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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hard Rock Café International (USA), Inc. v. Vision Star International, Inc.

Case No. D2002-0022

 

1. The Parties

1.1 The Complainant is Hard Rock Café International (USA), Inc., a corporation organized under the laws of the State of Florida with its principal place of business located in Orlando, Florida, USA.

1.2 The Respondent is Vision Star International, Inc., a dissolved corporation under the laws of the State of Florida, located in Boca Raton, Florida, USA, and whose contact information provides an address located at 8122 Glades Road, Suite 361 Boca Raton, FL 33434, USA, according to VeriSign, Inc. database.

 

2. The Domain Name and Registrar

2.1 The disputed domain name is < hardrockcasino.com >.

2.2 The registrar of the disputed domain name is VeriSign, Inc., formerly known as Network Solutions, Inc., with a business address in Mountain View, California, USA.

 

3. Procedural History

3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") by e-mail on January 10, 2002, and by hard copy on January 15, 2002.

3.2 January 21, 2002, all formal requirements for the establishment of the Complaint were checked by WIPO and found to be in compliance with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.

3.3 January 22, 2002, WIPO transmitted notification of the Complaint and commencement of the proceedings to Respondent.

3.4 February 15, 2002, WIPO transmitted notification to Respondent of its default in responding to the Complaint.

3.5 A copy of the Amended Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent on February 19, 2002, by courier delivery service, postage pre-paid and return receipt requested, and to all of the contacts identified for the Respondent.

3.6 March 12, 2002, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 14, 2002, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.

3.7 March 15, 2002, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by March 29, 2002.

3.8 The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

3.9 Due to exceptional circumstances, the Panel requested an extension of the March deadline to submit its decision. The extended deadline was April 5, 2002.

 

4. Factual Background

4.1 Complainant Hard Rock Café International (USA), Inc., is a corporation organized and existing under the laws of the State of Florida, USA.

4.2 Complainant Hard Rock Café International (USA), Inc. is the owner of various trademarks (the "Trademarks") including, but not limited to HARD ROCK CASINO, for goods consisting of "jewelry, namely, ornamental lapel pin the shape of a guitar, sports watches, gold watches, classic watches, necklaces, and earrings" in International Class 14; "back packs, fanny packs and tote bags" in International Class 18; and "clothing, namely t-shirts, sweatshirts, polo shirts, sport shirts, jackets, hats, caps, belts, and sun visors" in International Class 25 ("the Goods") for which registration on the Principal Register was granted by the United States Patent and Trademark Office on October 16, 2001, Registration No. 2,499,114, filed on July 1, 1998, as provided in Annex 3 of the Complaint filed by Hard Rock Café International (USA).

4.3 The Complainant is also the owner of the service mark HARD ROCK CASINO, for which an application for registration on the Principal Register was filed with the U.S. Patent and Trademark Office on July 1, 1998, Serial No. 75/511,501, in International Class 41 and 42, provided as Annex 4 of the Complaint submitted by Hard Rock Café International (USA), for services consisting of "conducting entertainment exhibitions in the nature of live music, music festivals and casino services" in International Class 41 and "restaurant, bar and take-out food services and hotel services" in International Class 42.

4.4 Furthermore, the Complainant is the owner of the trademarks and service marks HARD ROCK HOTEL and HARD ROCK HOTEL & Design, as provided by Complainant as Annex 5 and Annex 6 of their Complaint. Registration No. 2,029,859 for HARD ROCK HOTEL & Design, granted by the U.S. Patent and Trademark Office on January 14, 1997, covers "casino service" in International Class 41 and "hotel services" in International Class 42. Registration No. 2,031,803 for HARD ROCK HOTEL, granted by the U.S. Patent and Trademark Office on January 21, 1997, covers "casino services" in International Class 41.

4.5 In addition to the foregoing registrations, the Complainant owns own twenty-eight (28) additional registrations on the Principal Register of the United States Patent and Trademark Office for HARD ROCK HOTEL or HARD ROCK HOTEL & Design. Both marks cover various goods and services in International Classes 3, 8, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, and 34.

4.6 Complainant states that it acquired HARD ROCK HOTEL and HARD ROCK HOTEL & Design and all corresponding registrations by way of merger between Hard Rock Café Licensing Corporation and Hard Rock Café International (USA), Inc., effective December 31, 1997.

