WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Stanworth Development Limited v. Susana Gonzales, Smart Answer S.A. Case No. D2009-0260 1. The Parties
The Complainant is Stanworth Development Limited, Isle of Man, United Kingdom of Great Britain and Northern Ireland (United Kingdom), represented by Bowman Gilfillan Inc., Johannesburg, South Africa.
The Respondent is Susana Gonzales, Smart Answer S.A., Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with MyDomain, Inc. (formerly known as NamesDirect). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2009. On February 26, 2009, the Center transmitted by email to MyDomain, Inc. a request for registrar verification in connection with the disputed domain name. On February 26, 2009, MyDomain, Inc. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 3, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2009.
The Center appointed Philip N. Argy as the sole panelist in this matter on April 6, 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 paragraph 7 of the Rules. 4. Factual Background
The following salient facts, taken from the Complaint, remain uncontested:
The Complainant is the proprietor of a number of pending and registered trademarks consisting of or incorporating the words JACKPOT CITY in various jurisdictions including Australia, Canada, the European Union, the United Kingdom, and the United States of America (USA). The trademarks cover, in general, entertainment services, namely, providing on-line games of chance, games of skill and casino-style gaming services rendered on-line. All contain the words JACKPOT CITY with various other words such as “casino” or “.com” or game names such as “poker”.
The earliest of the registered trademarks was filed for on June 22, 2001 and granted on March 8, 2002.
A licensee of the Complainant's trademarks, Carmen Media Group Limited, has operated the “” website since late 1998. That website receives in the region of 250,000 visitors and facilitates over 25,000 software downloads each month. In addition, many thousands of registered players regularly make use of the “” gaming site with a substantial portion being active on the site at any given time. An amount in excess of USD 50,000 per month is spent on various advertising, marketing and other promotional activities, including banner listings on portal sites and search engines, direct mailing campaigns, affiliate programs, print ads, TV commercials and infomercials.
The JACKPOT CITY trademark is very well known in relation to the provision of on-line games of chance and casino-style gaming services. It is distinctive of the Complainant's services.
The disputed domain name was registered on April 24, 2008. 5. Parties' Contentions A. Complainant
The Complainant invokes paragraph 4(a) of the Policy in asserting that the disputed domain name is confusingly similar to the Complainant's registered and common law JACKPOT CITY marks, that the Respondent lacks any rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Complainant puts its case under paragraph 4(a)(i) of the Policy in this way:
The theme of the JACKPOT CITY brand as used on the “” gaming site is one that would identify strongly with gambling on a worldwide basis, and is based, both visually and thematically, on a Vegas-type theme having lots of bright chaser lights and bold typography. The Complainant contends that the site has established itself as one of the most highly recognized online gaming brands currently available. In essence, the Complainant submits that the “” website is its Jackpot City branded online casino of world renown.
The Complainant also draws attention to three prior UDRP decisions, involving the domain names , La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. CCX (Monacogoldonlinecasino-Com-Dom,WIPO Case No. D2007-0980; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucan Toh and Max Wright,WIPO Case No. D2007-0249; and Stanworth Development Limited v. Kaneoka Senuchi,WIPO Case No. D2005-0703, in each of which it was held that the inclusion of the words “online” and “casino” were not sufficient to distinguish the respectively disputed domain names from the complainants' trade mark rights.
The Complainant's next ground is paragraph 4(a)(ii) of the Policy, which it argues as follows:
To the best of the Complainant's knowledge, and prior to its August 29, 2008 “cease and desist” notice being sent to the Respondent, the disputed domain name has pointed to a website prominently entitled “Golden Palace Online Casino”, which is one of the Complainant's competitors. Furthermore, when downloading the software from the website associated with the disputed domain name, the software which is downloaded is not that of the Complainant. Rather, consumers obtain software for the “Golden Palace Online Casino”. Such use does not rise to a level, under paragraph 4(c) of the Policy, to constitute a legitimate non-commercial or fair use without any intent to misleadingly divert consumers or tarnish the trademark or service mark at issue.
The Complainant is the exclusive proprietor of the JACKPOT CITY mark in relation to gaming and casino services. The Respondent is neither an agent nor a licensee of the Complainant and therefore has no right to the use of the JACKPOT CITY mark, or marks confusingly similar to this mark, in the disputed domain name.
