The Complainant is Stanworth Development Limited of Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Corral Solutions of Nicosia, Cyprus. 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. On February 8, 2011, GoD, Inc. 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 February 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2011.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on March 22, 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 following facts, taken from the Complaint, remain uncontested:
The Complainant is the proprietor of a number of trademark registrations for the mark GAMING CLUB in various jurisdictions including the United States of America and European Union. The Complainant is also the proprietor of various domain name registrations consisting of or incorporating the words “Gaming Club”.
The Complainant uses the mark through a licensee, who operates an online gaming service under the domain name , which was launched in January 1997. According to the Complainant, the “www.” website has established itself as one of the most highly recognized online gaming brands currently available.
The website “www.” receives around 250.000 visitors and facilitates over 25.000 software downloads each month. There are many thousands of registered players and an amount in excess of USD 50.000 per month is spent on advertising, marketing and other promotional activities.
According to the WhoIs information the disputed domain name was first registered on March 30, 2004, which is approximately a year after the Complainant had filed for registrations of its trademark. According to the registrar’s verification, the disputed domain name was registered by the Respondent on May 3, 2009. 5. Parties’ Contentions A. Complainant
The Complainant argues that the contested domain name is confusingly similar to its earlier trademark in the following way:
As a result of the extensive use of the mark, the GAMING CLUB trademark is very well known in relation to the provision of on-line games. The non-generic part of the disputed domain name wholly includes the Complainant's GAMING CLUB trademark, which has been considered not to add distinctive matter so as to distinguish it from the Complainant's trademark. The combination of the Complainant's trademark with another term indicating the business for which the trademark is registered is confusingly similar use of the Complainant's trademark.
In this regard the Complainant refers to prior UDRP decisions: Yahooo! inc. v. Cupcake Patrol and John Zuccarini,WIPO Case No. D2000-0928; Microgaming Software Systems Limited v. Sting Marketing Inc., Sting Marketing,WIPO Case No. D2008-0869; Microgaming Software Systems Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-0013; Stanworth Development Limited v. Chad Creighton,WIPO Case No. D2009-0332; and Stanworth Development Limited v. Susana Gonzales, Smart Answer S.A.,WIPO Case No. D2009-0260.
In any event the disputed domain name is so similar to the Complainant's registered trademark, that there is a substantial likelihood that Internet users and consumers could be taken to believe that there is some affiliation, connection, sponsorship, approval or association between the Complainant and the Respondent.
The Complainant asserts that the Respondent has no rights or legitimate interests to the domain name as follows:
The disputed domain name points to a website providing information about casino and gaming services and through which competing goods and services can be accessed. The Respondent is neither an agent nor a licensee of the Complainant and therefore has no right to the use of the GAMING CLUB trademark, or trademarks confusingly similar to the trademark.
Furthermore, the Respondent has no connection or affiliation with the Complainant, and has not received any license or consent to use the Complainant's trademark. There is also no evidence that the Respondent has been known by the disputed domain name and the Respondent has not acquired any trademark rights in and to the disputed domain name.
As regards registration and use in bad faith (paragraph 4(a)(iii) of the Policy), the Complainant asserts the following:
Because of the long established reputation of the Complainant's GAMING CLUB trademark, it is highly unlikely that the Respondent just happened to select the Complainant's trademark and incorporate it into its selected domain name. Therefore, it is not possible to conceive any legitimate use of the domain name.
The Respondent is deriving economic benefit from using the Complainant's trademark in the domain name either by attracting users to the Respondent's website, where goods and services are offered, or by receiving compensation from the owners of other websites for delivering users to those sites.
Taking into account the Complainant's various trademarks as well as its domain name registrations, there is little doubt that the Respondent registered the disputed domain name with the intention of diverting Internet users to the Respondent's website and to mislead Internet users into believing that the Respondent and Complainant are in some way associated.
The fact that the Respondent did not respond to the Complainant's cease-and-desist letter should be interpreted as an adoption by silence of the material allegations made by the Complainant.
According to the decision in Deutsche Post AG v. MailMij LLC, Mr. Colby Fisher,WIPO Case No. D2003-0128, when the respondent selected the domain name in question, the respondent was well aware of the fame of the complainant's trademark and intended to benefit from the "coincidence" that his chosen name was the same as the complainant's trademark. The Complainant submits that the decision should be applied to this case as well.
