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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hard Rock Cafй International (USA) Inc. v. Josh Aaron

Case No. D2007-0467

 

1.The Parties

Complainant is Hard Rock Cafй International (USA), Inc. (“Complainant”), a corporation with its principal place of business located Orlando, Florida, United States of America.

Respondent is Josh Aaron (“Respondent”), an individual located in Potomac, Maryland, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <hardrockhighroller.com> (the “Domain Name”). The registrar is GoDaddy.com, Inc. (the “Registrar”) located in Arizona, United States of America.

3. Procedural History

On March 27, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On March 29, 2007, the Center received hardcopy of the Complaint. On March 29, 2007, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. Complainant paid the required fee.

On March 30, 2007, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

The Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On April 3, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

After some communication from Respondent, the Center declared the Respondent to be in default.

On May 21, 2007, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.

4. Factual Background

Complainant is a leading international restaurant, hotel and casino chain. Its branded services are known throughout the world and it trades under the names HARD ROCK, HARD ROCK CAFЙ, HARD ROCK HOTEL, HARD ROCK CASINO and numerous other HARD ROCK brands.

Complainant began trading as HARD ROCK CAFЙ in June 1971, when the first hard Rock Cafй establishment was opened in London, United Kingdom. Complainant now operates HARD ROCK CAFЙ establishments throughout the world and its HARD ROCK brand is globally renowned. Complainant also operates an extensive brand merchandising business, which includes food, clothing, badges and other collectibles featuring the HARD ROCK brand. Complainant operates a chain of specialized merchandise shops. It also sells branded goods and promotes its restaurant, hotel and casino services through its website at “www.hardrock.com”. In 2005, Complainant’s cafй business alone sold US $146.4 million in merchandise.

Complainant has expanded its HARD ROCK brand into hotels and casinos. In 1995, the first Hard Rock Hotel & Casino was opened in Las Vegas. Complainant now operates further casinos based in its Hard Rock Hotels in Hollywood, Florida and Tampa, Florida. A further casino will open in Biloxi, Mississippi in 2007. Complainant operates a Hard Rock Casino in London and, until October 26, 2006, it also operated an online casino from it website at “www.hardrockcasino.com” which included an affiliate scheme.

Complainant’s worldwide home page for its hotel services is at “www.hardrockhotels.com”. Complainant’s affiliates operate a website at “www.hardrockhotel.com” through which customers and potential customers may view the services available at Hard Rock Hotels, and make reservations for accommodations and events. Complainant’s Hard Rock Hotels are located in numerous cities across the United States of America, and in both Thailand and Indonesia.

In each of the 2004 and 2005 financial years, Complainant’s global turnover exceeded US $300 million and it’s spent over US $7 million on advertising and promoting its HARD ROCK brands, including HARD ROCK CASINO.

Complainant is the owner of several U.S. trademark registrations corresponding to its brand names, including: HARD ROCK CAFЙ, HARD ROCK HOTEL, HARD ROCK CASINO and HARD ROCK LIVE.

These trademarks are registered throughout the world as well.

The Domain Name was registered by Respondent on January 18, 2006. Complainant became aware of Respondent’s registration of the Domain Name in October 2006. On September 1, 2006, Complainant made a demand upon Respondent for transfer of the Domain Name.

Complainant contends that the Domain Name resolves to a page headed Hard Rock High Roller which offers online casino games. The website banner contained Complainant’s distinctive guitar logo and the words “Hard Rock” displayed in two concentric circles which is the middle section of Complainant’s distinctive guitar logo. Respondent’s website also sought out affiliates promising them a strong additional revenue stream.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has various registrations of trademarks including as their substantive element the words “hard rock” (the “Marks”), that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the Marks. 15 U.S.C. § 1115.

ii. Complainant argues that the Domain Name is confusingly similar to the Marks, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates substantive element HARD ROCK with the addition of the descriptive terms “.com” and “highroller.”

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Marks in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because he is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

Complainant contends that Respondent had asserted in an email prior to the filing of this proceeding that Respondent was merely trying to appeal to Baby Boomers who love rock music and gambling. Complaint points out that there is no evidence on Respondent’s website that rocking Baby Boomers are the target audience.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Among its allegations, Complainant contends that Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website as being affiliated with Complainant.

B. Respondent’s contentions

Respondent has contacted Complainant and the Center with a series of emails. None of these emails can properly be deemed a response to the Complaint. Therefore, the Panel finds that no formal response has been filed.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. Certain of the arguments made by Respondent in his emails to Complainant will be considered.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

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

iii) that the domain name has been registered and is being used in bad faith.

A. Enforceable Trademark Rights

Complainant contends that it has various registrations of trademarks including as their substantive element the words HARD ROCK (the “Marks”), that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the Marks. 15 U.S.C. § 1115.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is the Panel’s belief that Respondent has not met its burden. Respondent has chosen not to contest the validity of Complainant’s Marks.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.

B. Identity or Confusing Similarity

Complainant argues that the Domain Name is confusingly similar to the Marks, pursuant to Paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the substantive element HARD ROCK with the addition of the descriptive terms “.com” and “highroller.”

Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the Marks.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to Complainant’s registered Marks.

We must first determine whether the domain name at issue is identical or confusingly similar to the Marks in which Complainant has rights. The Policy specifically directs the Panel’s attention to a mark “in which the Complainant has rights,” and not to a mark in which Respondent has rights. The Panel is to compare the mark and the domain name alone, independent of the use factors usually considered in a traditional infringement action. InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafй, WIPO Case No. D2000-0068. There is no dispute that Complainant has rights in the HARD ROCK Marks. Numerous Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. See, e.g., Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; Gorstew Limited, Jamaica, and Unique Vacations, Inc. v. Cottrell Travel, NAF Case No. FA94923.

The addition of “.com” is a gTLD required for registration and therefore is not distinctive. In addition, the terms “high roller” is one of common and descriptive application in gambling for a person who bets large amounts. Accordingly, the Panel finds that the Domain Name is confusingly similar to the Marks in which the Complainant has rights. Therefore, the Panel finds that the Domain Name is confusingly similar to the HARD ROCK Marks pursuant to the Policy Paragraph 4(a)(i).

C. Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name. Complainant further contends that Respondent had asserted in an email prior to the filing of this proceeding that Respondent was merely trying to appeal to Baby Boomers who love rock music and gambling. Complainant points out that there is no evidence on Respondent’s website that rocking Baby Boomers are the target audience.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

The Policy Paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(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 [Respondent] (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 [Respondent] 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.

The Complainant has sustained its burden of alleging that the Respondent lacks rights to or legitimate interests in the Domain Name. Although Respondent purportedly asserted that it was targeting Baby Boomers who were aficionados of hard rock and gambling, the evidence regarding this purpose is unconvincing. Therefore, Respondent has failed to come forward with concrete evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of such services.

The file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy Paragraph 4(a)(ii).

D. Bad Faith.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) 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.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii). Among its allegations, Complainant contends that Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website as being affiliated with Complainant.

The Panel notes that Respondent has used the distinctive guitar logo and the name “Hard Rock” within the two circles which is the middle part of the logo.

The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv). Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(iv) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Panelist concludes (a) that the Domain Name <hardrockhighroller.com> is confusingly similar to Complainant’s registered Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

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Richard W: Page
Sole Panelist

Dated: June 4, 2007