Marina District Development Company, LLC d/b/a Borgata Hotel Casino & Spa v. Greg Allen
Claim Number: FA0611000842206
Complainant is Marina District Development Company, LLC d/b/a Borgata
Hotel Casino & Spa (“Complainant”), represented by Kristina Rosette, of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <theborgata.net> and <borgatacasino.net>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 15, 2006.
On November 16, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <theborgata.net> and <borgatacasino.net> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 November 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 7, 2006 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@theborgata.net and postmaster@borgatacasino.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2006, 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 <theborgata.net> and <borgatacasino.net> domain names are confusingly similar to Complainant’s BORGATA and BORGATA HOTEL CASINO & SPA marks.
2. Respondent does not have any rights or legitimate interests in the <theborgata.net> and <borgatacasino.net> domain names.
3. Respondent registered and used the <theborgata.net> and <borgatacasino.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Marina District Development Company, d/b/a
Borgata Hotel Casino & Spa, operates a well known and successful resort
hotel and spa including restaurant, bar and casino goods and services in
Respondent registered the <theborgata.net> domain
name on July 6, 2004 and registered the <borgatacasino.net> domain
name on July 14, 2004. Currently, <theborgata.net>
domain name resolves to a GoDaddy.com parking page including an
advertisement stating, “For
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’s USPTO registrations of the BORGATA and BORGATA HOTEL CASINO & SPA marks predate Respondent’s registration of the disputed domain name. The Panel finds that Complainant’s registration of the marks establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <theborgata.net> and <borgatacasino.net> domain names are confusingly similar to Complainant’s BORGATA and BORGATA HOTEL CASINO & SPA marks. The disputed domain names include Complainant’s BORGATA mark in its entirety, and add the terms “the” and “casino.” The addition of the article “the” to Complainant’s BORGATA mark does not distinguish the disputed domain name from Complainant’s mark. The term “casino” is descriptive of Complainant’s business and part of Complainant’s BORGATA HOTEL CASINO & SPA mark and does not differentiate the disputed domain name from Complainant’s mark. The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Under the Policy, Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent has the opportunity to present the Panel with evidence or arguments in support of its rights or legitimate interests in a Response. The Panel views Respondent’s failure to submit such a Response as evidence that Respondent lacks rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will examine the available evidence to determine whether Respondent has rights or legitimate interests in the <theborgata.net> and <borgatacasino.net> domain names as contemplated by Policy ¶ 4(c).
Respondent’s <theborgata.net>
domain name resolves to a website
that advertises the disputed domain name for sale and also includes
advertisements for other website related services. Respondent’s <borgatacasino.net> domain
name features extensive links to third-party websites, many of which promote
hotel, casino and spa services in direct competition with Complainant. Respondent is not offering goods or services
through its websites and is presumably receiving pay-per-click referral fees
from the links on its websites. Thus,
the Panel finds that such use is neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also 24 Hour Fitness
USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb.
Forum Sep. 26, 2003) (holding that Respondent’s use of the
<24hrsfitness.com>, <24-hourfitness.com> and
<24hoursfitness.com> domain names to redirect Internet users to a website
featuring advertisements and links to Complainant’s competitors could not be
considered a bona fide offering of goods or services or a legitimate
noncommercial or fair use).
Additionally, there is no available evidence indicating that
Respondent is commonly known by the disputed domain names. Respondent’s WHOIS information identifies
Respondent as “Greg Allen,” a name with no apparent relationship to the
disputed domain names. Complainant also
asserts without contradiction that Respondent is not affiliated with
Complainant and does not have permission from Complainant to reflect
Complainant’s mark in a domain name.
Thus, the Panel finds that Respondent lacks rights or legitimate
interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
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
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name).
Furthermore, Respondent has posted on its website a general
offer that the <theborgata.net>
domain name is for sale. Respondent has
also indicated in correspondence with Complainant that it would sell the
disputed domain names to Complainant for amounts between $5,000 and $15,000. Respondent’s willingness to sell the domain
name is further evidence that Respondent lacks rights or legitimate interests
in the disputed domain name. See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
May 27, 2003) (holding that under the circumstances, the respondent’s apparent
willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain name); see
also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has posted a notice on its website offering the <theborgata.net> domain name for sale. Respondent has also offered both of the disputed domain names for sale directly to Complainant. The Panel finds that Respondent’s attempt to sell the disputed domain name for an amount in excess of Respondent’s out-of-pocket costs is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Respondent is using the <borgatacasino.net> domain name to redirect Internet users to Respondent’s website filled with links to third-party websites, many of which are websites offering services in competition with Complainant. Internet users redirected to Respondent’s website while trying to find Complainant’s genuine website at <theborgata.com>, may instead follow the available third-party links and do business with one of Complainant’s competitors. The Panel finds that such use disrupts Complainant’s business 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, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s domain names are confusingly similar to Complainant’s marks. Internet users seeking Complainant’s genuine website may easily find themselves instead redirected to Respondent’s websites. The confusing similarity between the disputed domain names and Complainant’s marks may cause Internet users to mistakenly believe that Respondent’s websites are affiliated with Complainant. Respondent is presumably profiting from this confusion by collecting pay-per-click referral fees from the links posted at its websites. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
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 <theborgata.net> and <borgatacasino.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 28, 2006
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