Furthermore, the Complainant refers to the decision in case Gerd Petrik v. Johnny Carpela,WIPO Case No. D2007-1043 and asserts that because the Respondent's registration and use of the disputed domain name cannot constitute a bona fide offering of goods and services, it subsequently also constitutes bad faith registration and use for the following reasons:
There is no relationship between the Complainant and the Respondent, there is no disclaimer on the Respondent's website, the registration of the domain name occurred after the Complainant registered its domain name, started using the GAMING CLUB trademark and filed for trademark registration of the trademark, the Complaint has not acquiesced to the use of the mark, the disputed domain name is not the only name the Respondent can use to describe its business, the Respondent has not responded to the Complainant's cease-and-desist letters, the disputed domain name points to a website promoting the goods and services of the Complainant's competitors, and the goods and services promoted on the Respondent's website are those of the Complainant's competitors and are not approved by the Complainant. B. Respondent
The Respondent did not submit a timely reply to the Complainant’s contentions. However, on March 24, 2011, the Respondent sent to the Center an e-mail stating that the website has been taken down and that they have contacted the Complainant's representatives and offered to sell the disputed domain name. The Respondent concluded by repeating its willingness to sell the domain name to the Complainant. However no settlement occurred between the parties and the Panel will thus proceed to rendering the a decision. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has supported its claim of trademark rights to the mark GAMING CLUB by filing copies of registration certificates of its Community Trademark (CTM) registration and a registration in the United States of America.
Both of these registrations are for the figurative trademark THE GAMING CLUB. The United States registration is on the supplemental register, where non-distinctive trademarks can be registered and it includes a disclaimer for the word “gaming”.
The Panel cannot accept the Complainant's assertion that it owns trademark rights to the word mark GAMING CLUB, which is a generic term for a gaming club. However, under paragraph 4(a)(i) of the Policy, it is not necessary that the Complainant owns a corresponding word mark; it is sufficient that the domain name is confusingly similar to the Complainant's trademark.
The figurative element included in the Complainant's trademark registrations is weak and the overall impression of the marks is that they mainly consist of the words “the gaming club”. In addition to the words “gaming club”, the disputed domain name includes the words “online” and “casino”, both of which are descriptive of casino gaming services provided via the Internet. It is therefore evident that the disputed domain name incorporates the main part of the Complainant's trademark and combines it with non-distinctive terms.
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)
On these grounds the Panel is satisfied that the Complainant has rights in a trademark to which the disputed domain name is confusingly similar. B. Rights or Legitimate Interests
As explained above, the term gaming club is a generic term for a club whose purpose is to offer gaming services. It is therefore entirely possible that a person wishing to offer online casino gaming services for club members might call the service "online casino gaming club" denoting the very nature of the services.
However, the Complainant has argued strongly to the contrary and submitted evidence to this effect. The Respondent has failed to respond to the Complaint and to pre-Complaint correspondence by the Complainant.
The Panel considers that the Complainant has made a prima facie case of the Respondent's lack of rights or legitimate interests to the domain name and this has created a burden of production of proof to the Respondent to show rights or legitimate interests to the disputed domain name.
While the Panel can imagine circumstances where the use and/or registration of the domain name could be legitimate, the Respondent has decided not to present such reasons to the Panel. Accordingly, the Panel finds, also noting the Panel’s finding below, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
From the outset it should be noted that the disputed domain name consists of ordinary English words. This means that the finding of a bad faith registration and use requires convincing evidence.
The Complainant has argued its case on multiple basis and the Respondent has chosen not to contradict those submissions. The arguments and evidence show that the Complainant's mark has been extensively used for more than 10 years before the disputed domain name was registered by the Respondent (May 3, 2009 as confirmed by the registrar). It is therefore very likely that the Respondent was aware of the Complainant's mark when registering the domain name.
The Respondent has failed to respond to the Complainant's pre-Complaint correspondence and it has failed to address the issues raised by the Complainant in these administrative proceedings.
The services offered under the disputed domain name are competing with the Complainant's services. Upon receiving the Complaint, the Panel visited the website of the contested domain name and found that it displayed prominently exactly the same figurative trademark, which the Complainant has registered. Shortly later, the Respondent took down the website and indicated that it is willing to sell the domain name to the Complainant, but still did not rebut the arguments and allegations made by the Complainant.
Bearing in mind the unauthorized use of the Complainant's figurative trademark, the fact that the Respondent offered competing services under the domain name, and the fact that the Respondent offered to sell the domain name to the Complainant, this Panel finds that the Complainant, also in the absence of any response from the Respondent, has established the Respondent's bad faith.
The lack of a proper response means that the Complainant is authorized to succeed in its argument. The Panel therefore finds that the Respondent has registered and is using the domain name 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.
Tuukka Airaksinen
Sole Panelist
Dated: April 4, 2011
Full & Egal Universal Law Academy