DECISION

 

Boyd Gaming Corporation v. Moises Cohen

Claim Number: FA2310002067853

PARTIES

Complainant is Boyd Gaming Corporation ("Complainant"), represented by Daniel H. Bliss of HOWARD & HOWARD ATTORNEYS PLLC, Michigan, USA. Respondent is Moises Cohen ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stardustmiami.com> ("Domain Name"), registered with Launchpad.com Inc..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 25, 2023; Forum received payment on October 25, 2023.

 

On October 25, 2023, Launchpad.com Inc. confirmed by e-mail to Forum that the <stardustmiami.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com Inc. 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 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2023 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@stardustmiami.com. Also on October 26, 2023, 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 16, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Boyd Gaming Corporation is a casino and entertainment company, operating hotel and casino properties in the United States. Complainant has rights in the STARDUST mark based upon the registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,580,234, registered January 30, 1990). Respondent's <stardustmiami.com> domain name is confusingly similar to Complainant's STARDUST mark because it incorporates mark in its entirety, adding only the geographic term "miami" and the ".com" generic top-level domain ("gTLD").

 

Respondent does not have rights or legitimate interests in the <stardustmiami.com> domain name. Respondent is not licensed to use Complainant's STARDUST mark and is not commonly known by the mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to pass off as Complainant in order to offer competing goods and services.

 

Respondent registered and uses the <stardustmiami.com> domain name in bad faith. Respondent uses the Domain Name in order to promote a competing business. Further, Respondent registered the Domain Name with knowledge of Complainant's rights in the STARDUST mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the domain name <stardustmiami.com>, has not established all required elements of its claim, and thus its complaint must be denied.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

 

Complainant has rights in the STARDUST mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 1,580,234, registered January 30, 1990). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) ("Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that the <stardustmiami.com> Domain Name is confusingly similar to the STARDUST mark as it fully incorporates the STARDUST mark and adds the geographic term "miami" and the ".com" gTLD.  The addition of a geographic term to a wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) ("Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").

 

The Panel holds that Complainant has not made out such a prima facie case. Rather, there are factual and legal issues that are unresolved by the evidence presented and the Panel is of the opinion that this case is not one that is well suited for resolution under the Policy. See, e.g., AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe / seamaxamerica.com, FA 1763605 (Forum Feb. 9, 2018) (finding serious issues of fact and law that "can be resolved only by the use of forensic powers which a Panel under the UDRP does not have, such as deposition evidence by cross examination, discovery….").

 

Complainant, in its Complaint, submits that the Domain Name sometimes resolves to a travel booking website and hence Respondent offers competing travel booking services. This submission is not supported by the exhibit to the Complaint which indicates that the Domain Name resolves to a website ("Respondent's Website"), operated by Respondent which, on its face, indicates that Respondent operates an entirely legitimate business, namely a Miami hotel known as the "Stardust Hotel". Respondent's Website does not either explicitly or (to the best of the Panel's knowledge) implicitly make any reference to Complainant or otherwise suggest an affiliation (other than the shared use of the trademark STARDUST for hotel services, which the Panel will address further below).  The record does not indicate that Respondent has sought to register any other domain names incorporating the STARDUST mark or engage in any other conduct that suggests the use of the Domain Name is anything other than for a bona fide offering of services.

 

Panels have recognized that "[t]he Policy's purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes". Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). See also Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) ("the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name.  The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy."). The Panel acknowledges that Respondent's conduct may infringe Complainant's STARDUST mark or amount to passing off and the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum, and that nothing in this decision should be understood as providing a definitive finding on the respective mark rights of the parties, beyond the narrow question determined under this proceeding.

 

However, the question of trademark infringement is beyond the scope of the present proceeding, which is summary in nature and hence the evidence that Respondent operates a hotel in Miami known as the Stardust Hotel is a sufficient basis to find that the Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the Domain Name.  The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) ("The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable). If the Complainant wishes to bring proceedings against the Respondent for trademark infringement or passing off, such a proceeding is more appropriately brought in a court of competent jurisdiction.

 

Registration and Use in Bad Faith

 

In light of the Panel's dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <stardustmiami.com> domain name REMAIN WITH Respondent.

 

.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: November 17, 2023