Stanworth Development Limited v. PrivacyProtect.org
Case No. D2009-1219
1. The Parties
The Complainant is Stanworth Development Limited, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is PrivacyProtect.org, Domain Admin, Moergestel, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <gamingclubcasinos.com> (“the Domain Name”) is registered with Australian Style Pty Ltd dba auCLUB.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2009. On September 14, 2009, the Center transmitted by email to Australian Style Pty Ltd dba auCLUB a request for registrar verification in connection with the Domain Name. On September 22, 2009, Australian Style Pty Ltd dba auCLUB transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center sent an email communication to the Complainant on September 22, 2009 providing registrar details as disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint incorporating the correct registrar details. The Complainant filed an amendment to the Complaint on September 23, 2009. The Center verified that the Complaint together with the amendment to 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 October 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on November 5, 2009. 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.
In the absence of a Response to the Complaint, the Panel checked the record to ensure that the Complaint had been properly notified to the Respondent, as required by the Rules, paragraph 2(a). The Panel was satisfied that the Center had sufficiently discharged its notification duty under paragraph 2 of the Rules. However the Whois particulars for the registrant of the Domain Name did contain the statement: “All postal mails rejected. Visit PrivacyProtect.org”, and on this occasion the “Contact Domain Owner” message box which is available at “www.PrivacyProtect.org” had not been used to draw the Respondent's attention to the commencement of the proceeding. While the Panel considers that the Center is not strictly obliged under the Rules to utilise message box facilities such as that which is provided at “www.PrivacyProtect.org,” to avoid any risk that the Respondent might not have received notice of the Complaint, the Panel issued a procedural direction on November 17, 2009, allowing the Respondent a further 7 days, until November 24, 2009, to file a Response if it wished to do so. The time for the Panel to give its decision in the case was extended to December 1, 2009.
The Panel's procedural direction was communicated to the Respondent via the “Contact Domain Owner” message box on the website at “www.PrivacyProtect.org.”
The Respondent did not file any Response within the additional time allowed by the Panel's November 17, 2009 procedural direction.
4. Factual Background
The following statement of facts is taken from the Complaint.
The Complainant
The Complainant is the proprietor of a number of registered trademarks which consist of or incorporate the words “GAMING CLUB”. The marks are registered in a number of jurisdictions, including Australia, Canada, the European Union, the United Kingdom, and the United States of America. It is not necessary to refer to the detail of these marks: it is enough for the purposes of this decision to note that the Complainant is the registered proprietor of the stylized Community Trade Mark THE GAMING CLUB, registered in international class 41 in respect of online gaming services, with effect from April 16, 2003. For convenience, the Panel will refer to this mark as “the Complainant's mark”.
The Netherlands (the Respondent's apparent country of domicile) is one of the designated countries noted in the Community Trade Mark registration.
The Complainant is also the proprietor of a number of domain names consisting of or incorporating the words “gaming club”. These include the domain names <gamingclubcasino.com>, <gamingclubcasino.net>, and <gamingclubcasino.org>, each of which was registered in or before 1998.
The Complainant has appointed a licensee, Carmen Media Group Limited (“Carmen”). Carmen operates an online gaming site at “www.gamingclub.com” (“the Carmen website”) in which the Complainant's mark is used. According to the Complaint, the Carmen website was launched in January of 1997, and the Complainant's mark has since become established as one of the most highly recognised online gaming brands. The Carmen website receives in the region of 250,000 visitors per month, and “many thousands” of registered players regularly make use of the gaming services it provides. An amount in excess of US$50,000 per month is spent on various advertising, marketing, and other activities promoting the Carmen website and/or the Complainant's mark. Examples of some of the advertising material were produced with the Complaint.
The Respondent and the Domain Name
The Domain Name was registered by the Respondent on March 16, 2004.
At the date the Complaint was filed, the Domain Name pointed to a website which provided information about casino and gaming services (“the Respondent's website”). The Respondent's website also contained click-through links to third party websites, including some operated by competitors of the Complainant and/or Carmen.
The Complainant says that the Respondent has no license or other right to use the Complainant's mark, and that the Respondent has no connection or affiliation with the Complainant or Carmen. Notwithstanding that, there is no prominently displayed disclaimer on the Respondent's website, informing Internet users that there is no relationship between the Complainant and the Respondent.
The Complainant also says that there is no evidence of the Respondent having been commonly known by the Domain Name, or having acquired any trademark or service mark rights in the Domain Name.
