Fiesta Palms, LLC; Maloof Music and Entertainment; Phil Maloof, Gavin Maloof, George Maloof, and Joe Maloof v. Mindscape Entertainment and Todd Lipnick
Claim Number: FA0511000592407
Complainants are Fiesta Palms, LLC; Maloof Music and Entertainment; Phil Maloof, Gavin Maloof, George Maloof, and Joe Maloof (collectively, “Complainant”), represented by Scott M. Hervey, of Weintraub Genshlea Chediak Law Corporation, 400 Capitol Mall, 11th Floor, Sacramento, CA, 95814. Respondent is Mindscape Entertainment and Todd Lipnick (“Respondent”), 1501 N. State St., Chicago, IL 60610.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <maloofmusic.com>, registered with DomainDiscover.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 7, 2005.
On November 14, 2005, DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <maloofmusic.com> domain name is registered with DomainDiscover and that Respondent is the current registrant of the name. DomainDiscover has verified that Respondent is bound by the DomainDiscover 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 November 16, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 2005 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@maloofmusic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <maloofmusic.com> domain name is confusingly similar to Complainant’s MALOOF mark.
2. Respondent does not have any rights or legitimate interests in the <maloofmusic.com> domain name.
3. Respondent registered and used the <maloofmusic.com> domain name in bad faith.
B. Respondent failed to submit a conforming Response in this proceeding.
Complainant, Maloof Music and
Entertainment, was formed in September
2003 as a joint venture between certain members of the Maloof family and the
record label, Interscope. The Maloof
family has gained fame as a result of its association with the world-renowned
Palms Casino and Resort Hotel in Las Vegas (the “Palms”). The Palms, owned and operated by Fiesta
Palms, LLC, opened on November 15, 2001, after its principals, the Maloof
family, invested $265 million in the project.
Since its first day of operation, the Palms has gained a worldwide
reputation as a hip and fashionable casino and resort hotel, attracting
celebrities, sport stars and the “in crowd” from all around the world. On average, approximately 125,000 guests
visit the Palms each week.
The Palms and its owners, the Maloof family, have been profiled in Forbes, The Sacramento Bee, Bloomberg, The Los Angeles Times, The Las Vegas Review Journal, Canadian Business, and Cigar Aficionado, just to name a few. Contributing equally to the Maloof’s fame is their ownership of the NBA franchise team, the Sacramento Kings.
Announcements of the
Maloof’s foray into the entertainment and music industry were reported in
numerous news publications in early 2003.
As discussed in a Hollywood Reporter article, the business
strategy underlying the launch of the Maloof’s label involves leveraging their
existing entertainment properties (the Kings, the Palms, and the Maloof’s TV
and motion picture production company) for cross promotion, marketing and
distribution.
The Maloof name is
widely associated in the field of entertainment. Aside from their well known ownership of the Sacramento Kings,
the Maloofs have interests in variety of television and motion picture properties. The Maloof brothers and the Palms have
appeared or have been mentioned in the following television shows: NBC’s Las
Vegas, ABC’s Jimmy Kimmel Live,
Bravo’s Emmy nominated Project
Greenlight and Celebrity Poker
Showdown, E!’s Party @ the Palms and Real World: True Hollywood Story, MTV’s Real World Las Vegas, and HDNet’s Palms Girl Search. In addition, the Maloof’s motion picture production company,
Maloof Motion Pictures, and George, Joe, Phil and Gavin Maloof were executive
producers of the 2005 motion picture Feast.
In addition to the common law rights in the MALOOF mark, Complainant has also registered a number of trademarks with the United States Patent and Trademark Office that incorporate the “Maloof” name. Those marks are PALMS A MALOOF CASINO RESORT (Reg. Nos. 2,646,679; 2,742,897; 2,772,084; 2,742,908; 2,795,274; 2,729,772 and 2,678,712), registered on November 5, 2005, July 29, 2003, October 7, 2003, July, 29 2003, December 16, 2003, June 24, 2003, January 21, 2003, respectively.
Respondent, Mindscape Entertainment, registered the <maloofmusic.com> domain name on April 20, 2003 at the behest of Complainant. At the time, Respondent was an employee of Complainant’s business. Subsequent communication with Respondent has not resulted in the transfer of the domain name registration.
The <maloofmusic.com> domain name refers to Complainant’s official website at <palms.com>.
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 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.”).
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 has submitted abundant evidence to demonstrate
that it has common law rights in its MALOOF mark, including evidence of
investment capital, media coverage, and television appearances. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum
May 9, 2000) (finding, while the complainant had registered the BIBBERO
SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because
it had developed brand name recognition with the word “bibbero”); Fishtech, Inc. v. Rossiter, FA 92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law
rights in the mark FISHTECH that it has used since 1982).
The Panel finds that Respondent’s <maloofmusic.com>
domain name is confusingly similar to Complainant’s MALOOF mark because the
only difference is the addition of the word “music,” which does not
significantly distinguish the domain name from the mark. See Novell, Inc. v. Taeho Kim, FA
167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com>
domain name confusingly similar to the NOVELL mark despite the addition of the
descriptive term “solutions” because even though “the word ‘solutions’ is
descriptive when used for software, Respondent has used this word paired with
Complainant's trademark NOVELL”); Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates
the VIAGRA mark in its entirety, and deviates only by the addition of the word
“bomb,” the domain name is rendered confusingly similar to the complainant’s
mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent registered the disputed domain name when it was
Complainant’s employee, and at Complainant’s behest. The Panel finds that Respondent does not have rights or
legitimate interests in a domain name registered in its scope of employment and
at its employer’s behest. See Vinidex Pty Ltd. v. Auinger, AF-0402
(eResolution Oct. 18, 2000) (finding that the respondent lacked rights and
legitimate interests in the domain name because it did not resolve to a
developed website and the respondent, a former employee of the complainant, had
constructive knowledge of the complainant’s rights in the mark); Nasaco Elecs. Pte Ltd. v. A&O Computer
AG, D2000-0374 (WIPO July 14, 2000) (finding that the respondent has no
rights or legitimate interests in the domain name where the respondent’s former
employee registered the domain name and transferred it to the respondent, who
has since made no use of the domain name).
Additionally, there is nothing in the record, including the
WHOIS registration information, which demonstrates that Respondent is commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent registered the disputed domain name when it was
Complainant’s employee. The Panel finds
that Respondent was aware of Complainant’s rights in the MALOOF mark, and its
subsequent registration of the <maloofmusic.com> domain name in
its own name exhibits bad faith registration and use. See Arab Bank for
Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding
bad faith registration and use where the respondent was formerly employed by
the complainant, was fully aware of the name of her employer, and made no use
of the infringing domain name); 163972 Canada, Inc. v. Ursino, AF-0211
(e-Resolution July 3, 2000) (finding that because the respondent was hired by
the complainant to help design and register the complainant’s websites, the
respondent had intimate knowledge of the complainant’s business and use of its
TEENFLO mark. Therefore, the respondent’s registration of the
<teenflo.com> domain name was in bad faith).
The Panel finds that Complainant has established 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 <maloofmusic.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: December 27, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum