Hard Rock Cafe International (
Claim Number: FA0907001272460
Complainant is Hard Rock Cafe Internatinoal (USA), Inc. (“Complainant”), represented by Zachary
D. Messa, of Johnson, Pope, Bokor, Ruppel & Burns,
LLP,
REGISTRAR
The domain names at issue are <costaricahardrock.com>, <costaricahardrockcity.com>, <costaricahardrockbeach.com>, <hardrockcityonline.com>, and <hardrockcityworld.com>, registered with Domaindiscover.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On July 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 2009 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@costaricahardrock.com, postmaster@costaricahardrockcity.com, postmaster@costaricahardrockbeach.com, postmaster@hardrockcityonline.com, and postmaster@hardrockcityworld.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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <costaricahardrock.com>, <costaricahardrockcity.com>, <costaricahardrockbeach.com>, <hardrockcityonline.com>, and <hardrockcityworld.com> domain names are confusingly similar to Complainant’s HARD ROCK mark.
2. Respondent does not have any rights or legitimate interests in the <costaricahardrock.com>, <costaricahardrockcity.com>, <costaricahardrockbeach.com>, <hardrockcityonline.com>, and <hardrockcityworld.com> domain names.
3. Respondent registered and used the <costaricahardrock.com>, <costaricahardrockcity.com>, <costaricahardrockbeach.com>, <hardrockcityonline.com>, and <hardrockcityworld.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Cafe
International (USA), Inc., is a
Respondent registered the <costaricahardrock.com> and <costaricahardrockcity.com>
domain names 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.
The Panel finds that Complainant has sufficiently
established rights in the HARD ROCK mark through its numerous registrations of
this mark held with various governmental trademark authorities throughout the
world, including the USPTO (i.e., Reg. No.
2,478,328 issued
The <costaricahardrock.com>, <costaricahardrockcity.com>,
and <costaricahardrockbeach.com> domain names contain
Complainant’s entire HARD
Respondent’s
<hardrockcityonline.com> and <hardrockcityworld.com> domain
names both contain Complainant’s HARD
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate
interests in the disputed domain
names. The Panel finds that Complainant
has sufficiently made its prima facie
showing under Policy ¶ 4(a)(ii). The
burden then shifts to Respondent and Respondent must establish that it has
rights or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima
facie case that [the] respondent lacks rights and legitimate interests in
the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts
to [the] respondent to show it does have rights or legitimate interests.”); see also
Because Respondent has failed to submit a Response to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record and determine whether there is evidence against Complainant’s allegations under Policy ¶ 4(c).
Complainant
contends that prior to sending Respondent a cease-and-desist letter, the
<costaricahardrock.com> and <costaricahardrockcity.com> domain
names resolved to websites that contained copies of Complainant’s
websites. Complainant submitted
screenshots that corroborate its contentions.
The Panel finds that Respondent attempted to pass itself off as
Complainant. Therefore, the Panel finds
that such prior use of the <costaricahardrock.com> and <costaricahardrockcity.com>
domain names by Respondent was not a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart
of
Moreover, after Complainant sent its cease-and-desist letter to Respondent, all of the disputed domain names resolve to websites with no content. The Panel finds that Respondent’s failure to associate the disputed domain names with active websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The WHOIS information for all of the disputed domain names lists “Luna De Mar Negra I.P.O.N S.A.” as the registrant, which does not indicate that Respondent is commonly known by the any of the disputed domain names. Furthermore, Respondent has not submitted any evidence to suggest otherwise. Therefore, the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s prior use of the <costaricahardrock.com> and <costaricahardrockcity.com> domain
names to pass itself off as Complainant creates a likelihood of confusion as to
Complainant’s affiliation with these disputed domain names. Therefore, the Panel finds that Respondent’s
actions using these disputed domain names constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See Target Brands, Inc. v. JK
Internet Servs., FA 349108 (Nat. Arb. Forum
The Panel finds that a finding of bad faith under Policy ¶
4(a)(iii) is not limited to those instances enumerated in Policy ¶ 4(b). See
Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that
the criteria specified in 4(b) of the Policy is not an exhaustive list of bad
faith evidence); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s subsequent deletion of all content from <costaricahardrock.com> and <costaricahardrockcity.com>
domain names, causing all of the disputed domain names to resolve to
websites with no content is evidence that Respondent failed to make
active use of the disputed domain names.
Therefore, the Panel finds that Respondent’s failure to make active use
of the disputed domain names constitutes bad faith registration and use under
Policy ¶ 4(a)(iii). See
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 <costaricahardrock.com>, <costaricahardrockcity.com>, <costaricahardrockbeach.com>, <hardrockcityonline.com>, and <hardrockcityworld.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: August 26, 2009
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