Hard Rock Cafe International (USA), Inc. v. Kelvin Leong
Claim Number: FA1309001519472
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is Kelvin Leong (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hrhplatinumtravel.com>, registered with Register.com, 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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2013; the National Arbitration Forum received payment on September 13, 2013.
On September 16, 2013, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hrhplatinumtravel.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 September 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@hrhplatinumtravel.com. Also on September 24, 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 and determined to be complete on October 10, 2013.
An additional submission was filed by the Complainant on October 15, 2013, and was timely according to Forum Supplemental Rule 7.
On October 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <hrhplatinumtravel.com> domain name on December 2, 2012.
C. Additional Submissions
Complainant concludes that Respondent’s lack of rights or legitimate interests, and Respondent’s bad faith is established because of the following reasons:
• Respondent could not have been unaware of Complainant’s now uncontestable, internationally famous family of marks and accompanying wide range of services;
• Respondent registered a domain name that wholly incorporated Complainant’s trademark;
• Consumers expect a domain name so configured to be, at minimum, affiliated with Complainant’s business;
• Respondent offered to sell the Domain Name for an amount in excess of his purchase price; and
• Respondent has provided no proof of any agreement, course of dealing, or negotiations with Complainant—in fact, Respondent only has proof of Complainant’s explicit refutations of any agreement or negotions with Respondent.
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 states that it has used the HRH mark in connection with hotel services related to the “Hard Rock Hotel” name. Complainant formally obtained all interests in the common law rights associated with the HRH mark earlier this year. See Amended Complaint, Tab 1, which claims that the HRH trademark assignment to Complainant was effective as of June 13, 2013. Complainant claims that it owns registration for the HRH mark with the United States Patent and Trademark Office ("USPTO"), and provides evidence thereof in the form of a declaration by Complainant’s Vice President (Reg. No. 3,652,867 registered June 7, 2009). See Amended Complaint, Tab 1 (Decl. of Wolszczak at ¶ 3).
The Panel finds that Complainant’s evidence is sufficient to demonstrate its rights through assignment of the USPTO registration and agrees that Complainant does possess such a registration, and as such, Complainant has established rights pursuant to Policy ¶ 4(a)(i). 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).”).
The Panel notes that Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant argues that Respondent registered the <hrhplatinumtravel.com> domain name, which is confusingly similar to the HRH mark. Complainant claims that it is settled that a domain name that wholly incorporates another’s mark is confusingly similar to the underlying mark. In this instance, the domain name contains the three-letter HRH mark, the term “platinum,” the term “travel,” and the generic top-level domain (“gTLD”) “.com.”
Previous panels have decided that the gTLD is not a notable addition to the domain name, as some type of TLD is necessary for any domain name to function. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The panel in Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), held that otherwise descriptive or generic terms do not create a distinctive domain name when those terms describe the goods or services provided under the at-issue mark.
The Panel believes that the terms “platinum” and “travel” are merely generic in regards to the HRH mark and concludes that the <hrhplatinumtravel.com> domain name is confusingly similar to the HRH mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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.”).
Based on the evidence, the Panel is satisfied that Complainant has carried the burden.
The Panel notes that Complainant did not make any allegations under Policy ¶ 4(c)(ii) in its Amended Complainant. Further, the Panel notes that Respondent is listed in the WHOIS information as “Kelvin Leong,” who apparently owns “HRH PLATINUM TRAVEL INC.” of Nevada. See Response, at Attached Ex. 5. In cases such as this, previous panels have looked to the fact that absent some assumed agreement between the parties, the respondent would not have otherwise had any reason or right to use a particular mark in its domain names. See, e.g., 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).
However, while the WHOIS record does not adequately provide a basis that illustrates Complainant’s knowledge and consent in regards to Respondent’s registration of an Internet domain name that incorporates the HRH mark, the Panel finds that Respondent operates under the “HRH PLATINUM TRAVEL INC.” name. Panels have been especially prepared to assume that a respondent is ‘commonly known’ by a name where the evidence indicates that the name has been used in a business context. See, e.g., IKB Deutsche Indus. AG v. Larkin, D2002-0420 (WIPO Jul. 23, 2002) (finding that use of the name in connection with a proposed business interest was sufficient to establish that the respondent was commonly known by the domain name). See, e.g., Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (holding that the respondent had rights or legitimate interests in the disputed domain name where its business name was “Anytime OnLine Traffic School” and that it was therefore not far-fetched to use <aoltrafficschool.com> as a domain name for its business).