Further to the above, the Respondent has no connection or affiliation with the Complainant or the Licensee, and has not received any licence or consent, express or implied, to use the Complainant's JACKPOT CITY mark, or marks confusingly similar to this mark, in a domain name or in any manner whatsoever. This fact is not conveyed to Internet users who access the website associated with the disputed domain name, which further suggests that the Respondent “has no legitimate rights or interest in and to” the disputed domain name. Moreover, the Complainant is unaware of any legitimate right the Respondent could have in the words “jackpot city” which are both confusingly similar to the Complainant's well-known JACKPOT CITY trade mark. Thus, the Respondent has no legitimate interest “in” the disputed domain name and has made no good faith or fair use of the domain name at all.
There is no evidence whatsoever that the Respondent has been commonly known by the disputed domain name, and the Respondent has not acquired any trade mark or service mark rights in and to the disputed domain name. In fact the Complainant's JACKPOT CITY trade mark is so well-known in relation to casino and gaming services that the Respondent should have known of the Complainant's prior rights before registering the disputed domain name. In light of this knowledge, albeit not actual but inferred (partly due to the distinctiveness associated with the JACKPOT CITY mark and partly due to the lack of any apparent explanation or justification for adopting such a distinctive mark), the disputed domain name could never have been put to legitimate use by the Respondent.
Finally, the Complainant argues its case under paragraph 4(a)(iii) of the Policy on multiple bases:
The Complainant has a long established reputation in many jurisdictions in the use of its JACKPOT CITY trade marks in relation to gaming and casino services, especially if one considers that the “” gaming site has been in operation since at least late 1998. It is therefore highly unlikely that the Respondent just happened to unintentionally select the Complainant's distinctive JACKPOT CITY trademarks and inadvertently incorporate them into its selected domain name. 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 disputed domain name. The fact that the Respondent has used the disputed domain name the way it has, is suggestive of the Respondent's knowledge of the Complainant and its JACKPOT CITY trademarks.
The registration of the disputed domain name occurred nearly ten years subsequent to the Complainant commencing operation of its “” gaming site and subsequent to the success of the Complainant's JACKPOT CITY goods and services.
The Respondent's failure to respond to the Complainant's August 29, 2008 “cease-and-desist” letter must also be viewed as significant, and the Panel should 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 disputed domain name and its bad faith registration and use.
The Respondent selected the domain name in question being well aware of the fame of the Complainant's trade mark and intended to benefit from the ‘coincidence' that its chosen name was the same as the Complainant's trade mark. The Respondent would have known that there was a very real likelihood that Internet users would assume that the Respondent's service under the domain name would in some way be associated with the Complainant and that it would derive a substantial commercial advantage from that misapprehension.
The Complainant also asserts that the Respondent's registration and use of the disputed domain name cannot constitute a bona fide offering of goods and services and subsequently also constitutes the bad faith registration and use of the disputed domain name for the following combination of reasons:
(i) No relationship exists between the Complainant and Respondent, that is, the Respondent is not a licensee or affiliate of Complainant's trademarked goods.
(ii) There is no prominently displayed 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 April 24, 2008, which is approximately:
a. nine years after the Complainant's domain name registration (late 1998);
b. nearly nine years after the Complainant first used the JACKPOT CITY mark in commerce (late 1998); and
c. seven 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 in 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.
(vi) Internet users are likely to employ the disputed domain when attempting to locate the Complainants' website. Upon entering the disputed domain name, Internet users have in fact been “mousetrapped” to a website that advertise services that are not sponsored or endorsed by, or affiliated with the Complainant, thus creating a likelihood of confusion regarding Complainants' sponsorship, affiliation or endorsement of the Respondent's website.
(vii) 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.
(viii) The Respondent has pointed the disputed domain name to a website promoting goods and services in opposition to those of the Complainant. The Complainant submits that such use does not rise to a level, under paragraph 4(c) of the Policy, to constitute a legitimate non-commercial or fair use without any intent to misleadingly divert consumers or tarnish the trademark or service mark at issue. B. Respondent
The Respondent did not file a Response nor respond in any other fashion to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established by credible evidence that it owns both registered and common law trademark rights to the words “jackpot city”. Whilst the Panel would not ordinarily have regarded those words as distinctive of a casino or other gaming business involving jackpotting prizes, and is surprised that the Complainant was able to achieve registration of those words in so many jurisdictions, it is clear that it has done so and therefore beyond doubt that it has rights in “jackpot city” as a trademark in many jurisdictions including the USA and Australia.
