FP Holdings, L.P. v. john reyes / Las Vegas
Claim Number: FA1909001862896
Complainant is FP Holdings, L.P. (“Complainant”), represented by Lindsey A. Williams of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is john reyes / Las Vegas (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lasvegaskaos.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, QC, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2019; the Forum received payment on September 18, 2019.
On September 19, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lasvegaskaos.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 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2019 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@lasvegaskaos.com. Also on September 24, 2019, 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.
A timely Response was received and determined to be complete on October 15, 2019.
On October 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends:
1. Complainant is a Nevada domestic limited partnership that is a leading provider of hospitality and gaming services in the Las Vegas metropolitan area. Complainant has rights in the KAOS mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,795,441, registered Jul. 2, 2019; filed Mar. 20, 2018). Respondent’s <lasvegaskaos.com> domain name is confusingly similar to Complainant’s KAOS mark as it incorporates the mark in its entirety, merely adding the geographic indicator “las vegas” and a “.com” generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <lasvegaskaos.com> domain name. Respondent is not licensed or authorized to use Complainant’s KAOS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to advertise “VIP” reservation and booking services for Complainant’s venue in an attempt to trade off on the goodwill of the KAOS mark.
3. Respondent registered and uses the <lasvegaskaos.com> domain name in bad faith. Respondent attempts to commercially benefit from the disputed domain name by offering reservation and book services for Complainant’s venue. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the KOAS mark prior to registering the disputed domain name.
B. Respondent
Respondent contends:
1. Its <lasvegaskaos.com> domain name is not identical or confusingly similar. Respondent’s domain name is clearly different from Complainant’s website, <kaos.palms.com>. There are millions of websites that include the term “Las Vegas” and there are two other examples that include the term “KAOS” in them: <kaossolutionstruckrepair.com> and <controlled-kaos.com>. Respondent purchased the domain name fairly, does not use Complainant’s pictures, nor interfere in its business.
2. Respondent has rights and legitimate interests in the <lasvegaskaos.com> domain name. Respondent purchased the disputed domain name through the registrar, GoDaddy.com, LLC. Respondent has owned the disputed domain name for eight (8) months. Complainant has not made any attempts to resolve this matter prior to beginning these proceedings. Furthermore, Complainant did not open its club until April 4, 2019 and linked the website to the hotel website at <kaos.palms.com>, months after Respondent registered the disputed domain name.
3. Respondent did not register or use the <lasvegaskaos.com> domain name in bad faith. Respondent registered the disputed domain name to help people make inquiries for any Las Vegas nightclub and day clubs. Respondent has not attempted to create confusion or mislead anyone. Respondent uses its own logo and verbiage at the website in order to gain business, not in bad faith.
The Panel finds:
1. By virtue of its trademark rights and its use of the KOAS mark, Complainant has rights in the KAOS mark.
2. Respondent’s <lasvegaskaos.com> domain name is confusingly similar to the KOAS mark because Respondent has merely added the geographic place name lasvegas and the generic top-level .com domain to Complainant’s mark.
3. Respondent does not have any rights or legitimate interests in the disputed domain name.
4. Respondent has registered and is using the disputed domain name 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 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 claims rights in the KAOS mark based upon registration of the mark with the USPTO (e.g., Reg. No. 5,795,441, registered Jul. 2, 2019; filed Mar. 20, 2018). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The relevant date of rights may extend back to the date of filing. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”).
In this case, Complainant filed the trademark application on March 20, 2018, not March 20, 2019 as Respondent contends. This was long before Respondent registered the disputed domain name. The Panel therefore holds that Complainant’s registration of the KAOS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <lasvegaskaos.com> domain name is confusingly similar to the KAOS mark, as the name incorporates the mark in its entirety, along with the geographic term “las vegas” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The <lasvegaskaos.com> domain name is therefore confusingly similar to the KAOS mark per 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). The burden then 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 argues that Respondent has no rights or legitimate interests in the <lasvegaskaos.com> domain name, because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the KAOS mark in any way. Even where a response is present, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “john reyes / Las Vegas,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. On this basis, prima facie, Complainant has established, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <lasvegaskaos.com> domain name. Respondent has brought no information to establish otherwise.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <lasvegaskaos.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses the disputed domain name to advertise “VIP” reservations and bookings for Complainant’s venue. Use of a disputed domain name to divert users for commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant provides screenshots of the disputed domain name’s resolving website which purports to offer information regarding Complainant’s KAOS nightclub and booking services. On this basis, Complainant establishes prima facie that Respondent is not using the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). Respondent suggests that it uses the resolving website to offer booking services to many Las Vegas night clubs and day clubs, but on any objective view of the resolving web site, any reasonable customer would conclude the web site is for booking at Complainant’s venue. Respondent has not met the onus to show a bona fide offering of goods or services.
Complainant also contends Respondent’s intentional use of the <lasvegaskaos.com> domain name to create a likelihood of confusion with Complainant’s mark in order to attract Internet users for commercial gain is evidence of Respondent’s bad faith. Use of a confusingly similar domain name for commercial purposes can indicate bad faith registration and use per Policy ¶¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The <lasvegaskaos.com> domain name resolves to a website which purports to offer information regarding Complainant’s KAOS nightclub and booking services. As already noted, on any objective view of the resolving web site, a customer would conclude the web site is for booking at Complainant’s venue. On an objective basis, the resolving website is clearly designed to create confusion with Complainant’s mark in an attempt to attract for customers commercial gain. This is bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's KAOS mark, it is inconceivable that Respondent could have registered the <lasvegaskaos.com> domain name without actual or constructive knowledge of Complainant's rights in the mark. UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds Respondent had actual knowledge of Complainant’s rights in the mark on the basis of the inference that can be drawn from the evidence in this case. Respondent registered the disputed domain name within days of Complainant’s announcement of its facility and then created a website that to trade on confusion with Complainant’s mark shortly thereafter. The Panel finds this to be actual knowledge and finds that these circumstances also amount to bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lasvegaskaos.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, QC, Panelist
Dated: October 30, 2019
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