4.7 Complainant states that the merger between Hard Rock Café Licensing Corporation and Hard Rock Café International (USA), Inc and transfer of marks was recorded with the U.S. Patent and Trademark Office on May 11, 1998, Reel/Frame No. 1729/0317. Copies of the additional Certificates of Registration for said marks, assignment and the Notice of Recordation of Assignment issued by the U.S. Patent and Trademark Office were provided as Annex 7 to the Complaint submitted by Complainant, Hard Rock Café International (USA).

4.8 The Complainant, Hard Rock Café International (USA) states that it and/or its authorized licensee(s) have continuously used and are currently using the trademark HARD ROCK CASINO in interstate commerce on the Goods, in association with the HARD ROCK HOTEL AND CASINO establishment located in Las Vegas, Nevada, U.S.A., from January 1, 2001, with respect to the Class 25 Goods, and from April 9, 2001, with respect to the Class 14 and Class 18 Goods.

4.9 The Complainant states that it and/or its authorized licensee(s) have continuously used since April 30, 1995, and are currently using the trademarks and services marks, HARD ROCK HOTEL and HARD ROCK HOTEL & Design, in interstate commerce with casino services, in association with the Las Vegas HARD ROCK HOTEL AND CASINO establishment.

4.10 Complainant states that the establishment, HARD ROCK HOTEL AND CASINO, located at 4455 Paradise Road, Las Vegas, Nevada 89109, USA, is owned and operated by an authorized licensee of the Complainant. Complainant states that this establishment opened and has been continuously operating from March 10, 1995, to the present.

4.11 The official web site for the HARD ROCK HOTEL AND CASINO, located at 4455 Paradise Road, Las Vegas, Nevada 89109, U.S.A may be located online at <www.hardrockhotel.com>, which offers visitors online casino services, as provided in Annex 8 of the Complaint.

4.12 The Complainant and/or its affiliates have licensed the use of the HARD ROCK HOTEL and HARD ROCK HOTEL & Design marks in connection with the HARD ROCK HOTEL establishments located at Jalan Pantai, Banjar Pande Mas, Kuta, Bali, Indonesia. The official web site for this establishment is <www.hardrockhotelbali.com>.

4.13 The Complainant and/or its affiliates have licensed the use of the HARD ROCK HOTEL and HARD ROCK HOTEL & Design marks in connection with the HARD ROCK HOTEL establishment located at 5800 Universal Boulevard, Orlando, Florida 32819, U.S.A., which is located inside Universal Studios renowned Universal Orlando, a global entertainment resort destination. The HARD ROCK HOTEL establishment opened and has been continuously operating from 19 January 2001 to the present.

4.14 The Complainant states that it and its related affiliates are the owners of the internationally known HARD ROCK CAFÉ and HARD ROCK CAFÉ & Design marks throughout the world, for which hundreds of trademark and service mark registrations have been granted by various governmental intellectual property authorities. Annex 9 of the Complaint provides a copy of the HARD ROCK CAFÉ & Design mark.

4.15 Respondent registered the domain name <hardrockcasino.com> in July 1997. Moreover, Complainant confirmed a web site was operating at the domain name, and the web site offered to visitors sexually explicit material and links to sexually explicit material.

 

5. Parties Contentions

A. Complaint

Complainant states:

"The Complainant is the owner of the trademarks and service marks HARD ROCK HOTEL and HARD ROCK HOTEL & Design. A true and correct copy of the trademark and service mark HARD ROCK HOTEL & Design is provided as Annex 5 to this Complaint. In particular, Registration No. 2,029,859 for HARD ROCK HOTEL & Design, granted by the U.S. Patent and Trademark Office on 14 January 1997, covers "casino service" in International Class 41 and "hotel services" in International Class 42. Registration No. 2,031,803 for HARD ROCK HOTEL, granted by the U.S. Patent and Trademark Office on 21 January 1997, covers "casino services" in International Class 41. True and correct copies of said registrations are provided as Annex 6 to this Complaint. In addition to the foregoing registrations, the U.S. Patent and Trademark Office has granted twenty-eight (28) registrations on the Principal Register for HARD ROCK HOTEL or HARD ROCK HOTEL & Design, and said registrations cover various goodsand services in International Classes 3, 8, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, and 34. The Complainant acquired both marks and all the corresponding registrations by way of merger between Hard Rock Café Licensing Corporation and Hard Rock Café International (USA), Inc., effective 31 December 1997. Said assignment was recorded with the U.S. Patent and Trademark Office on 11 May 1998, Reel/Frame No. 1729/0317. True and correct copies of the additional Certificates of Registration for said marks, said assignment and the Notice of Recordation of Assignment issued by the United States Patent and Trademark Office are provided as Annex 7 to this Complaint."

