Pascua Yaqui Tribe v. WW Processing
Claim
Number: FA0506000497249
Complainant is Pascua Yaqui Tribe (“Complainant”), represented
by Stephen R. Baird, of Winthrop & Weinstine, P.A., Suite 3500, 225 South Sixth Street, Minneapolis, MN 55402. Respondent is WW Processing (“Respondent”), Heritage Plaza, Main Street,
Charlestown, KN.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <casinointhesun.com> and <casinointhesun.net>,
registered with Tucows Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 16, 2005.
On
June 16, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain names <casinointhesun.com> and <casinointhesun.net>
are registered with Tucows Inc. and that Respondent is the current registrant
of the names. Tucows Inc. has verified
that Respondent is bound by the Tucows Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
June 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 11, 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@casinointhesun.com and
postmaster@casinointhesun.net 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
July 14, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <casinointhesun.com>
and <casinointhesun.net> domain names are confusingly similar to
Complainant’s CASINO OF THE SUN mark.
2. Respondent does not have any rights or
legitimate interests in the <casinointhesun.com> and <casinointhesun.net>
domain names.
3. Respondent registered and used the <casinointhesun.com>
and <casinointhesun.net> domain names 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 (“USPTO”) 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.
Respondent
registered the <casinointhesun.com> and <casinointhesun.net>
domain names on November 24, 1999.
Respondent is using the disputed domain names to redirect 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
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.").
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 has
established rights in the CASINO OF THE SUN mark through several registrations
of the mark with the USPTO and through continuous use of the mark in
commerce. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed
Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s <casinointhesun.com> and <casinointhesun.net>
domain names are confusingly similar to Complainant’s CASINO OF THE SUN mark
because the domain names incorporate the dominant features of Complainant’s
mark, omit the word “of” and add the word “in” and the generic top-level
domains “.com” and “.net” to the mark.
The Panel finds that such minor alterations to Complainant’s registered
mark are insufficient to negate the confusingly similar aspects of Respondent’s
domain names pursuant to Policy ¶ 4(a)(i).
See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also
Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum
Jan. 16, 2001) (finding that the domain name <wellness-international.com>
is confusingly similar to the complainant’s “Wellness International Network”); cf.
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding
that “[n]either the addition of an ordinary descriptive word . . . nor
the suffix ‘.com’ detract from the overall impression of the dominant part of
the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <casinointhesun.com>
and <casinointhesun.net> domain names. Once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to prove that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, the Panel assumes that Respondent does not have rights or
legitimate interests in the disputed domain names. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the
complainant has asserted that respondent does not have 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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or legitimate
interest does exist).
Respondent has
no rights to or legitimate interests in the <casinointhesun.com>
and <casinointhesun.net> domain names because the disputed domain
names are being used to divert Internet users interested in Complainant’s services
to a website that offers similar services, namely gambling. Respondent’s use of domain names confusingly
similar 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 the 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 the respondent 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
the respondent’s appropriation of the complainant’s mark to market products
that compete with the 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 the respondent had no
rights or legitimate interests in the disputed domain name where it used the
complainant’s mark, without authorization, to attract Internet users to its
business, which competed with the complainant).
Respondent was
not authorized or licensed by Complainant to register or use domain names
incorporating a version of the CASINO OF THE SUN mark. Nothing in the record shows that Respondent
holds a trademark or is commonly known by either the <casinointhesun.com>
or <casinointhesun.net> domain name pursuant to Policy ¶
4(c)(ii). Therefore, the Panel finds
that Respondent does not have rights and legitimate interests in the domain
names 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) the respondent is not a licensee of the complainant; (2) the
complainant’s rights in the mark precede the respondent’s registration; (3) the
respondent is not commonly known by the domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <casinointhesun.com> and <casinointhesun.net>
domain names, which are confusingly similar to Complainant’s CASINO OF THE SUN
mark, to redirect Internet users to a website featuring online and offshore
gambling that competes with Complainant’s gaming business. The Panel finds that such use constitutes
disruption and 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 the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that the respondent diverted business from the
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Since
Respondent’s domain names are confusingly similar to Complainant’s CASINO OF
THE SUN mark, Internet users accessing Respondent’s domain names may become
confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <casinointhesun.com>
and <casinointhesun.net> domain names constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant’s mark when the domain name resolves
to commercial websites and the respondent fails to contest the complaint, it
may be concluded that the respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also
Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000) (finding bad faith where the respondent directed Internet users seeking
the complainant’s site to its own website for commercial gain).
Furthermore,
Respondent registered the <casinointhesun.com> and <casinointhesun.net>
domain names with actual or constructive knowledge of Complainant’s rights in
the CASINO OF THE SUN mark due to Complainant’s registration of the mark with
the USPTO. Moreover, the Panel infers
that Respondent registered the domain names with actual knowledge of Complainant’s
rights in the mark due to the obvious connection between the content advertised
on Respondent’s website and Complainant’s business. Registration of domain names that are confusingly similar to
another’s mark despite actual or constructive knowledge of the mark holder’s
rights in the mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when the respondent reasonably should have been aware of the complainant’s
trademarks, actually or constructively.”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“[T]he complainant’s OXICLEAN mark is listed on the Principal Register of the
USPTO, a status that confers constructive notice on those seeking to register
or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s
mark and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the complainant’s mark when it registered the
subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <casinointhesun.com> and <casinointhesun.net>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 25, 2005
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