WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Stanworth Development Limited v. Domains by Proxy, Inc., Kim Hansen/ Henrik Witt Case No. D2009-1103 1. The Parties
The Complainant is Stanworth Development Limited of Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Domains by Proxy, Inc., Kim Hansen/Henrik Witt of Scottsdale, Arizona, United States of America and Limassol, Cyprus, respectively. 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 August 17, 2009. On August 17, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On August 17, 2009, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 2, 2009 and an amendment to the Complaint on September 9, 2009. The Center verified that the amended Complaint together with the amendment to 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 September 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2009. The Respondent responded in the form of an email communication on September 30, 2009.
The Center appointed Ross Wilson as the sole panelist in this matter on October 20, 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 proprietor of the trademark JACKPOT CITY registered in various jurisdictions including Australia, Canada, the European Union, the United Kingdom and the United States of America. The trademark covers entertainment services such as providing online games of chance, games of skill and casino-style gaming services rendered online. The earliest trademark registration was June 2001.
One of the ways in which the Complainant uses its trademark is through its licensee Carmen Media Group Limited (the “Licensee”). The Licensee operates under the JACKPOT CITY trademark an online gaming site which can be found at “”. The Complainant's gaming site was conceptualised in early 1998 and officially launched in late 1998. The theme of the brand is one that would identify strongly with gambling on a worldwide basis.
Each month the “” gaming site receives about 250, 000 visitors and facilitates over 25, 000 software downloads. 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. Over USD50,000 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 advertisements, TV commercials and infomercials.
On June 2, 2009 the Complainant, through its legal counsel, sent a cease and desist letter to the Respondent informing the Respondent of the Complainant's extensive JACKPOT CITY trademark rights, alleging that the Respondent has no rights or legitimate interests in the disputed domain name and demanding that it be transferred to the Complainant. On June 10, 2009 a response was received from Kim Hansen indicating that she would not transfer the disputed domain name to the Complainant. On June 10, 2009 the Complainant's legal counsel responded again with a request to transfer the disputed domain name. On June 11, 2009 in a follow up e-mail communication to the Complainant's legal counsel, the Ms. Hansen again refused to transfer the disputed domain name.
The disputed domain name remains parked at a “www.god” website which displays numerous links including competitors of the Complainant. 5. Parties' Contentions A. Complainant
As a result of extensive use the JACKPOT CITY trademark is well-known in relation to the provision of online games of chance and casino-style gaming services. The words JACKPOT CITY serve as a unique and distinctive element, which element is a determinative and well-known designation of source for the Complainant's online casino and gaming related services.
The Complainant submits that the disputed domain name is confusingly similar to its registered trademark because it entirely appropriates its distinctive trademark JACKPOT CITY. The term “bonus” is considered non-distinctive and descriptive of the Complainant's industry.
The Complainant contends that the Respondent's use of the disputed domain name does not constitute fair use as the parking website through a number of sponsors was directing users to online games of chance, games of skill, casino-style gaming services and related services. Such games and related services are in direct competition to the games and related services offered by the Complainant through its “” gaming site.
According to the Complainant, 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. Also, the Respondent has no connection or affiliation with the Complainant or the Licensee, and has not received any license 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.
The Complainant considers that there is no evidence that the Respondent has been commonly known by the disputed domain name, and the Respondent has not acquired any trademark or service mark rights in and to the disputed domain name. In fact the Complainant's JACKPOT CITY trademark is so well-known in relation to casino and gaming services that the Respondent should have reasonably known of the Complainant's prior rights before registering the disputed domain name.
The Complainant considers it highly unlikely that the Respondent just happened to unintentionally select the Complainant's distinctive trademarks and inadvertently incorporate them into the disputed domain name. It is most likely that the Respondent was fully aware of the Complainant's JACKPOT CITY trademark 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 Complainant 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 October 2, 2008, which is approximately ten years after the Complainant's domain name registration (late 1998); nearly ten years after the Complainant first used the JACKPOT CITY mark in commerce (late 1998); and seven years after the Complainant had registered the service mark in several countries, including the United States and Australia. (June 2001);
iv. the Complainant has not acquiesced to the use of its trademark; nor has the Complainant tacitly acquiesced, through the passage of time, to the use of its trademark, but has instead diligently sought to enforce its trademark 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 Complainant's 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 Complainant's sponsorship, affiliation or endorsement of the Respondent's website; and
vii. 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 noncommercial or fair use without any intent to misleadingly divert consumers or tarnish the trademark or service mark at issue. B. Respondent
The Respondent responded on September 30, 2009 to the effect that the disputed domain name is not active but parked. The Respondent acknowledged the Complainant's rights in the trademark JACKPOT CITY but expressed opposition to the principle that trademarks have superior rights to domain name registrations. The Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided extensive evidence that it owns registered rights in the trademark JACKPOT CITY.
