The Complainant is Stanworth Development Limited, of the Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., of South Africa.
The Respondent is Michael Rand, of Tel Aviv, Israel.
2. The Domain Name and Registrar
The disputed domain name <jackpotcitycsaino.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2008. On October 30, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 31, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2008.
The Center appointed John Swinson as the sole panelist in this matter on December 29, 2008. 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.
Although the Panel notes that the Complaint was filed against both Domains By Proxy Inc. and Michael Rand, the registrar has confirmed in its verification reply to the Center of October 31, 2008 that Michael Rand, and not Domains By Proxy Inc., is the registrant of the disputed domain name. Domains By Proxy Inc. appears to be merely a privacy or proxy service in use at one time by the real party in interest, Michael Rand. The Panel will regard Michael Rand as the proper Respondent in this case.
4. Factual Background
The Complainant is the owner of trademarks in Australia, the United Kingdom, the European Union, the United States of America, Spain and Canada that contain the words “jackpot city”. For example the Complainant owns the trademark JACKPOT CITY in the United States of America (trademark No. 2894475) and the trademark JACKPOTCITY in the European Union (trademark No. 003133444).
The Complainant's JACKPOT CITY trademarks cover entertainment services, namely providing on-line games of chance, games of skill and on-line casino style gaming services.
The Complainant owns a number of domain names that contain the trademark JACKPOT CITY or similar, including <jackpotcity.com>, <myjackpotcity.com>, <thejackpotcitycasino.com> and <jackpotcitypoker.com>.
The Complainant has authorized its licensee, Carmen Media Group Limited, to operate under the JACKPOT CITY trademark. Carmen Media Group operates an online gaming site located at “www.jackpotcity.com” that was officially launched in early 1999. This site has more than 200,000 visitors per month and an average of 25,000 online casino software downloads per month.
5. Parties' Contentions
A. Complainant
The Complainant contends that:
The disputed domain name is identical or confusingly similar to the Complainant's JACKPOT CITY trade marks
The disputed domain name is confusingly similar to the Complainant's JACKPOT CITY trademarks because it wholly incorporates the trade mark and merely adds a generic, descriptive word “csaino” (a misspelling of the word “casino”).
The misspelling of the word “csaino” is a form of typosquatting. The letters “a” and “s” are close to each other on a keyboard, therefore it is a likely mistyping of the word “casino”.
The disputed domain name is so similar to the Complainant's JACKPOT CITY trademarks that there is a strong likelihood that internet users would assume that the website located at the disputed domain name was in some way affiliated with the Complainant. This likelihood of confusion is made even stronger due to the nature of the Complainant's business, namely the provision of online gaming services.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant is the exclusive proprietor of the JACKPOT CITY trademarks in relation to gaming and casino services. The Respondent is neither an agent nor a licensee of the Complainant and therefore has no right to use the JACKPOT CITY trademarks in the disputed domain name.
The Respondent is not commonly known by the disputed domain name and does not own any trademark or service mark rights in and to the disputed domain name.
The disputed domain name was registered and is being used in bad faith
The Complainant's JACKPOT CITY trademarks and the “www.jackpotcity.com” gaming site are well known in many jurisdictions. The disputed domain name was created nearly seven years after the Complainant commenced operation of “www.jackpotcity.com”. The Respondent has intentionally selected the JACKPOT CITY trademark to mislead internet users into thinking that the website located at the disputed domain name is somehow affiliated with the Complainant.
The Respondent did not respond to the Complainant's written demands to cease using the disputed domain name.
There is no relationship between the Complainant and the Respondent.
The website located at the disputed domain name does not contain a disclaimer notifying internet users of the relationship (if any) between the Complainant and the Respondent.
The disputed domain name was registered nine years after the Complainant registered “www.jackpotcity.com” and six years after the some of the JACKPOT CITY trademarks were registered in countries such as Australia and the United States of America.
The Respondent could have used alternate names to describe its business.
