Navajo Nation Gaming Enterprise v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1804001781612
Complainant is Navajo Nation Gaming Enterprise (“Complainant”), represented by Flavia Campbell of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firerockcasino.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2018; the Forum received payment on April 12, 2018.
On April 14, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <firerockcasino.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2018 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@firerockcasino.com. Also on April 18, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant uses the FIRE ROCK NAVAJO CASINO and FIRE ROCK CASINO marks in connection to casino services, gaming and casino equipment, entertainment services, and clothing. Complainant has rights in the FIRE ROCK NAVAJO CASINO and FIRE ROCK CASINO marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,721,178, registered Dec. 8, 2009, and Reg. No. 4,855,823, registered Nov. 17, 2015, respectively). Respondent’s <firerockcasino.com> domain name is confusingly similar to Complainant’s FIRE ROCK marks as it incorporates the FIRE ROCK CASINO mark in its entirety and is differentiated only by the addition of a “.com” generic top-level domain name (“gTLD”). Further, the <firerockcasino.com> domain name merely deletes the term “Navajo” from Complainant’s FIRE ROCK NAVAJO CASINO mark. Moreover, Complainant also used the <firerockcasino.com> domain name as its domain name as late as 2011.
ii) Respondent has no rights or legitimate interests in the <firerockcasino.com> domain name. Respondent is not authorized or licensed to use Complainant’s FIRE ROCK CASINO or FIRE ROCK NAVAJO CASINO mark and Respondent is not commonly known by the disputed domain name. Respondent’s use of the disputed domain name does amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to an inactive page.
iii) Respondent registered and is using the <firerockcasino.com> domain name in bad faith. Respondent, through a domain name broker, attempted to sell the disputed domain name to Complainant for an excess of out-of-pocket costs. Additionally, Respondent knew or should have known of Complainant’s long-term use of the FIRE ROCK marks at the time Respondent registered and subsequently used the domain name. Furthermore, Respondent registered the disputed domain name using a privacy service.
B. Respondent
Respondent failed to submit a response.
1. The disputed domain name was initially registered by Complainant on June 9, 2008.
2. Complainant forfeited the disputed domain on January 16, 2012, due to an inadvertent failure to pay renewal fees.
3. Complainant established rights in the FIRE ROCK NAVAJO CASINO and FIRE ROCK CASINO marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,721,179, registered Dec. 8, 2009, and Reg. No. 4,855,823, registered Nov. 17, 2015, respectively).
4. The disputed domain name resolves to an inactive page with no legitimate content.
5. Respondent, through a domain name broker, offered to sell the disputed domain name directly to Complainant for $14,999.00 USD.
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.
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(f), 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 (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.”).
Complainant claims rights in the FIRE ROCK NAVAJO CASINO and FIRE ROCK CASINO marks based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,721,179, registered Dec. 8, 2009, and Reg. No. 4,855,823, registered Nov. 17, 2015, respectively). See Amend. Compl. Ex. 7. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum Jul. 28, 2017) (finding that registration with the USPTO was sufficient to establish the Complainant’s rights in the HOME DEPOT mark). Therefore, the Panel holds that Complainant’s registration of the FIRE ROCK NAVAJO CASINO and FIRE ROCK CASINO marks with the USPTO is sufficient to establish rights in the marks under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <firerockcasino.com> domain is confusingly similar to Complainant’s marks as it incorporates the FIRE ROCK CASINO mark in its entirety and is differentiated only by the addition of a “.com” generic top-level domain name (“gTLD”). Further, the <firerockcasino.com> domain name merely deletes the term “Navajo” from Complainant’s FIRE ROCK NAVAJO CASINO mark. These changes to the mark are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs); see also VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).). The Panel therefore determines the <firerockcasino.com> domain name is confusingly similar to the FIRE ROCK NAVAJO CASINO and FIRE ROCK CASINO marks.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <firerockcasino.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can determine whether a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <firerockcasino.com> domain name lists the registrant as “Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd,” and no information on the record indicates that Respondent owns any trademark or service mark rights in the FIRE ROCK NAVAJO CASINO or FIRE ROCK CASINO name. See Amend. Compl. Ex. 10. The Panel therefore finds that Respondent has not been commonly known by the <firerockcasino.com> domain name per Policy ¶ 4(c)(ii).
Complainant also argues Respondent is not using the <firerockcasino.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or faire use as the disputed domain name resolves to an inactive page. Use of a disputed domain name to resolve to an inactive page is not indicative of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provides screenshots of the disputed domain name, which shows an inactive page with no legitimate content. See Amend. Compl. Ex. 9.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <firerockcasino.com> domain name per Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s bad faith is indicated by its attempt to sell the disputed domain name to Complainant for an excess of out-of-pocket costs. Offering for sale a disputed domain can be evidence of a respondent’s bad faith per Policy ¶ 4(a)(iii). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Complainant contends that Respondent, through a domain name broker, offered to sell the disputed domain name directly to Complainant for $14,999.00 USD. See Amend. Compl. Ex. 6. The Panel therefore finds that Respondent used the domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends it is inconceivable that Respondent could have registered the <firerockcasino.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. The Panel observes that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”)
In the meantime, the Panel notes that the Complainant’s filing date for the earliest FIRE ROCK NAVAJO CASINO mark is January 9, 2009 and it shows a date of first use in commerce of November 2008. The Complainant’s filing date for the earliest FIRE ROCK CASINO mark is June 29, 2015 and it shows a date of first use in commerce of July 2014. (See copy of Registration Certificate for the FIRE ROCK CASINO and FIRE ROCK NAVAJO CASINO marks at Exhibit 7). As such, it appears that the date of first use (November 2008) in commerce of the Complainant’s mark FIRE ROCK NAVAJO CASINO is later than the registration date of the disputed domain name (June 9, 2008). In this regard, Complainant contends that i) the disputed domain Name was first registered by Complainant on June 9, 2008 (See Network Solutions Order Confirmation at Exhibit 4); ii) Complainant used the disputed domain name as one of the websites to promote the goods and services offered under the FIRE ROCK CASINO until at least February 2011(See Exhibit 3); iii) Complainant forfeited the domain on January 16, 2012, due to an inadvertent failure to pay renewal fees. (See Network Solutions Email at Exhibit 5); and therefore, Respondent’s registration and use of the disputed domain name must have been after January 16, 2012, more than four years after Complainant began using its FIRE ROCK NAVAJO CASINO mark and after Complainant used the disputed domain Name itself to advertise the goods and services offered under the FIRE ROCK CASINO.
As such, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC, v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Thus, the Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration and registered the name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firerockcasino.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 14, 2018
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