Brown & Bigelow, Inc. v. Bostjan Rodela
Claim Number: FA0101000096466
Complainant is Brown & Bigelow, Inc., St. Paul, MN, USA ("Complainant") represented by Linda M. Byrne and Gregory C. Golla, of Merchant & Gould. Respondent is Bostjan Rodela, Dekani, SLOVENIA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "hoylecasino.net" registered with Tucows.com.
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 a panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 19, 2001; the Forum received a hard copy of the Complaint on January 19, 2001.
On January 22, 2001, Tucows.com confirmed by e-mail to the Forum that the domain name "hoylecasino.net" is registered with Tucows.com and that the Respondent is the current registrant of the name. Tucows.com has verified that Respondent is bound by the Tucows.com 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 January 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2001 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson 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." 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.
Complainant alleges that Respondent’s domain name, HOYLECASINO.NET, is confusingly similar to Complainant’s registered mark, HOYLE; that Respondent has no rights or legitimate interests in the disputed domain name. Complainant further asserts that Respondent registered the domain name at issue to deliberately trade off the goodwill of Complainant’s famous mark and/or as retaliation for Complainant’s filing an ICANN Complaint against Respondent (or an affiliated entity) relative to the domain name HOYLECASINO.COM. Also, Complainant urges that Respondent’s use tarnishes Complainant’s famous mark.
No response was submitted.
Complainant is the owner of numerous federal registrations for the trademark "HOYLE" and for other federal registrations containing the word "HOYLE". The "HOYLE" products are listed below. Complainant and/or Complainant's predecessors in interest to the mark "HOYLE" have used the mark in commerce since at least as early as January 25, 1963. The federal registrations owned by Complainant include:
Complainant has licensed the right to use the "HOYLE" trademark in connection with computer software games. The licensee is Sierra On-Line, Inc. One of Sierra’s computer game products is called "HOYLE CASINO." Sierra On-Line's license also includes the right to register and use various domain names, and Sierra On-Line has registered under its license names such as hoylegames.com and hoylegames.net
On November 27, 2000, Complainant filed and served via Express Mail an ICANN Complaint upon Site Ads, Inc., relative to the domain name HOYLECASINO.COM. Respondent registered the domain name "HOYLECASINO.NET" on December 3, 2000. On December 4, 2000 an ICANN proceeding was commenced relative to the HOYLECASINO.COM dispute, also at the National Arbitration Forum as case FA 96127. On December 29, 2000, the National Arbitration Forum assigned a Panelist to hear the case HOYLECASINO.COM and upon default by Site Ads, Inc., on January 11, 2001, James P. Buchele, the Panelist, issued a decision awarding the domain name HOYLECASINO.COM to Complainant.
Although the timing of the HOYLECASINO.NET registration appears to be suspect, no evidence was submitted to support Complainant’s contention that the registrants for HOYLECASINO.NET and HOYLECASINO.COM are one in the same.
Respondent is using the "HOYLECASINO.NET" domain name for activities that some would describe as pornographic.
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.
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;
(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.
Identical to and/or Confusingly Similar
Complainant has rights in the HOYLE mark as evidenced by its United States’ trademark registrations. Respondent’s domain name consists of Complainant’s mark and a generic gaming term. This constitutes an identical or confusingly similar domain name that wrongfully uses Complainant’s registered mark. See Body Shop Int’l PLC v. CPIC NET and Hussain, D2000-1214 (Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to Complainant’s <THE BODY SHOP> trademark); see also Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).
For these reasons, the Panel finds that the domain name in issue is identical to and confusingly similar to Complainant’s marks.
Rights or Legitimate Interests
Complainant has established rights in the registered HOYLE mark. Based on the papers before us, Respondent has not shown any right to or interest in Complainant’s mark. Further, the evidence permits the inference that Respondent has not been commonly known by the mark used to create this domain name. All of this violated ICANN Policy. ¶ 4(c)(ii). Also, Respondent is not making a legitimate or fair use of the domain name under ICANN Policy. ¶ 4(c)(i) or (iii). The evidence permits the inference that the Respondent’s only use of the domain in issue is to use it as a link to pornographic web pages. Use of a domain name, which infringes upon another’s famous mark, in connection with a pornographic website is not a bona fide or legitimate use. Policy ¶ 4(c). See National Football League Properties, Inc. v. One Sex Entertainment Co. D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where Respondent linked these domain names to its pornographic website).
For these reasons, the Panel finds that Respondent has no rights or legitimate interests in the mark used to create the domain name in question.
Registration and Use in Bad Faith
Respondent registered Complainant’s mark as a domain name and is using the domain name "HOYLECASINO.NET" to link to a pornographic web page. This appears to be a deliberate attempt by Respondent to trade off the good will associated with Complainant’s well-established mark. Accordingly, use of a domain name that infringes upon another’s mark in connection with pornography is evidence of bad faith registration and use. Policy ¶ 4(b). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); CCA Indust., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that "this association with a pornographic web site can itself constitute a bad faith").
For these reasons, the Panel finds that Respondent registered and used the domain name that utilized Complainant’s mark in bad faith.
Having established all three elements required by ICANN Policy Rule 4(a), the Panel finds that the requested relief should be granted.
Accordingly, for all of the foregoing reasons, it is Ordered that the domain name, "hoylecasino.net" be transferred from Respondent to Complainant.
Honorable Carolyn Marks Johnson
Dated: March 5, 2001
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