WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Stanworth Development Limited v. Vikas Tailor Case No. D2008-1919 1. The Parties
The Complainant is Stanworth Development Limited of Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Vikas Tailor of Surrey, British Columbia, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center") on December 12, 2008. On December 17, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 18, 2008, GoD, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on December 24, 2008, that the Complaint was not submitted in electronic format, the Complainant submitted the Complaint in electronic format on January 5, 2009. The Center verified that the 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 proceeding commenced on January 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 27, 2009.
The Center appointed Linda Chang as the sole panelist in this matter on February 12, 2009. 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
The Complainant is the owner of a number of pending and registered trade marks consisting of the words LUCKY NUGGET in Australia, Canada, the European Union, the United Kingdom, and the United States of America. The earliest registration was obtained in Australia under the number of 880045 in 2001. The trade mark registrations cover service of providing online games of chance, games of skill and casino-style gaming services rendered online. The Complainant is the owner of a number of domain names consisting of the words “lucky nugget" amongst which was registered in 1997.
The Complainant uses its trade marks through its licensee Carmen Media Group Limited by operating an online gaming site at “www." which was officially launched in early 1998.
The Respondent is Vikas Tailor, who registered the disputed domain name in September 2006. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
The Complainant contends that it is the proprietor of a number of pending and registered trade marks consisting of the words “lucky nugget" in various jurisdictions including Australia, Canada, the European Union, the United Kingdom, and the United States of America (“USA"). The trade marks cover, in general, entertainment services, namely, providing online games of chance, games of skill and casino-style gaming services rendered online.
The Complainant contends it is also the proprietor of a number of domain names consisting of the words “lucky nugget" amongst which was registered in 1997.
The Complainant states that one of the ways in which it uses its trade marks is through its licensee Carmen Media Group Limited (hereinafter referred to as the “Licensee"). The Licensee operates under the LUCKY NUGGET trade mark an online gaming site at “www." (hereinafter referred to as the “ gaming site"). According to the licence agreement, all benefits arising out of the use of the trade marks by the Licensee belong to the Complainant. The licence agreement also contains quality control provisions regulating how the Licensee may use the trade marks.
According to the Complainant, the gaming site, was conceptualised in 1997 and officially launched in early 1998. Through extensive use and promotion, the trade mark LUCKY NUGGET has been established as one of the most highly recognized online gaming brands. Evidence in Annex “F" to the Complaint demonstrates the above statement.
The Complainant states that the disputed domain name which combines the Complainant's distinctive LUCKY NUGGET trade mark and the word “official" does not distinguish the disputed domain name from the Complainant's trade mark. The first UDRP case filed with the WIPO dealing with the term “official" was the decision in National Association for Stock Car Auto Racing, Inc. v. Imaging Solutions, WIPO Case No. D2001-0777. In this decision the panel held that the presence of the word “official" did nothing to distinguish the domain name from NASCAR's mark. In another domain name dispute case where the disputed domain name was (Stanworth Development Limited v. Vikas Tailor, WIPO Case No. D2008-0080), the panel held, “[t]he addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to complainant's registered trademark".
The Complainant further states that the disputed domain name is very similar to the Complainant's registered trade mark LUCKY NUGGET and is sufficient to confuse Internet users and consumers into believing that there is connection between the domain name holder and the Complainant in terms of affiliation or sponsorship while in fact such relationships do not exist. The Complainant therefore contends that the disputed domain name is confusingly similar to the Complainant's trade mark. Rights or Legitimate Interests
The Complainant states that on August 29, 2008 the Complainant, through its legal counsel, dispatched a cease and desist letter to the Respondent by email, fax, and registered post, informing the Respondent of the Complainant's trade mark rights in the trade mark LUCKY NUGGET, alleging that the Respondent has no rights or legitimate interests in the disputed domain name, and demanding that the domain name be immediately transferred to the Complainant. Receiving no response, the Complainant sent a follow-up letter to the Respondent by registered post, fax, and e-mail on September 19, 2008.
According to the Complainant, at the date of the submission of this Complaint, the disputed domain name was found to point to a website displaying a directory of files and folders. The Complainant contends that this does not amount to a bona fide offering of goods and services, nor fair use of the disputed domain name (see Pfizer Inc. v. Order Viagra Online, WIPO Case No. D2002-0366).
The Complainant further contends that the Respondent is neither an agent nor a licensee of the Complainant and therefore has no right to use LUCKY NUGGET or something confusingly similar to its trade mark. In addition, the Complainant confirms that it does not have any business relationship of whatsoever with the Respondent.
According to the Complainant, there is no evidence to show the Respondent has been commonly known by the disputed domain name or the Respondent has acquired any trade mark or service mark in LUCKY NUGGET. Instead, the Complainant's LUCKY NUGGET trade mark is so well-known in relation to casino and gaming services that the Respondent should have reasonably known the Complainant's prior rights before its registering the disputed domain name.
The Complainant states, as is common practice in the online casino industry, the Complainant's Licensee has implemented an affiliate program, in terms of which contractual relationships are established with individuals who, for a referral fee, refer online traffic to the gaming site. Registered and used in bad faith
The Complainant contends that it has a long established reputation in many jurisdictions in the use of its LUCKY NUGGET trade marks in relation to gaming and casino services, especially if one considers that the Complainant's gaming site has been in operation since at least 1998. The Complainant finds it highly unlikely that it is just a coincidence that the Respondent selects LUCKY NUGGET as a domain name. Instead the Complainant finds it most likely that the Respondent had been fully aware of the Complainant's LUCKY NUGGET trade mark rights and its reputation in the gaming and casino industry at the time of registering the disputed domain name, bearing in mind that registration of the disputed domain name occurred nearly eight years after the Complainant commencing operation of its gaming site.
