WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hard Rock Café International (USA), Inc. v. WW Processing
Case No. D2002-0021
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 WW Processing, an entity of unknown legal status, located in Nevis, Saint Kitts and Nevis, and whose contact information provides an address located at Heritage Plaza, Main Street Charlestown, Nevis, Saint Kitts and Nevis, according to the Tucows Inc. Whois database.
2. The Domain Name and Registrar
2.1 The disputed domain name is .
2.2 The registrar of the disputed domain name is Tucows Inc., with a business address in Toronto, Ontario, Canada.
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 18, 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 18, 2002, WIPO transmitted notification of the Complaint and commencement of the proceedings to Respondent.
3.4 February 12, 2002, WIPO transmitted notification to Respondent of its default in responding to the Complaint.
3.5 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.
3.6 On 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.
3.7 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.
3.8 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, sweat shirts, 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), Inc.
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 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 may be located online at , 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 .
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 January 19, 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 acquired the domain name and registered it with Tucows Inc. sometime between July 30, 2001, and August 15, 2001.
5. Parties� Contentions
A. Complaint
Complainant states that it is the owner of the trademark HARD ROCK CASINO, the service mark HARD ROCK CASINO, and HARD ROCK HOTEL and HARD ROCK HOTEL & Design. Copies of the trademarks and service marks were provided as Annexes to this Complaint.
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 by Complainant in Annex 10, pursuant to the 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 states:
"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 goods and 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 December 31, 1997. Said merger and transfer of marks 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 U.S. 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 authorized licensee(s) has continuously used since 30 April 1995 and is 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."
Copies of worldwide trademark applications and registrations for the Trademarks owned by Hard Rock Café International (USA) were attached in Annex 3 through Annex 7 by Complainant, including but not limited to evidence of Complainant�s rights in and to the trademarks, service marks and trade names, HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL AND CASINO, HARD ROCK CAFÉ and HARD ROCK LIVE, and in particular:
- U.S. Registration No. 2,499,114, for HARD ROCK CASINO, filed on July 1, 1998 consisting of goods covering "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
- Serial No. 75/511,501 Service mark application for HARD ROCK CASINO, filed with the United States Patent and Trademark Office, on July 1, 1998, HARD ROCK CASINO 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.
Furthermore, Complainant provided the Affidavit and Testimony of James Humann, Director of Business Affairs and Assistant General Counsel of for Hard Rock Café International (USA), Inc., who declared on January 8, 2002, that he is responsible for protection of the HARD ROCK CASINO, HARD ROCK HOTEL, and HARD ROCK CAFÉ trade names, trademarks, service Marks and logos, ("HARD ROCK CAFÉ MARKS") as used and licensed to be used for restaurant services, clothing and other merchandise.
Mr. Humann declared that Rank, through the various member companies of the Hard Rock Café Group, now owns all right and title and interest in the various HARD ROCK CAFÉ MARKS, which are registered in over 100 countries around the world, including the U.S.A., Saint Christopher ("St. Kitts") and Nevis, the United Kingdom, Australia, Western Europe, Canada, Mexico, South America, Central America, Africa, and Asia. A schedule of those trademark registrations and applications was attached and incorporated by reference as Exhibit 2 of Mr. Humann�s Affidavit and Testimony.
Hard Rock Limited holds all rights, title and interest in and to the HARD ROCK CAFÉ for which registrations were granted by the Saint Christopher ("St. Kitts) and Nevis Intellectual Property Office on July 7, 1999, Registration Nos. 4920 and 118 as attached in Exhibit 5 of his Affidavit and Testimony.
Complainant also states:
"The HARD ROCK HOTEL AND CASINO establishment located at 4455 Paradise Road, Las Vegas, Nevada 89109, U.S.A, is owned and operated by an authorized licensee of the Complainant."
"The official web site for this establishment is located online at , which offers visitors online casino services. True and correct copies of print-outs from said web site evidencing the online casino services are provided as Annex 8 to this Complaint."
