Mansion (Gibraltar) Limited and Provent Holdings Ltd. v. Agens PSC
Case No. D2010-0584
1. The Parties
The Complainants are Mansion (Gibraltar) Limited of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (First Complainant) and Provent Holdings Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (Second Complainant), represented by Lawrence Quahe & Woo LLC, Singapore.
The Respondent is Agens PSC of Singen, Germany, represented by Lalive Attorneys-at-Law, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <caisinos.com> (the “Domain Name”) is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2010. On the same day, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed Domain Name. On April 19, 2010, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainants on April 22, 2010, inviting them to submit an amended Complaint in German that Complainants filed on May 4, 2010. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on May 5, 2010. On May 29, 2010, both parties agreed on English as the language of proceeding. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2010. The Response was filed with the Center on May 31, 2010.
The Center appointed Bernhard F. Meyer as the sole panelist in this matter on June 8, 2010. The Panel finds that it was properly constituted and 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
First Complainant is an entertainment company providing customers worldwide with gaming entertainment such as casino, poker, sportsbook betting and more. It offers its services on several websites including <casino.com>, <mansion.com>, <mansioncasino.com> and <mansionpoker.com>.
Second Complainant is the registrant of the domain name <casino.com> and owner of the following trademark: CASINO.COM, Community Trademark filed under no. 1324904, on September 20, 1999, for goods and services in classes 9, 35, 38, 41 and 42. It has licensed the use of this trademark as well as the use of the domain name <casino.com> to First Complainant. Furthermore, Second Complainant filed applications for several trademarks CASINO.COM in the following countries: Australia, the People's Republic of China, Philippines, Taiwan Province of China and the United States of America – all for goods and services in classes 9, 28, 35 and 41.
Respondent is a German company offering business consulting, organizational change of structure and processes, information technology, human resources, as well as quality and security services. It develops inter alia domain concepts and registers domain names for its clients. One client – according to Respondent's allegation – is Casinos Austria International (“CAI”), an Austrian company, for which Respondent provides consulting services. CAI is inter alia the owner of the Community Trademark CAISINOS, filed under no. 008164436, on March 3, 2009, for goods and services in classes 38, 41 and 42.
In addition, Respondent is the owner of several domain names starting by the three letters “CAI” and leading to websites offering CAI's services, inter alia <caigames.com>, <caibets.com>, <caiplay.com> as well as the Domain Name <caisinos.com> which has been registered on January 21, 2009.
5. Parties' Contentions
A. Complainants
Complainants have been extensively engaged in advertising and marketing their online casino business inter alia under <casino.com>. Therefore, they claim supplemental to the registered trademark rights unregistered trademark rights through use and have shown that they have developed goodwill and a reputation in CASINO.COM. Complainants object to the use of the Domain Name at issue by Respondent on the following grounds.
The disputed Domain Name is identical or confusingly similar to the trademark in which Complainants have rights. The only distinction between the trademark CASINO.COM and the Domain Name <caisinos.com> is the addition of the two letters “i” in the middle and “s” at the end of the word “casino”. The Domain Name incorporates the whole trademark – no part of it has been omitted – and is visually nearly identical to the trademark. Moreover, Complainants allege that the Domain Name is a predictable mistyping of the trademark and this clearly demonstrates a case of “typosquatting”.
Complainants further argue that Respondent has no rights or legitimate interests in respect of the disputed Domain Name. Respondent is making a misuse of the Domain Name by redirecting visitors to its website under <caigames.com> providing goods and services that are identical to those of Complainants. Respondent is neither affiliated to Complainants in any way nor has it ever been licensed or authorized to use CASINO.COM. Complainants allege there is a lack of good faith in the use of the respective website under the Domain Name. Furthermore, Respondent has not been commonly known by the Domain Name and is making an unfair use of the Domain Name to misleadingly divert consumers who are attempting to access Complainants' website under <casino.com> but have mistyped the respective domain name.
Finally, Complainants argue that Respondent registered and uses the Domain Name in bad faith. Complainants assert that Respondent – as a “typosquatter” – acquired the Domain Name for the sole purpose of disrupting the business of Complainants for its own commercial gain or benefit.
B. Respondent
According to Respondent, Claimants cannot claim exclusive rights on the generic word “casino” in relation to gaming, amusement and entertainment. Respondent objects to the assertion that mere trademark applications are sufficient to constitute “rights” for the purpose of paragraph 4(a)(i) of the Policy, particularly because of the high risk of a refusal of the mark in relation to services related to gaming, amusement and entertainment due to reasons of descriptiveness. Furthermore, Respondent objects that Complainants hold unregistered rights in CASINO.COM since they have not sufficiently proven the existence of such rights.
