WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
iGlobal Media Group Limited v. EPS X-10032 and Carol Natel and NA (DULXGKBCUD)
Case No: D2002-0075
1. The Parties
The Complainant is a corporation duly incorporated under the laws of the British Virgin Islands, having its principal place of business at The Lake Building, 1st Floor, Wickhams Cay 1, PO Box 3152, Road Town, Tortola, British Virgin Islands. The Complainant�s authorized representative is Nathaly J Vermette of Greenspoon Perreault, GP, Montreal, Canada.
The First Respondent, EPS X-10032, was the registrant of the first disputed domain name at the time the Complaint was filed. The administrative, technical and billing contact was given as Carlos Lamarche, 770 Claughton Island Dr. Apt 505, Miami, Fl 33131, United States of America. However, in its Second Amended Complaint, the Complainant advised that the Registrant for the first disputed domain name has changed to NA (DULXGKBCUD), the Third Respondent. The administrative, technical and billing contact for the first disputed domain name also changed from Carlos Lamarche to Carol Natel. The e-mail address for the administrative, technical and billing contact is given as . These changes were effected after notice to the Respondents of the Complaint.
The Whois report annexed to the original Complaint showed that the Registrant of the second disputed domain name was Carol Natel, who was also named as the administrative, technical and billing contact. In its First Amended Complaint, the Complainant advised that on February 5, 2002, the Registrant was changed to Carlos Lamarche. This change was effected one week after a copy of the Complaint was sent to the Respondents by the Complainant.
The Registrant for the second disputed domain name confirmed that the Registrant of that domain name is now Carlos Lamarche.
2. The Domain Names and Registrars
The domain names at issue are and .
The Registrar with which the first disputed domain name is registered is R™, Suite 1900, One Bentall Centre, 505 Burrard Street, Box 44, Vancouver, British Columbia, Canada V7X 1M6.
The Registrar with which the second disputed domain name is registered is SRSplus, 1100 Glendon Avenue, 8th Floor, Los Angeles, California 90024, United States of America.
3. Procedural History
On January 24, 2002, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.
On February 6, 2002 the Registrar responded to a request for verification of the first disputed domain name , confirming details of the Respondent, that the Policy applied to the domain name and that the current status of the domain name is "active".
On February 6, 2002 the WIPO Center received an Amendment to Complaint, reflecting the modifications to the registrant in respect of the second disputed domain name and the modifications to the contact details in respect of both the disputed domain names.
On February 9, 2002 the Registrar responded to a request for verification of the second disputed domain name confirming details of the Respondent, that the Policy applied to the domain name and that the current status of the domain name is "active".
On February 11, 2002, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents. The Respondents were advised that a response to the Complaint was required by March 3, 2002.
No response was received on behalf of the Respondents and on March 5, 2002, a Notification of Respondent Default was sent to the Respondents.
On March 11, 2002, the Panel was appointed. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and Supplemental Rules.
On March 26, 2002 the WIPO Center sent to the parties a Procedural Order For Additional Submission on behalf of the Panel.
On April 22, 2002, the WIPO Center forwarded a Second Amended Complaint to the Panel. The Second Amended Complaint provided further evidence in support of the Complaint. It also updated the Registrant and contact information for the first disputed domain name.
According to the Second Amended Complaint, the Registrant for the first disputed domain name changed on February 17, 2002 � 11 days after the Complainant filed its First Amended Complaint. As indicated previously, the Registrant for the domain name is now NA (DULXGKBCUD), with the address EPS X-10032, 7801 NW 37th Street, Miami, Florida 33166, United States of America. The administrative, technical and billing contact is now Carol Natel, 770 Claughton Island Drive, Apt 505, Miami, Florida 33131, United States of America.
The Complainant states that Ms. Natel�s email () is hosted at the domain name . The domain name , is registered to Marcos Duran. According to the WhoIs database search conducted in respect of the domain name , Marcos Duran�s details are given as Marcos Duran, EPS X-10032, 7801 NW 37th Street, Miami, Florida 33166, United States of America.
According to the Complainant, Mr. Duran is a former employee of the Complainant. He was employed as a web site designer for the Complainant�s web site .
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
4. Factual Background
The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.
