WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Stanworth Development Limited v. BWI Domain Manager Case No. D2008-1646 1. The Parties
1.1 The Complainant is Stanworth Development Limited, of the Isle of Man (a British Crown Dependency), represented by Bowman Gilfillan Inc., of the Republic of South Africa.
1.2 The Respondent is BWI Domain Manager, of the Cayman Islands (an Overseas Territory of the United Kingdom of Great Britain and Northern Ireland). 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with R Corp (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2008. On October 30, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar failed to provide the Center with billing contact details as it was required to do so under paragraph 2(a)(i)(B) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
3.2 On November 6, 2008, the Center notified the Complainant that the Complaint was administratively deficient in that the relevant fee had not been paid and sought proof of payment. On November 10, 2008, the Complainant informed the Center that payment had been made but that it had been made under the wrong reference. Having satisfied itself that this was the case, the Center proceeded to verify that the Complaint otherwise satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.3 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 November 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 3, 2008.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 11, 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. 4. Factual Background
4.1 The Complainant gives an address in the Isle of Man, but is a company incorporated under the laws of the British Virgin Islands, an Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
4.2 It is the owner of various trade marks around the world either consisting of or incorporating the words Jackpot City. They include Community Trade Mark No. 3958279 for the words “Jackpot City” in class 41 filed on July 29, 2004 and registered on October 17, 2005.
4.3 The marks are licensed to Carmen Media Group Limited, which uses then for a gaming site operating from the domain name . This website was launched in early 1999. Recently the website received in the region of 250,000 visitors a month and in excess of US$50,000 is spent per month on various forms of advertising and marketing for that site.
4.4 The exact identity and legal status of the Respondent is unknown. It trades under the name BWI Domain Manager and gives an address which is simply a post office box in West Bay, Grand Cayman: i.e. PO Box 1322. The Respondent has been involved in numerous proceedings under the Policy1. As far as the Panel is aware the Respondent has never put in a Response in any of these proceedings.
4.5 The Domain Name was registered on October 7, 2005.
4.6 As at the date of these proceedings the website displayed from the Domain Name bears all the hallmarks of having been generated by a “domain name parking” or “pay per click” service. The page has the heading “J” under which is the line “What you need, when you need it”. Below that are a series of “Related Searches” all of which are gaming themed. Below this is a search box. There is nothing on the website that discloses what person or entity controls that website. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the Domain Name wholly incorporates the Complainant's JACKPOT CITY mark and that the additional “com” included in the Domain Name does not add distinctive matter so as to distinguish it from the Complainant's trade mark. Accordingly, the Domain Name is said to be confusingly similar to a trade mark in which the complainant has rights.
5.2 On the question of rights or legitimate interests the Complainant refers to “cease and desist” letters that it claims to have sent to the Respondent on July 23, 2008 or August 5, 2008. However, the letters appended to the Complaint do not refer to the Domain Name but to another domain name .
5.3 Reference is also made to the way in which the Domain Name is used. In particular, it asserts:
“As at the date of the submission of this Complaint, the [Domain Name] points to a generic search engine website providing information about casino and gaming services and through which website competing and/or related goods and services to those of the Complainant can be accessed”.
Unfortunately, the Complainant fails to append or provide any further evidence as to exactly how the Domain Name was being used.
5.4 The Complainant also contends that the Respondent has not been granted the right to use the Complainant's mark and that there is no evidence that the Respondent has been commonly known by the Domain Name.
5.5 On the question of bad faith, the Complainant contends that given its long use of the JACKPOT CITY mark it is “most likely that the Respondent was fully aware of the Complainant's JACKPOT CITY trade mark rights and its reputation in the gaming and casino industry when registering the [Domain Name]”. Further, it claims that there is “little doubt” that the Domain Name was registered “with the intention of diverting Internet users to the Respondent's website and to mislead Internet users into believing that the Respondent is in some way associated with the Complainant and thus disrupt the business of the Complainant”.
5.6 Reference is also made to the decision in Euromarket Designs, Inc. v. Domain For Sale VMI,WIPO Case No. D2000-1195 which is said to be authority for the proposition that a failure to respond in any substance to a “cease and desist letter” or some other letter before action is significant and that “the Panelist should subsequently interpret such failure as an adoption by silence of the material allegations made by the Complainant regarding the Respondent's lack of any rights or legitimate interests in the [Domain Name] and bad faith in its registration and use”.
