Hard Rock Cafe International, (USA), Inc. v. 634825673514253498 / Santiago Romero Moreno
Claim Number: FA1301001479740
Complainant is Hard Rock Cafe International, (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is 634825673514253498 / Santiago Romero Moreno (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eurovegashardrock.com>, registered with Interdominios, 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.
Fernando Triana, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2013; the National Arbitration Forum received payment on January 10, 2013.
After numerous requests, the Registrar, Interdominios, Inc., has not confirmed to the National Arbitration that the <eurovegashardrock.com> domain name is registered with Interdominios, Inc. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute, therefore, disregarding Registrar’s non-compliance, this dispute will be resolved by the Panel.
On January 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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@eurovegashardrock.com. Also on January 30, 2013, 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.
A timely Response was received on February 11, 2013. Respondent submitted its Response in Spanish language, and because there was no affirmative response from the Registrar, the Forum presumed that the language of the Registration Agreement, and therefore the proper language of the proceedings, is English. The Response was determined to be deficient and not in compliance with ICANN Rule #5(a) by the Forum. However, the Response will be taken into account because the Panel fluently speaks, writes and reads both Spanish and English.
On February 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Hard Rock Cafe International Inc., is a Florida corporation that has been engaged in the business of leisure and entertainment using its HARD ROCK mark in the United States since at least 1978. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USTPO”) for the HARD ROCK CAFÉ (e.g., Reg. No. 1,397,180), HARD ROCK HOTEL (e.g., No. 2,029,855), and HARD ROCK (e.g., Reg. No. 2,478,328).
In relation to the confusing similarity between Complainant’s family of marks and the disputed domain name, Complainant considers that the slight difference between the <eurovegashardrock.com> domain name and Hard Rock Cafe International Inc.’s, trademarks is inconsequential, as the term “eurovegas” is a mere reference to a city in Hungary by that name where Complainant plans to open a hotel and casino.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name because the same is locked and does not lead to a home page. Therefore, Respondent’s lack of use of the disputed domain name does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
In addition, Complainant explains that, as evidenced by the WHOIS information in Complainant’s Tab 13, Respondent is not commonly known by the disputed domain name.
For Complainant, Respondent registered and maintains the disputed domain name in bad faith. As a matter of fact, Complainant assures that Respondent knew of Complainant’s rights at the time of the registration and knew of Complainant’s plans for a “Hard Rock Hotel & Casino in EuroVegas, Hungary”.
Complainant argues that Respondent’s failure to use the disputed domain name to operate a website is also evidence of bad faith.
B. Respondent
On his Response, Respondent states that he considers the expression “HARD ROCK” as a definition of a music style, like Pop, Soul or Country music. Respondent also stresses on the point that the disputed domain name <eurovegashardrock.com> is not meant to be affiliated to Complainant’s family of marks, and that the registration of the same was not directed to infringe or copy Complainant’s rights.
According to Respondent, the objective of registering the disputed domain name <eurovegashardrock.com> was to divulge information concerning musical events to be held in Eurovegas as well as tickets pricing and make such information available to the public.
Respondent clarifies that the website <eurovegashardrock.com> is under construction and that it has a deadline of 18 months to be finished. Launching of the disputed domain name would only take place when the first phase of the Eurovegas entertainment complex would be completed.
In addition to the foregoing, Respondent indicates that the disputed domain name <eurovegashardrock.com> is a part of a project of websites related to Eurovegas (restaurants, fast foods, hotels, casinos, etc.).
For Respondent, Complainant is abusing its rights and is attempting to monopolize the “HARD ROCK” musical concept.
1. Complainant is the rightful holder of a family of marks worldwide. In fact, Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its HARD ROCK mark (e.g., Reg. No. 2,478,328 issued August 14, 2001).
2. Complainant’s marks are used online in connection with cafes, hotels, casinos and concerts throughout the world.
3. Respondent, Santiago Romero Moreno, registered the <eurovegashardrock.com> domain name on September 6, 2012. The domain name leads to a parked website that does not offer any kind of product or service to the public.
