WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ed Servicio, S.A. v. LOGIC PROMO
Case No. D2003-0132
1. The Parties
1.1 The Complainant is Ed Servicio, S.A. of Tortola, British Virgin Islands, represented by Nathaly J. Vermette of Greenspoon Perreault, Montreal, Canada.
1.2 The Respondent is LOGIC PROMO of Australia.
2. The Domain Name and Registrar
2.1 The disputed domain name is registered with OnlineNic, Inc. dba China-C.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 21, 2003. On February 24, 2003, the Center transmitted by email to OnlineNic, Inc. dba China-C a request for registrar verification in connection with the domain name at issue. On February 25, 2003, OnlineNic, Inc. dba China-C transmitted by email to the Center its verification response; the Center requested further confirmation from the registrar on February 26, 2003, to which the registrar responded on February 28, 2003. The Center verified that the 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").
3.2 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 March 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on March 28, 2003.
3.3 The Center appointed Cecil O.D. Branson, Q.C. as the sole panelist in this matter on April 2, 2003. 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.
3.4 On April 3, 2003, the Panel issued a Procedural Order with a deadline for response by April 10, and with a revised projected decision date of April 23, 2003.
3.5 On April 7, 2003, the Panel, upon receipt from the Center of a request by the Complainant for an extension of the deadline for responding to the Procedural Order, agreed to an extension of the response date to April 16, 2003, with the proposed date for rendering his decision now set at April 29, 2003.
3.6 On April 23, 2003, the Panel, at the request of counsel for the Complainant having requested a further extension of the response date, an Order was made to extend this time until April 26, 2003, with the date for decision being changed to May 5, 2003.
4. Factual Background
4.1 The Complainant is the holder of trademark registrations for the term "Starluck" on both the Principal Register at the United States Patent and Trademark Office ("USPTO") (Serial No. 76-183,948 filed December 19, 2000, and registered under No. 2,529,650, January 15, 2002) and the Canadian Intellectual Property Office ("CIPO") (Application. No. 1090135, January 25, 2001, and registered on January 7, 2003, under No. TMA573122). Copies of these registrations were annexed to the Complaint.
4.2 Little is known about the Respondent as it failed to file a Response and appears to have provided incomplete and confusing contact details.
5. Parties� Contentions
A. Complainant
5.1 The Complainant asserts that, through an authorized and licensed party, namely, WorldNet DNS Management Corporation (having its principal place of business at the same address as Complainant) it registered the domain names and on September 30, 1997, and and on March 2, 1998, and that its rights in the Starluck mark arose through use of the Starluck mark as early as September 30, 1997.
5.2 The Complainant asserts that it was among the first businesses to develop the Internet gaming industry, which first came to light in the1990s, and as a result, the Starluck brands have become famous worldwide and embody substantial goodwill because of their early presence on the Internet. Further it asserts that the Starluck mark is universally relied on as identifying Complainant as the sole source of Starluck on-line products and services.
5.3 Complainant asserts that it has expended considerable time, effort and money in advertising, promoting and selling its products and services in connection with the Starluck mark and the "Starluck family" of marks and that, as a result, Starluck has become a global brand of enormous strength in the relatively new industry of Internet gaming, and that the Starluck marks are universally relied upon as identifying Complainant as the sole source of Starluck on-line products and services.
5.4 The Complainant asserts that it has made continuous use of the "Starluck" mark worldwide, for over five (5) years, in connection with the sale of (1) computer software for the operation of on-line games, contests, sweepstakes, lotteries and wagering, all over the means of local and global computer networks; (2) computer disks and CD-ROMs containing computer software for the operation of on-line games, contests, sweepstakes, lotteries and wagering, all over the means of local and global computer networks; (3) instruction manuals sold as a unit, and (4) entertainment services, namely, conducting games, contests, sweepstakes, lotteries and wagering, all over means of local and global communications networks.
5.5 The Complainant asserts that rights in the Starluck mark arose through use of the Starluck mark as early as September 30, 1997, four (4) years prior to Respondent�s registration of the disputed domain name on August 23, 2001, and that the domain name incorporates wholesale Complainant�s valuable Starluck mark followed by a generic designation.
5.6 The Complainant asserts that without its consent, and with full knowledge of Complainant�s trademark rights, Respondent registered the domain name with OnlineNIC.com on August 23, 2001, and that the domain name incorporates wholesale Complainant�s valuable Starluck mark followed by a generic designation, making it identical and/or confusingly similar to Complainant�s "Starluck" mark and the "Starluck family" of domain names and common law trademarks
5.7 The Complainant pleads that the Respondent has no rights nor legitimate interests in the domain name pursuant to Policy paragraph 4(a)(ii).
5.8 Complainant pleads that Respondent registered the domain name and is using it in bad faith contrary to paragraph 4(a)(iii) of the Policy due to the following circumstances:
5.8.1 Respondent uses the domain name to conduct business on the Internet for the same services rendered and in direct competition with Complainant.
5.8.2 Respondent adopted and used the disputed domain name with the intention to exploit and unfairly trade on Complainant�s goodwill developed in its Starluck marks and brands by intentionally attempting 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 marks 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.
