WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Rimbault v. Darko Enterprises Ltd. Case No. D2009-0757 1. The Parties
The Complainant is Cedric Rimbault of Rungis, France, proceeding pro se.
The Respondent is Darko Enterprises Ltd of Roseau Valley, Dominica, represented by Arnotts Lawyers Jones Bay Wharf, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2009. On June 10, 2009, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On June 11, 2009, F 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 June 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2009. The Response was filed with the Center on July 15, 2009.
The Center appointed William R. Towns as the sole panelist in this matter on July 23, 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.
On August 3, 2009, the Complainant forwarded to the Center a supplemental submission with additional annexes. The Panel determined to accept the Complainant's supplemental submission, and afforded the Respondent until August 14, 2009 to supplement the Response, if desired. The Respondent provided a supplemental submission to the Center on August 13, 2009. On that same day, the Complainant made further submissions to the Center which were forwarded to the Panel.
In view of the foregoing, the time for the Panel's decision to be forwarded to the Center under Rule 15 was extended to August 21, 2009. 4. Factual Background
The Complainant owns a French trademark registration for CASINOS.ORG issued by the National Institute of Industrial Property (INPI). The registration date, which is also the application filing date, is June 9, 2008. According to the Complainant, he uses the mark in connection with a website that advertises online casinos, and he has plans to adapt the website for mobile phones and to expand the services offered on his website, both to online casinos and to other businesses.1
The Respondent registered the disputed domain name on November 3, 2007. Insofar as the record reflects, the Respondent's sole use of the disputed domain name to date is in connection with what appears to be an informational webpage regarding online casinos.
The Complainant through a broker approached the Respondent in late 2008, offering to purchase the disputed domain name for USD 4,000.00, and after receiving no response, increasing his offer to USD 9,000.00. The Respondent then countered by offering to sell the disputed domain name for USD 115,000.00, an amount which the Complainant found unacceptable. Thereafter, the Complainant brought this proceeding under the UDRP. 5. Parties' Contentions A. Complainant
The Complainant maintains that the disputed domain name is identical and confusingly similar to his CASINOS.ORG mark, and that the Respondent's use of the disputed domain name compounds the confusion, since the Complainant uses his mark to advertise casinos over the Internet. According to the Complainant, the Respondent has made no effort since acquiring the disputed domain name “to develop a real Website”, does not own a corresponding trademark, and thus has no right to and no reasonable interest in the disputed domain name. In addition, the Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name because has forfeited its corporate rights and has no legal standing in the jurisdiction of its incorporation. According to the Complainant, the Response was submitted on behalf of the Respondent's shareholder, rather than the Respondent, since as the Complainant sees it, the Respondent is not legally entitled to possess or use the domain name.
The Complainant maintains that the Respondent did not register the disputed domain name for use with a bona fide website, but instead registered the disputed domain name in bad faith in order to sell the domain name for a higher price than was paid for it. Additionally, the Complainant argues that at the time the Respondent offered to sell the disputed domain name to the Complainant, it did not have the legal capacity to do so. In view of all of the foregoing, the Complainant contends that the Respondent registered and has used the disputed domain name in bad faith. B. Respondent
The Respondent maintains that the Complainant has failed to provide evidence an identical or confusingly similar trademark in which he has rights. The Respondent disputes that the Complainant's French trademark registration is sufficient to establish rights in a mark for purposes of the Policy, based on an asserted lack of any rigorous examination process prior to registration. The Respondent asserts that “casino” is a widely used generic term for a public building or room used for entertainment, and in particular gambling.
The Respondent maintains that it registered the disputed domain name based on its attractiveness of the generic or descriptive term “casino”, and has used the disputed domain name only in its generic or descriptive sense. On this basis the Respondent claims legitimate rights in the disputed domain name. According to the Respondent, its sole shareholder is well known in the online gambling business, and owns a number of other domain names related to casinos and gambling. The Respondent further asserts that it registered the disputed domain name without knowledge of the Complainant's asserted trademark rights, which the Respondent maintains it could not possibly have known of, since the domain name was registered prior to the Complainant's trademark registration of CASINOS.ORG.
