Fiesta Palms, LLC v. The Palms Poker Room
c/o Host Master
Claim
Number: FA0506000495283
Complainant, Fiesta Palms, LLC (“Complainant”), is
represented by Scott M. Hervey of Weintraub Genshlea Chediak Sproul Law Corporation, 400 Capitol Mall, 11th Floor,
Sacramento, CA 95814. Respondent is The Palms Poker Room c/o Host Master (“Respondent”), Friars Road, St. Johns, AG.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <palmspoker.com>, registered with Enom,
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 13, 2005.
On
June 15, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <palmspoker.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
June 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 7,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@palmspoker.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
July 15, 2005, Complainant filed an untimely Reply Brief. On July 19, 2005, Respondent filed an
untimely Response saying that because of misrouting, the Complaint was not received
by Respondent until July 14, 2005.
Complainant, on July 19, 2005, filed an Objection to Late Filed Response
contending that the response was untimely and that Respondent had not made a
showing of exceptional circumstances.
In the alternative, Complainant requested the opportunity to file a
Reply. On July 20, 2005, Respondent
submitted a letter explaining the delay.
The Panel, on July 29, 2005, overruled Complainant’s Objection ruling
that the Panel would consider Respondent’s Response and Complainant’s
Reply. The Panel granted Complainant
until August 3, 2005, within which to file a Reply to Respondent’s
Response. However, Complainant had
already filed a Reply to Respondent’s Response on July 25, 2005. The Panel shall consider Complainant’s July 25,
2005, Reply, making any further Reply unnecessary.
On
July 15, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (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.”
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant, Fiesta Palms, LLC, makes the
following assertions:
1. Respondent’s <palmspoker.com>
domain name is confusingly similar to Complainant’s PALMS mark.
2. Respondent does not have any rights or
legitimate interests in the <palmspoker.com> domain name.
3. Respondent registered and used the <palmspoker.com>
domain name in bad faith.
B. Respondent, The Palms Poker Room, c/o
Host Master, contends that the <palmspoker.com> domain name is not confusingly similar to Complainant’s
marks because Complainant has not built a presence on the Internet, but
operates a hotel and resort. The public
has not come to expect that domain names incorporating the PALMS mark are
associated with Complainant.
Complainant does not have legitimate rights in the PALMS mark because
Complainant does not use the “Palms” term alone in its business names. Respondent has been acquiring “palms” and
“tropical” names for a business plan involving “tropical themes.” Respondent says that it is in the process of
registering PALMSPOKER and other marks as trademarks. Respondent has spent over three years developing its poker
business and raising brand awareness in the online poker industry. Respondent says that its product has been
tested in a controlled environment by thousands of online poker players and is
going to be launched for commercial operations, online poker games, in August
2005. As the public has no expectation
of encountering Complainant’s mark on the Internet, there is no likelihood of
confusion. Goodwill in Complainant’s
mark does not extend to the Internet and/or the online gaming industry where
Complainant has no presence.
C. In its July 15, 2005 Reply, Complainant
contends that Respondent is making use of the central element of a number of
Complainant’s trademarks without authorization. Respondent’s operation of an online poker room at the domain name
would cause confusion. Respondent’s
passive holding of the domain name shows a lack of rights and legitimate
interests. Use of the domain name,
which is confusingly similar to Complainant’s trademarks, to compete with
Complainant would not be a bona fide offering of services. In Complainant’s July 25, 2005 Reply,
Complainant contends that the UDRP does not contain, as an element, the
requirement that the parties be in the same line of business or that they conduct
business in the same manner. Respondent
has not submitted any evidentiary support for its contention that Respondent
has a business plan for the domain name.
Respondent has failed to establish a website at the disputed domain
name.
Complainant,
Fiesta Palms, LLC, is the operator of the Palms hotel and casino in Las Vegas,
Nevada. Complainant’s resort hotel
opened on November 15, 2001 after a $265 million investment. The hotel, operated by Complainant, has
gained a worldwide reputation, attracting celebrities from around the
world. The hotel has become even more
famous as a result of being featured in the 2002 season of MTV’s “Real World”
and the hit Bravo network television show “Celebrity Poker Showdown,” which is
filmed at the hotel. Moreover,
Complainant’s hotel has hosted numerous high-profile poker tournaments,
including the Vegas Rock Star Poker tournament, the Stuff Casino Weekend Poker
Tournament, and Poker Superstars Invitation Tournament.
