The Complainant is Dave & Buster’s I, L.P. of Dallas, Texas, United States of America (“United States”), represented by Holland & Knight LLC of Washington D.C., United States.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Woody Goulart, Neon Fun Desert, LLC of Las Vegas, Nevada, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2016. On June 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 13, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2016. The Respondent filed email communications with the Center on June 20, 21 and 22, 2016, stating that he was not challenging the dispute, would transfer the Disputed Domain Name to the Complainant, and did not wish to file any further response. The Complainant chose to continue the proceeding and obtain a decision from the Panel.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 5, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a well-known provider of restaurant, bar and game entertainment services throughout the United States and beyond. The Complainant opened for business in 1982 and currently operates eighty-four restaurant, bar and game entertainment venues located in thirty states in the United States and Canada. The Complainant’s newest location is in Las Vegas, Nevada, with a tentative grand opening of August 8, 2016.
The Complainant owns the United States trademark registration for EAT DRINK PLAY and variations thereof, specifically U.S. Registration No. 2746430, registered on August 5, 2003, which has been in extensive, exclusive and continuous use in commerce since 1989 in connection with billiard facility services in International Class 41 and restaurant services in International Class 43 (the “EAT DRINK PLAY Mark”). The Complainant’s EAT DRINK PLAY Mark is prominently displayed in marketing and promotional materials for all of the Complainant’s restaurant, bar and game entertainment venues, both inside and outside the restaurant and entertainment venues.
In October 2014, the Complainant launched an initial public offering on the NASDAQ stock exchange, selling 5.88 million shares at an offering price of USD 16, raising more than USD 94 million. The Complainant’s EAT DRINK PLAY Mark is so central to the Complainant’s restaurant and game entertainment venues that the Complainant repeatedly referenced the EAT DRINK PLAY Mark in its initial public offering filing as “The Core of Our National Concept” and chose the abbreviation PLAY as its ticker symbol. The Complainant’s revenues for 2016 are projected to total nearly USD 1 billion.
The Disputed Domain Name was registered on October 11, 2015. The Disputed Domain Name resolves to a page that displays pay-per-click sponsored links to third-party websites which links suggest competing services to those provided by the Complainant under its well-known EAT DRINK PLAY Mark. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not submit a formal response to the Complaint. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the EAT DRINK PLAY Mark based on both longstanding use and its incontestable federally registered trademark and variations thereof. The Disputed Domain Name consists of the EAT DRINK PLAY Mark followed by the generic Top-Level Domain (“gTLD”) “.vegas”, that corresponds to the city of Las Vegas, Nevada, where the Complainant’s imminent launch of a new restaurant, bar and entertainment venue was to take place.
Moreover, the addition of a gTLD such as “.vegas” in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Panel concludes that the Disputed Domain Name is identical to the Complainant’s EAT DRINK PLAY Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its EAT DRINK PLAY Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain and thus has no rights or legitimate interests in the Disputed Domain Name.
Moreover, the Respondent’s registration and use of the Disputed Domain Name to resolve to a website with commercial links to third-party advertisements for restaurant and entertainment services, including commercial links to some of the Complainant’s competitors, does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (use of a domain name to post landing pages and pay-per-click links does not confer rights or legitimate interests in that domain name when resulting in a connection to goods or services competitive with those of the trademark holder).
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot for that reason be found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the EAT DRINK PLAY Mark prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first used its trademark registration for the EAT DRINK PLAY Mark and immediately after the Complainant posted on its website available job positions for its new restaurant and entertainment venue in Las Vegas, which postings were widely reported in various media. See NUBECO, LLC v. ,WIPO Case No. D2008-1056 (finding bad faith registration and use where respondent registered confusingly similar domain names after complainant announced plans to open a new restaurant).
The longstanding and public use of the EAT DRINK PLAY Mark would make it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Second, the Panel finds that the Respondent used the Disputed Domain Name in bad faith by attempting to attract for commercial gain Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s EAT DRINK PLAY Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known EAT DRINK PLAY Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”.).
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s EAT DRINK PLAY Mark.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: July 19, 2016
Full & Egal Universal Law Academy