WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Stanworth Development Limited v. None, Lynda Fisher Case No. D2009-1593 1. The Parties
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.
Respondent is None, Lynda Fisher of Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2009. On November 26, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 30, 2009, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant amended the Complaint on December 8, 2009. The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on December 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2009. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on January 4, 2010.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on January 15, 2010. 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
Complainant alleges to operate an online gaming site through its authorized licensee, Carmen Media Group. The website is found at “” and offers the services under the RIVER BELLE trademark. Pursuant to the terms of the license agreement between Complainant and Carmen Media Group, all benefits arising out of the use of the trademarks by Carmen Media Group inures to the benefit of Complainant. The license agreement further contains quality control provisions regulating how Carmen Media Group may use the trademarks.
Complainant's gaming site at “” was conceptualized in August 1997 and officially launched in December 1997. The theme of the brand is based both visually and thematically on a riverboat casino. The “” gaming site receives approximately 250,000 (two hundred and fifty thousand) visitors and facilitates over 25,000 (twenty five thousand) 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 50,000.00 (fifty thousand United States of America dollars) per month is spent on various advertising, marketing and other promotional activities.
Complainant owns numerous current trademark registrations for the RIVER BELLE trademark including, but not limited to, the following:
(1) Canadian Registration No. TMA637,431 for RIVER BELLE ONLINE CASINO, registered April 14, 2005;
(2) United States of America (“USA”) Registration No. 2843472 for THE RIVER BELLE ONLINE CASINO EST. 1997 and Design, registered May 18, 2004, first used January 1998;
(3) Community Trademark Registration No. 003937026 for RIVER BELLE registered September 21, 2005; and
(4) Australian Registration No. 987649 for RIVER BELLE ONLINE CASINO, registered September 20, 2004.
The domain name was created on August 11, 2006.
Complainant claims ownership of the domain name , which was registered on August 28, 1997. However, the Panel notes that Domain Escrow Services Limited is the listed domain name registrant. 5. Parties' Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges the following.
Complainant owns numerous trademark registrations in a number of countries for the RIVER BELLE trademark.
The disputed domain name wholly incorporates Complainant's RIVER BELLE trademark.
The inclusion of the generic term “sportsbook” does not add distinctive matter so as to distinguish it from Complainant's trademark.
The disputed domain name is so similar to Complainant's registered RIVER BELLE trademark that there is a substantial likelihood that Internet users and consumers will be confused into falsely believing that there is some affiliation, connection, sponsorship, approval or association between Complainant and Respondent. Therefore, Complainant contends that the disputed domain name is confusingly similar to Complainant's trademarks.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
On September 15, 2009, Complainant, through its legal counsel, sent a letter to Respondent demanding that the disputed domain name be immediately transferred to Complainant. No response was received from Respondent and a follow up letter was sent to Respondent on October 6, 2009. On October 6, 2009, Respondent stated that it was not infringing Complainant's rights and alleged that it had spent USD 10,000.00 on developing the website associated with the domain name. Respondent did not offer any evidence in support thereof. On October 20, 2009, Complainant offered Respondent USD 200.00 for the disputed domain name, which Respondent rejected on October 26, 2009. Respondent claimed that the goods and services associated with the disputed domain name are “completely different” than those of Complainant.
As of the date of this Complaint, the disputed domain name pointed to a website providing online games of chance and related services. Respondent's games of chance and related services are in direct competition to the goods and related services offered by Complainant through its “” gaming site. Complainant submits that this does not amount to a bona fide offering of goods and services. The fact that Respondent has associated the disputed domain name with a website relating to games of chance and related services is an indication that Respondent was aware of Complainant's RIVER BELLE trademark at the time of registration. Respondent seeks to benefit from the considerable goodwill and reputation which vests in Complainant's RIVER BELLE trademark.
Complainant is the exclusive proprietor of the RIVER BELLE mark in relation to gaming and casino services. Respondent is neither an agent nor a licensee of Complainant. In fact, Respondent has no connection or affiliation with Complainant or its licensee and has not received any license or consent., express or implied, to use Complainant's RIVER BELLE mark(s), in a domain name or in any manner. Complainant is unaware of any legitimate interest Respondent could have in the words “river belle.”
Thus, Respondent has no legitimate interest in the disputed domain name and has made no good faith or fair use of the disputed domain name.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that: Complainant's “” gaming site has been in operation since at least late 1997. It is, therefore, highly unlikely that Respondent unintentionally selected Complainant's distinctive RIVER BELLE trademark and inadvertently incorporated it into its selected domain name which was registered on August 11, 2006.
Respondent is trading on the value established by Complainant in its marks to attract users when entering the disputed domain which includes Complainant's trademark. Respondent is deriving economic benefit from this practice by attracting users to Respondent's website where competing goods and services are offered. This constitutes bad faith registration and use as defined by 4(b)(iv) of the Policy.
Further, Respondent registered the disputed domain name with the intention of diverting Internet users to Respondent's website and to mislead Internet users into believing that Respondent is in some way associated with Complainant and, thus, disrupting the business of Complainant.
