SugarHouse HSP Gaming, LP v. Alan Cognigni
Claim Number: FA1809001809452
Complainant is SugarHouse HSP Gaming, LP (“Complainant”), represented by William L. Niro of Johnson & Bell, Ltd., Illinois, USA. Respondent is Alan Cognigni (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <betsugarhouse.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2018; the Forum received payment on September 27, 2018.
On September 28, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <betsugarhouse.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2018 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@betsugarhouse.com. Also on September 28, 2018, 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 October 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 that the domain name(s) be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, SugarHouse HSP Gaming, LP, uses the SUGARHOUSE CASINO mark in connection with its land-based casino operation as well as its web-based online casino experience. Complainant has rights in the SUGARHOUSE CASINO mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,018,238 registered Aug. 30, 2011). See Compl. Annex 1. Respondent’s <betsugarhouse.com> domain name is confusingly similar to Complainant’s mark because Respondent includes a dominant part of the mark in the disputed domain name plus the word “bet.”
ii) Respondent lacks rights and legitimate interests in the <betsugarhouse.com> domain name because it is not authorized by Complainant to use the SUGARHOUSE CASINO mark in any way. Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent diverts Internet users to a webpage that lacks content and not being used in any way.
iii) Respondent registered and uses the <betsugarhouse.com> domain name in bad faith. Specifically, Respondent disrupts Complainant’s business by diverting Internet sports betting traffic away from Complainant’s sports betting website. Respondent’s bad faith is demonstrated by the fact that Respondent purchased the domain <betsugarhouse.com> just three weeks before the United States Supreme Court issued its ruling in a case that legalized sports betting. Murphy v. NCAA, 138 S.Ct. 1461 (2018). Respondent intentionally added the word bet to the trademark sugarhouse to secure the domain name in anticipation that once sports betting would be allowed, especially in casinos, it would become a valuable commodity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. The <betsugarhouse.com> domain name was registered on April 20, 2018.
2. Complainant has established rights in the SUGARHOUSE CASINO mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,018,238 registered Aug. 30, 2011).
3. The disputed domain name remains inactive.
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 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.
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(f), 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 (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 asserts rights in the SUGARHOUSE CASINO mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in the mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides copies of its USPTO registrations (e.g., Reg. No. 4,018,238 registered Aug. 30, 2011). See Compl. Annex 1. Accordingly, while conducting a Policy ¶ 4(a)(i) analysis the Panel finds that Complainant has rights in the SUGARHOUSE CASINO mark.
Complainant next argues that Respondent’s <betsugarhouse.com> domain name is confusingly similar to Complainant’s mark as Respondent includes a dominant part of the mark in the disputed domain name plus the word “bet.” The Panel also sees that the domain name also adds the “.com” generic top-level domain (“gTLD”) and finds that similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel therefore finds that the <betsugarhouse.com> domain name is confusingly similar to the SUGARHOUSE CASINO mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <betsugarhouse.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Alan Cognigni” as the registrant. Complainant further alleges that Respondent has never been legitimately affiliated with Complainant, and Complainant has not given Respondent permission to use the mark in any manner. These assertions can lead to a finding of a respondent lacking rights and legitimate interests in a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Accordingly, the Panel agrees that Respondent is not commonly known by the <betsugarhouse.com> domain name under Policy ¶ 4(c)(ii).
Moreover, Complainant contends that the disputed domain name resolves in a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant does not provide any evidence to substantiate this assertion. Given the circumstances, the Panel has made a visit to the disputed domain name in order to obtain more information about the respondent or its use of the domain name and has found that the disputed domain name remains inactive as it simply displays a message reading 'Welcome to betsugarhouse.com. This Web page is parked for FREE, courtesy of GoDaddy.com.' See Paragraph 4.8 of WIPO Jurisprudential Overview 3.0 (Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name.)
As such, as the Panel agrees with Complainant’s claim, the Panel holds that Respondent fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the <betsugarhouse.com> domain name in bad faith to disrupt Complainant’s business by diverting Internet sports betting traffic away from Complainant’s sports betting website. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv), even where a respondent does not use the resolving webpage associated with the domain name. See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).); see also Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Complainant does not provide any evidence to substantiate this assertion. As mentioned above, the Panel has made a visit to the disputed domain name in order to obtain more information about the respondent or its use of the domain name and has found that the disputed domain name remains inactive. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Respondent registered the disputed domain name just three weeks before the United States Supreme Court issued its ruling in a case that legalized sports betting. Murphy v. NCAA, 138 S.Ct. 1461 (2018), and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <betsugarhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 27, 2018
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