House of Blues Brands Corp. v. Lost in Space, SA

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

House of Blues Brands Corp. v. Lost in Space, SA

Case No. D2002 - 0398

1. The Parties

The Complainant is House of Blues Brands Corp., 6255 Sunset Boulevard,

18th Floor, Los Angeles, CA 90028, United States

of America.

The Complainant is represented by Kirt S. O’Neil, Akin, Gump,

Strauss, Hauer & Feld, L.L.P., 300 Convent Street,

Suite 1500, San Antonio, Texas 78205, United States of America.

The Respondent is Lost in Space, SA, 6th Floor,

3510 South Ramblas Boulevard, Palma Majorca, SA 1234,

Spain 2222. The administrative contact is Miguel, Juan , 6th Floor,

3510 South Ramblas Boulevard, Palma Majorca, SA 1234,

Spain.

2. The Domain Names and Registrar

The domain names at issue are <houseofblueslasvegas.com> and <houseofblueschicago.com>.

The domain names are registered with the registrar DirectNic, Intercosmos Media Group, Inc.,

650 Poydras Street, Suite 2311, New Orleans, Louisiana 70130,

United States of America.

3. Procedural History

The Complaint, dated April 29, 2002, was duly filed with the

WIPO Arbitration and Mediation Center. The Complaint was filed pursuant

to the ICANN Domain Name Dispute Resolution Policy ("the Policy"),

to 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").

The Complaint initially identified the wrong Respondent.

On May 1, 2002, the Center acknowledged receipt of the Complaint.

On May 6, 2002, the Center transmitted a Deficiency Notification to the

Complainant informing it that according to the Registrar Verification, the

actual registrant was "Lost in Space, SA" and therefore that entity

was the correct respondent to the Complaint. In addition, the original Complaint

did not state the order of the remedies sought. The Center therefore requested

that the Complaint be duly amended and re-served.

On May 8, 2002, the Complainant filed an amendment to paragraphs 5 and

6 of the Complaint specifying that according to the Registrar Verification,

the Respondent in the proceeding was Lost in Space, SA, and providing a

different address for the Respondent’s contact point. It further amended

paragraph 12 of the Complaint to reflect that the contested domain names

should be transferred to it.

On May 13, 2002, the Center communicated to both parties a Notification

of Complaint and Commencement together with the communication records.

Rule 5 of the Rules requires a respondent to submit a response to the Provider

addressing the matters contained therein within twenty days of the date

of commencement of the administrative proceeding.

As no such response was submitted, on June 4, 2002, the Center

recorded a Notification of Respondent’s Default and communicated it to both

parties.

h On June 10, 2002, the sole panelist

agreed to the appointment. As required by the Rules, he filed a Statement

of Acceptance and Declaration of Impartiality and Independence.

h On June 11, 2002, the Center transmitted

the Notification of Appointment of Administrative Panel and Projected

Decision Date of June 25, 2002, to the parties.

4. Jurisdictional Basis for the Mandatory Administrative Proceeding

Paragraph 4 of the ICANN Uniform Domain Name Dispute Resolution Policy

requires that a registrant must submit to a mandatory administrative proceeding

in the event that a third party asserts to the applicable Provider, in compliance

with the Rules of Procedure, that the registered domain name is disputed

under the grounds stipulated in that paragraph.

The registration agreement, pursuant to which the domain name that is the

subject of this Complaint was registered, incorporates the Policy in force

at the time or a later version of this Policy adopted by ICANN. A true and

correct copy of the domain name dispute policy applicable to the domain

names in question was provided by the Complainant as Exhibit B to the Complaint.

The Administrative Panel finds that through the amended Complaint, the

Complainant has complied with the applicable rules and this dispute is properly

within the scope of the Policy and, further, that the Panel has jurisdiction

to decide the dispute.

5. Factual Background

The Complainant was the only party that filed evidence in support of its

case. In each instance, the Panel has satisfied itself that the evidence

supports the Complainant’s allegations of fact.

The Complainant, together with its wholly owned subsidiaries, describes

itself as a multi-faceted innovative entertainment concept that integrates

a high volume restaurant and bar, a live music venue and branded specialty

retailing in an authentic "Southern style juke-joint". It asserts

that it was found in 1992 that this concept stimulated and capitalized on

the renaissance and growth in popularity of the blues culture in the United

States and abroad. Since November 1992, HOB Entertainment, Inc., the parent

company of the Complainant, has opened eight locations in the United States.

Each of these locations has attracted patrons to the restaurant, bar and

live music club.