Additionally,
Complainant holds numerous registrations with the United States Patent and
Trademark Office (“USPTO”) for incorporating the word “Palms,” including a
registration for PALMS (Reg. No. 2,773,484, filed December 13, 2004 issued
October 14, 2003). Complainant also
owns the <palms.com> domain name and operates a website at that domain
name. Complainant registered the
<palms.com> domain name on March 23, 1995.
Respondent
registered the <palmspoker.com> domain name on June 23, 2004. On March 31, 2005, Respondent’s website
displayed an announcement to launch an online casino, “The Palms Poker
Room.”
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 has
provided evidence of rights in the PALMS mark through registration with the
USPTO. Although Complainant's USPTO registration
for the PALMS mark was issued five months after Respondent's registration of
the disputed domain name, Complainant's rights in the mark date back to
December 13, 2002, when the trademark application was initially filed.
See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002)
(holding that the effective date of Complainant’s trademark rights date back to
the application’s filing date); see also Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal
rights is . . . the filing date of its issued registration.”). Therefore,
Complainant has established prima facie evidence of rights in its
mark. The burden then shifts onto
Respondent to refute this presumption.
In light of Respondent’s failure to set forth evidence suggesting
otherwise, the Panel finds that Complainant has established rights in the PALMS
mark pursuant to Policy 4(a)(i). See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption."); see also Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive [or] have
acquired secondary meaning.”).
The <palmspoker.com>
domain name is confusingly similar to the PALMS mark. Respondent’s domain name incorporates the PALMS mark in its
entirety and adds the generic term “poker.”
In addition to being generic, the term “poker” has a clear relation to
Complainant’s mark because it describes a service provided by Complainant’s Las
Vegas hotel. Thus, the Panel concludes
that the disputed domain name is confusingly similar to Complainant’s marks
pursuant to Policy ¶ 4(a)(i). See
Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that the respondent’s domain name <marriott-hotel.com> is
confusingly similar to the complainant’s MARRIOTT mark); see also Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
Therefore, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent
contends that it registered and uses the <palmspoker.com> domain
name to develop a future online casino.
However, Respondent’s unsupported assertions fail to rebut Complainant’s
prima facie showing. Respondent
has failed to present concrete evidence of its plan to develop the domain
name. See Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[O]nce the
complainant has made a prima facie showing, the burden of production
shifts to the respondent to show by providing concrete evidence that it has
rights or legitimate interests in the domain name at issue.” ).
“The mere assertion of intent to use the name” fails to satisfy
Paragraph 4(c)(i) of the Policy requiring demonstrable evidence of the
preparations to use the domain name prior to notice of the dispute. Id.
Respondent has made no use of the disputed domain names. Simply registering a domain name is not
sufficient to establish rights or legitimate interests. When Respondent makes no use of a disputed
domain name, it can neither be said as being used for a bona fide use
under Policy ¶ 4(c)(i) nor as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB
v. Romero, D2000-1273
(WIPO Nov. 13, 2000) (finding no rights or legitimate interests where
respondent failed to submit a response to the complaint and had made no use of
the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (“[M]erely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy.”); see also BMW AG v.
Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain
name where respondent claimed to be using the domain name for a non-commercial
purpose but had made no actual use of the domain name).
Furthermore,
the registration of an infringing domain name that is confusingly similar to
Complainant’s mark in order to operate an online casino suggestive of a
connection with Complainant is not a bona fide offering of goods or
services, or legitimate noncommercial or fair use of the domain name under
Policy ¶¶ 4(c)(i) and (iii). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks);
see also Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a
legitimate interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR); see also Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has
an intention to divert consumers of Complainant’s products to Respondent’s site
by using Complainant’s mark).
Complainant
argues that Respondent does not fit within Policy ¶ 4(c)(ii) because it is not
commonly known by the disputed domain name.
