Hard Rock Cafe International (USA), Inc. v. GoldenPalace N.V.
Claim Number: FA1904001837932
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Muncy, Geissler, Olds & Lowe, P.C., Florida, USA. Respondent is GoldenPalace N.V. (“Respondent”), Curacao.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hardrockonlinecasino.com>, registered with Godaddy.Com, Llc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2019; the Forum received payment on April 8, 2019.
On April 9, 2019, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <hardrockonlinecasino.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc 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 April 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2019 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@hardrockonlinecasino.com. Also on April 12, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Respondent’s <hardrockonlinecasino.com> domain name is confusingly similar to Complainant’s HARD ROCK CASINO mark.
2. Respondent does not have any rights or legitimate interests in the <hardrockonlinecasino.com> domain name.
3. Respondent registered and uses the <hardrockonlinecasino.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Cafe International (USA), Inc., uses their HARD ROCK and HARD ROCK CASINO marks (the “HARD ROCK marks”) in connection with restaurants, hotels, and casinos. Complainant holds a registration for the HARD ROCK CASINO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,499,114, registered Oct. 16, 2001, filed Jul. 1, 1998).
Respondent failed to submit a response in this proceeding. The Panel may note that the disputed domain name was registered on August 17, 1998, and uses it to compete with Complainant.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Respondent’s <hardrockonlinecasino.com> domain name uses the HARD ROCK CASINO mark and simply adds the descriptive term “online” and the gTLD “.com.” The addition of generic or descriptive terms and/or a gTLD is not sufficient to overcome a confusingly similar determination under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s <hardrockonlinecasino.com> domain name is confusingly similar to Complainant’s HARD ROCK CASINO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel notes that, although Complainant does not specifically assert that Respondent is not commonly known by the HARD ROCK CASINO mark, the WHOIS information of record identifies the registrant of the disputed domain name as “GoldenPalace N.V.” and Respondent is not authorized to use Complainant’s mark. Complainant provides a declaration from Brian Alexander, Vice President of Business Affairs for Complainant, stating “Respondent is not related, affiliated, endorsed or sponsored by [Complainant]; not has [Complainant] granted Respondent a license to use the Infringing Domain Name[].” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <hardrockonlinecasino.com> domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant asserts that Respondent has no rights or legitimate interests in the <hardrockonlinecasino.com> domain name based on the fame of the HARD ROCK marks. The Panel agrees and notes that Respondent uses the disputed domain name to compete with Complainant, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶ 4(c)(i) or (iii). See Chevron Intellectual Property LLC v. CHLEO TEMPLE, FA 1731844 (Forum June 16, 2017) (acknowledging the likelihood of a respondent’s lack of legitimate interests in a disputed domain name when the name incorporates a famous mark belonging to another entity).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s blog website. Use of a confusingly similar domain name for to attract Internet users for commercial gain may demonstrate bad faith per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant provides printouts of the webpage associated with the disputed domain name, showing Respondent’s use of the domain name to offer casino related material. The Panel finds that Respondent uses the disputed domain name to compete with Complainant, in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s bad faith is indicated by its actual knowledge of Complainant’s rights in the HARD ROCK marks prior to registering the <hardrockonlinecasino.com> domain name. Complainant claims Respondent’s knowledge can be inferred through its use of the domain name in connection with a casino blog webpage. The Panel agrees, also noting the fame of Complainant’s HARD ROCK marks, and finds that Respondent registered the domain name in bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
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 <hardrockonlinecasino.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 4, 2019
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