WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Crown Melbourne Limited v. Angus Aitken Case No. D2008-1354 1. The Parties
The Complainant is Crown Melbourne Limited of Australia, represented by Blake Dawson, Australia.
The Respondent is Angus Aitken of Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2008. On September 5, 2008, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the domain name at issue. On September 12, 2008, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).
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 September 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 15, 2008.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on October 28, 2008. 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.
On November 11, 2008, the Panel issued Procedural Order No. 1 requesting the Complainant to indicate the basis on which its claim to have “rights” in a trade mark which is identical or confusingly similar to the disputed domain name within paragraph 4(b)(i) of the Policy was made. A reply to this Order was received from the Complainant on November 14, 2008. 4. Factual Background
According to the Complaint, the Complainant and its parent company, Crown Limited, are leading providers of gambling, casino and entertainment services. Crown Limited is one of Australia's largest gambling and entertainment groups, with wholly owned entertainment complexes in Melbourne (the “Crown Entertainment Complex”) and Perth (the “Burswood Entertainment Complex”). It also has a significant portfolio of international gambling interests, including in Macao, Canada, the United Kingdom, Canada and the United States. Complaint, paragraph 15.
The Crown Entertainment Complex in Melbourne, which is operated by the Complainant is one of the largest such centres in the Southern Hemisphere, with a casino, hotel, function rooms, restaurants, shopping and entertainment facilities. A third hotel is scheduled to open in 2010. Complaint, paragraph 16.
The Complaint also states, at paragraph 17, that in 2007, Crown Limited had formed a joint venture company with other investors which had secured an option over a site of land in Las Vegas, Nevada. This was to be developed as a casino hotel under the brand name “Crown Las Vegas” and to be managed by Crown Limited. However, the joint venture company has now allowed the option to elapse and Crown Limited is exploring other opportunities in Las Vegas.
According to the Complaint (paragraph 18), the consolidated revenue for Crown Limited for the last five years (to May 2008) for all its associated activities has been in excess of AUD1.2 billion per annum.
As for the Respondent, nothing is known about his identity and activities, as, according to Melbourne IT Ltd, he has a “private registration” for the domain name in dispute and his contact details are therefore kept private and are not included on the Whois database. Instead, his contact details on the Whois database are the contact details for Melbourne IT Ltd (Complaint, paragraph 6). Other attempts by the Complainant to investigate the identity and activities of the Respondent have been unsuccessful: see further below. According to the Whois database, the disputed domain name was created and registered on October 23, 2006 and will expire on October 23, 2011. From the Complaint, there appears to be no activity associated with the domain name, which elicits an error message when a Google search is conducted and a similar response with an Internet Explorer search: Complaint, Annexure K. 5. Parties' Contentions A. Complainant
In a detailed Complaint, the Complainant alleges that each of the respective requirements under paragraph 4(a) of the Policy has been made out. In particular, it points to extensive trademark registrations in Australia and elsewhere comprising the word “Crown” and other variants including “Crown Casino”, a suite of “Crown” domain names and provides some evidence of the extent of its trading activities under the name “Crown” and variants thereof. It points further to the absence of any evidence concerning the Respondent's activities under, or in association with, the disputed domain name, and then argues that there is clear evidence of both registration and use of the domain name in bad faith by the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that:
“[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Respondent's domain name:
“…is identical or confusingly similar to a trademark or service mark in which the complainant has rights”;
In the present case, the disputed domain name is . The nearest registered trade mark cited by the Complainant comprises the words “Crown Casino”, Australian trade mark no 590000 and 590001 registered in the name of Crown Limited and dated November 11, 1992 (Annexure G). As noted above, there are also Australian registrations for the word “Crown” itself (Australian trade mark no 904713, registered February 27, 2002, see Annexure F) and various combinations including “Crown”: such as “Crown Events”, “Crown Apartments”, “Crown Hotel”, “Crown Resort”, “Crown Club”, “Crown College” and “Crown Casino” in combination with a device (Annexure G), and there are similar international trade mark registrations listed in Annexure H. In general, the services covered by these registrations extend to gambling, casino, entertainment and hotel services.
Some confusion arose from the Complaint as originally filed, as the name of the Complainant is “Crown Melbourne Limited”, while the name of the registered owner of the abovementioned service marks is “Crown Limited”. Accordingly, the Panel was at first inclined to conclude that the parent company Crown Limited was the registered owner of these marks while the subsidiary Crown Melbourne Limited must be using them pursuant to some kind of licensing arrangement, although the nature of any such arrangement had not been indicated in the Complaint. Hence, the Panel issued Procedural Order No. 1 (see above) seeking clarification of the basis on which the Complainant claimed to have “rights” in these marks.
The response to Procedural Order No. 1, however, indicates that Crown Melbourne Limited was previously known as “Crown Limited”, while the company now known as “Crown Limited” was previously known as “Arterial Limited”. The change of name for Crown Melbourne Limited took place on June 15, 2007 and is recorded on the Australian Securities and Investments Commission document entitled “Certificate of Registration Change of Name” of that date furnished by the Complainant. Of immediate relevance for present purposes is that Crown Limited, before its name change to Crown Melbourne Limited, was the registered owner of the service marks and that, although the change of name is not as yet recorded on the service mark registrations annexed to the Complaint, the Australian Company Number (“ACN”) for Crown Melbourne Limited (ACN 006 973 262) remains the same as for Crown Limited and this number appears on the trade mark registration documents in Annexures E, F and G. In other words, Crown Limited and Crown Melbourne Limited are the same corporate entity. On the basis of this material, therefore, the Panel is satisfied that the Complainant at all times has been the registered owner of the service marks listed in these annexures.