Complainant stated that on or about November 2000, Complainant discovered that the domain name was registered by F. Demarco, an individual that was not licensed by the Complainant. Complainant further indicated that the record for the disputed domain name was created on April 15, 1999. "F. Demarco is a predecessor-in-interest to the Respondent. According to Network Solutions, Inc.�s WhoIs database as of 8 December 2000, Global Interactive, located at Orion House, Wellington Road, P.O. Box 1281, Basseterre, St. Kitts and Nevis, was identified as the administrative contact and the billing contact for this domain name. A true and correct copy of said December 8, 2000 WhoIs record for the disputed domain name is provided as Annex 11 to this Complaint."
"The Complainant confirmed a web site was operating at the domain name and promoted and provided online casino services. The web site identified Planet Rock Entertainment, located at St. John�s, Antigua, West Indies, as a contact for e-mail support relating to the web site. A true and correct copy of the opening page of said web site, accessed and printed on 12 December 2000, is provided as Annex 12 to this Complaint."
Complainant indicates further efforts taken:
"On 21 December 2000, the Representative of the Complainant sent, via Federal Express courier delivery service, to F. Demarco a letter asserting the Complainant�s rights in and to the trademarks, service marks and trade names, HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL AND CASINO, HARD ROCK CAFÉ and HARD ROCK LIVE, asserting that F. Demarco�s registration and use of the disputed domain name created a likelihood of confusion between the parties, and demanding the immediate cancellation of the disputed domain name (hereinafter "Complainant�s First Notice Letter"). Copies of said letter were also sent to the administrative and billing contacts via e-mail, facsimile and courier. A true and correct copy of said letter is provided as Annex 13 to this Complaint."
"On 21 December 2000, the Representative of the Complainant sent, via Federal Express courier delivery service, to Pressaid, an unknown entity located at 5433 Cartwright Ave., North Hollywood, California 91601, U.S.A., a letter asserting the Complainant�s rights in and to the trademarks, service marks and trade names, HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL AND CASINO, HARD ROCK CAFÉ and HARD ROCK LIVE, asserting that Pressaid�s registration and use of the domain name, , created a likelihood of confusion between the parties, and demanding the immediate cancellation of the said domain name (hereinafter "Complainant�s Pressaid Notice Letter")."
"Favio de Marco, an individual located at 5433 Cartwright Ave., North Hollywood, California 91601, was identified as the administrative contact for said domain name. A true and correct copy of the 8 December 2000 WhoIs record for said domain name is provided as Annex 14 to this Complaint."
"Copies of Complainant�s Pressaid Notice Letter were also sent to Pressaid�s identified administrative and billing contacts via e-mail, facsimile and courier. A true and correct copy of said letter is provided as Annex 15 to this Complaint."
"On or about 22 December 2001, the Complainant�s Representative received an e-mail from "Mark K, Site Manager", in response to Complainant�s Pressaid Notice Letter relating to the domain name, THEHARDROCKCASINO.COM. In it, "Mark K" agreed to comply with the Complainant�s demands and take down the web site currently operating at the domain name address. A true and correct copy of said correspondence is provided as Annex 16 to this Complaint."
"On or about 8 January 2001, Federal Express courier delivery service returned to Complainant�s Representative Complainant�s First Notice Letter addressed to F. Demarco regarding the dispute domain name because it was unable to deliver the letter. Apparently, F. Demarco�s identified address apparently did not exist. Complainant�s additional attempts to deliver, via alternative means, its First Notice Letter to F. Demarco were unsuccessful."
