|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Ameristar Casinos, Inc. v. Szk.com
Claim
Number: FA0306000161281
Complainant is Ameristar Casinos, Inc., Las Vegas,
NV, USA (“Complainant”) represented by Lester
K. Essig, of Ray Quinney & Nebeker. Respondent is Szk.com, Pineto, ITALY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ameristarcasino.com>, registered with Onlinenic,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 2, 2003; the Forum
received a hard copy of the Complaint
on June 2, 2003.
On
June 3, 2003, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain
name <ameristarcasino.com> is registered with Onlinenic, Inc. and
that Respondent is the current registrant of the name. Onlinenic, Inc. has
verified that Respondent
is bound by the Onlinenic, 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
June 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 30, 2003 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@ameristarcasino.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
July 9, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Louis
E. Condon 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ameristarcasino.com>
domain name is identical to Complainant’s AMERISTAR CASINO mark.
2. Respondent does not have any rights or
legitimate interests in the <ameristarcasino.com> domain name.
3. Respondent registered and used the <ameristarcasino.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Ameristar Casinos, Inc., is the owner of many marks incorporating the AMERISTAR
mark, including the AMERISTAR CASINO
mark (e.g. U.S. Reg. No. 1,971,539,
registered on the Principal Register of the U.S. Patent and Trademark Office on
April 30, 1996). Complainant
has used this and its other AMERISTAR marks in
connection with gambling, entertainment, hotel and restaurant services at its
casino
facilities throughout the United States, and has expended millions of
dollars promoting its marks.
Respondent,
Szk.com, registered the <ameristarcasino.com> domain name on April
14, 2002, and is not licensed or authorized to use Complainant’s AMERISTAR
CASINO mark for any purpose. Respondent
hosts a website at the disputed domain
name that displays a series of hyperlinks to a variety of services and search
categories,
including hyperlinks to online casinos and websites dedicated to
hotel services. The website also displays banner advertisements.
On October 22,
2002, Complainant received an unsolicited email from a Kevin Cutler, proposing
the sale of the disputed domain name
to Complainant. After sending a
cease-and-desist letter to Respondent, Complainant responded to this email
inquiring as to how much
compensation Mr. Cutler was asking for in exchange for
the disputed domain name registration and what relationship he had to Respondent,
the proper registrant of the domain name. Although Mr. Cutler never responded
to Complainant’s inquiries, in an email exchange with
Complainant Respondent’s
legal counsel tacitly admitted that Respondent was aware of the actions of Mr.
Cutler.
Respondent has
had at least one UDRP brought against it in the past. That decision involved
registration of a domain name that was
confusingly similar to a registered
trademark and subsequent use of the domain name to host a website displaying a
series of hyperlinks
very similar to those in the present dispute. See
Travelzoo Inc. v. SZK.com, FA 115088 (Nat. Arb. Forum Aug. 27, 2002)
(transferring the <wwwtravelzoo.com> domain name to Complainant).
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
draw such inferences 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.
Complainant has established rights in the AMERISTAR CASINO mark through
registration of the mark on the Principal Register of the
U.S. Patent and
Trademark Office, as well as through use of the mark in commerce. Complainant’s
registrations and use of its mark
in commerce are sufficient to grant
Complainant standing vis-à-vis Respondent. See Koninklijke KPN N.V. v.
Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which Respondent
operates. It is sufficient that Complainant can
demonstrate a mark in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11,
2000) (finding Complainant has rights
to the name when the mark is registered in a country even if Complainant has
never traded in that
country).
Respondent’s <ameristarcasino.com> domain name is
identical to Complainant’s AMERISTAR
CASINO mark. Removing the space between
the words of Complainant’s mark and adding a top-level domain name are two
alterations that are
irrelevant for the purposes of Policy ¶ 4(a)(i).
See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan.
7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible
in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302
(eResolution Sept. 25, 2000) (finding
that the domain name <croatiaairlines.com> is identical to Complainant's
CROATIA AIRLINES trademark).
Accordingly, the
Panel finds that the <ameristarcasino.com> domain name is identical to Complainant’s AMERISTAR CASINO mark under Policy ¶ 4(a)(i).
Respondent did
not submit a response to the Complaint in this dispute. The Panel therefore
chooses to view the allegations put forward
in the Complaint in a light most
favorable to Complainant. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in
the allegations of Complainant to be deemed true); 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”).