The inquiry under the first element of the Policy is simply whether a trademark and the disputed domain name, when directly compared, are identical or confusingly similar. The contents of any website to which a disputed domain name resolves is not relevant to this ground of a complaint: Wal-Mart Stores, Inc. v. xc2,WIPO Case No. D2006-0811 and Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 and Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr.,WIPO Case No. D2000-1525.
It is also accepted that, due to the technical idiosyncrasies of domain name syntax, the use of lower case characters, the omission of blank spaces between words, and the suffixing of a domain level signifier such as “.com” or “.org”, may be ignored for the purposes of the comparison. In this case, a comparison between “jackpot city” and “” reveals that the disputed domain name and the Complainant's mark differ only by the suffixed words “online casino”.
Since the Complainant's mark is embedded in the disputed domain name, it is hard to say there is no similarity, but finding that the disputed domain name is similar to the Complainant's marks is not sufficient. The critical question on this aspect of the Policy is whether the similarity is “confusing”. See e.g. the panel's discussion in SAP AG v. Reffael Caspi,WIPO Case No. D2009-0060.
In this Panel's view, not only must a Complainant establish similarity between the disputed domain name and its trade marks, but it must also establish that, on a direct (objective) comparison between the two, people seeing the disputed domain name will likely be confused by that similarity as to the trade origin of the products, services or proprietorship of the site to which the disputed domain resolves.
The nature of the Complainant business may well be relevant when looking at the effect of characters in the disputed domain name that prefix or suffix the characters that comprise or resemble the trademark element. That is because the exercise is essentially an objective one which looks for the likelihood of confusion as to trade source on the face of the disputed domain name in light of the Complainant trademark. Where, as here, the additional characters are descriptive or redolent of the Complainant products or services, the likelihood that the additional matter might distinguish the disputed domain name from the trademark is destroyed. At the very least such additional matter is not capable of preventing the disputed domain name from being confusingly similar to the trademark which they embed. Generally, a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). Thus, the descriptive language added here, namely, “online casino” not only does not prevent the likelihood of confusion in this case; it increases the likelihood that the disputed domain name will be taken to be associated with the Complainant's Jackpot City online casino business. B. Rights or Legitimate Interests
As noted above, the Complainant was able to obtain trademark registrations for “Jackpot City” for a gaming business in which unwon prizes jackpot. It is well within the bounds of possibility that a person wanting to operate such a business might call it “jackpot city” as a term connoting, if not denoting, exactly what will be experienced by a consumer of its services. Nevertheless, even allowing for the possibility that a person could demonstrate such rights in a case like the present, the Complainant has argued strongly to the contrary, and supported that argument by credible evidence.
The Respondent, on the other hand, has failed to respond either formally or informally to the Complaint or to the various pre-Complaint communications sent on behalf of the Complainant. Whilst that gives rise to inferences that for the most part are relevant to paragraph 4(a)(iii) of the Policy, it also creates an evidentiary burden which the Respondent has failed to discharge. Thus, despite the Panel being able to conceive of circumstances where that onus could relatively easily be discharged, the Respondent here has not done so.
The Panel formally finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Where a disputed domain name comprises ordinary English words used to convey their ordinary English meaning, then this Panel's view is that a finding of “bad faith” registration and use requires convincing evidence. But once sufficient evidence has been adduced to create a prima facie case, a complainant is entitled to succeed absent any response from a respondent.
Here the words “jackpot city online casino” come close to conveying an online casino in which a jackpot mechanism is extensively employed. The Complainant has argued its case under paragraph 4(a)(iii) on multiple bases and has made a strong showing on each basis. First, there is the period of nearly 10 years of use of the Complainant's trademark and website during which anyone having an interest in online gaming would have become aware of the Complainant's business. Secondly, there is the Respondent's failure to respond to the Complaint and prior communications on behalf of the Complainant. Thirdly, there is the head on competitive context in which the website to which the disputed domain name resolves is a direct competitor of the Complainant's business. Fourthly, there is the mouse trapping by which a visitor to that website cannot escape by closing the browser window as the window-close function is inhibited. This combination of factors as well as the other arguments put by the Complainant demonstrates quite convincingly that the disputed domain name was registered in bad faith and continues to be used in bad faith, both by direct evidence as well as by invocation of paragraph 4(b)(iv) of the Policy.
The Panel formally finds paragraph 4(a)(iii) of the Policy made out by the Complainant. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Philip N. Argy
Sole Panelist
Dated: April 20, 2009
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