"Based on the similarities between F. Demarco�s and Pressaid�s respective addresses and the fact that Favio de Marco was identified as the administrative contact for Pressaid�s domain name registration, on or about 5 April 2001, Complainant�s Representative sent, via certified mail and e-mail, a letter to Pressaid, asserting F. Demarco and Pressaid were related or one in the same. Based on Pressaid�s 22 December 2000 offer to comply with the Complainant�s demands, Complainant�s Representative forwarded to Pressaid three (3) original Domain Name Agreements to transfer ownership of the domain names, HARDROCKCASINOS.COM and THEHARDROCKCASINO.COM, from F. Demarco and Pressaid, respectively, to the Complainant. Complainant�s Representative also sent copies of this letter to the respective administrative and billing contacts, including F. Demarco, Favio de Marco and Global Interactive. A true and correct copy of Complainant�s letter and enclosures is provided as Annex 17 to this Complaint."
"On 1 May 2001, the Complainant�s Representative sent, via certified mail and e-mail, a follow-up letter to Pressaid, requesting return of the executed Domain Name Agreements. Complainant�s Representative also sent copies of this letter to the respective administrative and billing contacts, including F. Demarco, Favio de Marco and Global Interactive. A copy of said letter is provided as Annex 18 to this Complaint."
"On or about 2 May 2000, the Complainant�s Representative received, via e-mail, a communication from Favio De Marco advising that a company director will complete the Agreements. In addition, Favio De Marco asserted that he did not own either one of the domain names. A true and correct copy of the print-out of said e-mail is provided as Annex 19 to this Complaint."
"On or about 14 May 2001, the Complainant�s Representative sent, via Federal Express courier delivery service and e-mail, a letter to Favio De Marco enclosing copies of three (3) WhoIs print-outs for the disputed domain name, HARDROCKCASINOS.COM, which evidenced his ownership, in his personal capacity, of the disputed domain name. A true and correct copy of said letter is provided as Annex 20 to this Complaint."
"On or about 17 May 2001, the Complainant�s Representative received, via e-mail, a communication from Favio De Marco advising that the domain name agreements would be executed and returned to Complainant�s Representative."
"On or about 18 May 2001, the Complainant�s Representative sent, via e-mail, to Favio De Marco, a communication acknowledging receipt of his 17 May 2001 e-mail. On or about 29 May 2001, the Complainant�s Representative received, via e-mail, a communication from Favio De Marco advising that the domain name agreements were being returned to Complainant�s Representative. True and correct copies of said e-mail communications are provided as Annex 21 to this Complaint."
"On or about 4 June 2001, the Complainant�s Representative received from Favio De Marco, the Domain Name Agreement relating to the disputed domain name. A true and correct copy of said Agreement is provided as Annex 22 to this Complaint."
"On or about May 3, 2001, the Complainant�s Representative checked the status of the disputed domain name and discovered it was no longer owned by F. Demarco. Rather, according to OpenSRS� WhoIs database, Global Interactive, an unknown entity, located at Orion House, Wellington Road, Basseterre, St. Kitts and Nevis, was now the registrant. Global Interactive was the administrative contact for the disputed domain name when it was owned by F. Demarco. A true and correct copy of the 3 May 2001 OpenSRS� WhoIs print-out is provided as Annex 23 to this Complaint."
"Furthermore, the Complainant�s Representative discovered the web site formerly operating at the disputed domain name address had been taken down. Upon attempting to access said web site, the Complainant�s Representative was automatically directed to a different web site operating at the domain name address, PLANETROCKCASINO.COM. Said web site offered and provided online casino services."
Complainant states:
"Currently, the foregoing still applies when attempting to access the web site located at the disputed domain name. True and correct copies of the 3 May 2001 and 3 January 2002 print-outs of the web sites at the disputed domain name and the PLANETROCKCASINO.COM domain name are provided as Annex 24 to this Complaint."