The disputed domain name consists of the Complainant's trademark in full followed by the descriptive term “bonus” and the suffix gTLD “.info”.
It has long been held that adding the generic domain suffix may be ignored when assessing identity and confusing similarity (see Gianfranco Ferre' S.p.A. v. Unasi Inc.,WIPO Case No. D2005-0622; Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd.,WIPO Case No. D2000-0802).
Moreover, the addition of a descriptive term to a trademark in the present circumstances does not serve as a distinguishing feature and does not necessary make the domain name distinctive (see Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493 and Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a Toshiba-C,WIPO Case No. D2004-1066). In this case, the addition of “bonus” does not obscure the dominance of the Complainant's trademark in the disputed domain name (see Neteller Plc. v. Prostoprom,WIPO Case No. D2006-0874 and Microgaming Software Systems Limited v. DomainsByP and BB1Webs,WIPO Case No. D2008-0870).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant's trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, other than a brief email communication indicating that the disputed domain name was not active but parked and expressing opposition to the principle that trademarks have superior rights to domain name registrations, the Respondent has not filed any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name.
The Respondent has chosen to use a domain name that contains the Complainant's JACKPOT CITY trademark in its entirety without authorisation by the Complainant and simply added the term “bonus”. There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Moreover, the Complainant has denied providing any authorisation at all.
The Respondent has parked the disputed domain name with God, Inc. where it features with numerous sponsor listings, a number of which relate to online games of chance and casinos. The games and related services offered are in direct competition to those offered by the Complainant. The act of redirecting Internet users to other websites unconnected to the trademark owner by using the reputation and goodwill of the Complainant's trademark through a domain name that incorporates a trademark, does not constitute bona fide offering of goods and services (see Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt,WIPO Case No. D2007-0819 and Lance Armstrong Foundation v. Chris Angeles,WIPO Case No. D2005-0888, Baudville, Inc. v. Henry Chan,WIPO Case No. D2004-0059 and Sanofi-aventis v. Milton R. Benjamin,WIPO Case No. D2005-0544). Clearly, no rights or legitimate interests derive from this type of use of another's trademark nor does it represent fair use of the disputed domain name.
Based on the above the Panel considers that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Respondent registered the disputed domain name ten years after the Complainant started using the JACKPOT CITY mark and seven years after it registered the mark. The Complainant has provided ample evidence of its promotion and advertising indicating it has a reputation in gaming services. The Respondent's selection of the disputed domain name incorporating the Complainant's trademark cannot be considered by the Panel other than deliberate. The combination of words in the trademark have no meaning in themselves and the Panel accepts that it is likely that at the time of registering the domain name the Respondent was aware of the Complainant's trademark particularly as the Respondent's addition of the word “bonus” reflects relevant connotations associated with the gaming industry. In the Panel's view the only reason the Respondent wanted to register the disputed domain name was to gain some sort of advantage in relation to the Complainant's reputation and goodwill in its trademark.
The Respondent has parked the disputed domain name with GoD, Inc. which provides parking services. Typically, such services involve generating a website that incorporates sponsored links and revenue is generated when an Internet user clicks on one of the links. The revenue is ordinarily split between the service provider and the domain name owner (see Credit Industriel et Commercial S.A. v. Demand Domains, Inc., WIPO Case No. D2009-1184 and Owens Corning v. NA,WIPO Case No. D2007-1143). In the latter case the panel stated that “by placing the Domain Name with a domain name parking service, the Respondent deliberately attracted, for commercial gain, Internet users to the webpage created by GoDaddy by trading a likelihood of confusion with the Complainant's mark”.
On the basis of the above and when considered together with the fact that the Respondent has no right or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith. 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.
Ross Wilson
Sole Panelist
Dated: November 3, 2009
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