Hard Rock Cafe International (USA), Inc. v. Josef Kurlinkus
Claim Number: FA2206002002568
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines, Virginia, USA. Respondent is Josef Kurlinkus (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hardrockrockford.com>, registered with NameCheap, Inc..
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.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2022; the Forum received payment on June 29, 2022.
On June 30, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <hardrockrockford.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2022 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@hardrockrockford.com. Also on July 5, 2022, 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 July 29, 2022.
On August 4, 2022, Complainant’s Additional Submission was received and determined to be complete.
On August 3, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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 is a corporation with headquarters in Florida, USA, engaged in the business of leisure and entertainment for more than the last four decades, using its primary trademark “HARD ROCK” which also includes the distinctive part of its company name. Furthermore, since the beginning of its umbrella of activities, Complainant has been registering and using worldwide, a series of trademarks and domain names, under its primary trademark “HARD ROCK” thus creating a family of “HARD ROCK” trademarks with added generic terms such as “Café”, “Restaurant”, “Hotel”, “Casino”, etc. Complainant further contends that Respondent registered and has been using the domain name under review without authorization or license from Complainant and without prior legitimate rights, thus creating confusion to the public, and acting in bad faith.
B. Respondent
Respondent denies the element of confusing similarity between the domain name under review and Complainant’s prior registered and unregistered rights, by asserting, inter alia, that the use Respondent purports to make of the domain name under review as a website for weather forecast, is non-commercial and in any case does not coincide with the activities of Complainant. Furthermore, Respondent asserts that it has legitimate interest to the domain name under review which derive from the fact that Respondent is a resident of Rockford and registered the domain name under review prior to the launch of a local business venture by Complainant with which Respondent has no involvement. In addition, Respondent denies the element of bad faith due to the purpose of use of the domain name under review which relates to weather forecast and due to Respondent’s own interpretation of the Rules of the Uniform Domain Name Dispute Resolution Policy.
C. Additional Submissions
The Panel takes note of Complainant’s Additional Submissions of August 4, 2022.
Complainant’s primary trademark “HARD ROCK” is protected by a series of registered trademarks worldwide, owned or licensed by Complainant. The trademark “HARD ROCK’ s clearly established as a famous trademark of Complainant, due to the extent, geographical scope, and duration of use and promotion of the “HARD ROCK” trademark on a global scale under the auspices of Complainant which also has been using, throughout this time, the identical term “HARD ROCK” as the distinctive part of its company name. Therefore, the recognizability and association of the name “HARD ROCK” with Complainant is clear and undeniable. A famous trademark enjoys a scope of protection over and beyond its actual protected classes of goods or services, referring to a range of products or activities in practiced, as the risk of confusion and passing off in such cases is heightened.
The dominant and distinctive part of the domain name under review is “HARD ROCK” which creates a clear connotation of association with the Complainant’s company name and primary trademark, notwithstanding the actual contents of the website it leads to, which in any case may alter at any time.
The addition of other terms on the domain name under review does not suffice to adequately differentiate the overall impression it creates of a direct association to Complainant especially since in the particular case, the added term is the geographical location “ROCKFORD” where the Complainant already operates a business venture, thus adding to the confusion that may be created. Moreover, the website content it might lead to may be altered at any time and has no bearing, per se, on the issue at hand, as the trademark “HARD ROCK” is famous.
Respondent has offered no evidence of any relevant legitimate rights registered or used by them prior to the registration of the domain name under review and in particular its dominant and distinctive part “HARD ROCK”. The fact that Respondent claims to be a resident of Rockford is not sufficient, as it only relates to the second half of the domain name under review “ROCKFORD” and has no bearing to its distinctive part “HARD ROCK”.
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.
The domain name under review comprises of the name “HARD ROCK” as its dominant and distinctive part which is identical to the prior registered and unregistered legitimate rights of Complainant on the name “HARD ROCK” and the addition of a geographical location “ROCKFORD” does not suffice to adequately differentiate or distinguish it from the rights of Complainant as it is a generic, commonly used term referring to a geographical location, in which Complainant has business activities, thus enhancing the element of confusion. In light of the above, the Panel finds that the domain name under review is confusingly similar to prior legitimate rights of Complainant and Policy Paragraph 4(a)(i) is satisfied.
Complainant has made a prima facie case that Respondent lacks rights or legitimate interests on the domain name under review. Therefore, the onus of proof thereafter shifted to Respondent to show evidence of rights or legitimate interests on the domain name under review. Respondent has offered no evidence of rights or legitimate interests prior to the registration of the domain name under review, and in particular its dominant and distinctive part “HARD ROCK”. The fact that Respondent claims to be a resident of ROCKFORD does not suffice to establish prior legitimate rights or interests on the domain name under review. In light of the above, the Panel finds that Respondent has no rights or legitimate interests that may serve to sufficiently explain the legitimacy of the registration of the domain name under review by Respondent, therefore Policy Paragraph 4(a)(ii) is satisfied.
Respondent who never denied knowledge of Complainant and its prior relevant legitimate rights on the name “HARD ROCK” had opted to register and use the domain name under review and, due to the fame and notoriety of its dominant and distinctive part “HARD ROCK” clearly leads the Panel to conclude that Respondent knew or should have known of Complainant and its relevant rights and the risk of confusion that may ensue from such registration and use notwithstanding website content as bad faith may exist even in domain name parking instances. In light of the above the Panel finds that registration and use of the domain name under review was in bad faith by Respondent and Policy Paragraph 4(a)(iii) is 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 <hardrockrockford.com> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa Panelist
Dated: August 17, 2022
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