"The domain name "Accordingly, on or about 30 July 2001, the Complaint�s Representative sent, via facsimile, e-mail and Federal Express delivery courier service, to Global Interactive a letter asserting the Complainant�s rights in and to the trademarks, service marks and trade names, HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL AND CASINO, HARD ROCK CAFÉ and HARD ROCK LIVE, asserting that Global Interactive�s registration and use of the disputed domain name created a likelihood of confusion between the parties, and demanding the immediate transfer of the disputed domain name to the Complainant (hereinafter "Complainant�s Second Notice Letter"). A true and correct copy of said letter is provided as Annex 26 to this Complaint." "On or about 14 August 2001, the Complaint�s Representative sent, via e-mail and Federal Express delivery courier service, to Global Interactive a second letter demanding a reply to Complainant�s Second Notice Letter. A true and correct copy of said letter is provided as Annex 27 to this Complaint." "On or about 15 August 2001, the Complainant�s Representative received an e-mail communication from Peter Smith-Gibbon, Systems Administrator of Global Interactive, advising Complainant�s Representative that he was asked to coordinate the transfer of the disputed domain name to the Complainant. In response, on or about 15 August 2001, the Complainant�s Representative sent to Peter Smith-Gibbon an e-mail communication acknowledging his intent to comply with the Complainant�s demands and advising him that she would forward to him documents to transfer the disputed domain name. True and correct copies of said e-mail correspondence are provided as Annex 28 to this Complaint." "In response to the foregoing, on or about 15 August 2001, the Complainant�s Representative checked Network Solutions, Inc.�s WhoIs database to confirm Global Interactive�s ownership of the disputed domain name. Complainant�s Representative discovered that Global Interactive no longer owned the disputed domain name. Rather, WW Processing, Respondent herein, an unknown entity located at Heritage Plaza, Main Street, Charlestown, St. Kitts, and Nevis, was the new owner of the disputed domain name. A true and correct copy of the 15 August 21 WhoIs record for the domain name is provided as Annex 29 to this Complaint." "Accordingly, and based on the foregoing, Complainant herewith files this Complaint against Respondent WW Processing and simultaneously sends, via Federal Express courier delivery services, to Respondent a letter asserting the Complainant�s rights in and to the trademarks, service marks and trade names, HARD ROCK CASINO, HARD ROCK HOTEL, HARD ROCK HOTEL AND CASINO, HARD ROCK CAFÉ and HARD ROCK LIVE, asserting that Respondent�s registration and use of the disputed domain name creates a likelihood of confusion between the parties, and demands the immediate transfer of the disputed domain name to the Complainant (hereinafter "Complainant�s Third Notice Letter")." "Copies of said letter are also being sent, via e-mail, facsimile and courier, to the Respondent�s administrative and billing contacts, located at Heritage Plaza, Main Street, Charlestown, St. Kitts and Nevis. The Complainant notes that the Respondent, its predecessors-in-interest and/or their respective administrative, technical and billing contacts are/were located in Nevis and St. Kitts, and in some cases, at the same address. A true and correct copy of said letter is provided as Annex 30 to this Complaint." "The Complainant�s actions of filing this Complaint and simultaneously sending Complainant�s Third Notice Letter to the Respondent is intended to preclude the Respondent from transferring the disputed domain name as its two (2) predecessors-in-interest have done upon receipt of the Complainant�s Notice Letters. Pursuant to the Policy, Paragraph 8(a)(i), Respondent may not transfer the disputed domain name registration to another holder during a pending administrative proceeding brought pursuant to Paragraph 4 of the Policy or for a period of fifteen (15) business days (as observed) in the location of ICANN�s principal place of business) after such proceeding is concluded. ICANN reserves the right to cancel any transfer of a domain name registration to another holder that is made in violation of said subparagraph." "Based on the Complainant�s 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, HARDROCKCASINOS.COM is identical or confusingly similar to Complainant�s trademarks and service marks, in which Complainant has prior and superior rights. In particular: (a) The disputed domain name incorporates Complainant�s HARD ROCK CASINO registered trademark in its entirety, which is sufficient to establish that a domain name is identical or confusingly similar to Complainant�s registered mark. See, e.g., Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (October 1, 2001); Lancôme Parfums et Beauté & Cie v. SL, Proteccion de Dominios, WIPO Case No. D2001-0910 (September 19, 