The Complainant contends that all information available to the Complainant, which is attached to the file as evidence, indicates that the Respondent is a passive holder of the disputed domain name since the domain name does not resolve to any website as shown in the evidence file. As contemplated and determined in a number of UDRP decisions, passive holding of a domain name can in certain circumstances be evidence of use in bad faith. See Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, which also makes extensive reference to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant asserts that the Respondent's registration and use of the disputed domain names cannot constitute a bona fide offering of goods and services but instead constitutes bad faith registration and use of the disputed domain name for the following combination of reasons:
i. No relationship exists between the Complainant and the Respondent, that is, the Respondent is not a licensee or affiliate of the Complainant's trademarked goods/services;
ii. There is no disclaimer on the Respondent's website, permitting Internet users to know the precise relationship, if any, between the Respondent and the Complainant;
iii. The Respondent registered the disputed domain name on September 24, 2006, which is approximately:
a. 8 (eight) years after the Complainant's domain name registration (September 1997);
b. nearly 8 (eight) years after the Complainant first used the LUCKY NUGGET CASINO mark in commerce (July 1998); and
c. 6 (six) years after the Complainant had registered the service mark in several countries, including the USA and Australia. (June 2001);
iv. The Complainant has not acquiesced to the use of its trade mark; nor has the Complainant tacitly acquiesced, through the passage of time, to the use of its trade mark, but has instead diligently sought to enforce its trade mark rights against the Respondent;
v. The disputed domain name is not the only name which the Respondent can use to describe its business, and the Respondent could have used any number of other domain names to describe its business; and
vi. The Respondent has not responded to the Complainant's cease-and-desist letter thus adopting by silence the material allegations made by the Complainant regarding the Respondent's bad faith registration and use of the domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant started operating its online gaming business through its Licensee under the name of LUCKY NUGGET since 1998 and became registered owner of the same in multiple countries of the world since 2001. Considerable reputation has been acquired through Licensee's extensive use and promotion.
The disputed domain name, which was registered 8 years after the Complainant's online business operation, consists of a descriptive term “official", the name “lucky nugget" and the generic term “.com". The distinctive part of the domain name is “lucky nugget" which is identical with the Complainant's trade mark while the descriptive word “official" is not sufficient to differentiate “official lucky nugget" from “lucky nugget" but instead is even more misleading to Internet users because it appears to be the official site of the Complainant's website while in fact it is not. “.com" is the generic indicator of gTLD, and therefore does not function as a distinguishing element in judging similarities between the two names.
The domain name is confusingly similar to the Complainant's trade mark.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made prima facie statement that the Respondent is not known by the disputed domain name nor is authorized to use the trademark in any manner. The burden rests with the Respondent to prove otherwise. However the Respondent was silent to two letters from the Complainant and made no response to this administrative proceeding.
According to the information provided by the Complainant, the disputed domain name points to a website where a number of file or folder names are listed. The Panel tried a number of times to log on the website at the disputed domain name and view the listed files by clicking “www." but was unable to open any of the files. The Panel is not convinced that such use of the domain name constitutes bona fide offering of goods or services as outlined in paragraph 4(c) of the Policy.
The Panel is satisfied that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The files on record have shown the following:
- The Complainant has been extensively using and advertising its trade mark since it launched its online gaming operation in late 1990s. The trade mark LUCKY NUGGET has acquired a considerable reputation in the field of online gaming and casino-style gambling services;
- The Respondent is not affiliated to the Complainant in any way and does not have a right or other legitimate interests as stated under Paragraph C of this Decision;
- The Complainant's trade mark LUCKY NUGGET as an entirety is a distinctive phrase;
- The Respondent was once and again silent to the letters sent from the Complainant by email, fax and registered post, details of which were provided by the Respondent itself when registering the disputed domain name;
- The Respondent was not responding to this administrative proceeding; and
- The Respondent is not genuinely using the disputed domain name.
All the above situations lead the Panel to its belief that the Respondent falls within “passive holding of the domain name". To passively hold a domain name, which is composed of arbitrary words upon which no parties have built any reputations in relation to certain goods or services, is fair and reasonable. However, it would be quite another matter if the key part of the domain name is a distinctive word or a made up phrase such as LUCKY NUGGET in the present case, the trade mark owner has been using and promoting the name for a reasonably long period of time, and as a result, the trade mark has acquired a reputation in relation to the goods or services that the trade mark owner has been engaged in. The reputation of the trade mark gives the Respondent an opportunity to know about the trade mark when it comes to register its domain name. Passively holding the domain name potentially hinders the trade mark owner from registering and using the same when such needs arise in the course of business, and therefore damages the trade mark owner's legitimate interests. Passive holding of a domain name, especially in case the domain name is a copy of another party's trade mark which is known in an industry, is determined to be bad faith registration by majority of UDRP panelists. It won't be an exception in this case. Given the facts as listed at the beginning of Paragraph C in this Decision, the Panel was convinced that the Respondent's passive holding of the disputed domain name falls within bad faith registration and use of the domain name.
The Panel is satisfied that the Complainant has met 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.
Linda Chang
Sole Panelist
Dated: March 4, 2009
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