The Complainant is Stanworth Development Limited of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is IHG, LLC of Wethersfield, Connecticut, United States of America, represented by Ishman Law Firm, P.C., United States of America. 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 February 7, 2011. On February 7, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. Later on February 7, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name is registered with it;
(b) the Respondent is listed as the registrant and providing the contact details;
(c) the language of the registration agreement is English; and
(d) the disputed domain was first registered on October 2, 2000.
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 February 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2011. The Response was filed with the Center on March 11, 2011.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 28, 2011. 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 registered owner of a number of trademarks which include, or incorporate, the words “the gaming club”. For the most part, they are in stylized form or include a prominent figurative element, such as a representation of a jester. The earliest registrations were filed in April or June 2001: Australian registration No. 880048 and US registration No. 2,739,225. There are also registrations filed in later years in South Africa, Canada and the European Community. The registrations cover services for, or related to, online entertainment and in particular casino-type gaming.
The US registrations in evidence are nearly all registered in the Supplemental Register. All US trademark registrations in evidence include a disclaimer of any exclusive rights to the word “gaming” or “gaming club” “apart from the mark as shown”.
The Complainant licenses its trademarks to Carmen Media Group Limited. (For ease of reference, the Panel will refer below only to the Complainant.)
According to the Complaint, the website using one or another of the Complainant’s registered trademarks first went “live” in January 1998. Different United States of America registrations claim different dates for the first use in commerce in the United States of America. Thus, United States of America registration No. 3173228, for THE GAMING CLUB and Jester device claimed a first use in commerce in December 1997; United States of America registration No. 3137370, for THE GAMING CLUB, which is registered in the Supplemental Register claimed a first use in commerce in November 2002 and United States of America registration No. 2739225, for a stylized version of THE GAMING CLUB, which is also registered in the Supplemental Register claimed a first use in commerce in December 2002.
The Complaint states that the “ website operated by its licensee attracts some 250,000 visitors per month and facilitates over 25,000 software downloads per month. In excess of USD 50,000 per month is spent in advertising and promotional materials.
It is common ground between the parties that the Respondent registered the disputed domain name on October 2, 2000. It does not appear to have resolved to an active website since that date. At the time of writing, the disputed domain name resolves to a generic parking site with various “pay per click” links. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the domain name, the Complainant must demonstrate each of the following:
(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 in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights in a mark and, if so, is the disputed domain name identical or confusingly similar to that mark?
The evidence submitted with the Complaint clearly establishes that the Complainant has registered trademark rights in Australia, the United States of America, the European Community, South Africa and Canada referred to above.
It would appear that the Complainant also has common law rights in “The Gaming Club” as a composite expression either alone or with figurative elements or “”. The extent of these latter rights is rather more difficult to assess given the state of the evidence. Taking the rights at the highest claimed by the Complainant, the considerations raised by the proven registered trademarks are equally applicable.
The Complainant contends that the words “gaming club” serve as a unique and distinctive element of its trademarks. The Complainant then points out that the word “casino” included in the disputed domain name is generic or descriptive and does not dispel the likelihood of confusion. In this connection, the Complainant notes that the learned panelist in Stanworth Development Ltd v Privacy PWIPO Case No. D2009-1219, found that the domain name was confusingly similar to the Complainant’s CTM for the stylized trademark THE GAMING CLUB. In any event, the Complainant contends, the disputed domain name so closely resembles the Complainant’s trademarks as to be confusingly similar.
While a subsequent Panel is not bound to follow an earlier Panel’s findings on a similar fact scenario, it is generally preferable to do so in the interests of a fair and predictable application of the Policy.1 The situation in Stanworth Development Ltd, supra, however, is different to the present case in at least three respects. First, no response was filed in the earlier case. Secondly, the disputed domain name in the earlier case was registered after the Complainant had acquired its registered trademarks. Thirdly, the word “casino” was the suffix in the earlier case rather than the first verbal element.
