WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ace of Spades Holdings, LLC v. Perfect Privacy, LLC / Mario Di Corrado

Case No. D2017-0728

1. The Parties

The Complainant is Ace of Spades Holdings, LLC of New York, New York, United States of America “United States” or U.S.”), represented by Tucker & Latifi, LLP, United States.

The Respondent is Perfect Privacy, LLC of Atlanta, Georgia, United States / Mario Di Corrado of Coram, New York, United States.

2. The Domain Name and Registrar

The disputed domain name <aceofspadevents.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2017. On April 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 19, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 21, 2017.

The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as the “Complaint”) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Center received two email communications from the Respondent requesting further information on April 21, 2017. The Center acknowledged receipt of the Respondent’s email communications and provided the information requested on April 21, 2017.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2017. Accordingly, the Center notified the Parties on May 15, 2017 that it will proceed to appointment of the Panel.

The Center appointed William R. Towns as the sole panelist in this matter on May 23, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of the well-known Armand de Brignac champagne, also popularly known as “Ace of Spades” champagne because of the stylized ACE OF SPADES logo (hereinafter referred to as the “ACE logo”) embossed on the Armand de Brignac champagne bottles, as reproduced below.

The Complainant owns a United States trademark registration for the word mark ACE OF SPADES (U.S. Reg. No. 4,733,892), applied for on May 31, 2013, and issued by the United States Patent and Trademark Office (“USPTO”) on May 12, 2015, for champagne in International Class 33. The Complainant also holds a European Union Trademark (“EUTM”) for ACE OF SPADES, granted on November 4, 2008, as well as a EUTM figurative registration for the ACE logo. The Complainant has obtained registrations for the ACE logo in numerous countries worldwide.

The Respondent registered the disputed domain name <aceofspadevents.com> on March 12, 2017, according to the Registrar’s WhoIs records. The Respondent employed a privacy protection service when registering the disputed domain name. The disputed domain name resolves to a website entitled “ACE OF SPADE EVENTS”, on which the Respondent offers casino entertainment services (i.e., casino party rentals) in the Las Vegas style. The Respondent is located in Port Jefferson, New York.

When the Complaint was filed, the landing page of the Respondent’s website prominently displayed a stylized “ace of spades” image (as reproduced below), which appears to be a colorable imitation of the Complainant’s ACE logo.

At some point thereafter, the Respondent changed the landing page of his website, replacing the stylized “ace of spades” image with a generic black ace of spades in a white circle. The exact date upon which the Respondent made this change cannot be determined. Upon visiting “www.archive.org”, popularly known as the “Wayback Machine”, the Panel discovered that the Respondent has recently employed robots.txt. As a result, the history of the Respondent’s use of the disputed domain name is not publicly available.

However, the Respondent continues to display stylized “ace of spades” images on secondary pages of his website, as reproduced below.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is the owner of the “renowned and world famous” Armand de Brignac champagne, which is popularly known as Ace of Spades champagne. The Complainant explains that the champagne bottles are all embossed with the stylized ACE logo and the famous ARMAND DE BRIGNAC mark, both of which the Complainant maintains are immediately identified by consumers worldwide with the famous songwriter, musical artist, record producer, entrepreneur and business mogul, Mr. Shawn Carter, artistically known as Jay Z, also the owner of the Complainant. According to the Complainant, it has expended large sums of money to protect its intellectual property rights in the ACE OF SPADES mark and ACE logo, spending millions of dollars in advertisement and promotion of its trademarks, including on the Complainant’s “www.armanddebrignac.com” website.

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s ACE OF SPADES mark. The Complainant maintains that the Respondent registered the disputed domain name long after the Complainant had established rights in its ACE OF SPADES mark, and that the Respondent’s use of the disputed domain name with the website “www.aceofspadevents.com” enables the Respondent to intentionally confuse the public into thinking the disputed domain name is associated with the Complainant and its famous owner. The Complainant contends that various sections of the Respondent’s website display reproductions of the Complainant’s famous ACE logo.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent is not authorized or licensed to use the Complainant’s marks. The Complainant asserts that the Respondent is not commonly known by the disputed domain name, and that there can be no legitimate reason for the Respondent to have registered and be using the disputed domain name. The Complainant contends that the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s ACE OF SPADES mark, to mislead Internet users into thinking that the Respondent’s website is associated with, authorized or sponsored by the Complainant.

