WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Stanworth Development Limited v. Nathan Joseph, Mainstream Advertising Case No. D2009-1258 1. The Parties
The Complainant is Stanworth Development Limited of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillian Incorporated of South Africa.
The Respondent is Nathan Joseph, Mainstream Advertising of Woodland Hills, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names (the “Domain Names”) and are registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2009. On September 24, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Names. On September 25, 2009, Moniker Online Services, LLC 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 October 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on 28 October, 2009.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 2, 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 Stanworth Development Limited, an online entertainment company.
The Complainant owns a number of trade mark registrations consisting of or including the words “gaming club” in jurisdictions such as Australia, Canada, the European Union, the United Kingdom and the United States. The trade marks cover online gambling and entertainment services. The earliest of these trade marks was granted in 2003.
The Complainant owns a number of domain names, including 28 domain names which are comprised of the words “gaming club” and descriptive terms, such as and .
The Complainant uses its trade marks by licensing them to others. The trade mark GAMING CLUB is licensed to Carmen Media Group Limited, which operates an online gaming site at “”. This website became operational in January 1998, and now receives approximately 250,000 visitors and facilitates over 25,000 downloads per month. The Complainant spends more than USD 50,000 per month on advertising.
The two Domain Names were registered on July 27, 2005 and, at the time of the complaint, were used in connection with an active website providing information about casino and gaming services.
On June17 and July 13, 2009, the Complainant, through its legal counsel, dispatched “cease and desist” letters to the Respondent by email, fax and registered post. In these letters, the Complainant informed the Respondent of the Complainant's extensive use of the GAMING CLUB trade mark, and in light of the fact that the Respondent had no rights or legitimate interests in and to the Domain Names, requested that the Domain Names immediately be transferred to Complainant. 5. Parties' Contentions A. The Complainant's Contentions
The Complainant believes that the elements specified in paragraph 4(a) of the Policy have been satisfied. The Complainant's particular contentions can be summarized as follows:
(a) the main part of the Domain Names, i.e. “gamingclub”, is identical to the Complainant's GAMING CLUB trade mark;
(b) the addition of the generic words “pockers” and “poekrs” (misspellings of the word “poker”) to the Domain Names do not add distinctive matter so as to distinguish them from the Complainant's trade marks;
(c) by adopting Domain Names which are so similar to the Complainant's GAMING CLUB trade marks, Internet users and consumers are likely to be confused into believing that there is a connection or affiliation between the Complainant and Respondent, when in fact there is not;
(d) the Respondent is not an authorised dealer, distributor or licensee of the Complainant, and has no affiliation with the Complainant;
(e) to the best of the Complainant's knowledge, the Respondent does not hold any trade mark or service mark rights in the Domain Names, and there is no evidence that the Respondent has been commonly known by the Domain Names;
(f) the Respondent registered the Domain Names after the Complainant had established its rights in the GAMING CLUB trade marks and, given the notoriety of the trade mark, the Respondent must have reasonably been aware of the mark and of the Complainant's rights in it at the time of registering the Domain Names;
(g) there is no objective reason for the Respondent to have selected the Domain Names other than to create an association with the GAMING CLUB trade mark; and
(h) the Respondent failed to respond to the Complainant's efforts to resolve the matter informally. B. The Respondent's contentions
The Respondent did not file a Response and has not provided any evidence to counter the Complainant's contentions.
The fact that the Respondent did not submit a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true: Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is on the basis of a comparison between the disputed domain name and the trade mark, independently of the products for which the domain name is used, or other factors, such as marketing and use, which are usually relevant to trade mark infringement: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; AT&T Corp. v Amjad Kausar,WIPO Case No. D2003-0327.
The Domain Names incorporate the Complainant's distinctive trade mark GAMING CLUB in its entirety. The fact that the word “pockers” or “poekrs” (both common misspellings of the word “poker”) is added to the Complainant's trade mark does not eliminate the similarity between the trade mark held by the Complainant and the Domain Names. Previous decisions have held that a domain name that wholly incorporates the distinctive part of a complainant's registered mark in its entirety may be sufficient to establish confusing similarity, and is not distinguished by the addition of descriptive words (see, Violet Media Corp. v. Charon Communications Ltd., WIPO Case D2009-0097; Stanworth Development Ltd v. Dr. Ricardo Vasquez , Domain Name Services Organization, WIPO Case No. D2008-0943).