The Complainant states that it registered its own domain name on November 30, 1999, and has been using the domain name and the mark TRUSTED CASINOS continuously since then to promote the following services:
hproviding an interactive computer database in the field of computerized on-line gaming and casinos;
hpublication of information, ratings and opinions concerning on-line casinos and gaming sites;
hpublishing ratings and opinions of the analysis, consensus and opinions on the internet gaming and casino sites via local, regional and global computer networks;
hgathering and publishing research statistics, polling and conducting market research in the field of on-line gaming and casinos.
The Complainant states that substantial amounts of time, effort and money have been expended over the last two years in promoting its web site at and the trademark TRUSTED CASINOS. The Complainant states that in the period 1999 to 2002, it expended more than US$1,350,000 in acquiring the mark and the domain name, advertising and promoting its goods and services and developing the web site. In its Second Amended Complaint, the Complainant states that (in addition to a significant sum paid for the site) since April 2000, it has spent approximately US$1,065,054.95 on advertising alone.
The Complainant states that visits to the Complainant�s internet web site are the essential portion of its business. It asserts that as at December 1999, only one month after the site became operative, the Complainant�s web site was receiving an average of 1,500,000 hits per month. There is no external evidence available to substantiate this claim as the Complainant purchased the site in April 2000, and the previous owner did not keep any records evidencing traffic back to that time. The Complainant did, however, submit that it would not have paid such a considerable sum for the site had the site not had a high volume of traffic. The Complainant annexed a copy of the sale and purchase agreement for the site to the Second Amended Complaint.
The Complainant asserts that in the 24 hour period from January 8, 2002, to January 9, 2002, alone, 2,627,207 hits were recorded on the Complainant�s web site. The Complainant states that it now averages 100,000,000 hits every month and about 3,000,000 visitors. It claims that these visitors are extremely targeted and spend on average 17 minutes per visit to the Complainant�s web site. The Complainant submits, in its Second Amended Complaint, that since January 30, 2002, the site has averaged 2,395,890 hits per day by 120,200 visitors. The Complainant annexed full traffic log reports in support of this claim.
The Complainant claims that by virtue of the extensive scope of consumer sales and the substantial sums spent to promote products and services under the mark TRUSTED CASINOS, the mark has acquired an important degree of consumer recognition in the minds of the purchasing public and the on-line gaming business community. It claims that the mark is now well-known and serves to identify the Complainant�s products and services.
The Complainant also annexed to the Complaint a report from an independent external media agency, Jupiter Media Metrix, dated November 2001. This report listed the Complainant�s web site as one of the top 25 sites for on-line gaming.
The Complainant states in its Second Amended Complaint that Jupiter Media Metrix is a highly respected resource by major news media members such as New York Times, CNN, The Wall Street Journal, Reuters, Business Week and USA Today. The Complainant annexed copies of stories from these new sources featuring Jupiter Media Metrix data and analysis, or relying on such data and analysis.
On August 28, 2001, the Respondents registered the domain name . The Complainant claims that the Respondents have been using this domain name to conduct business on the Internet for the same services rendered by the Complainant.
On October 25, 2001, the Respondent registered the second disputed domain name .
On December 4, 2001, the Complainant filed applications for the registration of the trademark TRUSTED CASINOS with the United States Patent and Trademarks Office and the Canadian Intellectual Property Office. These marks have not yet proceeded to registration.
In December 2001, the Complainant sent notice by registered mail to the Respondents that the registration of the domain name infringed and diluted the Complainant�s mark TRUSTED CASINOS.
The Respondents did not respond to this letter.
On January 23, 2002 the Complainant claims that the Respondents commenced using the second disputed domain name, , which links to the same web site as the first disputed domain name .
5. Parties� Contentions
A. The Complainant
The Complainant claims that the disputed domain names and are identical or confusingly similar to the Complainant�s domain name and trademark TRUSTED CASINOS.
The Complainant claims that in each case, there is only a slight variation between the disputed domain name and the Complainant�s trademark. In relation to the first disputed domain name, , the only difference is the inclusion of a hyphen between the words "trusted" and "casinos". In relation to the second disputed domain name the only difference is omission of the "s" from the word "casinos".
