Hard Rock Cafe International (USA), Inc. v. AJ McCann / Azure Commerce
Claim Number: FA1507001630150
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Muncy, Geissler, Olds & Lowe, PC., Virginia, USA. Respondent is AJ McCann / Azure Commerce (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hardrockbox.com>, <hardrockbox.net>, and <hardrockbox.org>, registered with Tucows Domains Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2015; the Forum received payment on July 23, 2015.
On July 24, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <hardrockbox.com>, <hardrockbox.net>, and <hardrockbox.org> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 July 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2015 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@hardrockbox.com, postmaster@hardrockbox.net, and postmaster@hardrockbox.org. Also on July 27, 2015, 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 August 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
Respondent’s
knowledge of Complainant’s rights in the HARD ROCK family of marks further
demonstrates Respondent’s bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent indicates in two emails Respondent has no rights to the domain names and registered them by accident. Respondent appears willing to relinquish the domain names.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(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.”).
Complainant has rights in the HARD ROCK mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,478,328, registered August 14, 2001). A complainant has rights in a mark based on registration of that mark with the USPTO (or any other governmental trademark authority). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). Complainant’s USPTO registration of the HARD ROCK mark establishes their rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s disputed <hardrockbox.com>, <hardrockbox.net>, <hardrockbox.org> domain names are confusingly similar to the HARD ROCK mark. The disputed domain names include the HARD ROCK mark, eliminating spacing between words, and adding the generic word “box” and gTLDs “.com,” “.net,” or “.org.” Spaces are prohibited characters in domain names. This means the lack of spaces must be disregarded under a Policy ¶4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Nat. Arb. Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Since domain names must have a TLD (either a gTLD or a ccTLD), the presence of a TLD must also be disregarded under a Policy ¶4(a)(i) analysis. A disputed domain name is confusingly similar to a mark where the domain merely adds a generic term to a mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). In this case, Respondent has used Complainant’s complete mark in Respondent’s domain names. Respondent’s disputed domain names are confusingly similar to the HARD ROCK mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent appears not to be commonly known by the disputed <hardrockbox.com>, <hardrockbox.net>, <hardrockbox.org> domain names. The relevant WHOIS information now indicates the registrant of the disputed domain names is “AJ McCann” of the organization “Azure Commerce.” The fact a respondent is not commonly known by a disputed domain name is determined based on the WHOIS information and other available information which is part of the record. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Based upon this record, Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).
Respondent acknowledges it had no authorization to use Complainant’s marks in a domain name.
Respondent registered the domain names using a privacy service. This means Respondent acquired no rights to the domain name because Respondent has not publicly associated itself with the domain names.
Finally, Respondent acknowledges it has no rights to the domain names in two emails. Respondent offers to turn over the domain names to Complainant. This means Respondent acknowledges it has no defense to this UDRP prong.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the disputed domain names in bad faith. Respondent had actual knowledge of Complainant's rights in the HARD ROCK mark. Leaving aside the fact Respondent acknowledged this fact in its emails, Respondent clearly knew about Complainant’s mark because it forwarded its domain names to Complainant’s web site. This leads to the conclusion Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Finally, using a privacy service to register a domain name raises a rebuttable presumption of bad faith in a commercial context. Respondent has done nothing to rebut that presumption. In fact, Respondent admits it has no rights to the domain names, they were registered in error by a junior staff member and Complainant owns the marks. This is an adequate admission to find bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <hardrockbox.com>, <hardrockbox.net>, and <hardrockbox.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, August 21, 2015
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