4. The disputed domain name <eurovegashardrock.com> is confusingly similar to Complainant’s marks.
5. Respondent has not established any right or legitimate interest in the domain name <eurovegashardrock.com>.
6. Respondent has registered and is using the disputed domain name <eurovegashardrock.com>, in bad faith.
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.
Based on the evidence provided by the parties and considering the relief sought by Complainant, The Panel will proceed to determine whether or not Complainant has proved each one of the aforementioned elements in order to establish if the disputed domain name <eurovegashardrock.com> must be transferred. Firstly, the Panel will evaluate the confusing similarity element, then, the existence of Respondent’s rights or legitimate interest in the disputed domain name, and finally, the Panel will consider the bad faith element.
a) Existence of a trademark or service mark in which Complainant has rights
It is quite important to indicate that under Policy ¶ 4(a), the existence of a trademark or a service mark is required. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a distinguishing sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant argues to have rights over the term HARD ROCK and provided evidence to support its allegations. Tab 2 of the Complaint includes an extensive list of mark registrations with the USPTO, which rightful holder is Complainant.
Complainant argues that it is a Florida corporation that has been engaged in the business of leisure and entertainment using its HARD ROCK mark in the United States since at least 1978. Complainant asserts that it owns several trademark registrations with the USPTO for the HARD ROCK CAFE (e.g., Reg. No. 1,397,180), HARD ROCK HOTEL (e.g., Reg. No. 2,029,855) and HARD ROCK (e.g., Reg. No. 2,478,328) (Complainant’s Tab 2).
Among others, Complainant proved to be the rightful holder of the following marks with the USPTO (Complainant’s Tab 2):
- HARD ROCK CASINO (Reg. No. 2,789,028 / entertainment exhibitions in the nature of live music, music festivals and casino services)
- HARD ROCK LIVE (Reg. No. 2,363,818 / television and cable broadcast)
- HARD ROCK CAFE (Reg. No. 1,397,180 / restaurant services)
- HARD ROCK HOTEL (Reg. No. 2,029,855 / sunglasses and decorative magnets)
- HARD ROCK (Reg. No. 2,478,328 / live entertainment)
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the indicated trademarks and the exclusive right to use them in connection with the noted services. The registration of the aforementioned trademarks is a prima facie evidence of validity, which creates a rebuttable presumption that said trademarks are inherently distinctive[2].
Respondent did not provide evidence to rebut such distinctiveness; instead, its Response only stated his subjective and personal views that the HARD ROCK expression is a definition of a music genre.
Consequently, the Panel finds that Complainant established its ownership of the HARD ROCK term.
The Panel conducted an ex officio search of Complainant’s trademark in Spain and found that Respondent appears to reside in Spain, and Complainant has registered several of its trademarks in the country of Respondent’s residence (e.g., Reg. No. M0760487). Consequently, the Panel concludes that Complainant’s registration of the HARD ROCK CAFE mark with the USPTO and with the Oficina Española de Patentes y Marcas (Spanish trademark office) demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i)[3].
b) Identity or confusing similarity between disputed domain name and Complainant’s trademarks
Before establishing whether or not the disputed domain name <eurovegashardrock.com> is confusingly similar to the Complainant’s family of marks, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the disputed domain name is identical or confusingly similar to the registered trademark[4]. Neither the addition of country code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD have a distinctive function[5].
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor to take into account when analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000),the Panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
The slight difference between the <eurovegashardrock.com> domain name and Complainant’s family of marks is irrelevant, as the term “eurovegas” is a reference to a city in Hungary where Complainant plans to open a hotel and casino. Therefore, the Panel finds that the mere addition of the geographic term “eurovegas” does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i), as held by prior Panels[6].
