Old Style Saloon No. 10 Inc. v. Rick Lopez
Claim Number: FA0701000908127
Complainant is Old Style Saloon No. 10 Inc. (“Complainant”), represented by Linda
M. Byrne, of Crawford Maunu PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <saloonten.com>, registered with Schlund+Partner Ag.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 1, 2007.
On February 2, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <saloonten.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 February 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 2007 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@saloonten.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <saloonten.com> domain name is confusingly similar to Complainant’s SALOON NO. 10 mark.
2. Respondent does not have any rights or legitimate interests in the <saloonten.com> domain name.
3. Respondent registered and used the <saloonten.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Old Style Saloon
No. 10 Inc., owns and operates a well-known business called “Old Style Saloon
No.10” in Deadwood,
Respondent registered the <saloonten.com> domain name on
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."
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.”).
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.
It is not necessary for Complainant to hold a registered
trademark in order to establish rights in the SALOON NO. 10 mark. Common law rights are sufficient to satisfy
Policy ¶ 4(a)(i). See SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also British
Broad. Corp. v. Renteria, D2000-0050 (WIPO
Complainant has established common law rights in its SALOON NO. 10 mark through extensive and continuous use. Complainant has continuously and extensively used the mark in connection with its bar and restaurant services since 1963. Complainant has invested substantial sums of money in developing and marketing its business under the SALOON NO. 10 mark and has developed substantial goodwill, customer loyalty, and national notoriety. Therefore, the Panel finds that Complainant has created sufficient consumer recognition and secondary meaning in the SALOON NO. 10 mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982)); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
Respondent’s <saloonten.com> domain name is
confusingly similar to Complainant’s SALOON NO. 10 mark pursuant to Policy ¶
4(a)(i). The words “saloon” in the disputed
domain name and “saloon” in Complainant’s mark are identical. Respondent omits the “No.” portion of
Complainant’s mark from the disputed domain name. Deletion of a portion of the mark in the
disputed domain name can still render the mark confusingly similar. Furthermore, Respondent’s <saloonten.com > domain name is confusingly similar because the
pronounciation and meaning of “10” in Complaintant’s mark is similar to Respondent’s
numerical spelling of “ten.” The Panel
finds that this similarity is likely to result in confusion for Internet users
under Policy ¶ 4(a)(i). The lack
of a space between “Saloon” and “Ten,” and the generic top-level domain “.com,”
do not avoid a finding of confusing similarity under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <saloonten.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <saloonten.com> domain name. The WHOIS information identifies Respondent as “Rick Lopez,” and Complainant has alleged that Respondent has no statutory or common law trademark rights or any other authorization to use Complainant’s SALOON NO. 10 mark. The Panel finds no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <saloonten.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is using the <saloonten.com> domain name to redirect Internet users to its own website, which then transfers Internet users to a website for “Full Tilt Poker,” which offers a variety of online poker games and makes no reference to “Saloon Ten” on the website. Respondent presumably receives click-through referral fees for each redirected Internet user. Respondent is using Complainant’s SALOON NO. 10 mark for its own commercial benefit, and such use constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s redirecting of Internet users from the <saloonten.com> website to Respondent’s own website, which transfers Internet users to a website that offers a variety of online poker games, is likely to disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site)
Respondent’s use of the <saloonten.com> domain name, which is confusingly similar to Complainant’s SALOON NO. 10 mark, is likely to cause confusion among customers searching for Complainant’s bar and restaurant services. Specifically, customers could become confused as to the affiliation, endorsement, or sponsorship of the competing online poker games and services advertised on Respondent’s website with Complainant’s own services. Respondent presumably profits from this confusion by receiving click-through referral fees for each Internet user it redirects to other websites. The Panel finds that such registration and use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saloonten.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated:
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