In addition, Respondent alleges that there is no confusing similarity between the registered Community Trademark CASINO.COM and the Domain Name since the supplemental letter “i” in the Domain Name is sufficient to differentiate the signs on both visual and oral aspects.
Respondent alleges legitimate interests in the Domain Name in the course of its professional activities. By registration of the Domain Name, reference was made to the Community Trademark “caisinos” that Respondent's client, CAI, holds rights to. This trademark shows a wordplay between the three letters “CAI” of “Casinos Austria International” and the generic term “casino”.
Finally, Respondent did not register the Domain Name with Complainants' trademark in mind. Moreover, it never heard either of the Complainants nor of the existence of any rights regarding the mark CASINO.COM. For these reasons, Respondent did not register and use the Domain Name in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that Complainants shall prove each of the following three elements in order to succeed in an administrative proceeding:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent's Domain Name has been registered and is being used in bad faith.
On the other hand, if Complainants fail to prove only one of the three elements above, they must fail on their Complaint under the Policy.
A. Identical or Confusingly Similar
Complainants evidenced their rights in the registered Community Trademark CASINO.COM (see above, section 4). Thus, there is no need for the Panel to decide whether any further rights could flow out of Complainants' pending trademark applications or its alleged (but contested) unregistered trademarks.
The Domain Name differs from the trademark CASINO.COM by a supplemental letter “i” in the middle and the letter “s” at the end of the word “casino”. These two changes lead to differences, both visually and acoustically. The letter “a” preceding the “i” in “caisinos” results in a significantly different pronunciation of the disputed Domain Name than how Complainant's trademark CASINO.COM is pronounced, even in the plural “casinos”. Moreover, since “casino” is a well-known generic term, small visual and sound modifications are, in this Panel's view, very obvious and are more easily remembered by the human mind.
“Typosquatting” involves the intentional registration and use of a domain name that is a common misspelling or a predictable mistyping of a distinctive mark (Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035). If this was the case, a respondent might potentially have registered and would have been using the Domain Name in order to take advantage of typographical errors of internet users seeking a complainant's website and divert them to its own website (Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035). The Domain Name in the present case, however, does not involve the omission of a letter, the transposition of two letters or a similar likely mistake.
In order to arrive from Complainants' trademark to Respondent's Domain Name, a user must make two mistakes at two different places when typing the term “casino.com” on a web browser. While a plural “s” at the end of the term “casino” in “casino.com” as such might appear to be a likely mistake, and while the same may even be true for an additional “i” in the middle of the word, it is in this Panel's view unlikely that a significant number of Internet users would make both required mistakes exactly at the required positions (or that the Respondent chose the Domain Name intending to capitalize on these unusual mistakes). A double typo at exactly the required positions may well be rare (and the Panel notes that there is no evidence from the Complainant otherwise), thus typosquatting, under the circumstances at hand, appears from this record to be neither successful nor likely.
Nevertheless, in light of the below findings, the Panel does not find it necessary to decide this element under the Policy.
B. Rights or Legitimate Interests
Complainants assert that Respondent has no rights or legitimate interests in the Domain Name. According to paragraph 4(c) of the Policy, the following circumstances can demonstrate a Respondent's rights to and legitimate interests in a domain name:
(i) before any notice was given to Respondent of the dispute, Respondent used, or demonstrably made 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; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even though it has not acquired any trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name.
Respondent explains that one of its clients or business partners (Casinos Austria International) is commonly known by the letters “CAI” and that the domain names <caigames.com>, <caibets.com> and <caiplay.com> also belong to this client or business partner. Moreover, the latter appears to be the owner of the Community Trademark “caisinos”. Respondent points out that it is the registrant of all of these domain names which CAI uses as the platform of its gaming business. Thus, the professional relationship between Respondent and CAI is, in the Panel's view, established. Furthermore, the apparent business model of CAI, offering a wide range of online gaming services under its short name “CAI”, constitutes on this record a right or legitimate interest to register <caisinos.com>.
In conclusion, Respondent has shown a legitimate interest in the Domain Name in accordance with paragraph 4(c)(i) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:
(i) circumstances indicating that Respondent has registered and has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent's documented out of pocket costs directly related to the Domain Name; or
(ii) Respondent has 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 that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
Since Respondent has shown a legitimate interest in the disputed Domain Name, there are no indications of bad faith use or registration. There is no evidence suggesting that the Domain Name at issue has been chosen by Respondent with the intent to profit or otherwise abuse Complainants' trademark rights.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Bernhard F. Meyer Sole Panelist
Dated: June 22, 2010
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