Greektown Casino, LLC v. Daniel Kirchhof c/o Unister GmbH
Claim Number: FA1308001513182
Complainant is Greektown Casino, LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Daniel Kirchhof c/o Unister GmbH (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greektown-casino-hotel.com>, registered with PSI-USA, Inc. d/b/a Domain Robot.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2013; the National Arbitration Forum received payment on August 5, 2013.
On August 7, 2013, PSI-USA, Inc. d/b/a Domain Robot confirmed by e-mail to the National Arbitration Forum that the <greektown-casino-hotel.com> domain name is registered with PSI-USA, Inc. d/b/a Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. d/b/a Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. d/b/a Domain Robot 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 August 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@greektown-casino-hotel.com. Also on August 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶4(a)(iii)
Respondent registered the <greektown-casino-hotel.com> domain name on July 18, 2009.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Greektown Casino, LLC who list its address as Detroit Michigan, USA. Complainant is the owner of several domestic registrations for GREEKTOWN CASINO and its related family of marks, including GREEKTOWN CASINO-HOTEL, which it claims to have used the former as early as 1994 and first registered the same in 2000. Complainant has continuously used its mark(s) for hotel, restaurant, bar and other entertainment services since that time. Complainant also owns several related domain name registrations including its flagship website at <GreektownCasino.com>, and the websites <GreektownCasinoHotel.com> and <GreektownCasino-Hotel.com>.
Respondent is Daniel Kirchhof c/o Unister Gmbh who does not list his address but list the company’s address as Leizig, Germany. Respondent’s registrar list its address as Las Vegas, Nevada, USA.
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 uses the GREEKTOWN CASINO-HOTEL mark to offer casino and hotel services in commerce. Complainant notes that it has registered the GREEKTOWN CASINO-HOTEL mark with the USPTO (Reg. No. 3,659,644 registered on July 21, 2009 (filed March 9, 2009)). The Panel finds that the USPTO registration satisfies Complainant’s showing of rights under Policy ¶ 4(a)(i), even if Respondent resides in Germany. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel further finds that Complainant’s rights in the mark date back to at least as early as March 9, 2009, the date on which Complainant filed its USPTO trademark application. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant alleges that Respondent has registered the <greektown-casino-hotel.com> domain name, which merely affixes a hyphen in the GREEKTOWN CASINO-HOTEL mark where there should be spacing, and adds the gTLD “.com.” In Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"), the panel held that a domain name is identical to a mark when the only changes made are the addition of a hyphen and a gTLD. The Panel finds that the <greektown-casino-hotel.com> domain name is identical to the GREEKTOWN CASINO-HOTEL mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims that Respondent is not known by the disputed domain name. The Panel notes that the WHOIS information list “Daniel Kirchhof” of “Unister GmbH” as the registrant of the domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel concluded that when the WHOIS information suggested no similarity between the respondent’s name and the disputed domain name, and when no other evidence existed in the record to suggest otherwise, there was no basis to find that the respondent was known by the domain name. The Panel holds that there is no basis for finding that Respondent is known by the <greektown-casino-hotel.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent hosted an active website through the <greektown-casino-hotel.com> domain name until receiving Complainant’s cease-and-desist letter. Complainant asserts that the domain name was used to suggest that Internet users could make reservations with Complainant, only to ultimately redirect them to another website promoting competing businesses. See Complainant’s Ex. K. The Panel notes that evidence of the <greektown-casino-hotel.com> domain name’s content as of June 4, 2013, suggests that the domain name presented Internet users with a menu to reserve a hotel room at Complainant’s establishments. See Complainant’s Ex. K. The Panel further notes that Complainant suggests the <greektown-casino-hotel.com> domain name resolves to a third-party website, and that the evidence of these websites suggest that Internet users were presented with an array of different hotel and reservation options, many of which compete with Complainant. See Complainant’s Exs. L–M. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel found that a respondent cannot make a bona fide offering if the domain name is used to promote and provide competing services. The Panel finds that Respondent’s past use of the domain name to promote competing hotel and reservation services illustrates that Respondent has made neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <greektown-casino-hotel.com> domain name.