Complainant’s uncontested averments allege that the first contact
between the parties in this dispute occurred when Mr. Cutler sent
an
unsolicited email to Complainant discussing the possible sale of the <ameristarcasino.com> domain name
registration.
The Panel infers that Mr. Cutler is either an alias for Respondent, or acted as
an authorized agent of Respondent. In
either situation, the Panel presumes that
these contacts were crafted in an attempt to sell the disputed domain name
registration
to Complainant while avoiding the creation of any incriminating
evidence that could be used against Respondent in the future. The
Panel finds
that Respondent’s attempt to sell its infringing domain name registration to
Complainant is evidence that it lacks rights
or legitimate interests in the
domain name. See Cruzeiro Licenciamentos Ltda v.
Sallen, D2000-0715 (WIPO
Sept. 6, 2000) (finding that rights or legitimate interests do not exist when
one holds a domain name primarily
for the purpose of marketing it to the owner
of a corresponding trademark); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27,
2000) (finding that Respondent has no rights or legitimate interests in the
domain name where
it appeared that the domain name was registered for ultimate
use by Complainant).
Additionally,
Respondent’s use of the domain name to host a website displaying a series of
hyperlinks (including several that direct
Internet users to competitors of
Complainant) does not qualify as a bona fide offering of goods or services.
This diversionary use
of Complainant’s mark, without authorization or license
from Complainant is also not a legitimate fair use of the domain name. Thus,
Respondent is unable to avail itself of the safe harbor provisions provided for
domain name registrants in Policy ¶¶ 4(c)(i) and
(iii). See
WeddingChannel.com Inc. v. Andrey Vasiliev a/k/a NA and Free Domains Parking,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where Respondent
presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated
by the Policy); see
also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (holding
that Respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a
bona fide offering of goods
or services nor a legitimate noncommercial or fair use of the domain name).
Respondent appears to be a domain name dealer, and has a history of
registering abusive domain name registrations. In light of the
name Respondent
listed in its WHOIS contact information and the fame surrounding Complainant’s
mark, the Panel finds that Respondent
is not “commonly known by” the disputed
domain name as contemplated by Policy ¶ 4(c)(ii). Thus, Respondent cannot avail
itself of
this provision of the Policy. See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known
by the domain name prior to registration of the domain name to
prevail").
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<ameristarcasino.com> domain
name under Policy ¶ 4(a)(ii).
Respondent registered and used the <ameristarcasino.com> domain name
in
bad faith. As discussed above, Respondent contacted Complainant with the intent
of selling its domain name registration to Complainant.
The Panel infers from
Respondent’s behavior in its dealings with Complainant and the fact that
Respondent contacted Complainant at
all that it would not have settled on an
amount that was equal to its documented out of pocket costs. Thus, Respondent’s
registration
of a domain name that entirely incorporated Complainant’s
registered trademark with the intent of selling that registration back
to
Complainant is evidence that the domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(i). See S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding
that the Respondent violated Policy ¶ 4(b)(i), by indicating to Complainant
that he would
“consider a cash offer”, invited Complainant to “submit an
opening cash or stock offer”, and failed to reply to Complainant’s offer);
see
also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded,
are evidence of bad faith”).
Additional
evidence of bad faith can be found in Respondent’s use of the disputed domain
name. In using Complainant’s mark to divert
Internet users to its own website,
Respondent takes advantage of the goodwill surrounding Complainant’s mark in
order to attract
Internet users, presumably to capitalize on the chance that
some of those users will click through on one or more of Respondent’s
hyperlinks or banner advertisements and earn Respondent referral fees. By using
the disputed domain name to create a likelihood of
confusion with Complainant’s
marks for commercial gain, Respondent registered and used the <ameristarcasino.com>
domain name in
bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of America
Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003)
(stating that “[s]ince the disputed domain names contain entire versions of
Complainant’s
marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become
confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered
and used in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Albrecht
v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration
in bad faith based where there is no reasonable possibility, and
no evidence
from which to infer that the domain name was selected at random since it
entirely incorporated Complainant’s name).
The Panel thus
finds that Respondent registered and used the <ameristarcasino.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Complainant
having established all three elements required under ICANN Policy, the Panel
concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <ameristarcasino.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis
E. Condon, Panelist
Dated:
July 23, 2003
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/764.html