"The Complainant and/or its authorized licensee(s) has continuously used and is currently using the trademark HARD ROCK CASINO in interstate commerce on the Goods, in association with the HARD ROCK HOTEL AND CASINO establishment located in Las Vegas, Nevada, U.S.A., from 1 January 2001 with respect to the Class 25 Goods and from 9 April 2001 with respect to the Class 14 and Class 18 Goods."

"The Complainant and/or its affiliates have licensed the use of the HARD ROCK HOTEL and HARD ROCK HOTEL & Design marks in connection with the HARD ROCK HOTEL establishment located at Jalan Pantai, Banjar Pande Mas, Kuta, Bali, Indonesia. This establishment opened and has been continuously operating from 15 May 1998 to the present. The establishment has 418 guestrooms, a 110,000 square foot pool, two water slides, spa and fitness facilities, and a number of restaurants and bars. The official web site for this establishment is located http://www.hardrockhotelbali.com."

"The Complainant and/or its affiliates have licensed the use of the HARD ROCK HOTEL and HARD ROCK HOTEL & Design marks in connection with the HARD ROCK HOTEL establishment located at 5800 Universal Boulevard, Orlando, Florida 32819, U.S.A., which is located inside Universal Studios renowned Universal Orlando, a global entertainment resort destination. The HARD ROCK HOTEL establishment opened and has been continuously operating from 19 January 2001 to the present. The establishment has 650 deluxe guestrooms, one of Central Floridas largest swimming pools, a water slide, an underwater audio system, a fitness center, a HARD ROCK HOTEL retail store, a business center and 6,000 square feet of meeting and function room space, and four restaurants and lounges."

"The Complainant and/or its affiliates have licensed the use of the HARD ROCK HOTEL and HARD ROCK HOTEL & Design marks in connection with the HARD ROCK HOTEL establishment located on the beachfront in Pattaya, Thailand. The HARD ROCK HOTEL establishment is scheduled to open 15 October 2001. The establishment is located on 6.9 acres and offers sea and mountain views. The establishment will have 320 guestrooms, a 280-seat restaurant with show kitchens serving Japanese, Mediterranean, Thai and Chinese cuisines, a deli counter, Internet café, banquet facilities, a HARD ROCK CAFÉ restaurant on the beachfront, a swimming pool, a LIL ROCK CLUB for children, gym, spa, massage and salon services."

"Last, but not least, the Complainant and its related affiliates are the owners of the internationally known HARD ROCK CAFÉ and HARD ROCK CAFÉ & Design marks throughout the world, for which hundreds of trademark and service mark registrations have been granted by various governmental intellectual property authorities. A true and correct copy of the HARD ROCK CAFÉ & Design mark is provides as Annex 9 to this Complaint. Said marks are used on and in connection with the world-renowned HARD ROCK CAFÉ establishments located throughout the world. The Complainant submits and provides as Annex 10 to this Complaint the Affidavit and Testimony of James Humann, Esq., Complainants Director of Business Affairs and Assistant General Counsel, testifying as to said trademark and service mark registrations, the number of HARD ROCK CAFÉ establishments, and the famous nature of the HARD ROCK CAFÉ and HARD ROCK HOTEL marks and establishments throughout the world."

"Pursuant to the Complainants and its affiliates extensive use and licensed use of the HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL & Design, HARD ROCK CAFÉ, and HARD ROCK CAFÉ & Design marks throughout the world, Complainant asserts that said marks have acquired substantial and international goodwill that has accrued to the exclusive benefit of the Complainant and its affiliates in their respective geographic regions as identified in Annex 10 attached hereto."

"Pursuant to the Complainants extensive use and licensed use of the HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL & Design, HARD ROCK CAFÉ, and HARD ROCK CAFÉ & Design marks throughout the world, Complainant asserts that its marks have acquired substantial and international goodwill that has accrued to the exclusive benefit of the Complainant."

"On or about February 1998, Complainant discovered that the domain name <HARDROCKCASINO.COM> was registered by Respondent in July 1997. Moreover, Complainant confirmed a web site was operating at the domain name, and the web site offered to visitors sexually explicit material and links to sexually explicit material. True and correct copies of the opening pages of said web site, accessed and printed on 21 February 1998, are provided as Annex 11 to this Complaint."