2001); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001). (b) Respondent�s addition of the plural suffix "s" to the disputed domain name fails to render it from being virtually identical to the Complainant�s registered mark, HARD ROCK CASINO. See, e.g., Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (October 1, 2001). (c) Respondent�s addition of the generic top level domain indicator ".com" fails to render it from being virtually identical to the Complainant�s registered mark, HARD ROCK CASINO. See, e.g., Playboy Enterprises International, Inc. v. Tonya Flynt Foundation, WIPO Case No. D2001-1002 (November 16, 2001). (d) Complainant and its authorized licensees conduct business on the Internet at their respective domain name addresses identified hereinabove. Since consumers expect to find a company in the Internet at a domain name address comprised of the company�s trade name, trademark or service mark and the Complainants and its authorized licensees conduct business via the Internet, the Respondent�s registration and use of the disputed domain name that is identical or confusingly similar to Complainant�s registered mark causes or is likely to cause consumer initial interest confusion. See, e.g., Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (October 1, 2001)." "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, Complainant asserts: (a) 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 Complainant�s mark in a domain name or in any other manner. (b) The disputed domain name was registered and transferred (i) after the filing date(s) of Complainant�s application to register HARD ROCK CASINO mark for the goods and services identified hereinabove; (ii) after the opening date of the authorized HARD ROCK HOTEL AND CASINO establishment in Las Vegas, U.S.A.; (iii) after Complainant and/or its authorized licensee(s) commenced use of the HARD ROCK HOTEL marks in connection with casino services; and (iv) after Complainant�s HARD ROCK HOTEL and HARD ROCK CAFÉ marks became internationally famous. (c) To the best of Complainant�s knowledge, Respondent has not and does not use the mark or trade name, HARD ROCK CASINO, in connection with its services, except as set forth above, and has not been commonly known by the disputed domain name. (d) Neither Respondent nor its predecessors-in-interest is making or made a legitimate non-commercial or fair use of the disputed domain name." "Based on the foregoing, Complainant asserts that the circumstances surrounding the Respondent�s recent acquisition of the disputed domain name from its predecessor-in-interest, and the prior transfer of the disputed domain name from F. Demarco to Global Interactive (the Respondent�s immediate predecessor-in-interest and F. Demarco�s administrative and billing contact) 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." "Based on the past behavior of Respondent�s predecessors-in-interest as set forth hereinabove, Complainant strongly suspects: (a) Respondent is related to or one in the same with its predecesssors-in-interest, F. Demarco and Global Interactive, based on the fact that (i) Global Interactive was the administrative and billing contact for the disputed domain name when it was owned by F. Demarco; (ii) Global Interactive acquired the domain name from F. Demarco despite F. Demarco�s representations to the Complainant that he would transfer the disputed domain name to Complainant; (iii) Global Interactive transferred the disputed domain name to the Respondent despite its representations to the Complainant that it would transfer the disputed domain name to Complainant; and (iv) Global Interactive and the Respondent both identify addresses in St. Kitts and Nevis; and (b) Respondent would, upon receipt of Complainant�s rights in and to the HARD ROCK CASINO, HARD ROCK HOTEL and HARD ROCK CAFÉ trademarks and services marks, transfer the disputed domain name, if able, to another related entity or individual for the sole and express purpose of preventing the Complainant from reflecting the mark in a corresponding 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 Respondent�s 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 the Respondent�s web site or location or of a product or service on the Respondent�s web site or location. In particular: (a) Respondent�s web site at the disputed domain name immediately forwards visitors to the web site located at the domain name, . (b) Online casino services are offered and provided at said web site in direct competition with the Complainant�s and/or its authorized licensees� online casino services. See Playboy Enterprises International, Inc. v. Tonya Flynt Foundation, WIPO Case No. D2001-1002 (November 16, 2001) (c) The domain name is not owned by Respondent, but Complainant strongly suspects the owner of said domain name is related or one in the same with Respondent." 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 to the Respondent�s administrative contact via email. Currently the domain name provides only the message, "This web site is no longer operational." 