The Panel thus finds that the domain names and are confusingly similar to the trade marks in which the Complainant has rights, and considers that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant relies on the following points to make out a prima facie case that the Respondent lacks any rights or legitimate interests in respect of the Domain Name:
(a) The Domain Names were registered in 2005, two years after the Complainant obtained their first trade mark registration for the GAMING CLUB mark;
(b) To the best of the Complainant's knowledge, the Respondent does not hold any trade mark or service mark rights to the Domain Names, and there is no evidence that the Respondent has been commonly known by the Domain Names;
(c) The Complainant has not given a license or any other permission, express or implied, from to the Respondent to use the Complainant's trade marks;
(d) The Domain Names are not the only way by which the Respondent can describe its business, and the Respondent could have used any number of other words in its Domain Names; and
(e) The Respondent has made use of the Domain Names to point to a website providing information about casino and gaming services, and through this website gaming and entertainment products can be accessed which compete with those of the Complainant.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Respondent has failed to submit any evidence to demonstrate that it owns any trade or service marks corresponding to the Domain Names, nor is there any evidence that the Respondent has been commonly known by the Domain Names. Thus, the only basis available by which the Panel may assess the Respondent's rights (or lack thereof) in the Domain Names is the Respondent's use of the Domain Names.
The use of a domain name for the purpose of collecting referral fees from sponsored advertising has been consistently held in the appropriate circumstances not to be a legitimate offering of goods or services (see for example, PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162). Based on the evidence submitted by the Complainant and particularly given the fact that the website offers sponsored advertising links to products which compete with and/or relate to the Complainant's products, the Panel accepts that the Respondent's use of the Domain Names is not genuine. Furthermore, the Panel considers that the Respondent is making unfair use of the Domain Names for commercial gain, by diverting consumers from the Complainant and/or its licensees, or misleading customers into wrongly assuming an association between the Complainant and the Respondent.
The Panel is satisfied that the Complainant has made out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent, and accordingly the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel accepts that the Complainant's GAMING CLUB trade marks are fairly well-known in many jurisdictions. As such, the Panel considers that it is unlikely that the Respondent did not have any knowledge of the Complainant's GAMING CLUB trade marks at the time of registering the Domain Name.
It is difficult to foresee many circumstances where the registration and use of the Domain Names could be said to be bona fide when all the circumstances suggest that registration and use has occurred in the full knowledge of the Complainant's prior rights in the GAMING CLUB trade mark and with the intent to profit from the same.
Furthermore, it is unlikely that the Respondent would deliberately select misspelt words for inclusion in its Domain Names, unless it intended to trade on an association with an existing, well-known trade mark or domain name. In the circumstances, it is clear that the Respondent checked and saw that it resolved to a website associated with the Complainant. This is a clear indication of bad faith: see for example, Sanofi-aventis v. Krunal Chauhan,WIPO Case No. D2009-0326, and The Southern Company v. Texas International Property Associates,WIPO Case No. D2007-0773.
The Domain Names resolve to a website containing information on online gaming and entertainment. It is readily apparent that the Respondent trades on the value established by the Complainant's trade marks, either by attracting Internet users to the Respondent's own website, or by receiving compensation from the owners of other websites for delivering users to their sites. This constitutes bad faith under paragraph 4(a)(iii) of the Policy: Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587.
The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. The registration of a domain name using a widely known trade mark by a party with no connection to the owner of the trade mark, and with no authorization or legitimate purpose is a strong indication of bad faith. Furthermore, the Respondent has not responded to the Complainant's two letters, or to the Complaint, and has not denied the Complainant's contentions in any way. This is further evidence of bad faith (see, Do The Hustle, LLC v. Donald Wilson,WIPO Case No. D2000-0627).
The Panel is satisfied that the Respondent has registered and used the Domain Name in bad faith for the purposes 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 names, and be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: November 16, 2009
Full & Egal Universal Law Academy