The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent was aware of the Complainant and the fame associated with the Complainant’s marks when registering the disputed domain name. The Complainant submits that the Respondent is intentionally attempting to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, or endorsement of the Respondent’s website and services.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. As noted above, the Respondent on April 21, 2017, contacted the Center by email, asking for information, which the Center provided in an email response. The Respondent thereafter replied to the Center’s email, asking what he should do. The Respondent was clearly informed by the Center that he would have an opportunity to respond to the Complainant, if he so desired.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the 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 with respect to the domain name; and

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

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <aceofspadevents.com> is confusingly similar to the Complainant’s ACE OF SPADES mark. In considering this issue, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the Complainant’s ACE OF SPADES mark is recognizable in the disputed domain name, both visually and aurally. Neither the omission the second “s” in “spades” nor the inclusion of the term “events” serves to dispel the confusing similarity of the disputed domain name to the Complainant’s mark.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s distinctive ACE OF SPADES mark or ACE logo. Regardless, the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s ACE OF SPADES mark and which resolves to the Respondent’s website. The Respondent has prominently displayed on his website’s landing page a colorable imitation of the Complainant’s ACE logo, which the Respondent removed only after the Complaint was filed. The Respondent continues to display colorable imitations of the Complainant’s ACE logo on secondary pages of his website.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel notwithstanding has carefully reviewed the record in this case, and for the reasons discussed below has concluded that the Respondent’s registration and use of the disputed domain name does not fall within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Respondent is using the disputed domain name with a website offering casino entertainment services (i.e., casino party rentals). The Respondent by all appearances does not offer goods or services that directly compete with the Complainant’s products and services (i.e., alcoholic beverages). Nevertheless, and as noted earlier, the Respondent has prominently displayed a colorable imitation of the Complainant’s distinctive ACE logo on the landing page of his website, removing the image only after the filing of the Complainant. And notwithstanding the filing of the Complainant, the Respondent continues to display colorable imitations of the Complainant’s ACE logo on secondary pages of his website.

In the absence of any explanation by the Respondent, the Panel considers that the Respondent in all likelihood was aware of the Complainant and the Complainant’s ACE OF SPADES mark and ACE logo when registering the disputed domain name. The Respondent’s use of the disputed domain name appears calculated to create Internet user confusion, and the Respondent’s use of a colorable imitation of the Complainant’s ACE logo more likely than not falsely suggests the Complainant’s affiliation, endorsement or sponsorship of the Respondent’s casino entertainment services. The Respondent cannot make a legitimate use of the disputed domain name in connection with casino services when seeking to trade on the Complainant’s ACE OF SPADES marks or otherwise falsely suggest an association with, endorsement of or sponsorship by the Complainant.

Having regard to the relevant circumstances in this case, and in the absence of any reply from the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. There is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on his website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted above, the Panel concludes that the Respondent more likely than not was aware of the Complainant and had the Complainant’s marks in mind when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel finds that the Respondent registered and is using the disputed domain name in an attempt to capitalize on or otherwise take advantage of the Complainant’s rights, by intentionally creating a likelihood of confusion with the Complainant’s marks as to sponsorship, endorsement or affiliation with the Respondent’s website. It is not unusual for beverage brands to be associated with or sponsors of various events, including those related to gambling and casino services.

In the attendant circumstances of this case, the Panel considers the Respondent’s use of a privacy protection service to be evocative of a bad faith attempt to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. The Panel further notes the Respondent’s employment of robots.txt, possibly to preclude viewing the history of the Respondent’s website. See The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aceofspadevents.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: June 13, 2017

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.7.