"Subsequently, Complainant contacted, via telephone, Respondent and asserted the Complainants rights in and to the trademarks, service marks and trade names, HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL AND CASINO, and HARD ROCK CAFÉ, asserted that the Respondents registration and use of the disputed domain name created a likelihood of confusion between the parties and tarnished the Complainants trademarks, service marks and trade names, and demanded the immediate transfer of the disputed domain name to Complainant."

"On 25 February 1998, Complainant sent to the Respondent a letter confirming the telephone discussions between the parties; to wit: asserting that the Respondents registration and use of the disputed domain name created a likelihood of confusion between the parties; confirming the Respondents prior indication that it would take down the web site operating at the disputed domain name as of midnight, 20 February 1998; confirming the Respondents indication that it would transfer the domain name to the Complainant; and instructing the Respondent to contact the Complainants Internet service provider to arrange for the transfer of the domain name. A true and correct copy of said letter is provided as Annex 12 to this Complaint.."

"The Complainant and/or its Internet service provider did not receive a response to its 28 February 1998 letter from the Respondent. Accordingly, on 26 March 1998, the Complainant sent, via certified mail return receipt requested, another letter to the Respondent enclosing a copy of it prior letter and demanding the immediate transfer of the disputed domain name. A true and correct copy of said letter is provided as Annex 13 to this Complaint. A true and correct copy of the executed return receipt for said letter is provided as Annex 14 to this Complaint.."

"Subsequently, the Respondent removed the sexually explicit content from its web site but did not contact the Complainant and/or its Internet service provider to arrange for the transfer of the disputed domain name as it had previously agreed to do."

"On or about July 1999, the Complainant discovered that the Respondent had resumed offering sexually explicit materials and links to sexually explicit materials on the web site operating at the disputed domain name. Complainant repeatedly attempted to contact the Respondent via telephone at the telephone number identified with Network Solutions, Inc. at the time, but the telephone number had been disconnected."

"Accordingly, on 20 July 1999, the Complainant sent, via overnight courier delivery service and e-mail, to the Respondent a letter asserting: the Complainants rights in and to the trademarks, service marks and trade names, HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL AND CASINO, and HARD ROCK CAFÉ; that Respondents registration and use of the disputed domain name created a likelihood of confusion between the parties and tarnished the Complainants trademarks, service marks and trade names; and demanded the immediate termination of use of the disputed domain name. A true and correct copy of said letter is provided as Annex 15 to this Complaint."

"Subsequently, the parties communicated by telephone and reached an apparent agreement whereby the Respondent would transfer the disputed domain name to the Complainant. Accordingly, on 26 July 1999, the Complainant sent, via courier delivery service, a letter confirming their settlement discussions and enclosing a Registrant Name Change Agreement for completion and execution by the Respondent. True and correct copies of said letter and enclosure are provided as Annex 16 to this Complaint."

"The Respondent failed to execute and return the Complainant the Registrant Name Change Agreement."

"In December 2000, the Complainant, and in particular, its new in-house trademark attorney, instructed its outside Representatives to pursue the trademark enforcement action against the Respondent. Accordingly, the Complainants Representatives confirmed that the Respondent still owned the disputed domain name. A true and correct copy of the 8 December 2000 print-out from Network Solutions, Inc.s WhoIs database is provided as Annex 17 to this Complaint."

"In addition, the Complainants Representative attempted to access the web site operating at the disputed domain name. However, a web site was inaccessible, and presumably not operating, since the Complainants Representative received the following message when attempting to access the web site at the disputed domain name: "DNS Host name resolution failed. (www.hardrockcasino.com)". A true and correct copy of the 12 December 2000 print-out of this error message is provided as Annex 18 to this Complaint."

"On 21 December 2000, the Complainants Representative sent, via overnight courier delivery and e-mail, a letter asserting the Complainants rights in and to the trademarks, service marks and trade names, HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL AND CASINO, and HARD ROCK CAFÉ, asserting that the Respondents registration and use of the disputed domain name created a likelihood of confusion between the parties, and demanded the immediate transfer of the disputed domain name to Complainant. A true and correct copy of said letter is provided as Annex 19 to this Complaint."

