Pechangacasino.com

The timeline behind pechangacasino.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Pechanga Band of Luiseno Mission Indians of the Pechanga Reservation v. Eugene Levy Claim Number: FA0805001191107 PARTIES Complainant is Pechanga Band of Luiseno Mission Indians of the Pechanga Reservation (“Complainant”), represented by Elizabeth R. Burkhard, of Holland & Knight LLP, Massachusetts, USA. Respondent is Eugene Levy (“Respondent”), Missouri, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <pechangacasino.com>, registered with Domain-It, 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. Flip Petillion as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 16, 2008. On May 16, 2008, Domain-It, Inc. confirmed by e-mail to the National Arbitration Forum that the <pechangacasino.com> domain name is registered with Domain-It, Inc. and that the Respondent is the current registrant of the name. Domain-It, Inc. has verified that Respondent is bound by the Domain-It, 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 May 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 9, 2008 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@pechangacasino.com by e-mail. A timely Response was received in electronic format only, and not in hard copy on May 28, 2008. The Response is therefore incomplete under ICANN Rule 5. On June 2, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant makes the following assertions: 1. The <pechangacasino.com> domain name is identical or confusingly similar to Complainant's mark. 2. Respondent has no rights or legitimate interest in the <pechangacasino.com> domain name. 3. Respondent has registered and used the <pechangacasino.com> domain name in bad faith. B. Respondent Respondent requests the Panel to deny Complainant’s request on the grounds that he has a legitimate interest in the domain name and that he did not act in bad faith. FINDINGS Complainant has rights in the PECHANGA mark (Reg. No. 3,247,029, issued May 29, 2007, filed May 26, 2006), which was registered with the United States Patent and Trademark Office (“USPTO”). Respondent registered the disputed domain name on September 28, 2007. Complainant asserts that Respondent is using the disputed domain name to resolve to a website that features third-party links and advertisements for Internet gambling, which compete with Complainant’s gambling operations. Complainant alleges that Respondent profits from the receipt of advertisement referral fees. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” 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; (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. Preliminary Issue: Is the Response deficient or not? Respondent’s Response was submitted only by electronic format, and not also in hard copy. Technically speaking, the Response is not in compliance with ICANN Rule 5. However, the Panel chooses to accept and consider this Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). Identical or Confusingly Similar: Policy ¶ 4(a)(i). Complainant asserts rights in the PECHANGA mark (Reg. No. 3,247,029, issued May 29, 2007, filed May 26, 2006), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant also asserts that Respondent registered the disputed domain name on September 28, 2007, based on the WHOIS domain name registration information submitted with the Complaint. The Panel therefore finds Complainant to hold sufficient rights through registration of the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."). Complainant argues that Respondent’s <pechangacasino.com> domain name is confusingly similar to Complainant’s PECHANGA mark. Complainant asserts that the disputed domain name wholly incorporates Complainant’s mark without alteration, while merely adding the generic word “casino,” and the generic top-level domain (“gTLD”) “.com.” Complainant argues that the generic word “casino” describes Complainant and does not distinguish the disputed domain name as Complainant’s trademark belongs to a class for operating casinos, and because Complainant has operated such a facility for public use since 2002. Moreover, Complainant argues that the generic top-level domain cannot be considered under a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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 the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). While Respondent contends that the <pechangacasino.com> domain name is comprised of generic and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”). The Panel points out that Respondent has not made any contentions with respect to this element of Policy ¶ 4(a). Rights and Legitimate Interests: Policy ¶ 4(a)(ii). Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Complainant contends that Respondent is not commonly known by the disputed domain name. Though Complainant does not make such an argument, the WHOIS domain name registration information lists the registrant of the disputed domain name as “Eugene Levy,” which does not resemble the disputed domain name. The Panel therefore finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). Complainant also asserts that Respondent is using the disputed domain name to resolve to a website that features third-party links and advertisements for Internet gambling, which compete with Complainant’s gambling operations. Complainant alleges that Respondent profits from the receipt of advertisement referral fees. The Panel therefore finds that such a use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the 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). Registration and Use in Bad Faith: Policy ¶ 4(a)(iii). Complainant argues that Respondent is intentionally disrupting its gambling operations by diverting Internet users seeking Complainant’s resort and casino to a website that promotes Internet gambling through the placement of third-party advertisements. The Panel finds this to be true. It also finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). Complainant alleges that Respondent registered a confusingly similar disputed domain name. Moreover, it asserts that Internet users seeking Complainant will likely believe the disputed domain name to resolve to Complainant’s official website, when in reality it will divert these same Internet users to Respondent’s commercially-competitive gambling advertisement website. Complainant sets forth in its submission evidence that such confusion has already occurred, in that a website promoting music venues improperly lists Complainant’s website as Respondent’s via the disputed domain name. The Panel finds that Respondent has created a likelihood of confusion as to Complainant’s source, endorsement, and affiliation of the disputed domain name for Respondent’s commercial benefit, and that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Complainant argues that Respondent was on constructive and/or actual notice of Complainant’s trademark rights given its trademark status with the USPTO prior to the registration of the disputed domain name, and the general fame and reputation of Complainant’s operations under the PECHANGA mark. The Panel therefore finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii) in light of this notice. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <pechangacasino.com> domain name be TRANSFERRED from Respondent to Complainant. Flip Petillion, Panelist Dated: June 24, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.