The Complainant, through its parent company, has also extended its advertising

and promotion of the HOUSE OF BLUES mark with the Internet web site at http://www.hob.com.

The web site features promotional materials for the Complainant’s restaurant,

bar and nightclub services and the live music featured therein, as well

as advertisements for HOUSE OF BLUES branded merchandise sold principally

though retail stores adjacent to each HOUSE OF BLUES venue.

The Complainant, by itself and through its licensees, predecessors, assignees,

and parent company(ies) in interest and title, have since November 16, 1992,

used and continues to use the name and mark "HOUSE OF BLUES" in

the United States for clothing, compact discs, phonograph records and other

sound and video recordings.

The Complainant is the owner of U.S. Registration Nos. 2,550,199; 2,507,798;

2,507,467; 2,457,890; 2,507,466; 1,933,441; 1,891,179; 1,938,673; 1,940,915;

1,874,712; 2,024,199; 1,772,628 for "HOUSE OF BLUES" or variations

thereof. Annex C to the amended Complaint contains evidence of such registrations.

On February 22, 2002, Counsel for the Complainant accessed http://www.netcraft.com

to monitor the existence of any web sites created containing the "houseofblues"

mark. Counsel for the Complainant learned that the two disputed domain names

at issue, <houseofblueslasvegas.com> and <houseofblueschicago.com>,

were registered by the Respondent on November 26, 2001, and September 8, 2001,

respectively.

The Complainant asserts, and the Administrative Panel accepts as proven,

that the "HOUSE OF BLUES" mark was used by the Complainant

and registered for the goods and services noted earlier well before the

Respondent’s registration of <houseofblueslasvegas.com> and <houseofblueschicago.com>.

House of Blues Digital, Inc. (a sister company of the Complainant) is the

owner of the following domain names that contain the "HOUSEOFBLUES"

mark: <houseofblues.com>, <houseofblues.net>, <houseofblues.org>,

<houseofbluesconcerts.com>, and <thehouseofblues.com>.

6. Parties' Contentions

A. Complainant

The Complainant asserts that:

(i) The disputed domain names <houseofblueslasvegas.com> and

<houseofblueschicago.com> registered by Respondent are identical,

with the exception of the addition of the geographic identifiers "lasvegas"

and "chicago" to the "House of Blues" trademark in

which Complainant has rights. The Complainant’s parent company, HOB Entertainment,

Inc. owns and operates House of Blues restaurant/nightclub venues in both

Las Vegas and Chicago, under license from the Complainant for the House

of Blues trademark and service mark. The domain names at issue are thus

confusingly similar to the "House of Blues" mark.

It asserts that the Respondent’s use of the domain names is an attempt

to attract, for commercial gain, Internet users to its web site or other

on-line location, by creating a likelihood of confusion with the Complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of the

respondent’s web site or location or of a product or service on the Respondent’s

web site or location.

(ii) It is asserted further that the Respondent’s use of the domain

names <houseofblueslasvegas.com> and <houseofblueschicago.com>

was not and is not a bona fide offering of goods or services. Rather,

these websites merely point to a random rotating website in the Respondent’s

portfolio. Upon information and belief, the Complainant contends that

this redirecting will continue until the Respondent fully develops the

<houseofblueslasvegas.com> and <houseofblueschicago.com> web

sites in the coming year.

It asserts further that the Respondent has not been commonly known by

the domain names nor does it operate a business entity that utilizes the

domain names. Based on the foregoing, it asserts that the Respondent has

no legitimate interest or rights with respect to the domain names.

(iii) The addition of the words "las vegas" and "chicago"

to the "houseofblues" mark, both referring to two cities in

which the Complainant has clubs of that name – is said to be conclusive

evidence that the Respondent has knowledge of the Complainant’s trademark

and is attempting to trade on the Complainant’s goodwill represented by

the House of Blues trademark.

It is the Complainant’s belief that the Respondent has registered and

is using the domain names to create a likelihood of confusion with the

Complainant’s mark as to the source, sponsorship, affiliation, or endorsement

of the Respondent’s website. The Respondent`s use of the domain names

is alleged to be likely to deceive the consuming public that the Complainant

somehow sponsors or endorses Respondent’s use of the similar domain names.

These acts are asserted to be continuous and deceitful and will cause

harm to Complainant’s goodwill in use of the House of Blues mark.

It is asserted further that the domain names <houseofblueslasvegas.com>

and <houseofblueschicago.com> sites contain pornographically suggestive

material in one instance and an escort service described euphemistically

as a "sexetaries" service. Exhibit E to the Amended Complaint

contains printouts of an advertisement downloaded from <houseofblueslasvegas.com>

that offers female companionship with "absolute discretion assured".

