The Complainant is Swiss Casinos Brands AG of Rapperswil, Switzerland, represented by Wenger &Vieli, Switzerland.
The Respondent is Angels Finance Swiss SA, Nicola Auciello, of Geneva, Switzerland, represented per se. 2. The Domain Names and Registrar
The disputed domain names , , , , are all registered with M, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2011. On September 26, 2011, the Center transmitted by email to M, Inc. a request for registrar verification in connection with the disputed domain names. On September 28, 2011, M, 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 September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. The Response was filed with the Center on October 19, 2011.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 2, 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 Swiss Casino Brands AG, a joint stock company whose seat is in Rapperswil, Switzerland, and which is construed and organized under the laws of Switzerland.
The Complainant was incorporated on October 15, 1997.
The Complainant’s activities are mainly focused on the setting-up and operation of casinos. The Complainant’s activities also imply the organization on a regular basis of large events to promote its activities.
The Complainant owns numerous combined trademarks whose verbal element consists of the words “swiss” and “casinos”, such as:
- Swiss trademark n° 551086 SWISS CASINOS, that was registered on October 31, 2006 with a priority date as of March 2, 2006 in classes 35, 36, 37, 41, 42 and 45;
- Swiss trademark n° 569377 SWISS CASINOS, that was registered on April 1, 2008 with a priority date as of March 12, 2008 in classes 35, 36, 37, 41, 42, and 45;
- International trademark n° 963920 SWISS CASINOS, that was registered on April 9, 2008 in classes 35, 36, 37, 41, 42 and 45;
- Swiss trademark n° P-418930 SWISS CASINOS, that was registered on November 7, 1995 with a priority date as of March 31, 1995 in class 41;
- International trademark n° 645160 SWISS CASINOS, that was registered on September 27, 1995 in class 41.
According to the Whois database, Respondent is Angels Finance Swiss SA, which registered the following domain names:
- on October 11, 2007;
- on September 2, 2010;
- on September 2, 2010;
- on December 22, 2010;
- on February 23, 2011.
On April 20, 2010, the Complainant sent to the Respondent a cease-and-desist letter both in English and in German, requesting it to transfer the disputed domain name to the Complainant before May 14, 2010.
As the letter could not be delivered to the Respondent by post, the Complainant sent an email to the Respondent. The Respondent, in an email dated April 28, 2010, transmitted its postal address to the Complainant and requested the letter and its enclosures to be delivered in hardcopy, which the Complainant did.
In an email of May 10, 2010, the Respondent refused to transfer the domain name, unless the Complainant would agree to some payment as compensation. Following an exchange of emails between the parties, the Complainant then made an offer of CHF 2,000 to the Respondent in order to compensate for the transfer of the disputed domain name, by letter dated February 21, 2011. The Respondent refused the offer in an email of April 15, 2011. 5. Parties’ Contentions A. Complainant
First, the Complainant contends that it is the holder of numerous trademarks and domain names. It further asserts that the location of the trademarks, their dates of registration, the good and services provided are all irrelevant for the purpose of the UDRP. As a result, the Complainant argues that the disputed domain names are identical or confusingly similar to its trademarks SWISS CASINOS. The only difference remaining is a hyphen, an element totally irrelevant to appraise the likelihood of confusion. The Complainant also adds that the word “casini” is a supposedly direct translation into Italian of the plural “casinos”. According to the Complainant, it is obvious that in Switzerland the word “casini” would be understood as the plural of casino.
Secondly, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain names. According to the Complainant, the Respondent has never been authorized nor licensed to use the trademark or to register any of the disputed domain names. In addition to that, the Respondent uses the disputed domain names, which all redirect to a unique website, to market illegal pharmaceuticals, such as “penis enlargement preparations”. The Complainant further adds that the Respondent is neither known for using any of the disputed domain names nor is the Respondent making a noncommercial or fair use of any of them. The Complainant insists that it is the opposite, as the Respondent is trying to attract Internet users by misleading them.
Finally, the Complainant highlights the Respondent’s bad faith. The Respondent has systematically registered the disputed domain names, simply adding a hyphen between the word “swiss” and the word “casinos”. The Complainant asserts that the Respondent’s bad faith is demonstrated by the fact that the Respondent is not a registered legal entity, as well as by the fact that the disputed domain names promote “penis enlargement pills” in violation of Swiss laws. Considering the reputation of Complainant’s trademarks, the Respondent, being located in Geneva, should have had notice of the Complainant’s activities, as the earlier registration of one of the disputed domain names took place on October 11, 2007, and that the others disputed domain names were all registered after the Complainant had contacted the Respondent. Finally, the Respondent had asked for a compensation clearly exceeding the registration costs and threatened the Complainant to sell the disputed domain names to a third party in China or India, which is another evidence of bad faith.
For all of the above mentioned reasons, the Complainant requests the disputed domain names to be transferred in its favor. B. Respondent
In its reply, the Respondent largely blames the Complainant for its attitude and for having been harassed to transfer the disputed domain names. The Respondent asserts that the word “casino” refers to its Italian meaning, i.e. a whorehouse, and not “casino”, which would solely refer to a gaming house. Based upon this distinction, the Respondent argues that it would have rights and legitimate interests in the disputed domain names and would neither have registered nor would be using them in bad faith. 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
While the Complaint has been submitted in English, the Respondent answered in French.