The Complainant referred the Panel to the decision of SeekAmerica Networks Inc v Tariq Masood and Solo Signs, WIPO Case No. D2000-0131, in which the Panel decided:
"The mere use of a hyphen �seek-america� in Respondents� domain name is insufficient to render it different to the service mark SEEKAMERICA. The two are in all material respects identical."
The Complainant submits that the Respondents have no right or legitimate interest in respect of the disputed domain names and . It states that the name and trademark TRUSTED CASINOS has been extensively and continually advertised and promoted by the Complainant within Canada and the United States and worldwide via the Internet for over two years.
The Complainant states that it has not licensed or otherwise permitted the Respondents to use the mark TRUSTED CASINOS or to apply for or use any domain name incorporating this mark.
The site corresponding to the disputed domain names is currently inactive. Previously however, it provided information, ratings and reviews of third party on-line casinos. In other words, it provided exactly the same services as the Complainant, in direct competition with the Complainant.
The Complainant states that the Respondents� revenue from the site is in direct relation to the number of visitors that they send to third party web sites. The Complainant draws attention to the fact that the "About Us" page on the Respondents web site stated (while in operation):
"We only make money off them is [sic] you go to that casino and like it"
The Complainant states that the Respondents therefore have an important interest in the traffic the site generates for such third party web sites. It alleges that the Respondents, in using the Complainant�s mark and confusingly similar domain name, are seeking commercial gain by diverting customers who intend to visit the Complainant�s site to their own web site. The Complainant alleges that the Respondents are in turn generating traffic to third party web sites and consequently procuring revenue for themselves.
In essence, the Complainant alleges that the disputed domain names were intentionally registered to capture users intending to visit the Complainant�s site who inadvertently misspell or mistype the Complainant�s domain name.
The Complainant further contends that the Respondents have registered and are using the disputed domain names in bad faith. It relies on the fact that the Respondents failed to respond to the Complainant�s correspondence putting the Respondents on notice of its trademark TRUSTED CASINOS. The Complainant also claims that not only did the Respondents refuse or neglect to respond to that letter dated December 2001, but in January 2002, the Respondents proceeded to announce and commence use of the second disputed domain name , which links to the same web site as the domain name .
The Complainant originally claimed that given the close knit nature of the on-line gaming industry, and the sheer volume of hits received by the Complainant�s site, the Respondent could not have been unaware of the Complainant�s site and its use of the mark TRUSTED CASINOS. However, the Complainant�s Second Amended Complaint provided more direct evidence that the Respondents were aware of the Complainant and the Complainant�s site.
The evidence provided by the Complainant in its Second Amended Complaint indicates that a former employee of the Complainant, Marcos Duran, instigated the registration of the disputed domain names. As set out above, the Second Respondent�s email () is hosted at the domain name . The domain name , is registered to Marcos Duran. An informal email from Marcos Duran to the WIPO Center, also confirms that he was responsible for the registration of the disputed domain names. The full text of that email is set out later in this decision.
The Complainant annexed to its Second Amended Complaint various emails to and from Mr. Duran during his employment with the Complainant, together with a copy of his employment application form.
The Complainant states that Mr. Duran�s position at the Complainant was that of a web designer. This position gave him access to the Complainant�s privileged information regarding design, operations and advertising, marketing and promotional strategies. The Complainant states that Mr. Duran was also aware of the marketing budget for the Complainant�s domain name and web site. In addition, he had access to all the web traffic statistics and report and knew how much traffic was generated.
The Complainant claims that Mr. Duran knew the value of the Complainant�s trademarks and domain names and therefore sought to take advantage of and use their commercial value in his new business venture.
The Complainant drew to the Panel�s attention the fact that both the disputed domain names were registered within months of Mr. Duran leaving his employment at the Complainant.
The Complainant contends that the Respondents deliberately registered domain names which were almost identical to the Complainant�s domain name, in order to benefit from the ensuing confusion.
The Complainant contends that by registering and using the disputed domain names, the Respondents intentionally attempted to attract, for financial gain, Internet users their web site by creating a likelihood of confusion with the Complainant�s domain name and trademark as to the source, location, sponsorship, affiliation or endorsement of the Respondents� web site.
B. The Respondent
The Respondents did not file a formal Response.