Complainant states that Respondent has listed the domain name for sale through GoDaddy.com, LLC. The Panel notes that an auction ending August 31, 2013, placed the <greektown-casino-hotel.com> domain name for a minimum bid of $3,319. See Complainant’s Ex. O. The Panel finds that Respondent’s willingness to sell off this domain name supports a conclusion that Respondent did not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See, e.g., Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000) (holding that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy).
Complainant also claims that Respondent currently provides no active use for this <greektown-casino-hotel.com> domain name, as Respondent removed the domain name’s content upon receipt of a cease and desist letter. In Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007), the panel held that a respondent’s lack of rights and legitimate interests may be inferred from the respondent’s inactive holding of the confusingly similar domain name. The Panel finds that Respondent’s inactivity at this domain name further supports a conclusion that Respondent lacks Policy ¶ 4(a)(ii) rights and legitimate interests in the domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent placed the <greektown-casino-hotel.com> domain name for sale through GoDaddy.com, LLC, for a minimum bid of $3,319. The Panel again notes that the domain name does appear to have been put up for auction. See Complainant’s Ex. O. In CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000), the panel found that the auctioning of a domain name to the general public may serve as a basis for bad faith when there is the likelihood that the respondent only purchased the domain name to capitalize on the value of the underlying mark. The Panel finds that Respondent’s attempt to sell this domain name to the general public is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(i).
Complainant notes that Respondent has been subject to prior UDRP proceedings in which it was found to have acted in bad faith. See LivINN Suites, Ltd. v. Daniel Kirchhof / Unister GmbH, FA 1362675 (Nat. Arb. Forum Jan. 17, 2011); see also Aliante Gaming, LLC v. Unister GmbH c/o Daniel Kirchhof, FA 1311235 (Nat. Arb. Forum Apr. 22, 2010). Complainant further points out that a previous panel has particularly noted Respondent’s propensity to register domain names that merely hyphenate a mark. See Montage Hotels & Resorts, LLC v. Daniel Kirchhof/Unister GmbH, D2011–1042 (WIPO Aug. 25, 2011). The Panel finds that Respondent’s implication in a pattern of bad faith use and registration serves as evidence of Policy ¶ 4(b)(ii) bad faith use and registration in the instant proceeding as well. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant argues that Respondent’s use of the <greektown-casino-hotel.com> domain name to send Internet users through to websites that provide reservations to Complainant’s competitors constitutes an unfair and bad faith disruption of Complainant’s business. The Panel notes that the domain name was resolving to a website that functioned to reroute Internet users to several competing websites. See Complainant’s Exs. K–M. In Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panel agreed that the respondent had unfairly disrupted the complainant’s business in bad faith by using the complainant’s trademark in a domain name that offered competing services. The Panel finds that Complainant’s use of the disputed domain name to promote hotel suites offered by Complainant’s competitors is indicative of a Policy ¶ 4(b)(iii) bad faith commercial disruption of Complainant’s business.
Complainant also claims that Respondent is capitalizing on the likelihood that confused Internet users will mistake Complainant and its mark as the source or origin of the competing hyperlinks offered through the domain name’s website. The Panel notes that while the <greektown-casino-hotel.com> domain name did originally resolve to a website purporting to offer reservations to Complainant’s hotel, Internet users who attempted to place a reservation through the domain name were taken to a third-party website wherein competing hotels were promoted. See Complainant’s Exs. K–M. The Panel finds that use of this identical <greektown-casino-hotel.com> domain name to promote competing hotel chains is evidence of a Policy ¶ 4(b)(iv) attempt to gain commercial advertising and referral revenues by capitalizing on the likelihood that Internet users will mistake Complainant as the source or origin of the products advertised. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Complainant claims that Respondent currently makes no active use of the disputed <greektown-casino-hotel.com> domain name. In Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), the panel found that the inactive use of a domain name can serve as a basis for finding bad faith when the facts of the case provide a basis for believing that any future use of the domain name shall be in bad faith. The Panel finds that Respondent’s previous bad faith use of this domain name as indicated above, provides grounds for finding the currently inactive use of the domain name as additional evidence of Policy ¶ 4(a)(iii) bad faith.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <greektown-casino-hotel.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 17, 2013
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