NP IP Holdings LLC v. DOMAIN ADMINISTRATOR / Buy this domain on Dan.com ---- / Domain Sales - (Expired domain caught by auction winner) c/o Dynadot
Claim Number: FA2209002013155
Complainant is NP IP Holdings LLC (“Complainant”), represented by Lindsey A. Williams of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is DOMAIN ADMINISTRATOR / Buy this domain on Dan.com ---- / Domain Sales - (Expired domain caught by auction winner) c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stncharms.com>, <stnluckycharms.com>, <stncharmsmarketplace.com>, <myrewardscharms.com>, <stncharmsnft.com>, <stnluckiestcharm.com>, <stncharmsshop.com>, and <boardingpasscharm.com>, registered with Dynadot, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on September 22, 2022; Forum received payment on September 22, 2022.
On September 22, 2022; September 29, 2022, Dynadot, LLC confirmed by e-mail to Forum that the <stncharms.com>, <stnluckycharms.com>, <stncharmsmarketplace.com>, <myrewardscharms.com>, <stncharmsnft.com>, <stnluckiestcharm.com>, <stncharmsshop.com>, and <boardingpasscharm.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 October 4, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2022 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@stncharms.com, postmaster@stnluckycharms.com, postmaster@stncharmsmarketplace.com, postmaster@myrewardscharms.com, postmaster@stncharmsnft.com, postmaster@stnluckiestcharm.com, postmaster@stncharmsshop.com, postmaster@boardingpasscharm.com. Also on October 4, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 the respondents to Complainant.
The disputed domain names are not registered to one holder. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Nevertheless, Complainant has alleged that the domain names are effectively controlled by a single person or entity.
The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity.
In that regard Complainant points out that each of the disputed domain names was registered on the same date, July 23, 2022, just two days after Complainant filed federal U.S. trademark applications for marks that are identical to the second-level portion of the disputed domain names. Further, that all of the disputed domains resolve to a GoDaddy-controlled landing page—either GoDaddy.com or Dan.com, a secondary brand for GoDaddy—each of which is used to advertise registered domain names for sale.
The Panel considers that there is compelling evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against the named respondents, hereinafter referring to them together as “Respondent”.
A. Complainant
Complainant is a wholly-owned subsidiary of Station Casinos, LLC, the owner and operator of luxury resort hotels and casinos in Las Vegas, Nevada.
Complainant asserts trademark rights in BOARDING PASS, MY REWARDS and STN in connection with casino, gaming, and resort hotel services. Complainant submits that the disputed domain names are confusingly similar to the respective trademarks.
The disputed domain names have been offered for sale and Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant further alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the owner of the following trademark registrations with the United States Patent & Trademark Office (“USPTO”):
STN SPORTS (Reg. No. 5,421,603 and Reg. No. 5,315,468)
STN PLAY (Reg. No. 5,566,595)
MY REWARDS (Reg. No. 3,597,438)
MY REWARDS (and Design) (Reg. No. 5,944,846)
MY REWARDS (and Design) (Reg. No. 6,679,802)
BOARDING PASS (Reg. No. 2,083,905)
BOARDING PASS REWARDS (Reg. No. 2,617,317)
2. Complainant has applied to register the following trademarks with the USPTO:
STN CHARMS (App. No. 97/511,751 and App. No. 97/513,709 and App. No. 97/513,445)
STN CHARMS MARKETPLACE (App. No. 97/512,545 and App. No. 97/513,565)
STN CHARMS NFT (App. No. 97/512,372 and App. No. 97/513,670 and App. No. 97/513,323)
STN CHARMS SHOP ( App. No. 97/512,521 and App. No. 97/512,479 and App. No. 97/513,509)
STN LUCKIEST CHARM (App. No. 97/511,708 and App. No. 97/513,463)
STN LUCKIEST CHARMS (App. No. 97/513,884 and App. No. 97/512,411 and App. No. 97/513,696 and App. No. 97/513,298)
MY REWARDS CHARMS (App. No. 97/511,802 and App. No. 97/513,725 and App. No. 97/513,346)
BOARDING PASS CHARM (App. No. 97/512,427 and App. No. 97/513,633 and App. No. 97/513,280).
3. the disputed domain names were all registered on July 23, 2022 and are for sale; and
4. there is no association between the parties and Complainant has not authorized Respondent to use its trademarks or register any domain name incorporating its trademarks.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
The Complaint is supported by the Declaration of Jeremy Hilsabeck, Vice President and Associate General Counsel of Complainant. The Declaration is confusing as it is said to relate to the following four disputed domain names: <stncharms.com>, <stnluckycharms.com>, <stncharmsmarketplace.com> and <myrewardscharms.com>.
The Declarant states that:
“[Complainant] and its predecessors in interest have continuously used the MY REWARDS Marks since March 2009 and the STN Marks since July 2016 in connection with casino, gaming, and resort hotel services, among many other goods and services.”
The Declarant goes on to refer to these, and “BOARDING PASS Marks”, as follows:
“[Complainant] has spent substantial sums of money to advertise, promote and protect the STN, MY REWARDS and BOARDING PASS Marks in print, broadcast and Internet media, including through the website https://www.stationcasinos.com/.