"On 8 January 2001, the Complainants Representative sent, via overnight courier delivery and e-mail, to the Respondent a second letter to the Respondent demanding a response to her 21 December 2000 letter and enclosing a copy of same. A true and correct copy of said letter is provided as Annex 20 to this Complaint."

"On or about 15 January 2001, the Complainants Representative received, via e-mail and mail, a letter from Larry W. Bell, Jr., President of Bell Management Group, Inc., acting as a representative for the Respondent (the "Respondents Representative"). In his letter, the Respondents Representative indicated that the Respondents President was out of town and she requested him to respond on behalf of the Respondent to the Complainants demands. He advised the Respondents Representative that one of the Respondents primary business interests is "Internet Gaming associations and affiliations and the marketing, development and promotion of those affiliations and associations." He alleged that the Respondent had prior rights in and to the HARD ROCK CASINO mark and that Complainant may be infringing on the Respondents alleged rights in and to said mark. Finally, the Respondents Representative informed the Complainants Representative that the Respondent preferred not to resort to litigation to resolve this dispute and suggested that the Respondent would prefer to enter into "some amicable affiliation with" the Complainant. True and correct copies of said letter and the accompanying e-mail are provided as Annex 21 to this Complaint."

"On 20 April 2001, the Complainants Representative sent, via e-mail and certified mail, a letter to the Respondents Representative: (a) rebutting his allegations that the Respondent may have prior rights in and to the HARD ROCK CASINO mark and that Complainant may be infringing on the Respondents alleged rights in and to the HARD ROCK CASINO mark; and (b) reiterating the Complainants rights and demands as set forth in the 21 December 2001 letter of the Complainants Representative. A copy of this letter was also sent, via facsimile and e-mail, to the Respondent. A true and correct copy of said letter is provided as Annex 22 to this Complaint."

"On or about 14 May 2001, the Complainants Representative sent, via e-mail and certified mail, a letter to the Respondents Representative enclosing a copy of her 20 April 2001 letter and demanding a response thereto by 21 May 2001. A copy of this letter was also sent, via facsimile and e-mail, to the Respondent. A true and correct copy of said letter is provided as Annex 23 to this Complaint."

"On or about 17 May 2001, the Complainants Representative received, via facsimile, e-mail and mail, a letter from the Respondents Representative informing the Complainants Representative that the Respondents President was out of the country and "unavailable for complete assessment and evaluation" of this dispute. The Respondents Representative requested the Complainants Representative to instruct the Complainant to schedule a meeting between the parties; in particular, between Mr. Craig McIntyre and Mr. Chris Tomasso, Vice President of Design and Development and Vice President of Marketing of the Complainant, respectively, and Ms. Rosemarie Moffett, President of the Respondent. Moreover, the Respondents Representative indicated that prior to any such meeting, the parties should execute a "Mutual Non-Disclosure Agreement." True and correct copies of said facsimile, e-mail and mail letter are provided as Annex 24 to this Complaint."

"On or about 22 May 2001, the Complainant sent, via mail, to the Respondents Representative a letter acknowledging receipt of a copy of his 17 May 2001 letter to the Complainants Representative and requesting he advise the Complainant whether the Respondents President had ever met with Mr. McIntyre and/or Mr. Tomasso. In addition, the Complainant requested a written agenda for the proposed meeting between the parties. A true and correct copy of said letter is provided as Annex 25 to this Complaint."

"On or about 29 May 2001, the Complainant received from the Respondents Representative a letter advising the Complainant that the Respondents President had never met or had any meetings, communications or correspondence with Messrs. McIntyre and Tomasso. Furthermore, the Respondents Representative refused to provide a written agenda to the Complainant in response to his request. The Respondents Representative refused to provide such an agenda unless and until the Complainant entered into a "Mutual Non-Disclosure Agreement" with the Respondent. The Respondents Representative enclosed with his letter such an agreement entitled "Acknowledgement", which he executed on 29 May 2001. Copies of said letter and enclosure are provided as Annex 26 to this Complaint."

"The Complainant did not and will not execute and/or return said "Mutual Non-Disclosure Agreement/Acknowledgement" to the Respondents Representative or to the Respondent. It is Complainants belief, based on the foregoing circumstances, that said Agreement/Acknowledgement is nothing more than an ill-disguised attempt by the Respondent and its Representative to cloak its/their demands: for exorbitant compensation from the Respondent to transfer the dispute domain name to the Respondent; or for a continuous business relationship with the Complainant which will generate a continuous source of income to the Respondent; in the guise and protection of a confidentiality contract."