The Complainant alleges further that the Respondent has had constructive

notice under 15 U.S.C. Paragraph 1072 that the "houseofblues"

mark was registered to the Complainant.

It is the Complaint’s belief that the Respondent has registered and is

using domain names that are similar to the Complainant’s trademark for

the purpose of intentionally disrupting the Complainant’s business and/or

damaging its reputation.

It asserts that the Respondent’s registration of domain names similar

to the Complainant’s trademark constitutes "initial interest confusion".

The Respondent’s registration of the domain names in order to create initial

interest confusion weighs in favor of a finding of bad faith, as does

the Respondent’s refusal to transfer or cancel the domain names in the

face of the Complainant’s clear objection.

Finally, the Complainant asserts that it has not agreed nor consented

to the Respondent’s registration or use of the domain names comprising

its mark. The absence of a license or other authority to use the House

of Blues mark from the Complainant is asserted to be evidence of bad faith.

B. Respondent

No Response to the Complaint was received from the Respondent.

7. Discussion and Findings

In order for the Panel to decide to grant the remedy requested by the Complainant

under the Policy it is necessary that the Complainant prove, as required

by paragraph 4 (a) of the Policy, that:

(i) the contested 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 domain name; and

(iii) the domain name has been registered and is being used in

bad faith.

In the present case the Panel is of view that the record contains sufficient

evidence of each of the three requisite elements.

First, the Complainant claims and the Panel has verified to its

satisfaction, that the Complainant owns registered trade mark rights in

the mark "House of Blues" and variations thereof.

The domain names in dispute, <houseofblueslasvegas.com> and <houseofblueschicago.com>,

while not identical to the Complainant’s Trademark, have merely added the

words Las Vegas and Chicago to it. This, in the Panel’s opinion, has no

impact on the viewer’s primary focus, namely "houseofblues". To

the contrary, given that the evidence is that the Complainant’s parent company,

HOB Entertainment, Inc. owns and operates House of Blues restaurant/nightclub

venues in both Las Vegas and Chicago, the coupling of the geographic identifiers

to the House of Blues Trademark is likely to create confusion with the Complainant’s

mark.

The Panel therefore concludes that the contested domain names are confusingly

similar to a mark in which the Complainant has rights and that the Complainant

has fulfilled the requirements of Paragraph 4 (a) (i) of the Policy.

Second, the Complainant must prove that the Respondent has no rights

or legitimate interests in respect of the domain name. The Complainant has

proven that the Respondent has no rights to the domain names. There is no

evidence to suggest that the Respondent has ever used, or demonstrated preparations

to use, the disputed domain names, or a name corresponding to the disputed

domain names in connection with a bona fide offering of goods and

services. The Respondent has not been commonly known by the domain name

nor does it operate a business entity that utilizes the domain name.

The Panel agrees with the Complainant that the Respondent has no rights

or legitimate interests in the disputed domain names within the meaning

of Paragraph 4 (a) (ii) of the Policy.

Third, the Complainant’s evidence satisfies the third requisite

element of bad faith on the part of the Respondent.

Paragraph 4 (b) of the Policy provides four circumstances that are evidence

of registration and use in bad faith. They are said "in particular

but without limitation" to be evidence of bad faith. From this, the

Panel infers that other conduct not so listed could also constitute bad

faith under the Rules. In this case, the Panel finds that the Complainant’s

trademark is well known throughout the United States and elsewhere and the

Respondent knew or should have known of Complainant’s trademark. The Panel

finds that under Paragraph 4 b(iv) of the Policy the Respondent registered

the domain names to attract, for commercial gain, Internet users to the

Respondent’s website by creating a likelihood of confusion with the Complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of a product

or service on the Respondent’s website.

The material displayed on the Respondent’s website is also likely to potentially

tarnish the Complainant’s reputation and disrupt its business. The first

site, <houseofblueslasvegas.com> is a site dedicated to the delivery

of hard core pornography for a subscription fee. The second site, <houseofblueschicago.com>

is a site dedicated to what appears to be an escort service.

Consequently, the Panel considers that the Respondent’s conduct indisputably

falls in the category of "bad faith" registration and use of the

domain names for the purposes of the Policy and concludes that the requirement

of Paragraph 4 (a) (iii) is satisfied.

8. Decision

For the reasons stated above, the Complainant’s request that the domain

names <houseofblueslasvegas.com> and <houseofblueschicago.com>

be transferred to it is granted.

J.C. Thomas

Sole Panelist

Dated: 24 June 2002