…
In addition, [Complainant] has made extensive use of the STN, MY REWARDS, and BOARDING PASS Marks on, among other things, signage, wearing apparel, souvenirs and promotional materials. … As a result, the STN, MY REWARDS and BOARDING PASS Marks have acquired a substantial level of consumer recognition.”
There is no clear definition of the “STN Marks”, the “MY REWARDS Marks” or the “BOARDING PASS Marks”. However, the Complaint states that it is based on the trademark registrations and applications with the USPTO and so the Panel understands these expressions to refer to those marks comprising, or including, the terms “STN”, “MY REWARDS” or “BOARDING PASS”. The Panel notes here that there is no evidence of the Declarant’s claims of extensive, continuous use of those marks, nor of promotion or advertising of them in a way to support unregistered (common law) trademark rights. That said, it is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights in the following trademarks, all registered with the USPTO, a national trademark authority.
STN SPORTS
STN PLAY
MY REWARDS
MY REWARDS (and Design) my REWARDS
BOARDING PASS
BOARDING PASS REWARDS
It is equally well established that a pending trademark application before a national authority does not establish trademark rights. Accordingly, rights have not been shown in the following trademarks pending registration before the USPTO:
STN CHARMS
STN CHARMS MARKETPLACE
STN CHARMS NFT
STN CHARMS SHOP
STN LUCKIEST CHARM
STN LUCKIEST CHARMS
MY REWARDS CHARMS
BOARDING PASS CHARM
Therefore, for the purposes of the paragraph 4(a)(i) analysis, the set of comparison trademarks is limited to:
STN SPORTS
STN PLAY
MY REWARDS
MY REWARDS (and Design)
BOARDING PASS
BOARDING PASS REWARDS
Apart from those registered marks, Complainant has not provided proof of acquired distinctiveness of the letters “STN”, solus. There are no submissions regarding the inherent distinctiveness of “STN”. The Panel might speculate that it is an abbreviation for the word, “Station”, but there is nothing to support that. Accordingly, for the purposes of comparison, the Panel should treat them as simply three random letters and give them due weight. Further, the submission concerning the word “charm” is that, within the context of Complainant’s gaming business, it has the meaning of a lucky token. The Panel accepts that submission. The word is therefore relatively non-distinctive and, again, given due weight in making the comparisons.
Stripped of the non-distinctive gTLD, “.com”, the disputed domain names reduce to the following terms:
stncharms
stnluckycharms
stncharmsmarketplace
myrewardscharms
stncharmsnft
stnluckiestcharm
stncharmsshop and
boardingpasscharm
The Panel is only prepared to find boardingpasscharm confusingly similar to BOARDING PASS, and myrewardscharms confusingly similar to MY REWARDS. No other compared terms have a significant degree of resemblance which would on the evidence give rise to confusion (see, for example, 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 therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of <boardingpasscharm.com> and <myrewardscharms.com>.
It follows that the Complaint fails in respect of the <stncharms.com>, <stnluckycharms.com>, <stncharmsmarketplace.com>, <stncharmsnft.com>, <stnluckiestcharm.com> and <stncharmsshop.com> domain names (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary; Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in respect of the <boardingpasscharm.com> and <myrewardscharms.com> domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The name of the underlying domain name holder, as disclosed by the Registrar, provides no indication that Respondent might be commonly known by either domain name. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use its trademarks.
The evidence is that <myrewardscharms.com> has been linked to a domain name broker service and that <boardingpasscharm .com> has been linked to a site advertising the name for sale for USD995. Otherwise, there is no evidence of use of the names. In Twentieth Century Fox Film Corporation v. Diego Ossa, FA 1602016 (Forum Feb. 26, 2015) the panelist found that the respondent’s willingness to sell the disputed domain name was evidence that the respondent lacked rights or legitimate interests in the domain (see also, Wynn Resorts Holdings, LLC v. Martin Mir, FA 1443434 (NAF June 19, 2012) (“Respondent’s failure to make an active use of the <wynnhotelsmacau.com> domain name does not demonstrate rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”); Morgan Stanley v. Francis Mccarthy, FA 1785347 (Forum June 8, 2018) (“Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”)).
Accordingly, the Panel finds that a prima facie case has been made out in respect of the two domain names. The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds, on the evidence, that paragraph 4(b)(i) of the Policy is applicable since the circumstances indicate that Respondent registered the domain names primarily for the purpose of selling them to Complainant or a competitor of Complainant for consideration in excess of its out-of-pocket acquisitional costs.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of the <boardingpasscharm.com> and <myrewardscharms.com> domain names.
Accordingly, it is Ordered that those domain names be TRANSFERRED from Respondent to Complainant.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED in respect of the <stncharms.com>, <stnluckycharms.com>, <stncharmsmarketplace.com>, <stncharmsnft.com>, <stnluckiestcharm.com> and <stncharmsshop.com> domain names.
Accordingly, it is Ordered that those domain names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 8, 2022
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