On the basis of these registrations, to say nothing of any associated common law rights that the Complainant may have arising from its use of the names “Crown” and “Crown Casinos”, there can be little doubt that the Complainant has “rights” in a trademark or service mark within the terms of paragraph 4(a)(i).
The question remaining is whether the disputed domain name is either “identical or confusingly similar” to one or more of these marks. As to the first of these possibilities, it is clear that there is no identity as between the words “Crown Casino” and “crowncasinolasvegas”. Furthermore, if the only difference between the two lay in the addition of the “.com” suffix, there is a longstanding view to be found among panels that the “.com” suffix to the end of the domain name is simply part of the Internet address and does not add “source-identifying significance”: see further Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728 (September 7, 2005) and Deutsche Welle v. DiamondWare Limited.,WIPO Case No. D2000-1202 (January 2, 2001). As to the second possibility (“confusing similarity”), there is authority to the effect that the addition, as in the present case, of a geographic suffix does not typically prevent a domain name from being confusingly similar to a trade mark. The Complainant refers here to Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662, and Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477. The Panelist agrees with the reasoning adopted in these decisions, although he notes that the first of these was not concerned with a geographic suffix but an “attack” suffix (“sucks”). However, the primary impact of the domain name lies in the first two words “crown” and “casino”, and an Internet user will be likely to assume that the Complainant has some association with the domain name within the designated geographical area of Las Vegas, particularly given the notorious association of that town with gambling and casinos. The Complainant refers in its Complaint to a proposed casino site in Las Vegas which was to be promoted as “Crown Casino Las Vegas”, but there is no evidence that this venture was ever publicly promoted, so no significance is to be attached to this fact. However, there is sufficient evidence in the Complaint of the scale of the Complainant's activities within Australia and Asia for it to be reasonable to conclude that the attachment of the suffix “lasvegas” to the words “crown” and “casino” will be likely to confuse Internet users into thinking that there is some link with the Complainant.
Accordingly, the Panel concludes that both parts of paragraph 4(a)(i) are satisfied here, namely that the disputed domain name is confusingly similar to a service mark(s) in which the Complainant has rights. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(b) which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.”
Essentially, these are matters for a Respondent to put forward for the Panel's consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exist.
In this regard, the Respondent's identity and location are unknown, the domain name does not resolve to any associated website, and the Complainant has been unable to locate any evidence of a trade mark or business or company name registration in Australia made by the Respondent comprising or including the word “Crown” (see Annexures I and J for the results of these searches in the ATMOS and ASIC databases). The Complainant also states that it has given no authority at any time to the Respondent to use the name “Crown”.
In light of the above, the Panel concludes that the Complainant has satisfied the requirements of par 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii), the Complainant must show that the domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that 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 [the Respondent] 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 [the Respondent] 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 [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an administrative panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869 and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the absence of a Response and evidence of any communications or contact between the parties, none of the listed circumstances in paragraph 4(b) is present. It would also be speculative to have regard to any presumed intention on the part of the Respondent to take advantage of the Complainant's plans to enter into a joint venture for a Las Vegas casino – there appears to be no basis for the alleged misuse of confidential information referred to in paragraph 44 of the Complaint. On the other hand, in light of the fact that the Complainant's casino is in Melbourne and has had a great deal of publicity and promotion since its establishment there, and given also that the Respondent appears to be located in Melbourne (at least, as per his contact details through Melbourne IT Ltd), it is hard to escape the conclusion that his registration of the disputed domain name could not have been effected in good faith. In this regard, the Complainant's extensive registrations of trade and service marks containing the word “Crown” is also relevant: these would have been a clear point of reference for any intending good faith registrant of a domain name containing the word “Crown” to consult before proceeding.
As for the further requirement of use of the disputed domain name in bad faith, the Respondent's continued “passive” holding of the name in circumstances where he appears to conduct no commercial activities associated with it, has sought to conceal his true identity and location behind his “private registration” with Melbourne IT Ltd, and has failed to respond to the present Complaint, amount to use in bad faith within the interpretation adopted by the Panel in the early decision of Telstra Corporation Limited v Nuclear Marshmellows,WIPO Case No. D2000-0003. In this regard, the Panel notes the unsuccessful efforts made by the Complainant to contact the Respondent prior to the initiation of the present Complaint (paragraphs 49-50) and notes also previous panel decisions where a failure of a Respondent to respond to such efforts at communication has, in itself, been held to be strong evidence of “bad faith”: see eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 and Encyclopedia Britannica, Inc. v. Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330. It is also difficult to conceive of any circumstance, once registration of the domain name had been achieved in 2006, in which the Respondent could actually have used, or could still use, the domain name for any legitimate purpose.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Staniforth Ricketson
Sole Panelist
Dated: November 16, 2008
Full & Egal Universal Law Academy