6.4 Based on the methods employed to provide the Respondent with notice of the Complaint and the subsequent use of a default screen by the Respondent's technical contact, who was also notified of the Complaint, 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 is not due to any omission by WIPO. 6.5 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) Respondent�s 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) Respondent�s 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. 6.6 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. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000) 6.7 The Panel finds that the domain name is identical or confusingly similar to Complainant's registered and pending HARD ROCK CASINO and HARD ROCK CAFÉ marks owned by Complainant, and that the Complainant has established it has rights in the name, "HARD ROCK CASINO" pursuant to paragraph 4(a)(i) of the Policy. The addition of an "s" to Complainants trademark, HARD ROCK CASINO, is of no consequence. Essential or virtual identity is sufficient for the purposes of the Policy. (Playboy Enterprises International, Inc. v Sookwan Park, WIPO Case No. D2001-0778, October 1, 2001) 6.8 The Respondent is the registrant of the domain name . This domain name does not currently resolve to a web site or other on-line presence. 6.9 The domain name was conveyed to Respondent after the filing date(s) of Complainant�s application to register HARD ROCK CASINO trademark for the goods and services identified in the Complaint, and after the opening date of the authorized HARD ROCK HOTEL AND CASINO establishment in Las Vegas, U.S.A., and after Complainant and/or its authorized licensee(s) commenced use of the HARD ROCK HOTEL marks in connection with casino services. 6.10 The length of time the marks, HARD ROCK CASINO, HARD ROCK HOTEL and HARD ROCK CAFÉ have been used, the amount of advertising conducted and the popularity of Complainant's establishments, as well as Complainant�s goods and services under their registered marks leads to the conclusion that Respondent was or certainly should have been aware of at least one of those marks prior to registering the domain name, . (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, April 18, 2000) 6.11 Complainant discovered that the domain name was owned by Respondent�s predecessor-in-interest in or about November, 2000. Subsequently, this domain name has been transferred to various parties in St. Kitts and Nevis, and most recently to Respondent. Since December, 2000, Complainant has made multiple attempts to contact the various predecessors-in-interest of to resolve this matter, but to no avail. As a result, Complainant suspects that Respondent was somehow affiliated with its predecessor-in-interest, and filed this Complaint. 6.12 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name , pursuant to paragraph 4(a)(ii) of the Policy. 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 Complainant�s mark in a domain name or in any other manner. (See Playboy Enterprises International, Inc. v. Sookwan Park, D2001-0778, October 1, 2001.) 6.13 Although this web site is not currently active, Complainant provided evidence that previously resolved to another web site that offered services that competed with Complainant�s goods and services. Paragraph 4(b) of the Policy lists several factors, 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)(iv) states: (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 or service on your web site or location. 6.14 The Panel has already accepted Complainant's assertion that Respondent knew or should have known of the Complainant's trademarks at the time it registered the domain name . Playboy Enterprises International, Inc. v Tonya Flynt Foundation, WIPO Case No. D2001-1002, November 16, 2001. 6.15 Paragraph 4(a)(iii) of the Policy, clearly indicates that if "(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor�shall be evidence of the registration and use of a domain name in bad faith." 6.16 Furthermore, it has been clearly held in other panel decisions that bad faith cannot be confined to the factors set out in paragraph 4(b) of the Policy. If a registrant could not use the name without violating the Complainant's rights under the applicable law, bad faith exists even if the registrant has done nothing but register the name. (Harrods Ltd. v. Dijitaldjs, WIPO Case No. D2001-1163, November 27, 2001) 6.17 In Empresa Brasileira de Telecomunicacoes S.A. - Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164, the Panel found that "the 'passive holding' of a domain name with absolute knowledge of the damages that such conduct causes to the legitimate owner of a trademark constitutes a continuous 'use' with bad faith of the domain name." 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 be transferred to the Complainant. R. Eric Gaum Dated: April 2, 2002
Sole Panelist
Full & Egal Universal Law Academy