DECISION

 

NP Opco LLC v. Super Privacy Service LTD c/o Dynadot

Claim Number: FA2004001890769

 

PARTIES

Complainant is NP Opco LLC (“Complainant”), represented by Erin Lewis of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fiestarancho.com>, registered with Dynadot, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 2, 2020; the Forum received payment on April 2, 2020.

 

On April 8, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <fiestarancho.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2020 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@fiestarancho.com.  Also on April 8, 2020, 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 May 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, NP Opco LLC, is in the business of providing hospitality and gaming services in the Las Vegas metropolitan area. Complainant has rights in the FIESTA mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,234,239, registered Mar. 23, 1999). See Compl. Ex. 2. Respondent’s <fiestarancho.com> domain name is confusingly similar to Complainant’s FIESTA mark because it simply combines the mark with the term “rancho,” and adds a generic top-level domain (“gTLD”).

 

2.    Respondent does not have rights or legitimate interests in the <fiestarancho.com> domain name. Respondent is not licensed or authorized to use Complainant’s FIESTA mark and is not commonly known by the disputed domain name. Further, Respondent offers to sell the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to display pay-per-click links to various commercial websites.

 

3.    Respondent registered and uses the <fiestarancho.com> domain name in bad faith. Respondent attempted to sell the disputed domain name in excess of out-of-pocket costs. Additionally, Respondent improperly uses the domain name by displaying pay-per-click links in bad faith.

 

B.   Respondent

1.    Respondent did not submit a response.

 

FINDINGS

1.    Respondent’s <fiestarancho.com> domain name is confusingly similar to Complainant’s FIESTA mark.

 

2.    Respondent does not have any rights or legitimate interests in the <fiestarancho.com> domain name.

 

3.    Respondent registered or used the <fiestarancho.com> domain name in bad faith.

 

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."

 

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the FIESTA mark based upon registration with the USPTO. Registration of a mark with a governmental trademark agency is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant provides evidence of registration of the FIESTA mark with the USPTO (e.g., Reg. No. 2,234,239, registered Mar. 23, 1999). See Compl. Ex. 2. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <fiestarancho.com> domain name is confusingly similar to Complainant’s FIESTA mark because it simply combines the mark with the term “rancho” and adds a gTLD. Addition of a geographic term and a gTLD is not sufficient to dispel confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). Complainant explains that the term “rancho” refers to Complainant’s property address. Thus, the Panel agrees with Complainant and find that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 claims that Respondent does not have rights or legitimate interests in the <fiestarancho.com> domain name because Respondent is not licensed or authorized to use Complainant’s FIESTA mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin  ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. 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). The WHOIS information of record notes “Super Privacy Service LTD c/o Dynadot” as the registrant and no information suggests that Complainant has authorized Respondent to use the FIESTA mark in any way. See Compl. Ex. 1. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).

 

Further, Complainant argues that Respondent does not have rights or legitimate interests in the <fiestarancho.com> domain name because Respondent offers to sell the disputed domain name. An offer to sell a disputed domain name can be evidence that a respondent lacks rights and legitimate interests per Policy ¶ 4(a)(ii). Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Complainant notes that Respondent contacted Complainant to offer the domain name for sale on the same day Respondent acquired the domain name. Complainant provides screenshots of the correspondence relating to this sale. See Compl. Ex. 5. Therefore, the Panel agrees with Complainant that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Complainant also argues that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to display pay-per-click links to various commercial websites. Use of a disputed domain name to host hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the resolving webpage and the hyperlinks present on the page. See Compl. Ex. 7. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <fiestarancho.com> domain name in bad faith because Respondent attempted to sell the disputed domain name in excess of out-of-pocket costs. Offering a domain name for sale may be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Complainant provides correspondence relating to Respondent’s offer and notes that Respondent conveyed a sales price of $10,000 almost immediately after registering the domain. See Compl. Ex. 5. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).

 

Additionally, Complainant argues that Respondent registered and uses the <fiestarancho.com> domain name in bad faith because Respondent improperly uses the domain name by displaying pay-per-click links in bad faith. Use of a disputed domain name to display hyperlinks relating to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Complainant provides screenshots of Respondent’s website and Complainant notes the similarity between the links and Complainant’s business. See Compl. Ex. 7. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <fiestarancho.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  May 13, 2020