"If, as the Complainant suspects, the Respondent and/or its Representative were to make such demands within the protection of such a contract, either one or both of the demands would constitute valuable consideration in excess of the Respondents out-of-pocket costs directly related to the disputed domain name."

"During the foregoing, the Complainants Representative confirmed that the Respondent was administratively dissolved under the laws of Florida, and such dissolution was filed with the Florida Secretary of State Office on 16 October 1998. True and correct copies of 25 July 2000 print-outs from the Florida Secretary of State Office online database confirming the foregoing are provided as Annex 27 to this Complaint."

"Moreover, the Complainants Representative confirmed the nature of the relationship between the Respondent and its Representative. According to the Florida Secretary of State Office records for the Respondents Representative, Ms. Rosemarie Moffett, the President of the Respondent, is also an officer/director of the Respondents Representative. True and correct copies of the 25 July 2001 print-outs from the Florida Secretary of State Office online database confirming the foregoing are provided as Annex 28 to this Complaint."

"Based on the Complainants rights in and to the following marks: HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL AND CASINO, and HARD ROCK CAFÉ, as set forth hereinabove, Complainant asserts that the disputed domain name, HARDROCKCASINO.COM is identical or confusingly similar to Complainants trademarks and service marks, in which Complainant has prior and superior rights."

"Based on the foregoing, Complainant asserts that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. In particular: Respondent is not an authorized licensee of Complainant or any of its affiliates. Complainant has not granted Respondent any license or consent, express or implied to use the Complainants mark in a domain name or in any other manner."

"The disputed domain name was registered (i) after the opening date of the authorized HARD ROCK HOTEL AND CASINO establishment in Las Vegas, Nevada, U.S.A.; (ii) after Complainant and/or its authorized licensee(2) commenced use of the HARD ROCK HOTEL marks in connection with casino services; and (iii) after Complainants HARD ROCK HOTEL and HARD ROCK CAFÉ marks became internationally famous."

"Given the international renown of the HARD ROCK HOTEL and HARD ROCK CAFÉ marks, the Complainant asserts that the Respondent must have known of said marks, and in particular, the HARD ROCK HOTEL AND CASINO establishment in Las Vegas, Nevada, U.S.A., and the accompanying usage of said trade name and the HARD ROCK HOTEL trademark and service mark."

"To the best of Complainants knowledge, Respondent has not and does not use the trademark, service mark or trade name, HARD ROCK CASINO, except as the disputed domain name, and has not been commonly known by the disputed domain name."

"The Respondent is not making or made a legitimate non-commercial or fair use of the disputed domain name. The Respondent is a dissolved corporation under the laws of the State of Florida, and therefore, is legally incapable of owning or voluntarily transferring assets such as the disputed domain name."

"Based on the foregoing, Complainant asserts that the circumstances surrounding the Respondents registration and use of the disputed domain name clearly indicated that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of the trademark or service mark, e.g., the Complainant, for valuable consideration in excess of the Respondents out-of-pocket costs directly related to the disputed domain name. In particular, the Respondent and/or its Representative requested a meeting with the Complainant to discuss "some amicable affiliation" between the parties, yet refused to provide the Complainant with a written agenda for such a meeting unless and until the parties entered into a "Mutual Non-Disclosure Agreement."

"The Respondents Representative forwarded to the Complainant such a proposed agreement entitled "Acknowledgement" for execution by the Complainant. The Complainant considers the Respondents and its Representatives proposed Agreement/Acknowledgement as nothing more than a contractual cloak of secrecy to hide the Respondents bad faith intentions of selling, renting or otherwise transferring the disputed domain name to the Complainant for valuable consideration in excess of the Respondents out-of-pocket costs directly related to the disputed domain name."

"Based on the foregoing, Complainant asserts that the circumstances surrounding the Respondents registration and use of the disputed domain name clearly indicate that the disputed name was registered or acquired in bad faith primarily for the purpose of preventing Complainant from reflecting the mark in a corresponding domain name. In particular:

(a) the Respondent failed to transfer the disputed domain name to the Complainant, not once but on two occasions, despite its verbal assurances to the Complainant that it would do so. The Respondents verbal agreement to transfer the disputed domain name is evidenced by the Complainants letters to the Respondent confirming such discussions, and in one case, enclosing a Registrant Name Change Agreement, see Annexes 12 and 16 to this Complaint.

