Hard Rock Cafe International (USA), Inc. v. Michael Angelo
Claim Number: FA1012001361793
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is Michael Angelo (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hardrockpokeronline.com>, <hardrockblackjackonline.com>, <hardrockcasinogames.com>, <hardrockonlinelottery.com>, <hardrocklotteryonline.com>, <hardrockonlinepoker.com>, <hardrockhotelblackjack.com>, <hardrockhotelpoker.com>, <hardrockonlineblackjack.com> and <hardrockcasinoblackjack.com>, registered with 45.com.
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 December 4, 2010; the National Arbitration Forum received payment on December 4, 2010.
On December 9, 2010, 45.com confirmed by e-mail to the National Arbitration Forum that the <hardrockpokeronline.com>, <hardrockblackjackonline.com>, <hardrockcasinogames.com>, <hardrockonlinelottery.com>, <hardrocklotteryonline.com>, <hardrockonlinepoker.com>, <hardrockhotelblackjack.com>, <hardrockhotelpoker.com>, <hardrockonlineblackjack.com> and <hardrockcasinoblackjack.com> domain names are registered with 45.com and that Respondent is the current registrant of the names. 45.com has verified that Respondent is bound by the 45.com 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 December 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2011 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@hardrockpokeronline.com, postmaster@hardrockblackjackonline.com, postmaster@hardrockcasinogames.com, postmaster@hardrockonlinelottery.com, postmaster@hardrocklotteryonline.com, postmaster@hardrockonlinepoker.com, postmaster@hardrockhotelblackjack.com, postmaster@hardrockhotelpoker.com, postmaster@hardrockonlineblackjack.com and postmaster@hardrockcasinoblackjack.com. Also on December 13, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. 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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hardrockpokeronline.com>, <hardrockblackjackonline.com>, <hardrockonlinelottery.com>, <hardrocklotteryonline.com>, <hardrockonlinepoker.com> and <hardrockonlineblackjack.com> domain names are confusingly similar to Complainant’s HARD ROCK mark.
Respondent’s <hardrockhotelblackjack.com> and <hardrockhotelpoker.com> domain names are confusingly similar to Complainant’s HARD ROCK HOTEL mark.
Respondent’s <hardrockcasinogames.com> and <hardrockcasinoblackjack.com> are confusingly similar to Complainant’s HARD ROCK CASINO mark.
2. Respondent does not have any rights or legitimate interests in the <hardrockpokeronline.com>, <hardrockblackjackonline.com>, <hardrockcasinogames.com>, <hardrockonlinelottery.com>, <hardrocklotteryonline.com>, <hardrockonlinepoker.com>, <hardrockhotelblackjack.com>, <hardrockhotelpoker.com>, <hardrockonlineblackjack.com> and <hardrockcasinoblackjack.com> domain names.
3. Respondent registered and used the <hardrockpokeronline.com>, <hardrockblackjackonline.com>, <hardrockcasinogames.com>, <hardrockonlinelottery.com>, <hardrocklotteryonline.com>, <hardrockonlinepoker.com>, <hardrockhotelblackjack.com>, <hardrockhotelpoker.com>, <hardrockonlineblackjack.com> and <hardrockcasinoblackjack.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Cafe International, owns the exclusive rights to the HARD ROCK, HARD ROCK HOTEL and HARD ROCK CASINO marks. Complainant’s marks are used in connection with cafes, hotels, casinos and concerts throughout the world. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its HARD ROCK (e.g., Reg. No. 2,478,328 issued August 14, 2001), HARD ROCK HOTEL (e.g., Reg. No. 3,520,591 issued October 21, 2008) and HARD ROCK CASINO marks (e.g., Reg. No. 2,499,114 issued October 16, 2001).
Respondent, Michael Angelo, registered each of the disputed domain names in December 2009. The disputed domain names all resolve to pages featuring third-party, competing links.
