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Generic Top Level Domain Name (gTLD) Decisions |
Rio Properties, Inc. v. Stealth Commerce
Claim Number: FA0203000105756
PARTIES
Complainant
is Rio Properties, Inc., Las Vegas,
NV (“Complainant”) represented by David
J. Stewart, of Alston & Bird LLP. Respondent is Stealth Commerce, Tortola, BRITISH VIRGIN ISLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <riohotellasvegas.com>,
registered with Intercosmos Media Group,
Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict
in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 6, 2002; the Forum received
a hard copy of the
Complaint on March 11, 2002.
On
March 6, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum
that the domain name <riohotellasvegas.com>
is registered with Intercosmos Media Group, Inc. and that Respondent is the
current registrant of the name. Intercosmos
Media Group, Inc. has verified that Respondent is bound by the Intercosmos
Media Group, Inc. 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
March 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 8,
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@riohotellasvegas.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
April 15, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed The
Honorable Charles K.
McCotter, Jr. (Ret.) 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
1.
The disputed domain name <riohotellasvegas.com> is confusingly similar to Complainant’s RIO
LAS VEGAS and RIO marks.
2. Respondent’s use of the domain name in connection
with a website that offers sexually explicit activity along with Respondent’s
offer to sell the disputed domain name to Complainant is evidence that
Respondent does not have a right nor a legitimate interest
in the disputed
domain name.
3. Because of the fame associated with Complainant’s
mark, Respondent’s registered the confusingly similar domain name with intent
to trade on the good will associated with Complainant’s famous mark. Further, Respondent has made an attempt to
attract Internet users to Respondent’s website for commercial gain by creating
a likelihood
of confusion with Complainant’s RIO mark as to the source,
affiliation or endorsement of Respondent’s website. Finally, Respondent has prevented Complainant from reflecting its
mark in the corresponding domain name and since Respondent has a
history of
such activity, Respondent has registered and used the disputed domain name in
bad faith.
B.
Respondent
No
Response was submitted.
FINDINGS
Complainant owns and operates the “Rio
All-Suite Hotel & Casino” in Las Vegas, NV, which has become one of the
largest and most
renowned casino entertainment facilities in the world. Complainant owns numerous trademarks
incorporating the RIO mark, including: RIO, registered on July 19,1994, Reg.
No. 1,845,968; and
RIO LAS VEGAS, registered on April 22, 1997, Reg. No.
2,053,740. Since as early as February
1, 1989, Complainant has used the RIO mark in connection with its hotel, casino
and entertainment services.
According to Complainant, Respondent’s
alter ego “Telmex” registered the disputed domain name on October 27, 2001 and
used <riohotellasvegas.com> in connection with a website that featured
highly suggestive photographs of semi-nude and nude women in various
poses. Complainant sent a cease and
desist letter to Telmex on November 8, 2001 and received an answer on November
15, 2001. The reply stated that Telmex
was willing to sell the disputed domain name to Complainant for $4,000.
On February 15,
2002, Telmex transferred the disputed domain name to Respondent. Upon information and belief, Complainant
asserts that Telmex and Respondent are one and the same. Complainant contends that due to a recent
UDRP decision in a complainant’s favor (See Nat’l Cable Satellite Corp. v. Telmex
Mgmt. Services, FA
102820 (Nat. Arb. Forum
Feb. 4, 2002) (transferring <cspantv.com>from Respondent to Complainant)), Telmex did not want to associate with the
disputed domain name in this case and, consequently, trasferred it to “Stealth
Commerce.” Telmex and Stealth Commerce
share the same business address; and, despite the transfer, the content on the
website has remained the
same.