In accordance with normal practice, the Panel has himself visited the Respondent's website. That occurred on November 9, 2009. The Respondent's website appeared to the Panel to be primarily a platform site, providing click-through links to numerous online gambling sites, many of which appeared to have no connection with the Complainant or Carmen (although there was also a link to the Carmen website). It also provided information about a number of online casinos operated by parties having no apparent connection with the Complainant or Carmen.
Pre-Commencement Correspondence
On June 17, 2009, the Complainant's representative sent a cease and desist letter to the Respondent. In the letter, the Complainant's representative alleged that the Respondent had pointed the Domain Name to a website “purporting to promote our client's goods and services”. The letter alleged trademark infringement, passing off, and unlawful competition.
There was no substantive response to the Complainant's representative's letter. A follow-up letter was sent by the Complainant's representative on July 8, 2009, but the dispute was not resolved. This proceeding was commenced on September 11, 2009.
5. Parties' Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant's mark. The addition of the generic word “casinos” in the Domain Name does not add distinctive matter so as to distinguish the Domain Name from the Complainant's mark. That is particularly so in a case (such as the present) where the additional generic word (in this case “casinos”) is descriptive of the Complainant's business. There is a substantial likelihood that Internet users and consumers will be confused into believing that there is some affiliation, connection, sponsorship, approval, or association between the Complainant and the Respondent, when no such relationship exists.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following facts:
(i) The Complainant has not authorized the Respondent to use the Complainant's mark, or any confusingly similar mark.
(ii) The Respondent did not provide any substantive response to the cease and desist letter.
(iii) The Respondent's use of the Domain Name has not been in connection with any bona fide offering of goods or services. The fact that the Respondent associated the Domain Name with a website relating to casino and gaming services shows that the Respondent was aware of the Complainant's mark, and the Respondent's website provides links to websites unrelated to the Complainant, including some operated by the Complainant's competitors.
(iv) The Respondent has not acquired any trademark or service mark rights in the Domain Name, and there is no evidence that the Respondent has been commonly known by the Domain Name.
(v) The Complainant's mark is so well-known in relation to casino and gaming services that the Respondent should have reasonably known of the Complainant's prior rights before registering the Domain Name. Knowledge is to be inferred, both because of the distinctiveness associated with the Complainant's mark, and the absence of any apparent explanation or justification for the Respondent adopting the Complainant's mark.
(vi) The Domain Name could never have been put to any legitimate use by the Respondent.
3. The Domain Name was registered and is being used in bad faith.
(i) The Complainant has a long-established reputation in many jurisdictions in the use of its “GAMING CLUB” trademarks in relation to gaming and casino services, especially if one considers that the Complainant's gaming site at “www.gamingclub.com“ has been in operation since at least January 1998. The Respondent registered the Domain Name 7 years after the Complainant registered the <gamingclub.com> domain name (in April 1997), and nearly 6 years after the Complainant first used the “GAMING CLUB” mark in commerce (in January 1998). The Complainant had also applied for its “GAMING CLUB” mark in several countries, including the United States and Australia, approximately one year before the Complainant registered the Domain Name. In those circumstances, it is very unlikely that the Respondent unintentionally selected the Complainant's distinctive “GAMING CLUB” mark to incorporate into the Domain Name.
(ii) It is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would be legitimate.
(iii) The Respondent is trading on the value established by the Complainant in the Complainant's mark, to attract users to the Respondent's website. The Respondent is deriving economic benefit from this practice, either by attracting users to the Respondent's website, or by the receipt of compensation from the owners of other websites (including sites operated by competitors of the Complainant) for delivering users to those sites. That constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
(iv) The Respondent also registered and has used the Domain Name with the intention of disrupting the business of the Complainant.
(v) The Respondent failed to post any prominent disclaimer on the Respondent's website making it clear to Internet users the precise relationship, if any, between the Respondent and the Complainant.
(vi) The Complainant has not acquiesced in the use of its trademarks by the Respondent.
(vii) The Domain Name is not the only name which the Respondent can use to describe its business.
(viii) The Respondent's failure to reply to the cease and desist letter supports an inference of bad faith registration and use.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has sufficiently proved that it is the proprietor of the stylized Community Trademark THE GAMING CLUB (the Complainant's mark), and thus has rights in that mark for the purpose of paragraph 4(a)(i) of the Policy. It has not proved that it is the proprietor of any “GAMING CLUB” mark (i.e. without the “THE”), but the Panel is satisfied that the Complainant does not need to rely on any such mark: the Domain Name (without any “the”) is still confusingly similar to the Complainant's mark. The Panel's reasons for coming to that conclusion are as follows.
