WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Stanworth Development Limited v. Xander Jeduyu, Algebralive Case No. D2009-1259 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 Gilfillan Incorporated, of South Africa.
The Respondent is Xander Jeduyu, Algebralive of Praesent Avenue, Belgium. 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 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent's default on October 30, 2009.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 5, 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 and RIVER BELLE in jurisdictions such as Australia, Canada, the European Union, the United Kingdom and the United States. The trade marks cover online gaming and entertainment services.
The Complainant is the proprietor of a number of domain names. Many of the Complainant's domain names include the words “gaming club” and descriptive terms, such as and . Likewise, a number of the Complainant's domain names include the words “river belle” and descriptive terms, such as , and .
The Complainant uses its trade marks by licensing them to others. The licensee of the trade marks GAMING CLUB and RIVER BELLE is Carmen Media Group Limited, which operates online gaming sites at “” and “”.
The website “” became operational in December 1997 and now receives approximately 250,000 visitors and facilitates over 25,000 downloads per month. The website “” was launched in January 1998, and experiences similar rates of Internet traffic and downloads. The Complainant spends more than USD 100,000 per month on advertising for the two websites. As a result of extensive marketing and advertising by the Complainant, the GAMING CLUB and RIVER BELLE marks are well-known in the online gaming and entertainment industry.
The two Domain Names and were registered on December 21, 2005 and January 5, 2006 respectively and, at the time the Complaint was filed, pointed to an active website providing information about casino and gaming services.
On June 11 and 17, 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 and RIVER BELLE trade marks, 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 the Complainant. 5. Parties' Contentions A. The Complainant's Contentions
The Complainant's particular contentions can be summarized as follows:
(a) the main parts of the two Domain Names, i.e. “gamingclub” and “riverbelle”, are identical to the Complainant's GAMING CLUB and RIVER BELLE trade marks;
(b) the addition of the generic words “pocker” and “porker” (misspellings of the word “poker”) to the Domain Names do not add distinctive matter so as to distinguish them from the Complainant's marks;
(c) the fact that the Respondent has used the Domain Names to point to a website providing information on and access to gaming and casino services and goods indicates that the Respondent is aware of the Complainant's RIVER BELLE and GAMING CLUB marks, and does not amount to a genuine offering of goods and services;
(d) by adopting Domain Names which are so similar to the Complainant's GAMING CLUB and RIVER BELLE 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;
(e) the Respondent is not an authorised dealer, distributor or licensee of the Complainant, and has no affiliation with the Complainant;
(f) 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;
(g) the Respondent registered the Domain Names after the Complainant had registered its rights in the GAMING CLUB and RIVER BELLE marks and after the websites “” and “” became operational, and given the notoriety of the trade marks and the fact that the Respondent has chosen to register Domain Names which incorporate two different marks belonging to the Respondent, it is clear that the Respondent was aware of the marks and of the Complainant's rights in them at the time of registering the Domain Names;
(h) there is no objective reason for the Respondent to have selected the Domain Names other than to create an association with the GAMING CLUB and RIVER BELLE marks; and
(i) the Respondent has 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.
Paragraph 14(b) of the Rules provides that where a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. Accordingly, the Panel may draw inferences from the Respondent's failure to submit a Response in accordance with paragraph 5(a) of the Rules as it considers appropriate. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trade mark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trade mark infringement: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-l698; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327.
The Domain Names incorporate two of the Complainant's marks, GAMING CLUB and RIVER BELLE in their entireties. The fact that the word “pocker” or “porker” (both misspellings of the word “poker”) is added to the Complainant's mark does not, in the Panel's view, eliminate the similarity between the marks held by the Complainant and the respective Domain Names. In this context, “pocker” and/or “porker” are descriptive components of the Domain Names. Previous decisions have held that a domain name that wholly incorporates the distinctive part of a complainant's registered mark may be sufficient to establish confusing similarity, and is not distinguished by the addition of descriptive words (see Sanofi-Aventis v. Ashima Kapoor,WIPO Case No. D2005-0770 and 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 proved the elements 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 Names:
(a) The Domain Names were registered at the end of 2005 and the beginning of 2006, some nine years after the Complainant had commenced operation of its gaming sites and had made commercial use of the GAMING CLUB and RIVER BELLE marks;
(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, 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, and are in no way approved by 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 subject domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the face of the Complainant's contention that it has not authorised the Respondent's use of its mark, and the absence of any evidence submitted by the Respondent to demonstrate:
(a) that the Respondent owns any trade or service marks corresponding to the Domain Name; or
(b) that the Respondent has been commonly known by the Domain Names,
the Panel will assess the Respondent's rights or legitimate interests in the Domain Names (or lack thereof) based on the Respondent's use of the Domain Names in accordance with the available record.
The use of a domain name containing a complainant's trade mark for the purpose of collecting referral fees from sponsored advertising links has been consistently held 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 bona fide. 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 which the Respondent has not rebutted, and accordingly the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Complainant's GAMING CLUB and RIVER BELLE trade marks are widely known across many jurisdictions. As such, the Panel considers that it is unlikely that the Respondent did not have knowledge of the Complainant's GAMING CLUB and RIVER BELLE trade marks at the time of registering the Domain Names.
This conclusion is further supported by the fact that the two Domain Names in question comprise two different trade marks, which are both owned by the Complainant. The Panel therefore considers that the Respondent registered and used the Domain Names in full knowledge of the Complainant's prior rights in the GAMING CLUB and RIVER BELLE trade marks.
It is unlikely that the Respondent would deliberately select misspelt words for inclusion in its Domain Names, unless it intended to take advantage of an association with an existing, widely known trade mark or domain name. In the circumstances, it is clear that the Respondent checked and and saw that both domain names resolve to websites 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 point to a website containing information on online gaming and entertainment. Considering this fact, together with the above circumstances, it is readily apparent that the Respondent trades firstly on common misspellings by Internet users, and secondly on the likelihood that Internet users will assume that there is some connection between the Respondent and the Complainant, and will derive commercial advantage from that assumption either by attracting users to the Respondent's own website, or by receiving compensation from the owners of other websites for delivering users to their sites: see Yahoo! Inc. and GeoCities v. DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587.
The Panel is satisfied that the Respondent has registered and used the Domain Names 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
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