On April 10, 2002, Marcos Duran wrote to the WIPO Center as follows:
"To whom it may concern,
H, as the whois printout presents, was registered in December of1999 by Marcos Duran on behalf of his web hosting and design company (before his employment at iGlobalMedia). H is in the business of registering domains, hosting domains, designing websites, and other creative processes related to the internet. Our target market is local small and medium size businesses in the Dominican Republic, where we are based. In January of this year H was constituted into a legal corporation in the Dominican Republic and my rights over the domain name where (sic) transferred to the company as an asset.
I, Marcos Duran, originally registered the domains , with the purpose of establishing and (sic) online casino site which I design and operate. The domain , which does not even figure in the complaint, was also registered by me. Trusted-casinos were registered to raise search engines appearances with the keyword "trusted casino" and not to take advantage of a supposedly established brand which receives great amounts of traffic not because it it well known, but rather because they purchase it in order to inflate advertising prices for advertisers. That is why I also registered the domain , to take advantage of keyword searches with the words casino and reviews.
I decided to change the main name to to differentiate myself a bit from their "review site" which sells its top spots for the highest bidder, places its own casinos in premium positions, and manufactures reviews and opinions thus giving visitors biased information and sometimes leading them to dangerously unfair casinos. I did not want my site confused with that.
The complaints supposed merits are false and I ask myself. When they purchased the domain and launched did they ask permission to the people who run which was registered on April 17 1998? When they purchased Trusted Casinos did they care that the similar domain had been registered on 13 Aug 1998, almost an entire year before ?
To me it really does not matter. I have not been using any of the domains actively for months. My site is now and has been since February.
Therefore, I wish to receive no further information about this case, specially not at my address or any address. I have no interest in the status, changes, or final outcome of this case. Final outcome does not affect Marcos Duran or in any way. Because of this I have never replied to information sent to my mailing addresses and never will incur in a waste of resources (beyond this one) for something that does not interest me or .
I hope that the lawyers have made enough $$ on this... Keep it going as long as you can boys.. Bill bill bill.
Marcos Duran"
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
● That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
● That the Respondent has no rights or legitimate interests in respect of the domain name; and
● That the domain name has been registered and is being used by the Respondent in bad faith.
Domain name is confusingly similar/identical to a trademark or service mark in which the Complainant has rights
The Complainant has applied for trademark registrations of its mark TRUSTED CASINOS in Canada and the United States of America. Both applications were made after the dispute with the Respondents arose, and in neither case has the mark proceeded to registration.
However, there is no requirement pursuant to the Policy that the trademarks relied on by the Complainant must be registered trademarks. The Complainant has provided evidence that its trade mark been promoted extensively over the last two years, and has achieved a very real degree of recognition via the Internet. The Panel accepts that the mark TRUSTED CASINOS is one in which the Complainant has rights.
The disputed domain names represent what is likely to be a common misspelling of the Complainant�s mark and domain name TRUSTED CASINOS. The Panel accepts the Complainant�s contention that the separation of the words TRUSTED CASINOS by way of a hyphen is insufficient to distinguish the first disputed domain name from the Complainant�s trademark. The Panel also notes that this was the view taken in the decision of SeekAmerica Networks, Inc v Tariq Masood and Solo Signs, WIPO Case No. D2000-0131, to which the Panel was referred.
The Panel also accepts that the omission of the "s" from the word "casinos" is insufficient to distinguish the second disputed domain name from the Complainant�s domain name and trademark TRUSTED CASINOS.
The Panel therefore finds that both the disputed the domain names and are confusingly similar to the trademark or service mark TRUSTED CASINOS, in which the Complainant has rights.
Respondent has no rights or legitimate interests in respect of the domain name
The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent�s rights or legitimate interest in the domain name. These circumstances are:
(i) before any notice to the Respondent of the dispute, the Respondent�s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
There is no suggestion on the material before the Panel that paragraphs 4(c)(ii) or (iii) of the Policy have any application. Therefore, the sole issue is whether, before any notice to the Respondents of the dispute, the Respondents� use of or demonstrable preparation to use the disputed domain names in connection with the bona fide offering of goods or services.
The Complainant states that its notice of the dispute was sent to the Respondents "in December 2001". No actual date in December is given.
