Gold Dust West Casino, Inc. v. Michael Barnett
Claim Number: FA1102001374240
Complainant is Gold Dust West Casino, Inc. (“Complainant”), represented by Brad H. Hamilton of Jones & Keller, PC, Colorado, USA. Respondent is Michael Barnett (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <golddustwest.org>, registered with Tucows Inc.
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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2011; the National Arbitration Forum received payment on February 22, 2011.
On February 25, 2011, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <golddustwest.org> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 February 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2011 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@golddustwest.org. Also on February 28, 2011, 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.
A timely Response was received and determined to be complete on March 9, 2011.
On March 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the wholly owned subsidiary of Jacobs Entertainment, Inc. It owns three Gold Dust West casinos in Nevada, located in Reno, Carson City and Elko. Complainant has been continuously operating the Gold Dust West Casinos for 33 years. It has substantial common law rights in the marks GOLD DUST, GOLD DUST WEST and GOLD DUST WEST CASINO.
Complainant is the holder of the registered trade names in the state of Nevada:
GOLD DUST CASINO Reg. No. TN00320792
GOLD DUST WEST CASINO Reg. No. TN00320793
GOLD DUST WEST Reg. No. TN00320794
The trade names are registered for gaming and lodging.
Moreover, Complainant is the holder of trademark No. E02489420007-1, GOLD DUST WEST, registered in the state of Nevada. The trademark is registered for gaming; casinos; hotel; motel and food and beverage services.
The disputed domain name is confusingly similar to Complainant’s common law trademarks and is substantively identical Complainant’s registered trademark GOLD DUST WEST.
Respondent has no rights or legitimate interests in the domain name as it has no license or other authorization to use Complainant’s trademarks. Complainant is not familiar with and has no known business relationship with Respondent. Respondent operates auction stores on Auctiva.com and eBay and possibly does work for the “Desert Home Realty Team”. Respondent has no similar trademark registration with the United States Patent and Trademark Office or with the Nevada Secretary of State, has no acquired rights in or is commonly know by the disputed domain name
The various websites which have been linked to the domain name resolved to pages of defamatory character. Accordingly Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of Complainant, through intentionally attempting to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship and affiliation of Respondent’s website and by providing content solely designed to tarnish Complainant’s trademarks.
The disputed domain name has been registered and is used in bad faith. The original page copied exactly the look, feel and trade dress of Complainant’s homepage. Respondent has inter alia used Complainant’s “flying star” design mark which is a common law trademark of Complainant. Complainant’s registered trademark YOUR HOUSE FULL OF FRIENDS had also been copied into the website of the Respondent, only altered to say ”Your House Full of Shit”. Furthermore, Respondent is a resident in Reno where Complainant’s Gold Dust West Casino – Reno is located. Finally, Respondent has twice offered to sell the disputed domain name to Complainant.
B. Respondent
Respondent conducted a trademark search with the USPTO before registering the domain name. The disputed domain name and the website were originally designed to be a humorous and satirical social commentary on a casino going by the name of Gold Dust West located in Reno. No attempt has been made to confuse visitors into believing that the satirical website was affiliated with the Gold Dust West casino. There has been no intent to do harm to Complainant’s mark and upon receiving a letter from Complainant, the website was removed. It was only used again when the Respondent did not hear any further of Complainant of the business proposition.
The disputed domain name was not registered in bad faith since the website had already been removed when the subject of a possible sale was initiated. It was the Complainant that inquired of the price.
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.
Complainant asserts rights in inter alia the GOLD DUST WEST mark through its trademark registration with the state of Nevada (Reg. No. E02489420007-1, issued April 9, 2007) and its trade name registration (Reg. No. TN00320794, issued April 11, 2007). Both registrations list first use on January 1, 1977. The Panel finds that Complainant’s timely registration with the state of Nevada and subsequent use of the GOLD DUST WEST mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See e.g. A Touch of Class Transportation Inc. d/b/a Touch of Class Limousine Service v. Doug Griffith, FA 1008199 (Nat. Arb. Forum Aug. 14, 2007) (finding that Complainant’s timely registration with the state of California and subsequent use of the TOUCH OF CLASS LIMOUSINE SERVICE mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i), see also Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP).
The removal of spaces and the addition of a gTLD is according to well established panel view not sufficient to differentiate the disputed domain name from Complainant’s mark, see e.g. Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). Thus, the Panel finds that Respondent’s <golddustwest.org> domain name is identical to Complainant’s GOLD DUST WEST mark under Policy ¶ 4(a)(i). In view of this finding it is unnecessary to establish confusing similarity with Complainant’s other trade name registrations. The first element of the Policy has been proven by Complainant.
Along with the majority of Panel decisions, this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain names at issue. See Document Technologies, Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
Complainant has asserted that Respondent is not commonly known by the <golddustwest.org> domain name. Complainant asserts that it has not authorized or licensed Respondent to use Complainant’s mark and that Respondent does not own any trademarks relating to the disputed domain name.
Complainant further asserts that the content found on the website resolving from the <golddustwest.org> domain name contains untrue and derogatory statements about Complainant and Complainant’s business.
Respondent has not contradicted these assertions. Instead, Respondent has asserted that the disputed domain name and the website originally was designed to be a humorous and satirical social commentary on a casino named Gold Dust West located in Reno.
The Panel concludes based on Complainant’s assertions which have not been rebutted by Respondent, that Respondent neither has any authorization to use Complainant’s mark, nor is commonly known by the disputed domain name,
see Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Moreover, the Panel finds that Respondent’s use of the identical domain name to feature content which can only be interpreted as negative towards Complainant, does not create rights and legitimate interests under Policy ¶ 4(a)(ii). The legitimate interest arising from the fundamental right of free speech does not include the right to register and use a domain name identical to that of Complainant, see Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”). In conclusion, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain name.
Complainant has provided evidence of the content of the website at different times. As already stated above, the content of the website resolving from the disputed domain name contains statements about Complainant and Complainant’s business that can only be interpreted as meant to tarnish the trademark and business of Complainant. It is further obvious that Respondent was aware of Complainant’s name and business when registering and using the disputed domain name. Both parties are based in Reno and the content of the websites linked to the disputed domain name were using several features used on Complainant’s own website and in its business. The Panel finds that these circumstances are clear evidence of bad faith under the Policy ¶ 4(a)(ii). See e.g. Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).
Moreover, Complainant has provided evidence that Respondent offered to sell the disputed domain name to Complainant for $2,500. In the view of this Panel, that amount exceeds the out-of-pocket costs that would be legitimate to request. Although this offer was prompted by the Complainant, it is obvious that the Respondent was aware of the damaging character of the content of the website linked to the disputed domain name (at least after the receipt of the cease and desist letter) and used the content as leverage to obtain price for the disputed domain name which exceeded the out-of-pocket costs which Respondent may have had. The Panel therefore finds Respondent’s use of the disputed domain name to constitute bad faith pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Consequently, the Panel finds that Complainant has proven the final element of the Policy as well.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <golddustwest.org> domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: March 30, 2011
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