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 the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights; and
(2)
the 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 and/or Confusingly Similar
Complainant has established its rights to
the RIO LAS VEGAS mark through registration and continuous use. The Panel finds that <riohotellasvegas.com> is confusingly similar to Complainant’s RIO LAS VEGAS mark. The addition of the generic term “hotel” to
Complainant’s mark does not distinguish the disputed domain name form
Complainant’s mark. See Parfums Christian Dior v. 1 Netpower, Inc.,
D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the
descriptive words "fashion" or "cosmetics"
after the
trademark were confusingly similar to the trademark); see also Park Place
Entm’t Corp. v. Conille, FA 95492 (Nat.
Arb. Forum Oct. 6, 2000) (finding the
domain name <casinoparislasvegas.com>" confusingly similar to PARIS
LAS VEGAS). The disputed domain name is
even more confusingly similar considering that the generic term “hotel”
describes Complainant’s business. See
Marriott Int’l v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain
name <marriott-hotel.com> is confusingly similar
to Complainant’s mark
“Marriott”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
By using the
domain name in dispute to display sexually explicit pictures, Respondent has
not made a bona fide use of <riohotellasvegas.com> pursuant to
Policy ¶ 4(c)(i). See MatchNet
plc v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial
gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material, where such use is calculated
to mislead consumers and tarnish the
Complainant’s mark).
According to Complainant, Respondent has
been known as “Telmex,” and is currently known as “Stealth Commerce.” Respondent has not provided any evidence
that it has been known as “riohotellasvegas.”
Thus, Respondent is not commonly known as <riohotellasvegas.com>
and can not satisfy 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 where Respondent is not
known
by the mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Due to the peculiar similarities between
the initial registrant of <riohotellasvegas.com> “Telmex” and Respondent “Stealth
Commerce,” the Panel will presume that they are the same entity. See Digital Channel Partners Ltd.. v. Bilham Solutions, D2000-1246 (WIPO
Dec. 14, 2000) (finding that since there “is a clear commonality between the
individuals, entities, contact details
and addresses sufficient to establish”
that Respondent and Telmex Management Services should be treated as one entity “for
the purposes
of any factual determinations relevant to this decision”).
In light of the fame of Complainant’s RIO
LAS VEGAS mark and the RIO family of marks in reference to hotel services in
Las Vegas,
it is apparent that Respondent knew of Complainant’s famous mark
when it registered <riohotellasvegas.com>.
Therefore, Respondent registered the disputed domain name in bad
faith. See CBS Broadcasting, Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000)
(finding that given the long use and fame of the Complainant’s mark, the
Respondent’s conduct is evidence of bad faith).
By offering to sell the disputed domain
name to Complainant for $4,000, the Panel concludes that Respondent has
registered the domain
name in bad faith pursuant to Policy ¶ 4(b)(i). See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum
Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering
the domain name with the
intent to transfer it to Complainant for $3,000, an
amount in excess of its out of pocket costs); see also Tech. Prop., Inc v. Hussain, FA 95411
(Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent verbally
offered the domain names for sale for $2,000).
Furthermore, by registering and using <riohotellasvegas.com>, Respondent has prevented Complainant from
reflecting its mark in the corresponding domain name. Respondent has engaged in this activity before. See Nat’l Cable Satellite
Corp. v. Telmex Mgmt. Services, FA 102820 (Nat. Arb. Forum Feb. 4, 2002) (finding Respondent has
engaged in bad faith registration and use of
<cspantv.com> and thus transferring the disputed domain name from
Respondent to Complainant). Therefore, Respondent has registered <riohotellasvegas.com> in bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum
Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by
registering multiple domain
names which infringe upon others’ famous and
registered trademarks).
Finally, by using the dipsuted domain
name which is confusingly similar to Complainant’s mark to divert Internet
users to a commercial
website, Respondent has attempted to attract Internet
users to Respondent’s website for commercial gain, by creating a likelihood
of
confusion with Complainant’s mark as to the source of Respondent’s
website. Therefore, Respondent has used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also 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).
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
be hereby granted.
Accordingly, it is Ordered that the
domain name <riohotellasvegas.com>
be transferred from Respondent
to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: April 22, 2002
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