The Complainants are 32 Red Plc (“First Complainant”) and Trafalgar Media Limited (“Second Complainant”) of Gibraltar, Overseas territory of the United Kingdom of Great Britain and Northern Ireland, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland (the “UK”).
The Respondent is Adrian Ballard, Aberystwyth Holiday Village of Aberystwyth, UK / Private User, Domain Privacy Protector Ltd of London, UK.
The Domain Names <casino36red.com>, <36redcasino.com> and <36red.com> are registered with LCN.COM Ltd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2013. On August 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 2, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the Domain Name <36red.com> and <36redcasino.com>, and disclosing registrant and contact information for the Domain Name <casino36red.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 8, 2013, 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 August 9, 2013.
On August 12, 2013, the Center received an informal communication from the Respondent, Adrian Ballard.
On August 19, 2013, the Center requested the Complainant to clarify an apparent typographical error in the amended Complaint, which the Complainant clarified on the same day.
The Center verified that the Complaint together with the amended 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 August 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2013. The Response was filed with the Center September 9, 2013. On September 18, 2013, the Complainant submitted a Supplemental Filing with the Center.
The Center appointed Jon Lang, William R. Towns and The Hon Neil Brown Q.C. as panelists in this matter on October 18, 2013. The Panel finds that it was properly constituted. Each member of 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.
On September 18, 2013, the Complainant submitted a Supplemental filing requesting that the Panel exercise its discretion to admit it. In support of its request, the Complainant noted that the Respondent had expanded its explanation for registration of the Domain Name <36red.com> by adding new factors not mentioned in its original justification, had provided additional evidence in addition to the single email which it produced pre-filing of the Complaint, and that the Complainant could not reasonably have known of the existence of such material, (also noting that the Complainant had made repeated requests for clarification of the Respondent’s case and evidence before filing the Complainant).
The Panel exercises its discretion in favour of allowing the Supplemental filing.
This dispute concerns the following Domain Names:
- <36red.com> registered on April 30, 2009,
- <36redcasino.com>, registered on February 27, 2013 and
- <casino36red.com>, also registered on February 27, 2013.
32Red Plc is a public company established under the laws of Gibraltar on January 8, 2002. Since then, it has carried on business as the provider of Internet based gambling services under the names “32Red” and “32Red.com”.
Trafalgar Media Limited is a private limited company also established under the laws of Gibraltar (on July 22, 2010) and is a wholly owned subsidiary of 32Red Plc.
In October 2011, 32Red Plc assigned its registered and unregistered trade marks to Trafalgar Media Limited albeit 32Red Plc retains a licence to exploit such trade marks. Unless the context otherwise dictates, 32Red Plc and Trafalgar Media Limited are together hereafter referred to as “the Complainant”.
The Complainant owns a range of registered trademarks for 32RED worldwide including Community trade mark No. 2814424, dated August 16, 2002, for the word mark 32RED and Community trade mark no. 2907426, dated October 18, 2002, for the figurative mark,32Red.
The Complainant has operated its main website at “www.32red.com”, since 2002.
The Complainant’s customers are located principally in the UK but also in many other countries around the world.
Since December 2007, there have been approximately 6.5 million unique visitors to the Complainant’s website. Of these, approximately 2.9 million were from the UK.
The Complainant has engaged in extensive marketing of its trade marks. Such marketing has included advertising via a fleet of 32 London taxis liveried inside and out with “32Red.com” branding, TV campaigns and sponsorship of UK televised horse races.
The Complainant has won numerous awards, including being named by Casinomeister in 2010 as Casino of the Decade and in 2011, by eGaming Review Magazine, as Best Casino Operator. In a recent customer service audit of the online casino industry the Complainant came out top, beating the likes of “Ladbrokes”, “William Hills”, “888”, “Bwin.Party” and “Bet365”.
The Respondent is a director of a company called Casino 36 Ltd, formed in May 2008. It purchased a “bricks and mortar” casino, called Casino 36, based in Stockport. . Casino 36 was interested for a number of years in acquiring another casino, Casino Red but did not manage to do so, being outbid in 2012 after an earlier attempt in 2009 also failed to secure the acquisition.
