Hard Rock Cafe International (
Claim Number: FA1002001310224
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P.
Jay Hines of Cantor Colburn LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hardrocklivehollywood.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 25, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.
On March 3, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <hardrocklivehollywood.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2010, 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@hardrocklivehollywood.com. Also on March 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. The domain name that Respondent registered, <hardrocklivehollywood.com>, is confusingly similar to Complainant’s HARD ROCK LIVE mark.
2. Respondent has no rights to or legitimate interests in the <hardrocklivehollywood.com> domain name.
3. Respondent registered and used the <hardrocklivehollywood.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Café International, Inc., is an internationally known provider of music-related restaurants, hotels, casinos, and music events. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its HARD ROCK LIVE mark (e.g., Reg. No. 2,363,818 issued on July 4, 2000).
Respondent registered the <hardrocklivehollywood.com> domain name March 31, 2008. Respondent’s disputed domain name resolves to a website that displays third-party links to websites in the travel and hotel business in competition with Complainant as well as businesses unrelated to Complainant, and uses Complainant’s marks and known venues as headings for those links.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 submits numerous trademark registrations for its
HARD ROCK LIVE mark with the USPTO (e.g.,
Reg. No. 2,363,818 issued on July 4, 2000).
Complainant also notes many other trademark registrations for variations
of its “Hard Rock” marks. The Panel
finds that Complainant, through proof of its trademark registrations with the
USPTO, established rights in its HARD ROCK LIVE mark under Policy ¶ 4(a)(i). See Morgan
Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005)
(finding from a preponderance of the evidence that the complainant had
registered its mark with national trademark authorities, the Panel determined
that “such registrations present a prima
facie case of Complainant’s rights in the mark for purposes of Policy ¶
4(a)(i).”); see also
Complainant contends that the
<hardrocklivehollywood.com> domain name is not only
confusingly similar to its HARD ROCK LIVE mark, but also Complainant’s existing
domain names that contain variations of its marks. Complainant first notes that the disputed
domain name merely adds the geographic term “
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant makes allegations that Respondent has no rights to or legitimate interests in the <hardrocklivehollywood.com> domain name. Complainant must make a prima facie case to support its allegations. Once Complainant makes a prima facie case, the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests in the <hardrocklivehollywood.com> domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
The Panel finds no evidence in the record from Respondent or otherwise that suggests that Respondent has rights and legitimate interests in the disputed domain name. To reach that result the Panel evaluated Complainant’s claims and addressed the evidence submitted in accordance with Policy ¶ 4(c). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Complainant asserted that Respondent is using the <hardrocklivehollywood.com> domain name to collect click-through fees from the third-party businesses advertised on its website that resolves from the disputed domain name. Further, Respondent is using the notoriety of Complainant’s marks to divert Internet users to its website, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Lastly, Complainant claimed that it never granted Respondent permission to use its mark and that Respondent is not an affiliate of Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name to divert Internet users to its website, where it presumably collects click-through fees for the third-party links displayed on its website, is not a use in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The WHOIS information for the <hardrocklivehollywood.com> domain name does not indicate, and Respondent offered no evidence showing, that Respondent is commonly known by the disputed domain name. Further, Complainant maintains that it has never granted Respondent permission to use its marks and that Respondent has never been an affiliate or authorized seller of Complainant’s products and services.
The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent registered and used the disputed domain name in bad faith. Complainant submits that Respondent’s confusingly similar domain name creates consumer confusion as to the sponsorship and affiliation with the website. Complainant maintains that Internet users seeking Complainant’s products that are diverted to Respondent’s website that offers competing hotel and travel booking services are confused as to whether or not Complainant sponsors Respondent’s website and also that this results in a disruption of Complainant’s business. The Panel finds that Respondent’s exploitative use of the confusing similarity between its domain name and Complainant’s mark to divert business from Complainant, supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further contends that Respondent’s use of the
disputed domain name to attract Internet users to its website, where it
presumably collects click-through fees for the third-party links it displays, constitutes
additional evidence of bad faith registration and use. The Panel finds that Respondent is operating
a directory website under a confusingly similar domain name that contains
third-party links to competitors of Complainant as well as unrelated websites
for Respondent’s own monetary benefit commercially from click-through fees associate with those links. This
supports findings of bad faith registration and use under Policy ¶ 4(b)(iv)
The Panel finds that Respondent registered and used the disputed domain name in bad faith and that Complainant satisfied the elements of ICANN 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 <hardrocklivehollywood.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 14, 2010
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