respondent accuses the Complainant of engaging in Reverse Domain Name Hijacking.
Complainant holds trademark rights for the TROPICANA mark. Respondent’s domain names are confusingly similar to Complainant’s TROPICANA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tropicanablackjack.com>, <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> domain names, and Respondent registered and uses the domain names in bad faith.
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 and is being used in bad faith.
Complainant asserts rights in the TROPICANA mark as a result of its several trademark registrations with the USPTO (e.g., Reg. No. 1,572,514 registered December 19, 1989). It is well established that a complainant successfully demonstrates rights in a mark through a trademark registration. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel determines that as a result of Complainant’s USPTO registrations of the TROPICANA mark, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, <tropicanaslots.com>, and <tropicanablackjack.com> domain names are each confusingly similar to Complainant’s TROPICANA mark in some way. Complainant claims that the <actropicanablackjack.com>, <actropicanapoker.com>, and <actropicanaslots.com> domain names include the geographic descriptor “ac,” which it contends is an abbreviation for the eastern United States gambling mecca Atlantic City, where Complainant operates resorts under the TROPICANA mark. The addition of a geographic identifier does not create a domain name unique from the corresponding mark for purposes of the Policy. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”).
Complainant also contends that each of the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, <tropicanaslots.com>, and <tropicanablackjack.com> domain names include Complainant’s entire TROPICANA mark, with the addition of the generic terms “poker,” “slots,” and “blackjack,” as well as the generic top-level domain (“gTLD”) “.com.” Because the Complainant’s business includes gambling the finds the terms “poker,” “slots,” and “blackjack” to be descriptive. Descriptive terms and a gTLD do not add a unique dimension to the mark in creating the resulting domain names sufficient to overcome confusing similarity. See Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Consequently, the Panel determines that the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, <tropicanaslots.com>, and <tropicanablackjack.com> domain names are confusingly similar to Complainant’s TROPICANA mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
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.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names, claiming that no evidence exists to support such a finding. Complainant asserts that all evidence shows that Respondent is commonly known by the registrant names contained in the WHOIS information – “Raymond Miller,” “Go Main Domains,” or “Ray Miller.” The Panel notes that Respondent does not counter this assertion in its Response. The Panel therefore finds that absent any evidence to the contrary, Respondent is not commonly known by the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, <tropicanaslots.com>, and <tropicanablackjack.com> domain names. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant claims that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, <tropicanaslots.com>, and <tropicanablackjack.com> domain names, and bases this argument on the website associated with the <tropicanablackjack.com> domain name, which Complainant claims provides pay-per-click links offering short-term pay day loans. Posting hyperlinks to unrelated businesses fails to show a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <tropicanablackjack.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
With respect to the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, or <tropicanaslots.com> domain names, the record indicates that Respondent references a parked page with pay-per-click links associated with these domain names. By associating the disputed domain names with a parked page, Respondent’s registration and use of the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> domain names does not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent owns 147 other domain name registrations, many of which wholly incorporate trademarks belonging to other well-known casino properties throughout the country, and asserts that Respondent is therefore a “serial cybersquatter.” It is not necessary to consider this argument because the Panel agrees that Respondent’s conduct in the present case by registering five domain names incorporating Complainant’s mark indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Complainant states that Respondent’s bad faith registration and use of the <tropicanablackjack.com> domain name is apparent because Respondent likely receives referral fees when Internet users click on the commercial links at the resolving website. Complainant alleges in its Policy ¶ 4(a)(ii) section that the website associated with the <tropicanablackjack.com> domain name offers pay-per-click links to services offering pay day loans. Registering a domain name that is confusingly similar to Complainant’s TROPICANA mark in order to offer hyperlinks to unrelated third parties in exchange for fees is evidence that Respondent registered and uses the <tropicanablackjack.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Although Complainant does not specify Respondent’s use of the <actropicanablackjack.com>, <actropicanapoker.com>, and <actropicanaslots.com>, <tropicanaslots.com> domain names, Respondent references a parked page with pay-per-click links associated with these disputed domain names. By associating the disputed domain names with a parked page, Respondent’s registration and use of the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> domain names exemplifies bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel concludes that the evidence demonstrates that because Respondent uses Complainant’s mark prolifically throughout the websites corresponding to the <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> domain names, Respondent must have had actual knowledge of Complainant’s TROPICANA mark at the time it registered the disputed domain names, thereby demonstrating bad faith registration pursuant to Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy with respect to the <tropicanablackjack.com>, <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> domain names, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tropicanablackjack.com>, <actropicanablackjack.com>, <actropicanapoker.com>, <actropicanaslots.com>, and <tropicanaslots.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 23, 2013
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