The registration of the disputed domain name occurred nearly nine years subsequent to Complainant commencing operation of its “” gaming site and subsequent to the success of Complainant's RIVER BELLE goods and services.
Respondent's registration and use of the disputed domain name cannot be a bona fide offering of goods and services and simultaneously constitute bad faith registration and use of the disputed domain name for the following reasons:
- No relationship exists between Complainant and Respondent. Respondent is not a licensee or affiliate of Complainant's trademarked goods;
- There is no prominently displayed disclaimer on Respondent's website permitting Internet users to know the precise relationship, if any, between Respondent and Complainant;
- Respondent registered the disputed domain name on August 11, 2006, which is nearly 9 years after Complainant's registration of the domain name (August 28, 1997); approximately 9 years after Complainant first used the RIVER BELLE CASINO mark in commerce (December 1997); and 5 years after Complainant first filed service mark applications in several countries, including the USA and Australia. (June 2001);
- Complainant has not acquiesced to the use of its trademark; nor has Complainant tacitly acquiesced' through the passage of time' to the use of its trade mark, but has instead diligently sought to enforce its trademark rights against Respondent;
- The disputed domain name is not the only name which Respondent can use to describe its business. Respondent could have used any number of other domain names to describe its business;
- Associating the disputed domain name with a website promoting the goods and services in competition to Complainant, further confirms that the registration and use of the disputed domain name is intentional and attempts to attract customers by creating confusion with Complainant's trademarks as to the source and endorsement of Respondent's website; and
- The goods and services promoted on Respondent's website are in direct competition with those provided by Complainant and in no way is approved by Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. (Policy, paragraph 4(a).)
Because Respondent is in default, the Panel may draw negative inferences from Respondent's default (Rules, paragraph 14(b)). However, the Rules also require that Complainant support its assertions with actual evidence in order to succeed in a UDRP proceeding. (Rules, paragraph 3). A. Identical or Confusingly Similar
Complainant has used the RIVER BELLE trademark in connection with its online casino and gambling services since 1997 and is the owner of numerous trademark registrations some of which are noted above. Given the approximate 12 years of prior use and the existence of the aforementioned trademark registrations for the RIVER BELLE and RIVER BELLE ONLINE CASINO marks, the Panel finds that Complainant has trademark rights in the RIVER BELLE trademark.
The Panel also finds that the disputed domain name is nearly identical to Complainant's RIVER BELLE trademark because it incorporates Complainant's entire trademark and differs from Complainant's registered RIVER BELLE mark only in that it compounds Complainant's trademark into one word and adds the generic words “sports” and “book”. It is well-settled that in appropriate circumstances the mere addition of a generic or descriptive term is not sufficient to avoid confusion. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (January 6, 2004). (The fact that the word “autoparts” is added to complainant's trademark does not eliminate the identity, or at least the similarity, between Complainant's trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name). See also, Bayer Aktiengesellschaft v. Dangos & Partners,WIPO Case No. D2002-1115 (February 3, 2003) (addition of generic words “healthcare” to form domain name was deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037 (March 9, 2005) (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (October 28, 2003) (finding domains such as , , , and confusingly similar to complainant's PEPSI mark; stating that “[t]hat the mere addition of common terms such as ‘sports,', ‘basketball' or ‘soccer' to the PEPSI mark is of no import”).
Therefore, this Panel finds that the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights in line with violation of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
With respect to 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The website at the time of filing was an online sports betting and casino gambling site which can be said to be in direct competition with Complainant. This is not a legitimate use within the meaning of the Policy. Moreover, the disputed domain name as of the date of this decision still resolves to a page that displays Complainant's RIVER BELLE trademark prominently and provides sports betting and casino gambling services in direct competition to Complainant.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name. Further, Complainant has never licensed nor otherwise permitted Respondent to use its RIVER BELLE trademark or to apply for any domain name incorporating the mark. There is no relationship between Complainant and Respondent.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In fact, persons visiting Respondent's website may mistakenly believe that the site is either endorsed affiliated or sponsored by Complainant. Moreover, Respondent is making commercial gain out of Complainant's trademark by using it to attract visitors to his website and deriving revenue from the visitors' sports betting and casino gambling.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. The Panel finds that the aforementioned establishes a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Moreover, Respondent has not rebutted such a prima facie showing.
The Panel accordingly finds for Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
Complainant's allegations of bad faith are not contested. It is improbable that Respondent was unaware of Complainant's trademark rights when it registered the disputed domain name on August 11, 2006, nearly 9 years after Complainant began using its RIVER BELLE mark.
The Panel also finds that Respondent's use of the disputed domain name in conjunction with a website that offers online sports gambling services and online casino services that are in direct competition with Complainant's online casino services on its website at “” is evidence of bad faith use and registration. In light of present record, the Panel accepts the Complainant's uncontroverted claim of ownership of the “”. As such Respondent's conduct is covered by Policy, paragraph 4(b)(iv): “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In light of the circumstances, the Panel accepts Complainant's uncontradicted assertion that Respondent intentionally attempted (for commercial gain) to attract Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of the products or services on Respondent's website.
For the above reasons, the Panel finds 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 Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: January 29, 2010
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