The website located at the disputed domain name directs internet users to a website in direct competition to the Complainant's “www.jackpotcity.com” website.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the complainant.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have rights in a name, trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant's name, trademark or service mark.
The Complainant is the proprietor of numerous trademarks containing the words JACKPOT CITY, examples are provided in paragraph 4 above. The Panel is therefore satisfied that the Complainant has registered trademark rights in the mark JACKPOT CITY.
The disputed domain name uses the Complainant's trademark in its entirety and merely adds a word that describes the type of services that the website at the disputed domain name offers (“csaino” is merely a misspelling of “casino”). In numerous decisions panelists have held that the inclusion of a trademark in its entirety, coupled with a generic word that merely describes the types of goods or services being offered, renders the disputed domain name identical or confusingly similar to the complainant's trademark. Examples include Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (the domain name <quixtarmortgage.com> was held to be identical or confusingly similar to the trademark “Quixtar”) and Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 (domain names such as <dellmexico.com> and <usadell.com> were considered to be identical or confusingly similar to the DELL trademark).
The misspelling of the word “casino” in the disputed domain name is a form of typosquatting. Due to the fact that the spelling of the word “casino” is only slightly altered in the disputed domain name (the letters “a” and “s” have been swapped), it would be a common typographical error. By misspelling the word “casino” in the disputed domain name the Respondent is hoping to lure the Complainant's current and potential customers and cause them to assume that the website located at the disputed domain name is affiliated with the Complainant.
The Panel therefore finds that, in the circumstances of this case, the disputed domain name is identical or confusingly similar to the Complainant's JACKPOT CITY trademarks. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The complainant must make a prima facie case that the respondent lacks rights or interests in the disputed domain name. If the complainant establishes a prima facie case, the burden of demonstrating rights or legitimate interests in the domain name is transferred to the respondent.
Paragraph 4(c) of the Policy provides a non-exclusive list of the ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services [not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring]; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interest in the disputed domain name.
The Respondent is not connected in any way with the Complainant. The Complainant has not consented or given permission to the Respondent to use the Complainant's JACKPOT CITY trademarks.
The Respondent does not appear to have any legitimate trademark or service mark rights in the words “jackpot city” or “jackpotcitycsaino” or any variations thereof. There is no evidence that the Respondent, or any companies or organizations that the Respondent is associated with, are commonly known as “jackpot city”, “jackpot city csaino” or any variations thereof.
The Panel is satisfied that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent, by failing to provide a response, has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities that the domain name was registered in bad faith or that it has subsequently been used in bad faith.
Paragraph 4(b) of the Policy enumerates four circumstances which evidence a respondent's registration or use of a domain name in bad faith. The first three of those relate to registration:
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration [to another person] for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name provided you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor.”
Paragraph 4(b) of the policy provides that the following circumstance shall be evidence of use of a domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The disputed domain name was registered at least seven years after the Complainant commenced operation of “www.jackpotcity.com” and six years after some of the Complainant's JACKPOT CITY trademarks were registered. The Panel therefore accepts that the Respondent would have been aware of the Complainant's JACKPOT CITY trademarks and the Complainant's JACKPOT CITY websites such as “www.jackpotcity.com” when it registered the disputed domain name on July 30, 2007.
As discussed above, in paragraph 5B, the Respondent is not known by the disputed domain name, therefore the Respondent could have operated its website under alternate domain names. This, and the fact that the word “csaino” is a deliberate misspelling of “casino”, indicates that the Respondent has intended to exploit the Complainant's goodwill and reputation in an effort to gain profit for themselves and disrupt the Complainant's business. The Panel is therefore satisfied that the Respondent intentionally created the likelihood of confusion between the disputed domain name and the Complainant's JACKPOT CITY trademarks.
The Panel finds that the Respondent has registered and used the disputed domain name in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 domain name, <jackpotcitycsaino.com> be transferred to the Complainant.
John Swinson Sole Panelist
Dated: January 9, 2009
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