Hard Rock Cafe International (USA), Inc. v. Alina Godera
Claim Number: FA1212001474848
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is Alina Godera (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hardrockcasinochips.com>, registered with SIBERNAME INTERNET AND SOFTWARE TECHNOLOGIES INC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2012; the National Arbitration Forum received payment on December 7, 2012.
On December 17, 2012, SIBERNAME INTERNET AND SOFTWARE TECHNOLOGIES INC. confirmed by e-mail to the National Arbitration Forum that the <hardrockcasinochips.com> domain name is registered with SIBERNAME INTERNET AND SOFTWARE TECHNOLOGIES INC. and that Respondent is the current registrant of the name. SIBERNAME INTERNET AND SOFTWARE TECHNOLOGIES INC. has verified that Respondent is bound by the SIBERNAME INTERNET AND SOFTWARE TECHNOLOGIES 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 December 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2013 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@hardrockcasinochips.com. Also on December 17, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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(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.”).
Complainant argues that it has rights in many marks devolving from its HARD ROCK mark, including the HARD ROCK CASINO mark under USPTO Reg. No. 2,789,028. The Panel finds that Complainant has supplied sufficient evidence to show that it has rights in the HARD ROCK CASINO mark through its trademark registrations of the mark with the USPTO, regardless of the location of the parties. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also alleges that it has extensive common law rights in the HARD ROCK CASINO mark and argues that it has invested heavily in the mark through publicity events and business operations. Complainant asserts it has used the mark since 1995, has invested over $169 million in the HARD ROCK CASINO and related marks, and has embodied the mark in domain names such as <hardroccasino.com> and <hardrock-casino.com>. Previous panels have held that if a complainant can illustrate a continuous and productive use of a mark, as well as the embodiment of that mark in a domain name, that mark acquires a secondary meaning and gives the complainant rights in the mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark). The Panel agrees that Complainant has established common law rights in its HARD ROCK CASINO mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <hardrockcasinochips.com> domain name is confusingly similar to the HARD ROCK CASINO mark. Complainant contends that the domain name is simply its mark combined with a generic or descriptive term. The Panel notes that the disputed domain name adds the term “chips,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that the term “chips” makes the disputed domain name confusingly similar to Complainant’s mark because chips are often a form of currency used in gambling at businesses such as those Complainant operates under its HARD ROCK CASINO mark, and the Panel further agrees that the gTLD is irrelevant. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel notes that the disputed domain name removes the spaces from between the terms of the mark, which the Panel finds is also not sufficient to render the domain name distinct from the mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <hardrockcasinochips.com> domain name is confusingly similar to Complainant’s HARD ROCK CASINO mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by the <hardrockcasinochips.com> domain name, and that this is noticeable in the WHOIS information. The WHOIS information lists “N/A / Alina Godera” as the registrant of the domain name. Previous panels have found that a respondent is not commonly known by a disputed domain name when no evidence in the record can establish a link between the respondent and the domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel agrees that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the <hardrockcasinochips.com> domain name to resolve to a website offering competing casino gaming services. Complainant asserts that this use of a disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel notes that the disputed domain name resolves to a website which purports to offer Internet users “best casino bonus offers” to several casinos. The Panel finds that Respondent is using the domain name in competition to the business Complainant runs under its HARD ROCK CASINO mark, and that such a use does not give Respondent rights and legitimate interested under either Policy ¶ 4(c)(i) or (iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent’s use of the domain name constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Respondent’s domain name resolves to a commercial website featuring links to online games that compete with Complainant’s business. Complainant contends that Respondent’s website presumably generates revenues from these listings and therefore Respondent is financially benefitting from click-through fees. Previous panels have found bad faith use and registration when the respondent employs the disputed domain name in a scheme to generate advertising revenue via hyperlinks to a complainant’s competitors. See 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). The Panel finds the same is true in this matter, and concludes that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant finally contends that Respondent knew that the mark embodied in its <hardrockcasinochips.com> domain name was owned, licensed, and used by Complainant. Complainant contends that Respondent was purposefully trading off of Complainant’s reputation. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hardrockcasinochips.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: January 16, 2013
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