The prominent parts of the Complainant's mark are the three words “the gaming club” the figurative element of the Complainant's mark is not particularly distinctive, and it is the word elements, and particularly the words “GAMING” and “CLUB”, which convey the mark's meaning. Both words have been incorporated in the Domain Name, and the word “casinos” has been added. That word is descriptive of the services provided by Carmen under the Complainant's mark, and numerous panels have held that forming a disputed domain name by taking the complainant's trademark and adding to it an expression which is descriptive of the business conducted by the complainant under that trademark, is only likely to exacerbate the confusion caused by the use of the trademark in the Domain Name (see for example The Ritz Hotel v. Damir Kruzicevic,
WIPO Case No. D2005-1137).
The Respondent in this case has not taken the Complainant's mark precisely – the word “the” has been omitted from the Domain Name, and of course the figurative element of the Complainant's mark could not have been incorporated in the Domain Name. But those are minor differences, and do not significantly affect the likelihood that the visual, aural, and conceptual similarities between the Domain Name and the Complainant's mark will result in confusion.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Complainant has not authorised the Respondent to use the Complainant's mark (or any confusingly similar mark), whether in a domain name or otherwise. There is nothing to suggest that the Respondent (or any business operated by it) might be commonly known by the Domain Name, and no basis in the evidence for a finding that the Respondent's use of the Domain Name has been either “non-commercial” or “without intent for commercial gain” – the Respondent's website appears to be commercial in nature. That combination of circumstances is sufficient to establish a prima facie case of “no rights or legitimate interests”, so the evidentiary onus shifts to the Respondent to show that it does have some right or legitimate interest. The Respondent has not filed any Response, and has therefore failed to discharge that evidentiary onus.
For the reasons which appear in the next section of this decision, the Panel is also satisfied on the evidence which has been provided that the Respondent's use of the Domain Name has been neither “in connection with a bona fide offering of goods or services” (within the meaning of paragraph 4(c)(i) of the Policy), nor “legitimate” or “fair” (as those expressions are used in paragraph 4(c)(iii) of the Policy).
For the foregoing reasons, the Complainant has made out its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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] website or location or of a product or service on [the respondent's] website or location.
The Panel is satisfied that the Complainant has also proved this part of the Complaint.
First, the Respondent is obviously very conversant with the online gaming industry, and it would have been well aware of the major players in that industry, including the Complainant/Carmen. Indeed, “Gaming Club Casino” is one of the click-through links on the Respondent's website, and the link takes the browser to the Carmen website. And the Respondent has not denied the Complainant's assertion that it is the owner of the domain names <gamingclubcasino.com>, <gamingclubcasino.org>, and <gamingclubcasino.net>. It is inconceivable that the Respondent would have registered the plural form of those domain names in the .com gTLD space, without troubling to find out who owned the “singular” version. The Panel also notes that the Carmen website has been operating since 1998, and that the Complainant's mark was registered in the European Union almost a year before the (apparently Netherlands-based) Respondent registered the Domain Name.
For those reasons, and in the absence of any response, the Panel finds that the Respondent was aware of the Complainant and the online gaming site operated by Carmen at the Carmen website, at the time the Domain Name was registered.
The Respondent's website lists and provides click-through links to the websites of numerous online casinos (in addition to the link to the Carmen website). Not one of those (other) online casinos has the words “Gaming Club”, or anything similar, in its name. In the absence of a response, the Panel infers that the Respondent chose the Domain Name because of its very close similarity to the Complainant's mark and the name of the online casino operated by Carmen at the Carmen website. In so doing, the Respondent must have expected that it would attract to the Respondent's website Internet users looking for The Gaming Club online casino operated by Carmen, and that, once having arrived at the Respondent's website, those Internet users would be exposed to numerous (and presumably sponsored) click-through links to the various websites operated by Carmen's competitors.
That is a use of the Domain Name which falls squarely within paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted 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 the Respondent's website.
The Respondent's failure to file a Response, and its unexplained use of a privacy shield (coupled with the registrar's inability or unwillingness to reveal the true identity of the Respondent), are additional factors pointing to the conclusion that the Respondent has registered and used the Domain Name in bad faith.
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 <gamingclubcasinos.com> be transferred to the Complainant.
Warwick Smith Sole Panelist
Dated: November 26, 2009
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