Tohono O'Odham
Gaming Authority v. Ruby Kasper Zink
Claim Number: FA0106000097755
PARTIES
Complainant is Tohono O'Odham Gaming Authority, Tucson, AZ, USA (“Complainant”) represented by Daniel J. Quigley, of Quigley & Whitehill, P.L.C. Respondent is Ruby Kasper Zink, Tucson, AZ, USA (“Respondent").
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <desertdiamondcasino.com>, <desertdiamond.com>, <desert-diamond-casino.com>, <desertdiamond-casino.com>, <desert-diamondcasino.com>, and <desert-diamond.com> registered with Network Solutions, Inc.
PANEL
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 Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 28, 2001; the Forum received a hard copy of the Complaint on June 29, 2001.
On July 2, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <desertdiamondcasino.com>, <desertdiamond.com>, <desert-diamond-casino.com>, <desertdiamond-casino.com>, <desert-diamondcasino.com>, and <desert-diamond.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 July 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 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 postmaster@desertdiamondcasino.com, postmaster@desertdiamond.com, postmaster@desert-diamond-casino.com, postmaster@desertdiamond-casino.com, postmaster@desert-diamondcasino.com, and postmaster@desert-diamond.com 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 July 26, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications record, 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant asserts that:
· The disputed domain names are either identical to or confusingly similar to a mark in which Complainant has rights.
· Respondent has no rights or legitimate interests in the disputed domain names.
· Respondent registered and is using the disputed domain names in bad faith.
B. Respondent did not file a response in this proceeding.
The following
facts are established in the record:
1. Complainant operates a casino and restaurant in Tucson, Arizona.
2. Complainant uses the DESERT DIAMOND CASINO mark in connection with its casino and restaurant operations.
3. Complainant has used its DESERT DIAMOND CASINO mark since October 1993.
4. Complainant has spent in excess of twenty million dollars promoting its mark throughout Southern Arizona and the United States.
5. On March 15, 2001, Complainant obtained federal registration of its DESERT DIAMOND CASINO service mark with the United States Patent and Trademark Office.
6. Respondent registered the disputed domain names in 1999 as follows:
·
On May 18, 1999, Respondent registered <desertdiamondcasino.com>, <desertdiamond.com>, and <desert-diamondcasino.com>.
·
On May 19, 1999, Respondent registered <desertdiamond-casino.com> and <desert-diamond.com>.
·
On August 28, 1999, Respondent registered the sixth
disputed domain name, <desert-diamond-casino.com>.
7.
On August 21, 1999, Complainant sent Respondent an inquiry
letter regarding two of the above disputed domain names.
8.
Respondent's reply, on August 30, 1999, included an invitation
for Complainant to make a high offer to purchase the disputed domain names.
9. Respondent is not using and has not developed any of the disputed domain names.
10. Respondent's address is located ten miles from Complainant's operation.
DISCUSSION
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 the 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 the 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.
Complainant used the mark DESERT DIAMOND CASINO for some seven years prior to registering the mark with federal authorities. The submitted materials indicate that Respondent registered these disputed domain names prior to Complainant's federal registration of its DESERT DIAMOND CASINO mark. Complainant’s use of its mark in commerce and the public’s awareness of Complainant’s use of its mark are factors that give rise to common law rights in a mark. Long before Respondent registered the domain names at issue, Complainant used the mark and established common law rights in the DESERT DIAMOND CASINO mark. Extensive and continuous use of a mark will be protected. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).
Four of the
disputed domain names contain in their entirety Complainant’s DESERT DIAMOND
CASINO mark and add hyphens between certain words. The addition of the hyphen
does not affect similarity. The <desertdiamondcasino.com>, <desert-diamond-casino.com>,
<desertdiamond-casino.com>, and <desert-diamondcasino.com>
domain names are identical to Complainant’s mark. It is well settled that the
addition of a hyphen between words is irrelevant to a claim that a disputed
domain name is identical to another's mark.
See, e.g., Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark").
In addition, two of the domain names, <desert-diamond.com> and <desertdiamond.com> are confusingly similar to Complainant's service mark in that they both incorporate the dominant features of Complainant's DESERT DIAMOND CASINO mark. The deletion of the generic component of Complainant's mark does not defeat the claim of confusing similarity. See WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s WEST JET AIR CENTER mark); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s WELLNESS INTERNATIONAL NETWORK mark).
Therefore, the Panel finds that Complainant has met its burden under Policy ¶ 4(a)(i) for all six disputed domain names to show that they are identical to or confusingly similar to a mark in which Complainant has rights.
Complainant has established in this proceeding that it has common law rights and that it has legal rights under registration laws to the mark contained in its entirety in the domain names registered by Respondent. The record permits the strong inference that Respondent has no such rights to or legitimate interests in the marks contained within the disputed domain names. Respondent has failed to refute Complainant’s assertion to that effect. In addition, a presumption exists that a Respondent has no rights or legitimate interests with respect to a disputed domain name when that Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Furthermore, the record permits the conclusion that Respondent is not and has never been commonly known as DESSERT DIAMOND CASINO and Respondent is not using any of the disputed domain names in a bona fide, noncommercial and fair manner. There is ample authority for the proposition that passive holding of domain names that infringe on another party's mark can be evidence that a party has no legitimate interests in or rights to a mark under Policy ¶ 4(a)(ii). E.g. Bloomberg L.P. v. Sandhu, FA 96261 (Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).
Accordingly, the Panel finds that Complainant satisfied the element required in Policy ¶ 4(a)(ii) of showing that Complainant has rights to and interests in the mark contained within the domain names registered by Respondent and that Respondent has no such rights to or interests in the mark.
Registration and Use in Bad Faith
Complainant asserts, and Respondent failed to refute, that Respondent registered the domain names primarily for the purpose of selling the domain names to Complainant for valuable consideration in excess of Respondent's documented out-of-pocket expenses. Two of the disputed domain names were registered after Respondent received Complainant's inquiry letter but prior to Respondent's reply to the letter. Such circumstances constitute bad faith pursuant to Policy ¶ 4(b)(i). E.g., Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see e.g., Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the Respondent made no use of the domain names except to offer them to sale to the Complainant).
Moreover, the fact that Respondent is located in close proximity to Complainant's operations, that Complainant has extensively promoted its DESERT DIAMOND CASINO mark and that Respondent registered multiple domain names that infringe on Complainant's mark, all permit a strong inference that Respondent knew of Complainant's mark when she registered the disputed domain names. Additionally, there is a strong inference that Respondent registered the domain names to prevent Complainant from reflecting its mark in a corresponding domain name. Such conduct also constitutes evidence of bad faith under Policy ¶ 4(b)(ii) provided a respondent has engaged in a pattern of similar conduct. Registering multiple domain names that infringe on another party's mark is evidence of a pattern of such conduct. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miguel Miyar Jr., FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Finally, as noted above, Respondent is not using any of the disputed domain names except to offer them for sale to Complainant. Just as passive holding of infringing domain names can be evidence of no rights or legitimate interests, passive holding also constitutes some evidence of bad faith under Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name "winegallo.com").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied; Respondent registered and used the domain names in issue in bad faith.
DECISION
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted. Accordingly, it is Ordered that the <desertdiamondcasino.com>, <desertdiamond.com>, <desert-diamond-casino.com>, <desertdiamond-casino.com>, <desert-diamondcasino.com>, and <desert-diamond.com> domain names be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 6, 2001.
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