The Domain Name <36red.com> was, as at January 28, 2011, redirected to “www.ballardcasinos.co.uk”, a website of the Respondent, promoting three UK “physical” or “bricks and mortar” casinos which the Respondent’s business operates: “Casino 36” in Stockport, “Rubicon Casino” in Wolverhampton and “Castle Casino” in Dudley.
The Complainant’s solicitor sent a cease and desist letter regarding the Domain Name <36red.com> by email on February 23, 2013 and the Respondent replied on February 25, 2013 denying trade mark infringement and stating, by way of explanation for its registration, that it was involved with a “non-remote” casino company called Casino 36 Ltd. The Complainant sent a further e-mail, on February 25, 2013 to which the Respondent responded, on February 27, 2013, stating by way of further explanation, that not only did “36” relate to his existing company and but that he had been involved in the purchase of a non-remote UK casino called “Casino Red” (but that that takeover had failed). On the same day (February 27, 2013) the Respondent registered the Domain Names <36redcasino.com> and <casino36red.com>.
General
Both Domain Names <36redcasino.com> and <casino36red.com> have been used as registrar parking pages and by June 2013, the Domain Name <36red.com> had also been switched to a registrar parking page.
On October 22, 2008, the Respondent registered <luky8bet.com> and “.co.uk”, <luckybet8.com> and “.co.uk” and <8luckybet.co.uk>. The Respondent has redirected these five domains to his own site and the Complainant suggests that registration of these domain names amounts to typosquatting.
On September 8, 2009, the Respondent registered <bluechipcasinos.com> which refers to a casino in Michigan City, Indiana, United States, called “Blue Chip Casino”. As at February 8, 2011, the Respondent redirected <bluechipcasinos.com> to his own website. By May 2013 he had switched the redirect to the site of another (differently-owned) casino near Michigan City called Horseshoe Hammond which the Complainant says is a competitor of “Blue Chip Casino” (both being included on a USA Today list of “Casinos Near the Michigan City Area”).
Identical or Confusingly Similar
The Complainant relies on its registered trademarks for 32RED, and on common law rights in that mark and also “32Red.com”. The Complainant says that by virtue of its extensive trading and marketing activities, it has acquired substantial reputation and goodwill in the names “32Red” and “32Red.com” such that they have been recognised by the public as distinctive of the Complainant’s online gaming business.
The domain name <36red.com> is confusingly similar to the Complainant’s 32RED and “32Red.com” trademarks, it differing only by the number change from “32” to “36”. This has the obvious potential to cause confusion with the Complainant’s trade mark, both visually and aurally. In each case, the name consists of a two digit number in the “thirties” and so the first component of each is “3” or, aurally, “thirty-”. The confusing similarity between “32” and “36” is heightened by the fact that the Domain Name and trade mark both contain the same word “red” as a suffix.
The Domain Names <36redcasino.com> and <casino36red.com> are also confusingly similar to the Complainant’s trade mark in that they comprise the term “36Red” together with a descriptive/generic term “casino”, a terms particularly apt to describe the Complainant’s business activities.
Rights or legitimate interests
The Complainant has no association with the Respondent and has never authorised or licensed the Respondent to use its trade marks. The Respondent has used the Domain Names and the Complainant’s trade marks to attract, confuse and profit from Internet users seeking the Complainant and to disrupt the business of a competitor. Such use could not be said to be bona fide. The Complainant submits that the Respondent’s websites have been used to redirect Internet users to similar services to those offered by the Complainant.
Whilst the Complainant accepts that the Respondent operates a business called “Casino 36”, there is no evidence that he has ever been commonly known by the name “36 Red” or any similar name. The Respondent’s only use of the names comprised in the Domain Names has been as part of a scheme to attract, confuse and profit from Internet users seeking the Complainant. Such usage was not bona fide and cannot generate rights or legitimate interests.
The Respondent was out for commercial gain and it cannot therefore be said that he is making a legitimate noncommercial or fair use of the Domain Names.
