Complainant is Seminole Tribe of Florida of Hollywood, Florida, United States of America, represented by Miriam Richter, Esq., United States of America.
Respondent is Frank Dubrocq of Sarasota, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (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 September 9, 2011. On September 12, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On September 12, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 4, 2011. The Center received email communication on October 4, 2011 from Respondent indicating his intentions with respect to the Disputed Domain Name, to which the Complainant replied via email on October 12, 2011.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 17, 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
Complainant states that it is a federally recognized Indian tribe that has used the trademark SEMINOLE CASINO in the United States in connection with casinos since at least as early as 1980 and that the SEMINOLE CASINO branded casinos “have gained recognition and stature around the world as the archetypical Native American gaming facilities, with the SEMINOLE CASINO® facility in Hollywood Florida being the first Native American casino in the United States.” Complainant further states that its SEMINOLE CASINO branded casinos have “gained international fame through its association with and subsequent purchase of Hard Rock International, Inc. and the operation of SEMINOLE CASINOS® in connection with HARD ROCK® Cafes and Resorts.”
The Disputed Domain Name was created on March 7, 2011.
Complainant indicates that the Disputed Domain Name is being used in connection with a “parked” website “for the purpose of generating click-through revenue and sales commissions.” Although Complainant did not provide screenshots of such website, the Panel independently visited the website at “www.” and observed that it is indeed a monetized parking page with links including those labeled “50%-70% Off Vegas Hotels”, “IP Biloxi a luxury hotel”, “Las Vegas Football Picks” and “Hard Rock Live FL Tickets”.1 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- Complainant “has used the trademark SEMINOLE CASINO® in the United States in connection with casinos since at least as early as 1980” and is the owner of United States trademark registration. No. 3,501,804, a design mark that includes the words SEMINOLE CASINO (first used in commerce on January 1, 1980; registered on September 16, 2008) for use in connection with casinos. The Disputed Domain Name is confusingly similar to the SEMINOLE CASINO trademark because “except for the presence of the generic terms ‘online’ and ‘gambling’”, the Disputed Domain Name is identical to the SEMINOLE CASINO trademark.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has not established goodwill in the subject Domain Name and is not identified or commonly known by the name SEMINOLE CASINO”; “Respondent is not making a legitimate, non-commercial or fair use of” the Disputed Domain Name; and “Respondent's use of the Domain Name is apparently to pass traffic through to other sites for the purpose of generating click-through revenue and sales commissions.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent's use of the Domain Name is apparently a passive holding with the generation of incidental revenue from advertising referrals”; “it is most likely that Respondent was aware of the Complainant and its reputation when Respondent registered the Domain Name and is using the Domain Name in bad faith”; and “Respondent's sole use of the Domain Name has been to intentionally attract, for purposes of commercial gain, Internet users to Respondent's ‘click-through’ website by creating a likelihood of confusion with [C]omplainant's trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the websites linked thereto.” B. Respondent
Respondent did not reply to Complainant’s contentions. However, in an e-mail to the Center on October 4, 2011, Respondent stated, in full: “I don't have any intention to use the domain name, if they are interested in getting back, all they have to do is send me a release form and I will signed .” [sic] On October 5, 2011, the Center asked Complainant whether it “wish[ed] to consider requesting a suspension of the proceedings to explore a possible settlement between the parties.” However, on October 12, 2011, Complainant informed the Center as follows: “After corresponding with the [Respondent], the Complainant does not wish to request a suspension.” 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). A. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant (i.e., U.S. Reg. No. 3,501,804) it is apparent that Complainant has rights in and to a design mark that contains the text “seminole casino”.
As to whether the Disputed Domain Name is identical or confusingly similar to the SEMINOLE CASINO trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “seminolecasinoonlinegambling”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Although Complainant’s U.S. Reg. No. 3,501,804 is for a design, the registration contains the text “seminole casino”. “[A]s figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark.” WIPO Overview 2.0, paragraph 1.11. As a result, it is appropriate to compare the Disputed Domain Name to the text “Seminole casino” for purposes of confusing similarity under the Policy.
The addition of certain words, as here (that is, “gambling” and “online”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the […] trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill,WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”))).
Here, because the word “gambling” is associated with the SEMINOLE CASINO trademark, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou,WIPO Case No. D2011-1017.
Further, as this Panel has previously found inclusion of the word “online” in the Disputed Domain Name does not prevent a finding of confusing similarity because that word does “nothing to detract from” an association with a complainant’s trademark. Hoffmann-La Roche Inc. v. UrProxy Domains,WIPO Case No. D2007-0456.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has not established goodwill in the subject Domain Name and is not identified or commonly known by the name SEMINOLE CASINO”; “Respondent is not making a legitimate, non-commercial or fair use of” the Disputed Domain Name; and “Respondent's use of the Domain Name is apparently to pass traffic through to other sites for the purpose of generating click-through revenue and sales commissions.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), given that the website used by Respondent in connection with the Disputed Domain Name contains links to various services that are competitive with the services offered by Complainant under the SEMINOLE CASINO trademark.
Numerous decisions under the Policy have found bad faith under similar circumstances. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850, in which this Panel previously wrote:
“Paid link farm services,” sometimes known as “monetized parking pages,” have become an increasingly popular way for domain name registrants to profit from their activity with little effort. In some cases, particularly where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy. However, where, as here, the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy. See Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan,WIPO Case No. D2004-0430 (“Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links for businesses in the same field as that of the Complainant”).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: October 31, 2011
1 “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name…” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5.
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