In the present case, the Respondent points to the very descriptive nature of the verbal element of the Complainant’s trademarks. The Respondent has provided evidence of many other users of GAMING CLUB in connection with gambling activities. This is reinforced by the disclaimers the Complainant has filed, or accepted, for its US registrations and the fact that most of its registrations in the United States of America are in the Supplemental Register. Registration on the USPTO Secondary Register reflects a recognition that the mark in question was not “inherently distinctive at the time of application for registration” and “had not yet acquired secondary meaning”: Oil Changer, Inc. v. Name Administration, Inc.,WIPO Case No. D2005-0530 citing 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19.43, at 19-83 (4th ed. 1998).
In such cases, the Respondent contends that the Complainant’s trademarks are weak and small differences between the trademark and the disputed domain name will be sufficient to eliminate a finding of confusing similarity: Tire Discounters Inc. v TireD, FA 679485 and Entrepreneur Media Inc. v Smith, 279 F 3d 1135 at 1147 (9th Cir. 2002).
The Australian, Canadian, CTM and South African registrations in evidence are not the subject of disclaimers or registered in a supplemental register. Nonetheless, similar limitations on the scope of registered trademarks may also apply. See e.g. Mid Sydney Pty Ltd v Australian Tourism Co Ltd, (1998) 42 IPR 561 (The Chifley Tower not infringed by Chifley); British Sugar plc v James Robertson & Sons Ltd, [1996] RPC 281.
In the end, it is unnecessary for the Panel to reach a formal conclusion on whether the disputed domain name is confusingly similar to the Complainant’s trademark rights in view of the second difference between the present case and Stanworth Development Ltd, supra, referred to above and the consequences of that fact under paragraph 4(a)(iii) of the Policy. Nor, indeed, is it necessary here for the Panel to reach a formal conclusion as to whether the Respondent may have rights of legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy. B. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy.
Satisfying this requirement requires the Complainant to establish bad faith both in the registration of the disputed domain name and in its subsequent use. It is not sufficient to show only use in bad faith (although use in bad faith may in appropriate cases support an inference that the registration was also in bad faith). See e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470 (see section 5.B.).
In the present case, it is common ground that the disputed domain name was registered well before the Complainant had applied to register any of its trademarks.
On the other hand, the disputed domain name was registered after the Complainant commenced public use of its website. The Respondent denies that it registered the disputed domain name with knowledge of the Complainant’s activities. He contends that he registered the disputed domain name for use in connection with online gaming because of its descriptive aptness.
The long period the disputed domain name has apparently remained dormant gives the Panel considerable pause in accepting this denial. However, after careful consideration, the Panel finds it is not inherently implausible having regard to the very descriptive nature of the expression “gaming club”.
The Panel finds that the Complainant’s evidence of extensive use and promotion of its trademarks, or at least its website is not sufficient in the present circumstances to compel an inference of registration with knowledge of the Complainant’s rights. The Complainant’s evidence is largely evidence about its present use. There is no evidence about how extensively the Complainant’s trademarks, or website, had been used by October 2000 when, it is accepted, the disputed domain name was registered. There is some evidence of advertising and promotional materials issued in August 2004. The claim that the Complainant’s website went live in January 1998 does not provide information about how many users there had been by October 2000. The very impressive data for visitors to the site now, and the extensive advertising and promotional expenditure do not cast light on what the situation was in October 2000. For example, there is some evidence that the Complainant’s website is growing very rapidly. The cease and desist letter sent by the Complainant to the Respondent in May 2010 claimed 200,000 visitors per month to its website. That amount had increased by 25% by the time the Complaint was filed, a mere 7 or so months later.
In these circumstances, the Panel finds that the Complainant has failed to establish on the record in this case that the disputed domain name was registered in bad faith. C. Reverse Domain Name Hijacking
The Respondent has sought a finding of reverse domain name hijacking under paragraph 15(e) of the Rules.
The Panel notes that the Complainant has previously succeeded under the Policy against a similar domain name in Stanworth Development Ltd v Privacy P,WIPO Case No. D2009-1219 . The Complainant has not succeeded in this case in view of different factual findings and arguments on the record in this case. In the circumstances, the Panel does not consider it appropriate to characterize the Complainant's conduct in bringing this Complaint as an abuse of the procedures under the Policy or using the Policy in bad faith. Accordingly, the Panel declines to make the finding sought by the Respondent. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Dated: April 11, 2011
1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.1.
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