Panels agree that the overall circumstances surrounding the case have to be taken into account in order to determine if the proceedings are to be held in a language other than the one of the Registration Agreement. As pointed out: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceedings. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. ”(Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In the present case, Respondent’s email of April 15, 2011 to the Complainant was written in English. Moreover, the language of registration of the disputed domain names is English. Therefore, it leaves no doubt in the Panel’s opinion that the Respondent may at least understand English. Consequently, the Panel decides that the proceedings shall be held in English, but that it will nevertheless take into consideration the Respondent’s reply, although entirely written in French, all the more than the reply bears no decisive influence upon the decision taken by the Panel. B. Substantive elements of the Policy
Paragraph 15(a) of the Rules instructs this Panel to “[…] 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”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) The disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. i. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be holder of several trademarks consisting of the verbal elements “Swiss” and “Casinos”. The Panel rules that, while the distinctiveness of the trademarks can be disputed, it is not up to the Panel to make such an appraisal, but rather to conclude that the Complainant has demonstrated to be the holder of valid trademarks.
Panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see e.g. Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358 and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
The disputed domain names , , , , do all incorporate both words “swiss” and “casinos” or its supposedly plural Italian form “casini”. The only distinctive elements between the disputed domain names and the registered trademarks reside in (i) the hyphen and (ii) the generic top-level domain name (gTLD) suffixes:
(i) As many panels have ruled before, the addition of a hyphen between two words does obviously not make a sufficient difference between the domain name and the Complainant’s trademark (see e.g. Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903; Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281).
(ii) As pointed out by prior panels, merely adding generic top-level domain name (gTLD) suffixes such as “.com”, “.net”, “.org” and “.biz” does neither diminish the likelihood of confusion nor prevent the domain name from being identical to the complainant’s trademarks (see e.g. Crédit Industriel et Commercial S.A v. Name Privacy,WIPO Case No. D2005-0457; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
Based upon what precedes, the Panel considers the Policy, paragraph 4 (a) (i) to be satisfied. ii. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see e.g. paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”).
In the present case, the Complainant is the owner of several trademarks incorporating the words “swiss” and “casinos”.
The Complainant has made a prima facie case that the Respondent has no right or legitimate interest in the disputed domain names. The Respondent does not bring any evidence that would demonstrate that it is commonly known by the disputed domain names or would have made a legitimate noncommercial or fair use of the disputed domain names.
The Respondent’s arguments, according to which the disputed domain names would have been chosen as referring to a “whorehouse” is not compelling. Set aside the fact that, to the knowledge of the Panel, the Italian word for a whorehouse is “bordello”, one cannot see in any case why the domain name holder of a website whose content solely appears to be in English would have chosen as domain names an Italian word which consists of the exact trademarks of a third party. In this Panel’s view, considering the Respondent’s location in Geneva, such a choice cannot be a mere coincidence. This is all the more true for four out of the five disputed domain names, which have all been registered by the Respondent after it had received the initial cease and desist letter sent to it by the Complainant on April 10, 2010.
Consequently, in light of the aforementioned, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled. iii. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4 (a) (iii)).
As the Respondent is domiciled in Geneva, Switzerland, it is virtually impossible that the Respondent may not have known of the Complainant’s business activities and therefore registered the disputed domain names in good faith. This is all the more true for four out of the five disputed domain names, which have all been registered by the Respondent after it had received the initial cease and desist letter sent to it by the Complainant on April 10, 2010.
The Respondent’s bad faith is further evidenced by the fact that, in spite of its seemingly incorporation as a limited company, arguably from Switzerland, it has not been duly registered and does not appear in the Register of Commerce. The Respondent itself argues that it would originate from Belize, but does not submit any evidence to that effect. In any case, the express reference to “Switzerland” clearly misleads the public into believing that the products sold through the website would enjoy some form of Swiss credentials, which does not appear to be the case.
The exchange of mails between the parties also make it clear that the Respondent tried to trap the Complainant into believing that Indian and Chinese companies had offered huge amounts to get the disputed domain names. There again, the Respondent does not bring any evidence to support its assertions, making it, in the Panel’s view, more than dubious that such companies have never been contacted before.
All in all, there is no doubt in the Panel’s opinion that the Respondent tries to exploit to its benefit the Complainant’s trademarks and their reputation in order to attract Internet users for commercial gain (see EH Ventures Inc. v. WW Processing,WIPO Case No. D2003-0007; Bilfinger Berger AG v. eService Finance Dept.,WIPO Case No. D2003-0827). The threats raised by the Respondent to transfer the disputed domain names to an Indian or Chinese company also make it clear that the Respondent tried to force the Complainant to spend a substantial amount of money to transfer the disputed domain names in its favor.
Consequently, the Panel is of the opinion that the disputed domain names have been registered and are being used in bad faith under the Policy, paragraph 4(a)(iii). 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 names , , , , , be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Dated: November 15, 2011
Full & Egal Universal Law Academy