Registered and used in bad faith
The Respondent registered the Domain Names for the purpose of unfairly disrupting the business of the Complainant by taking unfair advantage of the Complainant’s trade mark. The Respondent is a competitor in that it offers gambling services to UK residents. It makes no difference that the Complainant offers an online casino and the Respondent operates purely physical casinos. The Respondent was clearly aware of the Complainant and its business when it registered the Domain Names. It is inconceivable that the Respondent intended to operate a genuine business with (or had any other genuine reason to use) a domain name which was closely based on a competitor’s distinctive and well-known trade mark.
The websites at the Domain Names have been used to confuse, attract and profit from Internet users who are searching for the Complainant’s business in search engines, web browsers and otherwise on the Internet. When the Respondent (who operates a UK gambling business) registered the Domain Name <36red.com> in 2009, he was aware of the Complainant’s high profile as a major online gambling operator focusing mainly on the UK.
The Complainant also says that the Respondent registered the Domain Names specifically to target the Complainant’s trade mark. In this regard, the Complainant relies on what it says is the Respondent’s vague and implausible explanation for registering <36red.com> and his reliance on, amongst other matters, the distinction between “remote” and “non-remote” casinos, which the Complainant says is of little significance. The Complainant generally criticises the pre-proceedings correspondence emanating from the Respondent and what it sees as his lack of proper explanation for the registration of the Domain Name<36red.com>.
The Complainant is sceptical of the Respondent’s explanation (not raised initially by him) that, given his expected acquisition of the entity Casino Red and his interest in the entity Casino 36, the registration of the Domain Name <36red.com> made perfect sense. For instance, the Complainant argues that even if the Respondent genuinely expected to acquire the entity Casino Red, why combine (part of) that name with (part of) the name of one of his existing casinos i.e. the entity Casino 36, and why not <redrubicon.com>” or <36rubicon.com> for example. The Complainant concludes that it is obvious that the Respondent registered the Domain Name <36red.com> to target the Complainant, stating that if the Respondent had a genuine reason to register <36red.com>, he would surely have explained this properly at the outset.
The Complainant says the fact that the Respondent stopping the redirection to his own website “www.ballardcasinos.co.uk” from the Domain Name <36red.com> after the Complainant’s filing of the Complaint, is an admission that the previous usage was illicit.
The Respondent’s actions in registering the Domain Names <36redcasino.com> and <casino36red.com> (one through a proxy service) some four years after the Domain Name <36red.com> and on the same day as his second email to the Complainant (February 27, 2013), could not conceivably have been connected with any potential interest in acquiring the entity Casino Red. The Respondent did not see fit to mention these two later Domain Names in his correspondence with the Complainant’s solicitors, and their exact purpose is unclear other than that they were defensive registrations motivated by the dispute with the Complainant.
The Complainant, (referring to the registration of domain names, other than those subject of this Complaint, referred to earlier e.g <luky8bet.com> and <bluechipcasinos.com>) also suggests that the Respondent has engaged in a pattern of registering domain names which appear to comprise misspellings, or slight variations of trade marks of third party gambling businesses (both remote and non-remote), and then misusing them by redirecting them to his own site.
The Complainant makes the point that the likelihood of confusion is not diminished by the possibility that at some point users arriving at one of the Respondent’s sites might have realised that the website was not connected with the Complainant. The Respondent used the Domain Names to create “initial interest confusion” on the part of Internet users seeking the Complainant and in order to profit from at least some of that traffic.
The Complainant maintains that it is obvious that the Respondent was intent upon commercial gain by redirecting the Domain Name <36red.com> to his own site.
As to periods when the Domain Names were used for registrar parking pages (which included, amongst others, links to gaming-related sites), the Respondent is responsible for the use to which the Domain Names were put and it is irrelevant whether or not the Respondent itself was in fact making any commercial gain from the parking page.
Identical or Confusingly Similar
The Respondent denies that the Domain Name <36red.com> is identical or confusingly similar to “32Red”. The Complainant’s trade mark and domain name <32red.com> is made up of the number “32” and the word “red”. The online casino industry and the customers who use online casinos commonly refer to the Complainant as just “32”. The number “32” is the dominant part of the 32RED trade mark and the commonly used word “red” becomes “irrelevant”.