(b) the Respondent is not currently operating a web site at the dispute domain name, due in part to the Complainants efforts against the Respondent. The passive holding of a domain name may constitute bad faith use when taking into consideration the overall context of the Respondents behavior. E.g., Ferrari S.p.A. v. JK Marketing, WIPO Case No. D2001-1003 (WIPO October 8, 2001). In this case, the Respondents behavior throughout this dispute clearly constitutes its bad faith registration and use of the disputed domain name."

"Based on the foregoing, Complainant asserts that the circumstances clearly indicate that that the disputed name was registered or acquired in bad faith primarily for the purpose of intentionally attempting to attract, and continue to attempt to attract, for financial gain, Internet users to the Respondents web site or other on-line location, by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of the Respondents web site or location or of a product or service on the Respondents web site or location. In particular, Respondents two (2) former web sites at the disputed domain name provided sexually explicit content and links to sexually explicit content to site visitors. Respondent removed such content only after receiving notice from the Complainant of its objections to said content."

Complainant further states in their amended Complaint:

"On 22 January 2002, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, which the Center sent, via post/courier and e-mail, to: Respondent, Respondents Administrative and Billing Contact, and the Respondents Technical Contact. The Center sent, via e-mail, a copy of said Notification to Complainants Representative, ICANN and VeriSign, Inc., formerly known as Network Solutions, Inc., the registrar with which the disputed domain name is registered. The last day for Respondent to send a Response to the Complaint and to the Center was 11 February 2002. A true and correct copy of said Notification is provided as Annex 3 to this Amended Complaint."

"On 23 January 2002, Respondents Technical Contact informed the Center that he was no longer Respondents Technical Contact and that all communications should be sent to Respondents new hosting company via its web site located at www.advancednetservice.com. On 26 January 2002, Respondents Technical Contact provided to the Center additional information which he believed was Respondents correct Technical Contact address and e-mail address. True and correct copies of said communications are provided as Annex 4 to this Amended Complaint."

"On 5 February 2002, the Center again sent its 22 January 2002 Notification, see Annex 3, to the parties, their respective contacts and representatives, and to the additional address and e-mail address for Respondents Technical Contact. A true and correct copy of said communication is provided as Annex 5 to this Amended Complaint."

"On or about 8 February 2002, Respondents President, Ms. Rosemarie Moffett, sent to Complainant a letter enclosing a duly executed and notarized Registrant Name Change Agreement. Ms. Moffett executed the Registrant Name Change Agreement as President of Respondent, and her signature was notarized. The package in which said documents were sent to Complainant identifies Respondents Representative, identified in Complaint as Bell Management Group, as the sender of said documents. True and correct copies of the letter, the Agreement and the shipping label are provided as Annex 6 to this Amended Complaint."

"On 15 February 2002, the Center issued a Notification of Respondent Default, which the Center sent, via e-mail, to: Respondent, Respondents Administrative and Billing Contact, Respondents Technical Contact, and Complainants Representative. A true and correct copy of said Notification is provided as Annex 7 to this Amended Complaint."

"Complainant alleges that Ms. Moffetts attempts to resolve this dispute are further evidence of Respondents bad faith use and registration of the disputed domain name; to wit: (a) the Agreement Ms. Moffett executed is the Agreement that Complainant sent to Respondent on July 26, 1999, over two and one half (2 ) years ago, albeit, Complainants letter was addressed to Mr. Ronald Wasserman; and (b) Ms. Moffett executed the Agreement, and her signature was notarized, as President of Respondent despite the fact that Respondent was administratively dissolved under the laws of the State of Florida as of 16 October 1998, and therefore, Respondent is legally incapable of transferring the disputed domain name to Complainant. As confirmation of the foregoing, Complainant refers the Panel to Annexes 16 and 27 of the Complaint."

"Based on the foregoing additional information in conjunction with the circumstances set forth in its Complaint filed with the Center on 10 January 2002, Complainant asserts that the circumstances surrounding Respondents registration and use of the disputed domain name clearly indicate that the disputed domain name was registered or acquired in bad faith primarily for the purpose of preventing Complainant from reflecting the mark in a corresponding domain name. Complainant asserts Respondents insufficient attempt at this late date to resolve the dispute merely serves the purpose of trying to avoid the Panel and the Center from issuing a decision in this Case."