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 established rights in its HARD ROCK, HARD ROCK HOTEL and HARD ROCK CASINO marks through its trademark registrations pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Complainant holds multiple trademark registrations for the HARD ROCK (e.g., Reg. No. 2,478,328 issued August 14, 2001), HARD ROCK HOTEL (e.g., Reg. No. 3,520,591 issued October 21, 2008) and HARD ROCK CASINO marks (e.g., Reg. No. 2,499,114 issued October 16, 2001).
Respondent’s <hardrockpokeronline.com>, <hardrockonlinepoker.com>, <hardrockonlinelottery.com>, <hardrocklotteryonline.com>, <hardrockblackjackonline.com> and <hardrockonlineblackjack.com> domain names are confusingly similar to Complainant’s HARD ROCK mark. The disputed domain names all remove the space from Complainant’s HARD ROCK mark, each adds two terms (“poker online,” “online poker,” “online lottery,” “lottery online,” “blackjack online” or “online blackjack”) and all add the generic top-level domain (“gTLD”) “.com.” The removal of a space and the addition of a gTLD do nothing to distinguish a disputed domain name from a complainant’s mark. The addition of generic terms to a complainant’s mark also fails to sufficiently distinguish it from a disputed domain. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Therefore, the Panel finds Respondent’s <hardrockpokeronline.com>, <hardrockonlinepoker.com>, <hardrockonlinelottery.com>, <hardrocklotteryonline.com>, <hardrockblackjackonline.com> and <hardrockonlineblackjack.com> domain names are confusingly similar to Complainant’s HARD ROCK mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <hardrockhotelblackjack.com> and <hardrockhotelpoker.com> domain names are confusingly similar to Complainant’s HARD ROCK HOTEL mark. The disputed domain names merely remove the spaces from Complainant’s HARD ROCK HOTEL mark, add either the term “blackjack” or “poker” and add the gTLD “.com.” See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Accordingly, the Panel finds Respondent’s <hardrockhotelblackjack.com> and <hardrockhotelpoker.com> domain names are confusingly similar to Complainant’s HARD ROCK HOTEL mark under Policy ¶ 4(a)(i).
Respondent’s <hardrockcasinogames.com> and <hardrockcasinoblackjack.com> are confusingly similar to Complainant’s HARD ROCK CASINO mark. Both of the disputed domain names add descriptive terms to complainant’s mark (“games” and “blackjack” respectively), each removes the spaces from Complainant’s HARD ROCK CASINO mark and add the gTLD “.com.” See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). Thus, the Panel finds Respondent’s domain names to be confusingly similar to Complainant’s HARD ROCK CASINO mark.
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that once a complainant makes a prima facie case in support of its allegations, then the burden of proof shifts to the respondent to show that they do have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s lack of response, the Panel may infer that Respondent does not have 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
There is no evidence in the record to indicate that Respondent is commonly known by any of the disputed domain names. The WHOIS information identifies the domain name registrant as “Michael Angelo.” Complainant asserts that Respondent has not been authorized to use its HARD ROCK, HARD ROCK HOTEL or HARD ROCK CASINO marks. The Panel therefore finds that Respondent has not established rights or legitimate interests in any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain names to feature links to websites which compete with goods and services offered by Complainant. The Panel finds that this competing use does not constitute 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent’s use of the disputed domain names to display competing, third-party links constitutes a disruption of Complainant’s business. The Panel finds this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Respondent creates confusion through its registration and use of the disputed domain names, which are confusingly similar to Complainant’s marks. Internet users likely reach Respondent’s sites while searching for that of Complainant, and are may misinterpret any sponsorship or affiliation between Respondent and Complainant. Respondent profits when Internet users utilize the click-through links at the websites resolving from the confusingly similar domain names. The Panel concludes this to be evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) is 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 <hardrockpokeronline.com>, <hardrockblackjackonline.com>, <hardrockcasinogames.com>, <hardrockonlinelottery.com>, <hardrocklotteryonline.com>, <hardrockonlinepoker.com>, <hardrockhotelblackjack.com>, <hardrockhotelpoker.com>, <hardrockonlineblackjack.com> and <hardrockcasinoblackjack.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 17, 2011
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