In view of the foregoing, the Respondent concludes that it registered and is using the disputed domain name in good faith. According to the Respondent, given that “casino” is a widely used generic term and the it registered the disputed domain name for use consistent therewith prior to the Complainant's registration of the corresponding mark, the Complainant has engaged in the bad faith practice of reverse domain name hijacking. The Respondent maintains that it is in good standing in the jurisdiction of its incorporation, but asserts that this question of national law is of no moment to the issues presented under the Policy. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's CASINOS.ORG mark, in which the Complainant has demonstrated rights in for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr.,WIPO Case No. D2000-1525. In this case, such a comparison reflects that the disputed domain name and the Complainant's mark are essentially identical, since the Complainant's mark includes the gTLD designation “.org”. The fact that the Complainant did not secure the registration of its mark until after the Respondent had registered the disputed domain name is not material for purposes of the first element of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden is shifted to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel notes that the disputed domain name is confusingly similar to the Complainant's registered mark, and it is uncontroverted that the Complainant has not authorized the Respondent to use the CASINOS.ORG mark. The Complainant contends that the Respondent has failed to make any bona fide use of the disputed domain name, and that the Respondent attempted to sell the disputed domain name to the Complainant at an exorbitant price. On the basis of the foregoing, the Panel concludes that the Complainant has made a prima facie showing under paragraph 4(a)(ii). See, e.g., Document Technologies, Inc., supra; Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
The Respondent maintains that it registered the disputed domain name because of its appeal as a dictionary term or commonly used descriptive phrase, and not because of its value as a trademark, and asserts that it has the right to register and make a descriptive use of the disputed domain name. A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the registered mark of a complainant, provided it has not been registered with the complainant's trademark in mind. See, e.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Thus, where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may demonstrate a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. The domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. See Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., supra (respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered).
The Panel agrees with the Respondent that the word “casinos” is a generic or common descriptive term when used in connection with establishments that offer certain types of gambling activities and entertainment. In that regard, the record does not reflect the Respondent's use of the disputed domain name in a manner inconsistent with its generic or commonly understood meaning. Nevertheless, because, as discussed below, the Panel concludes that the Complainant has failed to meet its burden of proof respecting bad faith registration and use under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in the disputed domain name is not strictly necessary to the Panel's decision in this case. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 engaged in a pattern of such conduct; or
(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. The Policy provides a remedy only in cases where a complainant proves that the domain name “has been registered and is being used in bad faith”.
The Panel, after careful consideration of the totality of the circumstances in the record, does not find the evidence sufficient to demonstrate that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant's rights in the CASINOS.ORG mark. While the Complainant has established registration rights in the CASINOS.ORG mark sufficient to invoke the Policy, the mark nonetheless is comprised of the dictionary word “casinos”, which the record indicates to be subject to significant and widespread third-party use in its generic or descriptive sense. This is also reflected in the Complainant's use of the mark. Further, the circumstances in the record do not indicate that the Respondent actually knew, reasonably should have known, or could even be deemed to have constructive notice of the Complainant's rights in the CASINOS.ORG mark when the Respondent registered the disputed domain name, since the Complainant had not yet established rights in his mark at that time. As a general rule, and excluding certain situations not present in this case,2 when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant's non-existent rights. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845.
The primary rule in relation to domain name registrations is “first come, first served”, to which the Policy provides a narrow exception. See Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc,WIPO Case No. D2002-0658. As noted above, a number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent's aim in registering the disputed domain was to profit from and exploit the complainant's trademark. See, e.g., National Trust for Historic Preservation v. Barry Preston, supra. The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See M, LP v. Bill Zag and NWLAWS.ORG, supra; National Trust for Historic Preservation v. Barry Preston, supra.
There is no evidence that the Respondent has engaged in an abusive pattern of registering domain names to prevent the Complainant or other trademark owners from reflecting their marks in corresponding domain names. Nor does the record demonstrate that the Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainant's business or selling the domain name to the Complainant, or to exploit the Complainant's mark by creating a likelihood of confusion with the Respondent's website, given that the Complainant had not established trademark rights at the time the Respondent registered the disputed domain name. In short, there is nothing in the record to establish that the Respondent registered the disputed domain name based on anything other than its attractive qualities as a generic or descriptive term.3 Selling a domain name, even at an exorbitant price, is not per se prohibited by the Policy. Rather, selling of domain names is prohibited by the Policy only if the other elements of the Policy are also violated. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230; Manchester Airport PLC v. Club Club Limited,WIPO Case No. D2000-0638.
In the final analysis, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the Complainant. For all of the foregoing reasons, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use name under paragraph 4(a)(iii) of the Policy. E. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent's unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd.,WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. While the Panel has determined based on the facts and circumstances before it that the Complainant has failed to meet its burden of proof with respect to the third element of the Policy, the Panel is not persuaded that the Complainant acted in bad faith in invoking the Policy in this case. 7. Decision
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Dated: August 21, 2009
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