DECISION

Harveys Casino Resorts v. Vertical Axis, Inc.

Claim Number: FA0207000117320

PARTIES

Complainant is Harveys Casino Resorts, Stateline, NV, USA (“Complainant”) represented by Andrew J. Wilson, of Alston & Bird, LLP.  Respondent is Vertical Axis, Inc., Central, Hong Kong, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <harveys-tahoe.com>, registered with The Registry at Info Avenue d/b/a IA Registry.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 30, 2002; the Forum received a hard copy of the Complaint on July 31, 2002.

On August 15, 2002, The Registry at Info Avenue d/b/a IA Registry confirmed by e-mail to the Forum that the domain name <harveys-tahoe.com> is registered with The Registry at Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the disputed name.  The Registry at Info Avenue d/b/a IA Registry verified that Respondent is bound by The Registry at Info Avenue d/b/a IA Registry registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 2002, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@harveys-tahoe.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

The <harveys-tahoe.com> domain name is confusingly similar to Complainant's HARVEY’S mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent failed to submit a Response.

FINDINGS

Complainant registered its HARVEY’S mark with the United States Patent and Trademark Office as Registration Numbers 1,878,054; 2,026,250; 2,038,045; and 2,240,209.  Complainant owns and operates Harvey’s Resort and Casino, located on the south shore of Lake Tahoe, Nevada.  Complainant’s hotel offers its customers luxurious guest room accommodations with picturesque views of Lake Tahoe and the surrounding mountains.  Complainant’s facilities also include a 5,000-seat amphitheater that features musicians and entertainers such as Robin Williams and Tim McGraw.  Complainant’s resort includes a casino, other resort amenities, and restaurant services.  Complainant’s hotel has received a Four-Diamond rating from the American Automobile Association for the past nine years, a Four-Star rating from Mobil’s travel guide and was named one of the Top 50 Ski Resort Hotels in North America by Conde Nast Traveler magazine in 2001.

Respondent registered the disputed domain name on November 13, 2001.  Respondent is using the disputed domain name to display banner advertisements for debt consolidation and web hosting services.  It also features links to airline tickets, vacations, hotels and travel.  Visitors to the website are barraged with a series of pop-up windows offering wireless video cameras, auto loans, and web hosting services.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the HARVEY’S mark through registration with the United States Patent and Trademark Office and by continuous use of the mark.

The domain name registered by Respondent, <harveys-tahoe.com>, is confusingly similar to Complainant’s HARVEY’S mark because it incorporates Complainant’s entire mark and merely adds the descriptive term “tahoe” and a hyphen.  The addition of the term “tahoe” does not create a distinct mark because it describes Complainant’s hotel and casino resort located on Lake Tahoe.  The addition of a term to Complainant’s mark that describes Complainant’s business does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). 

Furthermore, the addition of a hyphen between words of a domain name is not relevant when determining whether or not a domain name is confusingly similar.  See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore that they are confusingly similar).

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

Rights to or Legitimate Interests

Respondent did not come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). 

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent is using a domain name that is confusingly similar to Complainant’s HARVEY’S mark in order to attract Internet users to Respondent’s website, which is filled with advertisements and links to competing hotel and travel services.  The use of a domain name that is confusingly similar to Complainant’s mark in order to attract Internet users to an advertising website is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and is not considered to be a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

No evidence on the record establishes that Respondent is commonly known as anything other than “Vertical Axis, Inc.”  In order to establish rights and legitimate interests under Policy ¶ 4(c)(ii), Respondent must prove that it is commonly known as HARVEY’S TAHOE or <harveys-tahoe.com>.  Respondent has not proffered any evidence and therefore has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name and is not using the domain name in connection with a legitimate or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The fame of Complainant’s HARVEY’S mark and the widespread reputation of Complainant’s Lake Tahoe resort and casino permit the inference that Respondent knowingly included the word “tahoe” in its domain name; using Complainant’s HARVEY’S mark in order to attract Internet users that would be seeking to access Complainant’s services in Lake Tahoe.  The circumstances permit the inference that Respondent had actual knowledge of Complainant’s rights in the HARVEY’S mark when Respondent registered the disputed domain name.  Registration of a domain name that incorporates Complainant’s mark, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

The evidence also permits the inference that Respondent is profiting from the advertisements, links and pop-ups featured at its <harveys-tahoe.com> domain name.  Therefore, Respondent is commercially benefiting from the likelihood of confusion created by the disputed domain name.  These circumstances also are evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably to receive a portion of the advertising revenue from the site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the domain name <harveys-tahoe.com> be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 10, 2002.

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