Holding Acquisition Company, LP d/b/a Rivers Casino v. Jeremy Pollard
Claim Number: FA1506001622988
Complainant is Holding Acquisition Company, LP d/b/a Rivers Casino (“Complainant”), represented by William Niro, Illinois, USA. Respondent is Jeremy Pollard (“Respondent”), represented by Sarah Grossman-Swenson of Davis, Cowell & Bowe, LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riverscasinotravelalert.org>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2015; the Forum received payment on June 5, 2015.
On June 5, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <riverscasinotravelalert.org> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2015 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@riverscasinotravelalert.org. Also on June 12, 2015, 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 and determined to be complete on July 2, 2015.
Complainant submitted an Additional Submission, and it was received and determined to be complete on July 7, 2015.
Respondent submitted an Additional Submission, and it was received and determined to be complete on July 12, 2015.
On July 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <riverscasinotravelalert.org> domain name is confusingly similar to Complainant’s RIVERS CASINO mark.
2. Respondent is not using the <riverscasinotravelalert.org> domain name for a bona fide offering of goods or services.
3. Respondent registered and uses the <riverscasinotravelalert.org> domain name in bad faith.
B. Respondent
1. Respondent’s <riverscasinotravelalert.org> domain name is not confusingly similar to Complainant’s RIVERS CASINO mark because it adds “travel” and “alert” to the mark.
2. Respondent has rights or legitimate interests in the <riverscasinotravelalert.org> domain name because it is making a legitimate non-commercial use of the domain name.
3. Respondent did not register and is not using the <riverscasinotravelalert.org> domain name in bad faith because it is making a legitimate non-commercial use of the domain name.
4. Complainant is attempting to reverse highjack the <riverscasinotravelalert.org> domain name.
C. Complainant’s Additional Submission
1. Respondent’s <riverscasinotravelalert.org> domain name does not correspond to its alleged use, and is misleading.
2. Respondent’s <riverscasinotravelalert.org> domain name is primarily used for commercial union content.
D. Respondent’s Additional Submission
1. Respondent’s website at <riverscasinotravelalert.org> provides information about a labor dispute with Complainant, which is relevant to travelers.
2. The union Respondent is associated with is not a business organization.
3. Respondent cites prior cases in arguing that union criticism of corporate conduct is not commercial and does not violate trademark law.
Complainant uses the RIVERS CASINO mark in connection with its gambling establishment, and holds a registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,786, 045, registered May 4, 2010).
Respondent registered the <riverscasinotravelalert.org> domain name on April 10, 2015, and uses it to divert Internet users to a website that pertains to a labor dispute with Complainant and offers information about Respondent’s union.
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.
The Panel finds that Complainant has rights in the RIVERS CASINO mark under Policy ¶ 4(a)(i) through its registration with the USPTO. Panels routinely find that USPTO registrations confer rights in a mark for purposes of Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <riverscasinotravelalert.org> domain name incorporates Complainant’s RIVERS CASINO mark and simply adds the generic terms “travel” and “alert” and the gTLD “.com.” These changes do not distinguish the disputed domain name from Complainant’s mark, despite Respondent’s contention that the underlying website provides distinction to Internet users. Under Policy ¶ 4(a)(i), the Panel only considers whether or not the domain name is confusingly similar to a complainant’s mark. 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 Bloomberg L.P. v. Kevin Scharf, FA 96264 (Nat. Arb. Forum Jan. 13, 2001) (finding the domain name <bloombergnow.com> confusingly similar to complainant’s trademark BLOOMBERG, because the addition of the generic word “now” do[es] not add any distinguishing features to the mark, and does not render the mark any less recognizable”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <riverscasinotravelalert.org> domain name is confusingly similar to Complainant’s RIVERS CASINO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not using the <riverscasinotravelalert.org> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that the disputed domain name resolves to a website promoting labor union activities and disparaging Complainant. Respondent asserts that it is providing information that there is a labor dispute with Complainant, which could impact travelers. Respondent further argues that it is making a legitimate non-commercial use of the domain name to criticize Complainant, which is protected free speech. Respondent acknowledges that a large portion of the website at the disputed domain name pertains to the union that Respondent is affiliated with, and argues that the union is not a business. However, the Panel notes that the website is no doubt designed to garner new members of Respondent’s union, which confers a benefit upon the union, including union dues and other gains. The Panel finds that Respondent is not using the disputed domain name to provide meaningful travel information for Internet users. These factors weigh against a finding that Respondent has rights or legitimate interests in the disputed domain name. Prior panels have found diversion for a respondent’s general benefit as failing to constitute Policy ¶¶ 4(c)(i) or (iii) rights. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)
Respondent cites a number of cases, both UDRP and Federal precedent, to support its argument that the content of the website at <riverscasinotravelalert.org> is protected free speech. The Panel finds, however, that the precedent does not match the facts in this case. This case is distinguishable from “free speech” cases where a derogatory term is included in the disputed domain name and there was no commercial benefit inuring to the respondent. Here, Respondent is intentionally tricking Internet users by using the misleading terms “travel” and “alert” with Complainant’s mark in the disputed domain name, giving no indication that the resolving site is not affiliated with Complainant, and no indication that the site is primarily a criticism site. Moreover, the resolving website is clearly directed at promoting Respondent’s union, intended to result in a commercial/financial benefit to that union.
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name by successfully arguing to the Panel that Respondent is not making a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel notes that the WHOIS for the disputed domain name lists “Jeremy Pollard” as the registrant of record. Respondent does not claim that it is commonly known by the disputed domain name. Thus, the Panel finds that Respondent also has no rights in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is disrupting the business of Complainant by diverting Internet users to its own website, which falsely claims to offer travel information, by or on behalf of Complainant, and also by attempting to frighten Complainant’s customers by claiming a “labor dispute” could affect their visit to the casino. The Panel agrees, noting that bad faith disruption under Policy ¶ 4(b)(iii) is not limited to direct commercial competition, and finds that Respondent no doubt intends to disrupt Complainant’s business by disparaging Complainant. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).
Complainant also contends that Respondent is using the disputed domain name for commercial gain in bad faith Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent attracts Internet users to the website at <riverscasinotravelalert.org> to gain membership in its union, which profits financially through member dues. Previous panels have found similar activity to constitute Policy ¶ 4(b)(iv) bad faith attraction for commercial gain. See Nat’l Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where the respondent registered the domain names <friendsofnra.com>, <friendsofnra.net>, and <friendsofnra.org> with the intention of using the domain names in connection with individual NRA fundraising, but without permission from the complainant to use the registered marks). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Since the Panel has found that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <riverscasinotravelalert.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 16, 2015
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