The number “32” is no way similar or identical to the number “36”; they do not even sound alike orally and even at a glance they are not visually identical or similar.
There is virtually no diverted traffic coming from the Domain Name <36red.com> to <ballardcasinos.co.uk> or <casino36.co.uk> which the Respondent believes is overwhelming evidence that there is no similarity and that customers are not confused. There has never been a logo designed around 36red.com. Both “32 Red” and “36 Red” relate to the casino game of roulette; they are on every roulette table worldwide in either a live casino or a virtual online casino, and are totally separate numbers on which to bet.
The Respondent believes that statistics provided demonstrate that there is no confusion between the Complainant and the Respondent.
Rights or legitimate interests
It is not denied by the Complainant that the Respondent has a legitimate interest in the number “36”, being a director of the Casino 36 Limited.
In late 2008, the Respondent was contacted by phone by the owner of the entity Casino Red in Huddersfield. Many conversations took place; the entity Casino Red was in financial stress. It eventually ceased trading. The Respondent monitored the entity Casino Red with a view to acquiring it or forming a joint venture. The Respondent was convinced at the time that the takeover or merger would happen quickly and on that basis registered the Domain Name <36red.com> (a combination of parts of the Respondent’s company name and of the entity Casino Red). It is also the last number on a roulette table. The entity Casino 36 attempted the takeover of the entity Casino Red repeatedly for four years but unfortunately Casino Red went into administration in 2012 and Casino 36 was outbid when it tried to acquire it. The Respondent says that it was his intention to “possibly rebrand the company to 36Red and I believe this is a legitimate reason for registering this domain name”. To date, the entity Casino Red has not re-opened. The Respondent would still like to take over Casino Red.
Registered or used in bad faith
The Respondent denies that the Domain Name <36red.com> was registered in bad faith. Neither he nor any companies he is involved with holds a remote gaming license or has ever been involved in online gaming.
The Respondent says he has a legitimate interest in the number “36” - it forms part of his casino’s logo “and is even doubled in our phone number”, that the term “Casino 36” has repeatedly attempted the takeover “Casino Red” along with the business of <Casinored.com>, and that it would be reasonable and make business sense to merge the two names together given that the merged name forms a number and colour within the game of roulette.
As to the Complainant’s argument that other casinos that Casino 36 has purchased have not had their names merged (to make, for instance, “Redrubicon”), the Respondent says that this would make no sense given that there is no such thing as a “red rubicon”.
The Respondent states that the Domain Name <36red.com> was not registered to try and disrupt the Complainant’s business - it was registered on April 30, 2009 and was left dormant for nearly 2 years until it was diverted to <ballardcasinos.co.uk>. The Respondent has never attempted to advertise 36red as a logo or attach it to any form of advertising to try and cause confusion to customers searching for an online casino. The Respondent relies on evidence showing that there has been no traffic from the Domain Name <36red.com> to his website “www.ballardcasinos.co.uk” or “Casino36” which he says shows that he has not attempted to financially profit or disrupt the Complainant’s business. Furthermore, the Respondent denies that he and the Complainant are competitors (because the entity Casino 36 does not operate remote gaming).
As to the allegations that other domain names have been registered in bad faith e.g. <bluechipcasinos.com> (registered on September 8, 2009), the Respondent explains that this domain name was registered because the entity Casino 36 was in the process of taking over the entity Bluechip casinos UK (in administration), which it in fact acquired (together with all its assets, including the Rubicon and Castle casinos) on November 9, 2009. The Respondent accepts that <bluechipcasinos.com> was directed to a casino in Michigan, USA (not owned by Bluechip casinos UK) in error, but says that the error was rectified. As to the allegations concerning other domain names e.g. <luky8bet.com> and “.co.uk”, the Respondent explains that the entity Casino 36 was in an attempted takeover of an entity called Rainbow Casino Ltd which had a legitimate business interest with <lucky8.com> and that he had permission from a Director at <lucky8bet.com> to generate more traffic.