B. Response

Respondent did not file a response to the Complaint.

 

6. Discussion and Findings

6.1 The Uniform Domain Name Dispute Resolution Policy , adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

6.3 WIPO forwarded notification of the complaint and the amended complaint to the Respondents via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. WIPO also forwarded notification of default to the Respondent via email.

6.4 Currently the <hardrockcasino.com> web site is provides only the message, "You are not authorized to view this page."

6.5 Based on the methods employed to provide the Respondent with notice of the Complaint and amended complaint and the subsequent use of a default screen by the Respondent's technical contact, who was also notified of the Complaint, together with the notarized Registrant Name Change Agreement signed by Ms. Rosemarie Moffett, the President of the Respondent, and sent to Complainant, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply to WIPO is not due to any omission by WIPO.

6.6 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondents domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondents domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

6.7. As the Respondent has failed to submit a response to the Complaint, the Panel accepts as true all of the allegations of the Complaint. (Talk City, Inc. v. MichaelRobertson, WIPO Case No. D2000-0009, February 29, 2000)

6.8 The Panel finds that the domain name <hardrockcasino.com> is identical or confusingly similar to Complainant's registered HARD ROCK HOTEL and HARD ROCK CAFÉ and HARD ROCK CASINO marks owned by Complainant, and that the Complainant has established that it has rights in the name, "HARD ROCK CASINO" pursuant to paragraph 4(a)(i) of the Policy. The addition of the generic top level domain indicator ".com" fails to render it from being virtually identical to the Complainants registered mark, HARD ROCK CASINO. (Playboy Enterprises International, Inc. v. Tonya Flynt Foundation, WIPO Case No. D2001-1002, November 16, 2001)

6.9 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:

(i) before any notice to you [Respondent] 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.

6.10 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <hardrockcasino.com>. Respondent is not an authorized licensee of Complainant or any of its affiliates. Complainant has not granted Respondent any license or consent, express or implied to use the Complainants mark in a domain name or in any other manner. (See Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778, October 1, 2001) Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <hardrockcasino.com>, pursuant to paragraph 4(a) (ii) of the Policy.

6.11 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b) (iii) states:

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor;

6.12 The Panel finds that the circumstances surrounding Respondents registration and use of the disputed domain name clearly indicate that the disputed domain name was registered or acquired in bad faith primarily for the purpose of preventing Complainant from reflecting the mark in Complainants domain name. At the time Respondent registered the domain name, <hardrockcasino.com> in July, 1997, Complainant and its related affiliates already owned numerous trademark registrations and pending applications for HARD ROCK CAFÉ and for HARD ROCK HOTEL. In particular, HARD ROCK HOTEL, Registration Number 2,029,859 for HARD ROCK HOTEL & Design was granted by the U.S. Patent and Trademark Office on January 14, 1997, and covers goods and services including "casino services." Furthermore, Respondent registered the disputed domain name after the opening date of the authorized HARD ROCK HOTEL AND CASINO establishment in Las Vegas, Nevada, USA, and after Complainant and its authorized licensees commenced use of the HARD ROCK HOTEL trademarks in connection with casino services. Finally, the Panel finds that the Respondent knew or should have known of the HARD ROCK CAFÉ and HARD ROCK HOTEL trademarks prior to registering the disputed domain name. See Playboy Enterprises International, Inc. v. Vileshome, WIPO Case No. D2001-1082, October 30, 2001.

6.13 Paragraph 4(b)(iv) of the Policy states:

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."

Complainant has provided evidence that Respondent offered sexually explicit material on the <www.hardrockcasino.com> web site. The Panel has already found that the disputed domain name is confusingly similar to the Complainants various trademarks. In the absence of contrary evidence, the Panel finds that Respondent intentionally used the domain name <hardrockcasino.com> to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants various trademarks as to the source, sponsorship, affiliation, or endorsement of the <www.hardrockcasino.com> website.

The Panel finds the Complainant has established that the Respondent registered and used the domain name <hardrockcasino.com> in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.

 

7. Decision

As the Complainant, Hard Rock Café International (USA), Inc., has established each of the three elements in paragraph 4(a) of the Uniform Policy, the Panel orders that the domain name <hardrockcasino.com> be transferred to the Complainant.

 


 

R. Eric Gaum
Sole Panelist

Dated: April 4, 2002

 

: https://internet-law.ru/intlaw/udrp/2002/d2002-0022.html

 

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