News West Publishing, Inc.,
d/b/a Laughlin Entertainer and LaughlinEntertainer.com v. Thane O'Brien
Claim Number: FA1007001333948
PARTIES
Complainant is News West Publishing, Inc., d/b/a Laughlin
Entertainer and LaughlinEntertainer.com
(“Complainant”), represented by Neil Martin, of Gordon & Rees LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laughlinentertaineronline.com>,
registered with Wild West Domains, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 8, 2010.
On July 8, 2010, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <laughlinentertaineronline.com>
domain name is registered with Wild West
Domains, Inc. and that the Respondent is the current registrant of the
name. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 July 14, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of August 3, 2010 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@laughlinentertaineronline.com. Also on July
14, 2010, the Written Notice of the Complaint, notifying Respondent of
the email 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 July 26, 2010.
An additional document was submitted by Respondent to the Forum by
email on August 6, 2010. The Supplemental Rule 7 provides that a party may
submit additional written statements and documents to the Forum and the
opposing party within five calendar days after the date the Response was
received by the forum. Respondent submitted the additional document more than
five calendar days to the Forum, and it did not submit it to the opposing
party. Thus the additional submission does not comply with Supplemental Rule 7.
As a consequence, the Panel will not take Respondent’s Additional Submission
into consideration.
On August 4, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
On August 12, 2010, the Forum served an Order for additional
submissions and extending time for rendering a decision, by e-mail to
Complainant authorized representative and to Respondent, requesting Complainant
to submit additional submissions to the Forum no later than August 19, 2010,
and extending time for the Panel to render the decision to August 25, 2010,
pursuant to Rule 12 and Rule 15 (b) of the Policy. Namely, Complainant was
requested to submit evidences of its rights in the marks referred to in the
Complaint, along with evidences of the registration and use of the domain name
at issue. Complainant submitted the requested additional written statements and
documents pursuant to the Order on August 19, 2010. As a consequence, the Panel
will take Complainant’s Additional Submission into consideration.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it owns common law rights in LAUGHLIN ENTERTAINER and LAUGHLINENTERTAINER.COM.
Complainant avers it has used the LAUGHLIN ENTERTAINER mark in commerce
since
Complainant also alleges that it has acquired secondary meaning in the
mark LAUGHLINENTERTAINER.COM as it began to provide its articles and
information online in 1999 via the domain name <laughlinentertainer.com>.
Complainant alleges that the domain name at issue is confusingly similar to Complainant’s common law rights. Complainant asserts the disputed domain name fully incorporates its marks. Complainant contends the addition of the generic term “online” to Complainant’s mark does not sufficiently distinguish Respondent’s disputed domain name from its mark. In addition, Complainant’s representative claims four of Complainant’s advertisers expressed confusion regarding the source of Respondent’s website.
Complainant further contends that Respondent has no rights with respect to the disputed domain name because the Respondent was not authorized to use Complainant’s marks for his own personal use, and Respondent is not making a legitimate noncommercial or fair use of the domain name at issue or a bona fide offering of goods or services.
Finally, Complainant contends that
Respondent registered and used the domain name in bad faith. Indeed, Complainant argues that Respondent
could not have registered and used the disputed domain name without actual or
constructive knowledge of Complainant and its marks. Complainant also alleges Respondent uses the
disputed domain name to resolve to a website that provides information and
services that compete with Complainant’s business.
B. Respondent
Respondent contends the LAUGHLIN ENTERTAINER or LAUGHLIN ENTERTAINER.COM marks are not registered with the United States Patent and Trademark Office (“USPTO”).
Respondent also contends the purpose of the disputed domain
name is to sell advertising to the Laughlin,
C. Additional Submissions
Complainant submitted evidence of its rights in the marks referred to
in the Complaint.
FINDINGS
For the reasons set forth below, the Panel
finds the requested relief should be granted.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 is not the owner of trademark
registrations for the LAUGHLIN ENTERTAINER mark or the LAUGHLINENTERTAINER.COM
mark with the USPTO. However, federal
trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Prior panels
have found that a governmental registration is not required so long as the
complainant can establish common law rights through proof of sufficient
secondary meaning associated with the mark.
See SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007).
Complainant
submitted newspaper articles published by third parties, print-outs of Internet
pages and excerpts of the LAUGHLIN ENTERTAINER print publication. This
submission shows consistent and continuous use of the mark LAUGHLIN ENTERTAINER
in connection with print
magazines providing articles and information regarding casinos, resorts,
hotels, tourism, attractions, dining, shows, events, coupons, theaters, and diverse information for the Laughlin,
The Panel finds that the domain name at issue
fully incorporates Complainant’s LAUGHLINENTERTAINER.COM
mark. The addition of the generic term
“online” to Complainant’s mark does not sufficiently distinguish Respondent’s
disputed domain name from its mark. Thus the Panel is convinced that the domain
name at issue <laughlinentertaineronline.com>
is confusingly similar to Complainant’s LAUGHLINENTERTAINER.COM
mark pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
Besides, the Panel evaluates confusingly
similar as it relates to Complainant’s LAUGHLIN ENTERTAINER mark. Prior Panels have found the omission of
spaces between the words in a complainant’s mark and the affixation of a
generic top-level domain (“gTLD”) like “.com” do not
negate a finding of confusingly similar.
See Bond & Co. Jewelers, Inc.
v.
Complainant alleges it has not authorized
Respondent to use its marks for Respondent’s own personal use. This allegation
is not denied by Respondent.
The Complainant
alleges that the domain name at issue resolves to a home page for Entertainer
Weekly, containing articles and information regarding casinos, resorts, hotels,
tourism, attractions, dining, shows, events, coupons, and theaters in the
Laughlin,
As previously
discussed, the Panel finds the domain name at issue is confusingly similar to
Complainant’s marks. The Panel finds that Respondent is using the domain name
to intentionally attempt to attract Internet users, for commercial gain, to its
website by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of Respondent’s website or
services. The Panel thus finds Respondent’s behavior constitutes registration
and use in bad faith pursuant to Policy ¶ 4(b)(v). See Busy Body, Inc. v. Fitness
Outlet, Inc., D2000-0127
(WIPO Apr. 22, 2000); see also Velv,
LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006).
The Panel accepts
that the domain name at issue resolves to a website that provides information
and services that compete with Complainant’s business. The Panel finds Respondent uses a confusingly
similar domain name to divert Internet users seeking Complainant’s business to
Respondent’s competing website.
Therefore, the Panel finds this practice disrupts Complainant’s
business, which qualifies as registration and use in bad faith pursuant to
Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb.
Forum Dec. 28, 2005); see also Classic
Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug.
1, 2006).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laughlinentertaineronline.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 24, 2010
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