For this particular case, Respondent was unable to refute the existence of the confusing similarity, and it is quite clear that the disputed domain name <eurovegashardrock.com> entirely reproduces Complainant’s trademark without adding any other distinctive elements.
Thereupon, the Panel concludes that the addition of the geographic term “eurovegas” does not eliminate confusing similarity between Respondent’s domain name and Complainant’s HARD ROCK mark under Policy ¶ 4(a)(i), and that the reproduction of the term HARD ROCK of Complainant’s trademark by the disputed domain name <eurovegashardrock.com> is sufficient ground to establish that the disputed domain name is confusingly similar to Complainant’s trademark[7].
In light of the foregoing and considering that the addition of the term “eurovegas” to the HARD ROCK mark still renders the disputed domain name <eurovegashardrock.com> confusingly similar to Complainant’s family of marks[8], the Panel concludes that Respondent’s <eurovegashardrock.com> domain name and Complainant’s HARD ROCK mark are confusingly similar under Policy ¶ 4(a)(i).
a) Prima facie case
In relation to this second element established by Policy ¶ 4(a), UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[9].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel held:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, Complainants are required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the evidentiary burden shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[10]. If Respondent fails to do so, Complainant is considered to have met the second element under Policy ¶ 4(a)(ii).
Complainant creates its prima facie case by indicating that Respondent has no rights or legitimate interests in the disputed domain name <eurovegashardrock.com> because:
1. Complainant has been using its family of marks well before Respondent registered the disputed domain name.
2. For Complainant, Respondent cannot credibly claim that he was not aware of Complainant’s use and rights of its family of marks by the time the disputed domain name was registered.
3. Respondent is not commonly known by the disputed domain name and that
4. The lack of use of the disputed domain name proves that Respondent lacks rights or legitimate interests in the same.
5. Respondent plans to compete against Complainant by offering services related to those provided by the latter.
Considering the aforementioned arguments, The Panel considers that Complainant has satisfied its obligation to build a prima facie case. Consequently the evidentiary burden shifts to Respondent.
Under Policy ¶ 4(c), there are three circumstances that Respondent could have proved in order to keep the disputed domain name <eurovegashardrock.com>:
a) The use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
b) The fact of having been commonly known by the domain name.
c) Making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
However, it was clearly established that Respondent is not commonly known by the disputed domain name <eurovegashardrock.com>, as evidenced by the WHOIS information in Complainant’s Tab 13; the WHOIS information identifies “634825673514253498 / Santiago Romero Moreno” as the registrant of the disputed domain name.
Considering that there is no evidence in the record, including the WHOIS information, suggesting that the Respondent is known by the disputed domain name <eurovegashardrock.com> as set forth by Policy ¶ 4(c)(ii)[11], the Panel holds that Respondent is not commonly known by the disputed domain name[12]. Also, Respondent failed to prove otherwise because the Response did not mention anything about Respondent being commonly known by the disputed domain name. Therefore, Respondent does not have rights or legitimate interests in the <eurovegashardrock.com> domain name pursuant to Policy ¶ 4(c)(ii).
It is has to be noted that Respondent’s <eurovegashardrock.com> domain name is parked and does not lead to a homepage. Therefore, the Panel finds that Respondent’s lack of use of the disputed domain name does not constitute either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name[13].
Respondent’s failure to make an active use of the disputed domain name from the date of its registration (September 6, 2012) does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and, therefore, does not establish rights or legitimate interests pursuant to Policy ¶ 4(c)(i) or (iii)[14]. Prior Panels have considered that the failure to actively use the disputed domain name demonstrates Respondent’s lack of rights or legitimate interest[15].
Respondent failed to demonstrate any use or preparation to use the disputed domain name and, on the Response, it only expressed that the site was under construction for a period of 18 months.
Respondent did not prove that it is commonly known by the disputed domain name <eurovegashardrock.com> and did not provide evidence suggesting that the domain name was being used in a legitimate noncommercial manner. In fact, the evidence proves that the disputed domain name was not being used at all (See Complainant’s Tab 14).