Although Respondent’s WHOIS information shows Respondent to be known as
“The Palms Poker Room,” Complainant presented evidence indicating that a Google
search of the phrase “The Palms Poker Room” only reveals references to
Complainant, other than one reference pointing to the disputed domain
name. Respondent has not provided the
Panel with any evidence to counter Complainant’s assertions or demonstrate that
it was commonly known by the disputed domain name prior to registration. Without such evidence, the Panel finds that
Respondent failed to meet its burden and has not established rights or legitimate
interests pursuant to Policy ¶ 4(c)(ii).
See Hartford Fire Ins. Co.
v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding
that the respondent has no rights or legitimate interests in domain names
because it is not commonly known by the complainant’s marks and the respondent
has not used the domain names in connection with a bona fide offering of
goods and services or for a legitimate noncommercial or fair use); see also
Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that
although “the WHOIS information for the <yasexhoo.com> domain name states
that the registrant is YASEXHOO . . . this alone is insufficient to show that
Respondent is commonly known by the domain name.”); see also Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights
or legitimate interests where one “would be hard pressed to find a person who
may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s passive holding of the disputed domain
name shows Respondent’s intent to use the domain name in bad faith. See
Caravan Club v. Mrgsale,
FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use
of the domain name or website that connects with the domain name, and that
passive holding of a domain name permits an inference of registration and use
in bad faith); see also 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).
The Panel finds
that there is no conceivable way Respondent could use the disputed domain name
such that it would not infringe on Complainant’s PALMS mark, and therefore it
is illogical to await Respondent’s use of the domain name to find bad faith
use. See Phat Fashions v.
Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under
Policy ¶ 4(a)(iii) even though respondent has not used the domain name because
“[i]t makes no sense whatever to wait until it actually ‘uses’ the name, when
inevitably, when there is such use, it will create the confusion described in
the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
respondent made no use of the domain name in question and there are no other
indications that respondent could have registered and used the domain name in
question for any non-infringing purpose); see
also Sony Kabushiki Kaisha v.
Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration
and use where it is “inconceivable that the respondent could make any active
use of the disputed domain names without creating a false impression of
association with the complainant”).
Capitalizing on the confusion of consumers through the incorporation of
the PALMS mark into the disputed domain name and the redirection of Internet
users to a site advertising services that could be accredited to Complainant
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and
likeness); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s
use of the <hancockfabric.com> domain name, a domain name confusingly
similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to
a website that provides a selection of jokes demonstrates Respondent’ bad faith
use of the disputed domain name because Respondent has created a likelihood of
confusion as to the source, sponsorship, affiliation or endorsement of
Respondent’s website, which evidences bad faith registration and use under
Policy ¶ 4(b)(iv).”); see also Am.
Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where the respondent registered and used a domain name
confusingly similar to the complainant’s mark to attract users to a website
sponsored by the respondent).
Respondent is
using of the disputed domain name to divert users to a website that advertises
similar services to those of Complainant.
The text on the website concludes with the advertisement, “Thank you for
visiting The Palms,” and is signed, “Management.” This language, the graphics on the website, and the incorporation
of Complainant’s PALMS mark into the disputed domain name are all likely to
lead Internet users to believe that Respondent’s site is affiliated with or
sponsored by Complainant. The Panel
concludes that Respondent’s ability to capitalize on the confusion of consumers
constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding
that the respondent’s expected use of the domain name <redbull.org> would
lead people to believe that the domain name was connected with the complainant,
and thus is the equivalent to bad faith use);
see also Singapore Airlines
Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name
‘<singaporeairlines.com>’ is so obviously connected with a well-known
airline that its very registration and use by someone with no connection to the
airline suggests opportunistic bad faith.
Indeed, it is hard to imagine a more blatant exercise in
‘cybersquatting.’”).
Complainant’s
registration of the PALMS mark with the USPTO confers constructive knowledge on
Respondent. See Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”) Moreover, the popularity of Complainant’s
PALMS mark, when used in combination with services the mark represents, leads
this Panel to infer that Respondent knew of Complainant’s rights in the mark at
registration. See Glaxo
Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (“Because
of the fanciful nature of the ZYBAN mark, the Panel can infer that Respondent
knew of Complainant's rights in the mark at registration.”); see also
Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between the complainant’s mark and the content advertised on
the respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”). The
Panel holds that actual or constructive knowledge of Complainant’s rights in
the mark constitutes bad faith registration and use under Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly known mark at the time of
registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <palmspoker.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 11, 2005
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