Although the second disputed domain name was registered on October 25, 2001, it appears from the Complaint that the Respondents did not use this domain name until January 23, 2002. The Complainant states:
"Not only did the Respondent refuse or neglect to respond to the demand letter, but on January 23, 2002 Respondent knowingly proceeded to announce and use another confusingly similar domain name TRUSTEDCASINO.INFO to point to the same website as does the first confusingly similar domain name."
Assuming that this was the case, the Respondents� first use of the second disputed domain name was after notice to the Respondents of the dispute in December 2001.
The Respondents have clearly been using the first disputed domain name before any notice to the Respondents of the dispute. However, the Complainant alleges that this use was not bona fide.
As a former employee of the Complainant, there is no question that Marcos Duran, who in an email to the WIPO Center has expressly acknowledged that he registered the two disputed domain names (although he is not formally recorded as the Registrant) was well aware of the Complainant�s unregistered trademark and domain name TRUSTED CASINOS. In these circumstances, it is difficult to see that the use of the disputed domain names in relation to services identical to those provided by the Complainant, could possibly be bona fide.
Additionally, the Respondents have not provided any formal Response and the Panel finds it appropriate to draw an adverse inference from the Respondents� failure to respond to the Complaint (SSL International v Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v Grandtotal Finances Limited, WIPO Case No. D2000-0848).
Overall the Panel can find no evidence to demonstrate that the Respondents have any rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complainant has met the requirement in paragraph 4(a)(ii) of the Policy.
Domain names have been registered and are being used in bad faith
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and 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 the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, 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 that 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; or
(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."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondents� conduct in respect of the domain name and is in breach of (iv) above. By using the domain names and , it appears that the Respondents are intentionally attempting to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation or endorsement of that web site.
An Internet user who misspells the Complainant�s name and trademark � either through ignorance or inadvertence - will be directed to the Respondents� site. The Respondents are taking advantage of that error or ignorance and are using the goodwill and reputation in the TRUSTED CASINOS trademark and domain name for commercial gain. Because of the similar nature of the sites, the Internet user may never become aware that he or she is not in fact at the Complainant�s site.
The Panel has also taken into account the fact that the Respondents did not reply to the letter of demand from the Complainant, but rather, shortly after receiving that letter, commenced use of the second disputed domain name, .
Most significant, however, is the evidence contained in the Complainant�s Second Amended Complaint that the person behind the registration of the disputed domain names was a former employee of the Complainant. As indicated by the Complainant, Mr. Duran had access to the Complainant�s privileged information regarding the Complainant�s site. The Panel finds that upon resignation from the Complainant, he decided to set up a "copycat" site. Because of the similarity between the disputed domain names and the web site operated by the Complainant, the Respondents stood to benefit from the confusion with the Complainant�s site, and also by confusion as to the source, sponsorship, affiliation, or endorsement of his web site.
Additionally, Marcos Duran has expressly acknowledged that he registered both the disputed domain names, yet his name does not appear as either the Registrant or the administrative contact in respect of either of the disputed names. It appears that this was a deliberate attempt to disguise the fact that he had arranged for the disputed domain names to be registered.
The Panel therefore considers that both the disputed domain names were registered and are being used in bad faith.
Finally, there is also one procedural matter to record. Under section 8(a) of the Policy, the domain name holder is bound not to transfer the domain name registration to another holder during an administrative proceeding. The aim of this Policy is to prevent what has been referred to as "cyberflying" i.e. where a registrant of a domain name, when named as the Respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding: BBC v Data Art Corporation/Stoneybrook, WIPO Case No. D2000-0683.
In this case, it is plain that the change of registrant for both disputed domain names occurred after the service of the Complaint on the Respondents.
The Registrar concerned is holding the disputed domain names pending the outcome of this proceeding (and subject to any court proceedings that may be commenced following this decision under paragraph 4(i) of the Policy). The Registrar is bound by any direction to transfer the disputed domain names. Therefore any transfer which has occurred will not in any way prevent implementation of the Panel�s decision.
7. Decision
For the foregoing reasons, the Panel decides that:
(a) the disputed domain names registered by the Respondents are confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) the Respondents have no rights or legitimate interests in respect of the disputed domain names;
(c) the disputed domain names were registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names and be transferred to the Complainant.
Andrew Brown
Sole Panelist
Dated: May 3 , 2002
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