From the Response, the Panel finds that Respondent had a clear interest in the commercial gain and exploitation of the disputed domain name <eurovegashardrock.com>, because Respondent alleged that it had the purpose to use the disputed domain name to advertise concerts, tickets pricing, and other information concerning the entertainment business in Eurovegas.
Under the above, considering that there is no evidence proving that Respondent is commonly known by the disputed domain name, that there has been a lack of use of the same on its behalf -which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use-, and that the Respondent confirmed its commercial interest in the disputed domain name <eurovegashardrock.com>, the Panel finds that the ground to allege that the Respondent has no rights or legitimate interest in the disputed domain name is established.
Therefore, the second requirement of Policy ¶ 4(a)(ii) has been fulfilled.
Complainant argues that the disputed domain name was purposefully registered by Respondent with the intention to take advantage of Complainant’s trademark reputation and that it was well aware of Complainant’s rights by the time of registration. Complainant also alleges that Respondent’s failure to use the disputed domain name is evidence of bad faith.
According to Policy ¶ 4(b), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
The Panel finds that Respondent’s failure to make an active use of the domain name constitutes a bad faith use and registration of the same under Policy ¶ 4(a)(iii), because Respondent has no website affiliated with the disputed domain name <eurovegashardrock.com> and has passively held it for more than five months. Prior Panels have found that the passive holding of a disputed domain name can be considered as bad faith[16].
The Panel consideration is based on the evidence (Complainant’s Tab 14) supporting the fact that Respondent has failed to actively use the domain name. Consequently, the Panel view is that Respondent’s passive holding of the disputed domain name <eurovegashardrock.com> without making an active use of the same for several months constitutes bad faith, as held by prior Panels[17].
On the Response, it is clear that Respondent indicates that the disputed domain name is under construction for a period of 18 months, however, this period of time overpasses that of the disputed domain name <eurovegashardrock.com> registration validity (12 months), so this argument cannot be considered to be valid or that it justifies the non-use of the disputed domain name.
Furthermore, the Respondent clearly expressed its will to commercially exploit the disputed domain name, which The Panels also considers bad faith evidence as indicated by Policy ¶ 4 (b)(iv) (obtaining a commercial gain by confusing internet users).
In view of the foregoing, the Panel stresses on the point that Respondent’s failure to make an active use of the domain name <eurovegashardrock.com> and its recognition of its will to commercially exploit the same, satisfied the requirement of Policy ¶ 4(a)(iii) and the Panel holds that Respondent has registered and holds the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Therefore, the three elements of Policy ¶ 4(a) are satisfied in the present case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eurovegashardrock.com> domain name be TRANSFERRED from Respondent to Complainant.
Fernando Triana Esq., Panelist
Dated: March 5, 2013.
[1] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).
[2] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[3] See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
[4] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Nat. Arb. Forum May 18, 2012).
[5] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Nat. Arb. Forum July 15, 2011)
[6] See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel found that the addition of the geographic term “cancun” to the complainant’s CHEAPTICKETS mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term was merely geographic in nature.
[7] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[8] See Microsoft Corporation v. Cedric Thompson, WIPO Case No. D2004-1097.
[9] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[10] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
[11] See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
[12] In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the Panel found no rights or legitimate interests in a Respondent where that Respondent was not commonly known by the mark and had never applied for a license or permission from a complainant to use the trademarked name. See also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003).
[13] See Charles Letts & Co. Ltd. v. Citipublications, FA 692150 (NAF July, 17, 2006) finding that Respondent’s parking of a domain name containing a Complainant’s mark for that Respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
[14] See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶ 4(a)(ii)); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question)
[15] See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
[16] See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, a number of Panels have held that, after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.” Telstra, supra (stating that “paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith…. [I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii)”.
[17] See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Disney Enters. Inc. v Meyers, FA 697818 (Nat. Arb. Forum Jun. 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii))
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