Finally, the Respondent asks the Panel to make a finding of reverse domain name hijacking given that in his view, the Complainant had no valid reason for the Complaint or for the use of the number “36”.
The Complainant says that if the acquisition of Casino Red was really the rationale for the choice of <36red.com>, the Respondent could have said this at the outset. The Complainant refers to an e-mail of July 13, 2009, on which the Respondent relies from the owner of Casino Red, which begins “Further to our brief conversation [ ...]”. The Complainant says that this implies that the preceding conversation had just taken place. The Complainant maintains that even if a potential deal had been mentioned by the time of the registration of <36red.com>, this can have been no more than a faint glimmer of a possibility and the Respondent has not explained why he would have “jumped the gun” and registered the Domain Name at that point.
The Complainant, in referring to the July e-mail, makes the point that this does not support the Respondent’s assertion that he was contacted in 2008. It also makes the point that there is nothing to show any communication relating to Casino Red before the registration of <36red.com>.
The Complainant expresses scepticism of the Respondent’s explanation that the Domain Name <36red.com> is an amalgam of the names of two physical casinos (Casino 36 and Casino Red), noting that they are in different towns in the UK and that the Domain Name omits the critical descriptive word “casino”. The Respondent does not suggest he was considering connecting these two casinos under the combined name “36 Red”, and says nothing at all about his intentions for the Domain Name <36red.com>. The Respondent simply makes the observation that “36red” is the last number on a roulette table.
The Complainant maintains that the Respondent chose the name not because of the association with roulette, but because of the association with the Complainant’s name, which itself alludes to roulette. The Complainant relies on a UK High Court judge concluding that the Complainant’s name was distinctive by 2009, that it was generally known and understood in the online gaming community to refer to the Complainant’s casino, that it had a clear and distinctive character from the beginning and that the allusion to roulette gave the mark a gaming flavor, helping to make it memorable.
The Complainant dismisses points made by the Respondent in relation to traffic statistics.
The Complainant notes that the Respondent makes no mention of the Domain Names <36redcasino.com> and <casino36red.com> and must therefore be taken to admit that those Domain Names were registered and used in bad faith which, it is said, demonstrates that the registration of the Domain Name <36red.com> is part of a pattern whereby the Respondent registers domain names targeting the Complainant’s trade mark.
The Complainant makes a number of points on the Respondent’s explanation for the registration of <bluechipcasinos.com>.
The Complainant concludes by suggesting that it is unlikely that the Respondent registered the Domain Name <36red.com> independently of the Complainant.
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is
(i) 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
The Panel is satisfied that the Complainant has registered rights in the mark 32RED and, by virtue of its extensive trading and marketing activities, that it also enjoys unregistered rights in that mark and also the mark 32RED.COM.
Under the UDRP, the test for confusing similarity involves a comparison between the Complainant’s trade mark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trade mark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The requirement of confusing similarity is generally regarded as a low threshold test involving a simple comparison of the mark relied upon with the domain name in terms of sight, sound, and conceptually. However, as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, makes clear, some Panels have applied a more stringent test, paragraph 1.2 providing “some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant's trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. Such panels would typically assess this risk having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an Internet user unfamiliar with any meaning of the seeking the complainant's goods or services on the world wide web would necessarily comprehend such distinguishing value vis-à-vis the relevant mark”.
The majority of this Panel, applying the low threshold test identified above, finds that the Domain Name <36red.com> is confusingly similar to the Complainant’s marks. A similar overall impression is given by the marks 32RED and 32RED.COM, and the Domain Name <36red.com>, varying by one digit only. The majority also find, applying the same test, that the Domain Names <casino36red.com> and <36redcasino.com>, are confusingly similar to the Complainant’s marks, the inclusion of the descriptive term “casino”’ doing nothing to distinguish the Complainant’s marks and the Domain Names.