5.7 Reference is also made to a number of other decisions under the Policy that are said to support the Complainant's case, including Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128, Gerd Petrik v. Johnny Carpela,WIPO Case No. D2004-1043, Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946 and NIHC, Inc. and Nordstrom, Inc. v. John Zuccarini,WIPO Case No. D2001-1260. B. Respondent
5.8 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 As has already been explained, it is clear that the Complainant owns a number of trade marks that incorporate the word “Jackpot City”, and significantly this extends to marks that comprise the words “Jackpot City” alone. The Panel also accepts that the only sensible reading of the Domain Name is as the words “jackpot” and “city” with the insertion of an additional “com” before the “.com” TLD. This addition text and the TLD suffix do not distinguish the Domain Name from the Complainant's JACKPOT CITY mark. The Panel, therefore, has little difficulty in concluding that the Domain Name is confusingly similar to the Complainant's mark.
6.5 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 As has already been described, the website currently operating from the Domain Name shows all the classic hallmarks of a domain name parking site. The Complainant's lawyers have made matters somewhat difficult for the Panel since they have failed to attach copies of any material that shows exactly how the Domain Name has been used by the Respondent. Given that the exact way in which a Domain Name has been used is often of some importance in an assessment under the Policy, not to provide such basic material was not helpful.
6.7 Nevertheless, the Panel notes that the Complainant does assert that:
“As at the date of the submission of this Complaint, the [Domain Name] points to a generic search engine website providing information about casino and gaming services and through which website competing and/or related goods and services to those of the Complainant can be accessed”.
A reasonable reading of this sentence is that this is simply a description of the domain name parking page that currently appears from the Domain Name, and that at least recently, if not for longer, the Domain Name has been used in the same manner. The Panel is prepared to proceed on this basis.
6.8 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.9 Essentially, therefore, in a domain name parking case such as this, the assessment often boils down to the questions: did the respondent register the domain name with the complainant's mark in mind and has it deliberately used it to take advantage of the reputation of that mark? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little. For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that in this case the answer to both questions is yes.
6.10 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.11 As has already been explained, the Panel is prepared to accept that the Domain Name has recently been used in connection with a “pay per click” or “domain name parking” service. There is no evidence before the Panel that would suggest that the Domain Name has been used for any other purpose.
6.12 It is now well-known how these sorts of service operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA,WIPO Case No. D2007-1143).
6.13 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of internet users being drawn to that domain name parking page (see for example Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his internet browser). It does not matter that when the Internet user arrives at the pay per click site that it then becomes clear that the website is unconnected with the trade mark holder.
6.14 In this case what currently appears on the website operating from the Domain Name suggests that the sponsored links have been indirectly rather than directly displayed. An Internet user has to perform a search by placing text in the box or click on one of the proffered “Related Searches”. However, this makes very little difference to the bad faith analysis. If the intention was to take advantage of the reputation of the Complainant's mark to draw Internet users to the pay per click website, it does not matter that something else must be done before the sponsored search results are displayed.
6.15 So the key questions in this case are, did the Respondent know of the Complainant mark, and was it intending with that knowledge to take advantage of the reputation in the Complainant's mark to draw additional visitors to his site when it registered and subsequently used the Domain Name?
6.16 The Panel believes the answer to these questions to be yes. There is first the extent of the Complainant's and its licensee's activities and the Panel accepts that as a consequence it has developed a significant reputation in this field. It is somewhat unclear exactly in which territories that reputation has developed and it is far from clear where it is that the Respondent is located (it gives a Cayman Islands address, but there is nothing to suggest that this is anything more than a mail box and this may have no real connection with the Respondent's true centre of operations). However, in this case the Complainant's services are offered directly on the Internet itself and it seems clear that the Complainant's assertions about reputation are intended to be directed to the world at large.
6.17 The Complainant also relies on the distinctiveness of its mark. This is less convincing. The term “Jackpot City” is in large part descriptive or at least suggestive. In particular, it is suggestive of a place where an individual might undertake gaming and gambling activities. It is not wholly beyond the realms of possibility that it is a name that would be chosen because of its potential descriptive meaning. However, that said, the Panel does accept that any entity that chose a domain name incorporating such a term with its possible gaming use in mind, is the sort of entity that is likely to be aware of the Complainant's reputation in this field.