Respondent’s registration of the domain name, subsequent to the incorporation of the business entity in Las Vegas and pursuant to a legitimate business concept, is sufficient to establish that the Respondent is commonly known by the name under Policy ¶ 4(c)(ii).
Complainant states that Respondent does not have rights or legitimate interests in the domain name because the disputed domain name incorporates Complainant’s mark in its entirety even though Respondent must have been aware of Complainant’s proprietary interests in the mark. Nor could Respondent’s use of the domain name constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain under policy 4(c)(i) or (iii).
The Panel visited the Respondent’s website and notes that the page does advertise the Hawaii to Nevada vacations. The Panel also notes that the website is for sale.
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondents’ rights or legitimate interest in the domain name. These include circumstances where, before any notice to the Respondent of the dispute, the Respondent used and/or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.
Respondent states that it won ten thousand dollars ($10,000.00) at Complainant’s casinos playing slot machines, and was invited by Complainant’s marketing agents to see if Respondent could bring Hawaiian customers to Complainant’s business. Respondent claims that this agreement included a memorandum of understanding and e-mail communications between the parties.
The Panel notes that the record provides an unsigned memorandum of understanding, with correspondence between the parties that suggest there was, at least in some degree, a discussion between the parties beyond the scope of this domain dispute. See Response, at Attached Exs. 2 - 9.
The Panel believes that Respondent was justified in using this domain name, and finds that Respondent made a Policy ¶ 4(c)(i) bona fide offering of goods and services through its promotion of Hawaii to Nevada vacation tours. See, e.g., Downstream Exch. Co. v. Downstream Energy, FA 96304 (Nat. Arb. Forum Feb. 2, 2001) (finding that the respondent established rights in the <downstreamexchange.com> domain name pursuant to Policy ¶ 4(c)(i) by obtaining “the domain name in contemplation of creating and operating an Internet auction exchange” and showing demonstrable preparations for such use).
The fact that the site is now for sale does not negate Respondent’s legitimate interests in the domain name. See, e.g., Scholastic Inc. v ScholasticAdvising.com, D2001-0946 (WIPO November 4, 2001) ( finding that the respondent had undertaken preparations to use the domain name in connection with a bona fide offering of services, the panel concluded that the respondent had not registered the domain name primarily for the purpose of selling it to the complainant).
The Panel is satisfied by the evidence that the Respondent made demonstrable preparations to use the disputed domain name before any notice of the dispute in terms of paragraph 4(c)(i) and accordingly could lay claim to being commonly known by the domain name and as such, does have and has demonstrated a legitimate interest in the domain name through the promotion of the Hawaii to Nevada vacation tours. Further, the Panel finds that the offering of Hawaii to Nevada vacations, taken in the context of the efforts to establish a commercial relationship between the parties, does constitute a bona fide offering of goods and services for purposes of Policy 4(c)(i).
In light of the Panel’s finding in favor of Respondent with respect to the existence of rights and legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii), there is no need to reach an analysis of the third element. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). See also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Nevertheless, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent has not registered or used the <hrhplatinumtravel.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent asserts that its <hrhplatinumtravel.com> domain name merely embodies a business name—HRH PLATINUM TRAVEL INC. The Panel notes that the Annexes provided by Respondent create, at the least, the possibility that Respondent registered the domain name under an agreement with Complainant regarding a planned business endeavor between the parties. The panel in Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006), rejected the complaint, as complainant had failed to show both bad faith through use and at the moment of registration—at registration both parties were on amicable terms and intended a mutually beneficial business plan.
Additionally, Respondent was requested to desist from any use of the Hard Rock Hotel and Casino mark on his web site and complied forthwith which further removes any notions of bad faith.
Finally, the fact that the site is now for sale does not amount to bad faith use. Merely contemplating the sale of the disputed domain name is not sufficient evidence of bad registration and use. In this respect it is important to note that paragraph 4(b)(i) requires evidence that the domain name has been acquired or registered primarily for the purpose of selling, renting, or transferring the domain name. See, e.g., ZZounds Music, LLC v. Zounds, FA 817093 (Nat. Arb. Forum Nov. 24, 2006) (finding that merely considering selling the domain name is not sufficient evidence of bad faith registration and use of the domain name).
The fact that the site is now for sale does not negate Respondent’s legitimate interests in the domain name.
Upon a review of the totality of the circumstances, the Panel here agrees that Complainant has failed to adequately show that this domain name, registered before Complainant made any protests to Respondent, was registered in Policy ¶ 4(a)(iii) bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hrhplatinumtravel.com> domain name REMAIN WITH Respondent.
Calvin A. Hamilton, Panelist
Dated: October 25, 2013
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