The minority view is that it is appropriate in the circumstances, in particular that both parties are active in the gaming industry and that it is Internet users interested in gaming that one must have in mind, to consider the actual likelihood of confusion between marks and Domain Names. Given the obvious appreciation on the part of gamblers for numerical expression, such Internet users would not be confused between the marks and Domain Names. In other words, they would not believe that there was a connection between the Domain Names <36red.com>, <casino36red.com> or <36redcasino.com>, and 32Red or 32RED.COM
Given that the majority of the Panel finds for the Complainant on this limb of the three part test under Paragraph 4(a) of the Policy, the Panel must go on to consider the issue of rights or legitimate interests.
The Panel agrees that by its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests.
The Panel is split as to whether the Respondent has done so.
Two Panelists are of the view that the Respondent has demonstrated rights or legitimate interests in the Domain Name <36red.com>.
From mid-2008 and continuing through 2009, the Respondent’s “startup” business model appeared to involve the acquisition of troubled or failed casinos. It is notable that during 2009, the Respondent was also actively pursuing the potential acquisition of other casinos, including Rubicon Casino and Castle Casino, which the Respondent in fact acquired from the administrators of Blue Chip Casinos in November 2009. The Respondent’s initial discussions with the owner of Casino Red continued until at least September 2009.
The majority of the Panel finds that the Respondent’s explanation for registration of the Domain Name <36red.com> is plausible - his business is gambling, he owns casinos and wanted to buy another (Casino Red), he tried to do so and made some preparations in connection therewith, i.e. registration of <36red.com>.
One Panelist is of the view that the Respondent has no rights or legitimate interests in the Domain Name <36red.com>. The Respondent was aware of Casino Red since late 2008, when he says he was contacted by the owner because his company was in “financial stress”. However, it does not appear that matters progressed until July 2009, when the owner (of Casino Red) writes by e-mail to the Respondent (on July 13, 2009) saying “further to our brief conversation, I have outlined the potential investment opportunity”. The subject of the e-mail is clearly Casino Red. But that is some months after April 30, 2009, when <36red.com> was registered.
One can clearly see how a domain name which includes the number “36” would be of interest to the Respondent, given the name of his company and casino. But it is the possible connection with Casino Red that the Respondent relies on. Yet, in that regard, there appears to be no documentary evidence of any meaningful dialogue until July 2009. The minority Panelist is not persuaded that the Respondent had a possible tie up with Casino Red in mind (as opposed to the Complainant), when he registered <36red.com> in 2009. In these circumstances, the minority Panelist, (also adopting the majority reasoning in relation to the Domain Names <casino36red.com> and <36redcasino.com>), would find that the Respondent has no rights or legitimate interests in respect of the Domain Name <36red.com>.
Two Panelists are of the view that the Respondent has failed to demonstrate that he has rights or legitimate interests in the Domain names <casino36red.com> and <36redcasino.com>, given the timing of their registration in February 2013. By this time, the Respondent appears to have had two attempts at acquiring Casino Red (in 2009 and 2012), and the registrations take place in the midst of the argument with the Complainant over <36red.com>. Although the Respondent says he is still interested in acquiring Casino Red, a majority of the Panel is doubtful that this is what was in its mind in February 2013. Indeed, there appears to be no evidence of any continuing further attempt to acquire Casino Red, post 2012. It appears to the majority of the Panel that the Respondent had the Complainant in mind when registering <casino36red.com> and <36redcasino.com>.
One Panelist, adopting the majority reasoning in relation to the Domain Name <36red.com>, takes the view that the Respondent also has rights or legitimate interests in the Domain names <casino36red.com> and <36redcasino.com>, finding the Respondent’s explanations as to all three of the Domain Names are plausible given the nature of its business.
Both <36redcasino.com> and <casino36red.com> have been used as registrar parking pages. These parking pages have included, amongst others, links to gaming-related sites. A majority of the Panel finds that the Respondent registered and used the Domain Names <casino36red.com> and <36redcasino.com> in bad faith for the purposes of the Policy. A minority of the Panel would also find for the Respondent in relation to the Domain Name <36red.com>.
