Pascua Yaqui Tribe v. Registrant
Claim
Number: FA0501000406817
Complainant is Pascua Yaqui Tribe (“Complainant”), represented
by Stephen R. Baird of Winthrop and Weinstine, P.A. 225 South Sixth Street, Suite 3500,
Minneapolis, MN, 55402. Respondent is Registrant (“Respondent”), name and
address unknown.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <casinoofthesun.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically January
20, 2005; the National Arbitration Forum received a hard copy of the Complaint January
24, 2005.
On
January 21, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <casinoofthesun.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. verified that Respondent is
bound by the Go Daddy Software, Inc. registration agreement and thereby has
agreed to resolve domain name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
January 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 14, 2005, by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@casinoofthesun.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 23, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Carolyn Marks Johnson 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <casinoofthesun.com>, is identical to Complainant’s
CASINO OF THE SUN mark.
2. Respondent has no rights to or legitimate
interests in the <casinoofthesun.com> domain name.
3. Respondent registered and used the <casinoofthesun.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Pascua Yaqui Tribe, owns and operates gaming facilities in Tucson, Arizona,
which include slot machines, bingo, restaurants, table games and live
entertainment. Complainant’s Casino of
the Sun facility houses 410 gaming devices, three restaurants and a bingo
hall.
Complainant
holds several trademark registrations with the United States Patent and
Trademark Office for the CASINO OF THE SUN mark (Reg. No. 2,213,045 issued
December 22, 1998; Reg. No. 2,213,044 issued December 22, 1998; and Reg. No.
2,211,188 issued December 15, 1998).
Complainant has been using the CASINO OF THE SUN mark in commerce since
at least June 1993 in connection with gaming services.
Complainant’s
main website is operated at <casinosun.com>. Complainant’s website contains information about its gaming
facility.
Respondent
registered the <casinoofthesun.com> domain name November 21,
2001. Respondent is using the disputed
domain name to direct Internet users to a website that offers online and
offshore gambling.
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."
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established using extrinsic proof in this proceeding that it has rights in the
CASINO OF THE SUN mark through registration with the United States Patent and
Trademark Office and through continued use of its mark in commerce over the
last twelve years. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate ‘exclusive rights,’ but only that
Complainant has a bona fide basis for making the Complaint in the first place);
see also Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to
register all possible domain names that surround its substantive mark does not
hinder Complainant’s rights in the mark. “Trademark owners are not required to
create ‘libraries’ of domain names in order to protect themselves”).
The domain name
that Respondent registered, <casinoofthesun.com>, is identical to
Complainant’s CASINO OF THE SUN mark because the only difference is the
addition of the generic top-level domain (“gTLD”) “.com.” See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Sporty's Farm L.L.C. v.
Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied,
530 U.S. 1262 (2000) ("For consumers to buy things or gather information
on the Internet, they need an easy way to find particular companies or brand
names. The most common method of locating an unknown domain name is simply to
type in the company name or logo with the suffix .com"); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir.
2002) (“Internet users searching for a company’s Web site often assume, as a
rule of thumb, that the domain name of a particular company will be the company
name or trademark followed by ‘.com.’”).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant has
established that it has rights to or legitimate interests in the mark used in
its entirety in the domain name that Respondent registered. Complainant also has alleged that Respondent
has no such rights to or legitimate interests in the <casinoofthesun.com>
domain name that contains in its entirety Complainant’s CASINO OF THE SUN
mark. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent has
no rights to or legitimate interests in the <casinoofthesun.com>
domain name because the disputed domain name is being used to divert Internet
users interested in Complainant’s services to a website that offers similar
services, namely gambling. Respondent’s
use of a domain name identical to Complainant’s CASINO OF THE SUN mark to
redirect Internet users seeking Complainant’s services to Respondent’s
commercial website, which offers competing services is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan.
8, 2001) (finding no rights or legitimate interests where Respondent used the
<casinomontecarlo.com> and <montecarlocasinos.com> domain names in
connection with an online gambling website); see also Imation Corp. v. Jean
Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or
legitimate interest where Respondnet used the disputed domain name to redirect
Internet users to an online casino); see also Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb.
Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate
interests in the disputed domain name where it used Complainant’s mark, without
authorization, to attract Internet users to its business, which competed with
Complainant).
Respondent was
not authorized or licensed by Complainant to register or use a domain name that
wholly incorporates the CASINO OF THE SUN mark. Nothing in the record shows that Respondent holds a trademark or
is commonly known by the <casinoofthesun.com> domain name pursuant
to Policy ¶ 4(c)(ii). Therefore, the
Panel finds that Respondent lacks rights and legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s rights in the mark precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent acted in bad faith in registering and using a domain
name that contains in its entirety Complainant’s protected mark. Respondent is using the disputed domain name
to advertise online gambling, the same commercial area that Complainant’s
business operates, gaming establishment and services. The Panel finds that, by creating confusion around Complainant’s
CASINO OF THE SUN mark, Respondent is attempting to disrupt the business of a
competitor. Respondent’s use of a
domain name that is identical to Complainant’s mark to sell goods and services
similar to those offered by Complainant is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).
See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also EBAY, Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the
domain name <eebay.com> in bad faith where Respondent has used the domain
name to promote competing auction sites); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22,
2000) (finding that Respondent registered and used the domain name primarily
for the purpose of disrupting the business of Complainant by offering personal
e-mail accounts under the domain name <openmail.com> which is identical
to Complainant’s services under the OPENMAIL mark).
Additionally,
the disputed domain name that Respondent registered causes Internet users to
mistakenly believe that the domain name is affiliated with Complainant. Thus, the Panel determines that the initial
user confusion that the domain name causes is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Sony Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the domain names).
Further,
Complainant asserted that Respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) as Respondent is using the <casinoofthesun.com>
domain name to intentionally attract for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant as to the
source, sponsorship, affiliation or endorsement of its website. Due to the lack of a Response, the Panel
concludes that Respondent intentionally attempted to attract, for commercial
gain, Internet users to the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iv). See H-D Michigan,
Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding
that the disputed domain name was registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing
domain name to intentionally attempt to attract Internet users to its
fraudulent website by using Complainant’s famous marks and likeness); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb.
Forum Oct. 11, 2000) (finding that Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the web site without permission
from Complainant).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <casinoofthesun.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 8, 2005.
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