5.8.3 Respondent uses Complainant�s Starluck mark to redirect web traffic to its own competing website.
B. Respondent
5.9 The Respondent did not reply to the Complainant�s contentions.
6. Procedural Orders
6.1 A Procedural Order was issued by the Panel on April 3, 2003, which made the following requests:
"Upon reviewing the Complaint in this case it appears to the Panel that as the domain name in question was registered by the Respondent prior to the trademark registrations for the term "starluck" relied on by the Complainant, the Complainant may be relying only on a common law mark to succeed in its claim. In this regard it is noted that the complaint in paragraph 11.5 asserts that it owns the common law trademarks for "Starluckcasino", "Thestarluckcasino," and "Starluckonline" by virtue of the use of these marks through a licensed party namely WorldNet DSN Management Corporation (having its principal place of business at the same address as Complainant, namely [�]) and used in connection with the sale of the Products.
The Panel requests the following further information be provided on behalf of the Complainant:
1. Is the Complainant relying only on a common law mark?
2. Provide further and better particulars of the assertions made in paragraph 11.5 of the Complaint, including the relationship between the Complainant and the aforementioned licensed party namely, WorldNet DSN Management Corporation, whether that relationship is relied on and, if so, explain.
3. Concerning paragraph 11.6:
(a) provide those documents which evidence the asserted authority and licence referred to,
(b) provide the available evidence of any common law rights of WorldNet and/or the Complainant as deemed material by the Complainant.
4. In paragraph 11.9 the Complainant asserts rights in the Starluck mark through use of the Starluck mark as early as September 30, 1997.
(a) The Complainant is requested to provide any relevant evidence of its right to the stated mark on or before September 30, 1997.
(b) Provide any legal authorities which support Complainant�s entitlement to this right.
5. In paragraph 12 of the Complaint the Complainant seeks by way of remedy a transfer not to it but to "the duly authorized representative of Complainant, namely WorldNet DSN Management Corporation." The Panel requests the authority under the UDRP upon which the Complainant relies for this remedy. Also, are any paragraph 4a(i) rights being asserted by this entity?"
Further, on April 7, 2003, in allowing the Complainant an extension of time, the Panel asked two further questions as follow:
"1. In paragraph 11.4 of the Complaint reference is made to the Complainant owning and using several common law trademarks that contain �starluck� as the dominant component, thus creating the "Starluck family" marks and Domain Names and that the Complainant has been using the �starluck� mark in Domain Names ever since to promote the Products. I wish to have those several common law trademarks identified along with the evidence of use or any other manner which entitles the Complainant to claim a common law mark.
2. I would ask that the Complainant provide evidence of the "considerable time, effort and money that advertising, promoting and selling its products and services" has asserted in paragraph 11.7 of the Complaint."
6.2 The Panel granted two requests from the Complainant for extensions of time to respond to the Procedural Orders. A response was received on April 26, 2003.
7. Discussion and Findings
7.1 The Rules for Uniform Domain Name Dispute Resolution Policy provide in paragraph 5(e):
If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
Some have interpreted this to mean that assertions, even though not substantiated by evidence, will suffice in the absence of a Response being filed, while others have expressed the view that both the onus and standard of proof upon the Complainant remains the same no matter whether a Response is filed or not. This Panel prefers a middle ground which is that factual assertions made by the Complainant which are supported by evidence may be used against the Respondent, but a Panel ought not to draw any inferences from a default other than those which have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
7.2 On April 26, 2003, Complainant filed what it described as Second Amendment to Complaint: Response to Panel�s Request For Additional Information. No request was made by the Panel for a further amendment to the Complaint, nor is the Panel aware of a First Amendment to Complaint, although, earlier, WIPO Administration had required a typographical change in the Complaint as originally filed. Nor has Complainant made any application for an amendment to the Complaint. An overwhelming majority of Panels have indicated that additional unsolicited submissions beyond what is requested in a Procedural Order issued under paragraph 12 of the Rules will not be accepted. The document provided by the Complainant, while in some instances responds to the specific questions asked, in others it brings in new evidence relating to an argument not pleaded originally and deletes evidence it had previously relied upon. Thus, quite a different case is pleaded than that put forward in the Complaint which this Panel was asked to consider. This state of affairs is exacerbated by Complainant�s failure to answer Question #5 in the Procedural Order of April 3, 2003 which dealt with a jurisdictional issue, or at least one tantamount thereto, i.e., the authority under the UDRP for an Administrative Panel to order the transfer of the domain names in question to a third party (about whom there was not adequate evidence shown that its relationship with the Complainant would have entitled it to the rights referred to in paragraph 4(a)(i) of the Policy). It is the opinion of this Panel that its authority is limited to deciding cases where the remedy sought is that the domain names in question be transferred to the named Complainant, or cancelled.
7.3 In light of the above, this Panel does not believe it necessary or appropriate to enter into a consideration of whether the three material elements of paragraph 4(a) have been proved. Suffice it to say that the overall conglomeration of material assertions and evidence now available to me would in my view result in either an adverse finding regarding the elements to be proved in paragraph 4(a)(i) or the issuance of a further Procedural Order, neither of which I am prepared to do.
8. Decision
This Panel decides that the named Complainant fails in its request that the contested domain name be transferred to WorldNet DNS Management Corporation.
Cecil O.D. Branson, Q.C.
Sole Panelist
Dated: May 4, 2003
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