6.18 Nevertheless, there is another factor in this case that in the opinion of the Panel places the matter beyond any reasonable doubt. That is that the only sensible interpretation of the Domain Name is as the Complainant's licensee's domain name with the addition of an extra “com” before the “.com” TLD. In other words, this is what is sometimes referred to as a “typosquatting” case, i.e. where the domain name can only be sensibly understood as a misspelling or mistyping of another domain name. In such a case, it is not unreasonable to assume that the domain name registrant is aware of the activities that take place on the website operating from the domain name that has been misspelt. It is not that the respondent has an obligation to check out what appears at the corresponding domain name. It is just highly implausible as a matter of fact that it did not.
6.19 This is sufficient for the Panel to reach a finding of bad faith registration and use. However, there are a number of other factors that support this finding.
6.20 First, there is the Respondent's past activities. In the last couple of years it has been a respondent in seven other sets of proceedings before the Center under the Policy. In each case it did not file a response and in each case the panel ordered that the domain name be transferred. The Respondent has a track record of registering a domain name similar to others trade marks with a view to obtaining a financial gain through the use of pay per click websites with what might be described as cynical disregard for the trade mark owners' rights. The current case fits that pattern.
6.21 Second, there is the coyness as to identity on the part of the Respondent. BWI Domain Manager appears to be a trading name and it is far from clear whether there is any legal person with that name. The use of a PO Box Number in the Cayman Islands suggests an organisation or person that whoever is behind the Domain Name is keen to keep its true identity secret. No further clues as to identity appear on the website operating from the Domain Name. This is not what one would expect from any entity that honestly believed that it was engaged in legitimate pay per click activities.
6.22 The Panel has however, taken little account of the Complainant's contentions as to the Respondent's alleged failure to respond to the Complainant's letters before action. First, the Complainant puts the legal case far too high as to the consequences of a failure to respond to such a letter. The Panel rejects the contention that such failure amounts to “an adoption by silence of the material allegations made by” a complainant. A complainant bears the burden of proving the constituent elements of the Policy. The silence of a respondent in the face of an allegation will not by itself reverse or satisfy that burden (although in some cases certain inferences might be drawn from that silence in combination with all the other facts of the case).
6.23 The Panel accepts that similar wording to that used by the Complainant regarding the consequences of silence is to be found in the decision of the Panel in Euromarket Designs, Inc. v. Domain For Sale VMI,WIPO Case No. D2000-1195. However, if the Euromarket case is considered as a whole, it is clear that this “silence” was not by itself the basis for a finding of bad faith in that case, but simply one of a number of factors that led the panel to the conclusion that it did.
6.24 In this Panel's opinion a somewhat better way of putting things is that a respondent's failure to respond to a letter before action can in some cases be a factor that weighs in a complainant's favour when it comes to an assessment of bad faith. If the respondent had a good faith explanation for its registration of the domain name, it raises the question why the respondent did not simply give that explanation there and then. Whilst a respondent has no obligation under the Policy to respond to such a letter, if he does not do so, that may suggest, in combination with all the other circumstances of the case, that he can provide no legitimate answer.
6.25 A pertinent factor in that assessment may well be the exact content of the cease and desist letter or letter before action. A mere assertion of an infringement of trade mark rights may be of limited significance. The reason for this is that at the heart of an assessment of bad faith is a registrant's intent. Frequently, intent is of lesser relevance to an assessment under national trade mark laws, which can provide for infringement regardless of the state of mind of the alleged wrongdoer. A failure to respond to a letter that does not make clear allegations as the motives of a registrant in registering a domain name is likely to be of limited value in assessing what those motives were.
6.26 Second, and of greater significance in this case, is that it is simply not possible to know whether there were any letters before action in relation to the Domain Name and if they were sent what their content was. There were letters before action sent in relation to another domain name and those letters did make allegations as the registrant's intentions, but the position so far as the Domain Name is concerned is not at all clear. However, given the other factors that strongly point towards bad faith in this matter, ultimately this does not matter.
6.27 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Dated: December 15, 2008
1 Cases before the Center in which it has been involved areWIPO Case No. D2008-1536,WIPO Case No. D2008-1352,WIPO Case No. D2008-0915,WIPO Case No. D2008-0905,WIPO Case No. D2008-0722,WIPO Case No. D2008-0342, andWIPO Case No. D2007-1717
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