WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Genting Berhad v. Minakumari Periasamy Vanilla Inc Case No. D2009-0038 1. The Parties
Complainant is Genting Berhad of Kuala Lumpur, Malaysia, represented by Naqiz & Partners of Malaysia.
Respondent is Minakumari Periasamy Vanilla Inc of Kuala Lumpur, Malaysia. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2009. On January 14, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 14, 2009, eNom 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” 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 proceedings commenced on January 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 10, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on February 18, 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
Complainant was incorporated on July 30, 1968.
Complainant is a listed company in Malaysia and has a market capitalisation of about RM18.9 billion (USD5.42 billion) as at September 30, 2008.
The core business of the Complainant is in leisure, hospitality and casino operations.
Complainant and its subsidiary Genting International Management Limited are the owners of a number registrations in the GENTING mark worldwide.
Complainant operates a number of domain names which incorporate its GENTING mark.
Complaint sent a cease and desist letter to the Respondent on October 23, 2008. The Respondent did not respond to this letter. 5. Parties' Contentions A. Complainant
Complainant contends that the Disputed Domain Name is identical and/or confusingly similar to the Complainant's GENTING mark for the purposes of paragraph 4(a)(i) of the Policy as the Disputed Domain name comprises the Complainant's mark in its entirety suffixed by the word “poker” which is descriptive of a card game synonymous with the casino and gaming activities. Complainant submits in this regard that the word “poker” is merely descriptive and does not alter the impression of the Disputed Domain Name being connected to Complainant.
Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the purposes of Paragraph 4(a)(ii) of the Policy. Complainant submits that Respondent is not connected with Complainant in any way. Complainant submits that the Respondent not making a legitimate non-commercial or fair use of the Disputed Domain Name as it resolves to Respondent's website which provides sponsored links to third party online poker websites. Complainant further submits that Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet users away from the Complainant's website “” to third party competitor websites.
Complainant contends that the Disputed Domain Name was registered and is being used in bad faith by Respondent for the purposes of Paragraph 4(a)(iii) of the Policy. The Complainant submits that the Disputed Domain Name was registered primarily for the purpose of disrupting Complainant's business. Complainant submits that Respondent also intentionally attempted to attract for commercial gain Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark. Complainant further submits that the intentional selection of Complainant's mark in combination with the word “poker” is evidence that Respondent had knowledge of Complainant's business. B. Respondent
Respondent has not filed a Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on Complaint in the absence of a Response from Respondent. The Panel may draw negative inferences from the Respondent's default where necessary. 6. Discussion and Findings A. UDRP Elements
If Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
The Panel also notes that pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a Response from Respondent. B. Identical or Confusingly Similar
Complainant has provided sufficient evidence of its ownership of both registered and unregistered usage rights in the GENTING trademark. The Panel is satisfied that the Disputed Domain Name is confusingly similar to the GENTING mark. Previous panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See: PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696; The Nasdaq Stock Market, Inc. v. Green Angel,WIPO Case No. D2001-1010; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113; World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The mere addition of the descriptive term “poker” to the GENTING mark does not alter the overall impression that the Disputed Domain Name is connected to Complainant. See also Genting Berhad v. Christopher Ang,WIPO Case No. D2009-0037.
The Panel considers that the Disputed Domain Name is confusingly similar to the Complainant's mark for the purposes of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainant must make out at least a prima facie case that Respondent lacks rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. Once a prima facie case is shown the burden of proof then shifts to Respondent who must demonstrate its rights or legitimate interests to the panel.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by Respondent, which if found by the Panel to be proved based on its evaluation of all evidence presented, shall be demonstrative of the Respondent's legitimate rights or legitimate interests to the Disputed Domain Name for the purposes of paragraph 4(a)(ii):
(i) (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) an indication that the registrant has been commonly known by the domain name even if has acquired no trademark rights; or
(iii) legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
It is generally regarded as prima facie evidence, for a complainant to show that the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857. The Panel notes that Respondent's site features links to online poker websites of third party competitors. There is no evidence supportive of the premise that Respondent is operating a bona fide business through its site, or that it is affiliated with, or authorised by Complainant. Complainant has therefore made out a prima facie case.
Respondent has failed to file a response to the Complaint. It remains for the Panel to determine whether or not in this case Respondent has no right or legitimate interest in the disputed domain name as a consequence of its actions. Previous panels have found that domain name parking is not necessarily indicative of bad faith. In this case the Disputed Domain Name is being used in connection with a site which has listed third party online poker websites and in circumstances as further outlined below which are indicative of bad faith. The Panel considers that Respondent is intentionally engaging in misleading conduct by diverting Internet users away from Complainant's website to third party competitor websites. In these circumstances Respondent's use is really illegitimate. Respondent has been unable to adduce any evidence to persuade the Panel otherwise.
Therefore the Panel considers that Complainant has satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and used of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly to the domain name; or
(ii) the respondent has 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 the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the domain name, the respondent has intentionally attempted 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 mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on respondent's website or location.
For the purposes of paragraph 4(b)(iii) Complainant contends that Respondent has used the Disputed Domain Name to re-direct traffic, for commercial gain, to third party online poker websites. Certainly is appears that competing online poker sites are linked to the Respondent's site at the Disputed Domain Name and that Respondent is using the undisputed reputation of t Complainant's mark to profit from the obvious association with the Disputed Domain Name by attracting Internet users to Respondent's website in order to generate hits on sponsored links at said site.
Additional evidence of bad faith can be adduced from the fact that Complaint has been trading under the GENTING name for over 30 years. Respondent registered the Disputed Domain Name in 2005. The Panel infers that the Respondent, who is also based in Malaysia, was and is aware within the meaning of the Policy of the GENTING mark and its extensive reputation at the time of registration. Complainant has provided sufficient evidence showing that the GENTING mark is well known and has an extensive reputation.
Accordingly the Panel considers that Complainant has satisfied 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.
Alistair Payne
Sole Panelist
Dated: March 9, 2009
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