The Respondent has advanced no justification for the registration and use of Domain Names <casino36red.com> and <36redcasino.com>. Indeed, the Respondent has advanced no real argument in relation to these Domain Names at all. The fact that the Respondent has not bothered to seek to justify their registration, that registration took place when it appears his chances of acquiring the business Casino Red were low to non-existent, and at a time when it was engaged in correspondence with the Complainant in relation to the Domain Name <36red.com>, suggests to the majority of the Panel that it acquired these two Domain Names as part of strategy for dealing with the Complainant. The Respondent could have offered an explanation had it had justifiable cause to register these Domain Names and, accordingly, the majority of the Panel conclude that there is likely nothing the Respondent could say that would demonstrate registration and use of these Domain Names otherwise than in bad faith.
One Panelist, while adopting the reasoning of the majority in relation to the Domain Name <36.red.com>, would also find for the Respondent in relation to the Domain Names <casino36red.com> and <36redcasino.com>.
A Complainant must demonstrate, by a preponderance of the evidence, both bad faith registration and use. It is a dual requirement. Whatever the Respondent may or may not have done subsequent to registration of the Domain Name <36red.com> (and in this regard, it should be mentioned that the evidence does not appear to show that the parking page to which the Domain name <36red.com> resolved contained links to other gaming related sites), the majority of the Panel find no reason to disregard or cast into doubt the Respondent’s explanation for initial registration, namely the possible acquisition of Casino Red by Casino 36, or a merger of the two. Accordingly, a majority of the Panel finds that the Complainant would fail to meet its burden to prove bad faith registration and use for the purposes of the Policy.
One Panelist, whilst adopting the reasoning of the majority finding in relation to <casino36red.com> and <36redcasino.com>, would also find against the Respondent in relation to <36red.com>. Thus, the Panel would find against the Respondent in relation to all three Domain Names. The Panelist refers generally to the minority view for <36red.com> in favour of the Complainant in the Rights or Legitimate Interests section above, in particular, the absence of any documentary evidence of any meaningful dialogue with regard to Casino Red until July 2009, some months after the registration of the Domain Name <36red.com>. Moreover, it would appear from the e-mail from the owner of Casino Red in July 2009, that there had been no significant communication between the two casinos in the past. Also, whilst the Respondent relies heavily on the possible link with Casino Red as justification for registration of <36red.com>, that appeared not to be in its mind in its initial response to the Complainant on February 25, 2013, when it sought to justify registration of <36red.com> on other grounds (and does not mention Casino Red). For these reasons, the minority Panelist is of the view that the Respondent likely had the Complainant in mind, rather than Casino Red, when it registered <36red.com> and would therefore find registration and use in bad faith in relation to <36red.com> (as well as <casino36red.com> and <36redcasino.com>) for the purposes of the Policy.
The Panel, by a majority, finds
(i) that all the Domain Names are confusingly similar to the marks in which the Complainant has rights;
(ii) that the Complainant has failed to demonstrate that the Respondent lacks rights or legitimate interests in the Domain Name <36red.com>, or that it has registered and used that Domain Name in bad faith;
(iii) that the Complainant has demonstrated the Respondent’s lack of rights or legitimate interests in the Domain Names <casino36red.com> and <36redcasino.com> and also that it registered and used those Domain Names in bad faith for the purposes of the Policy.
Thus, the Complainant succeeds in relation to the Domain Names <casino36red.com> and <36redcasino.com>, but not in relation to the Domain Name <36red.com>.
The Respondent alleges RDNH. Paragraph 1 of the Rules defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” In view of the Panel’s findings, such an allegation can be relevant only in relation to the Domain Name <36red.com>. However, given the majority finding in relation to the confusing similarity, and the minority finding in favor of the Complainant in relation to all three Domain Names on the issues of rights or legitimate interests, and bad faith, the Panel is of the view that a finding of RDNH in relation to <36red.com> is not warranted.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders:
(i) that the Domain Names <casino36red.com> and <36redcasino.com> be transferred to the Second Complainant;
(ii) that in relation to the Domain Name <36red.com>, the Complaint be denied.
Jon Lang
Presiding Panelist
William R. Towns
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: November 18, 2013
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