The Complainant is The Pala Band of Mission Indians DBA Pala Casino of Pala, California, United States of America, represented by Morriss O’Bryant Compagni, P.C., United States.
The Respondent is Internet Marketing Company of Visakhapatnam, Andhra Pradesh, India. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 9, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Disputed Domain Name. On February 9, 2012, GoD, LLC 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 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on March 13, 2012. 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 owner of numerous trade marks that contain the word “pala”, including the trade mark PALA CASINO registered with United States Patent and Trademark Office (Registration No. 2735292), granted on July 8, 2003, in connection with casino entertainment services which it has offered since at least as early as September 11, 2000. The Complainant uses the mark PALA CASINO in its domain names, and . The Complainant promotes its casino services with which the registered PALA CASINO mark and other PALA marks are used through websites at these domain names.
The Respondent registered the Disputed Domain Name on January 13, 2012. 5. Parties’ Contentions A. Complainant
The Complainant says that the only difference between its PALA CASINO mark and the Disputed Domain Name is the letter “s” and that accordingly the Disputed Domain Name is confusingly similar to the Complainant's registered PALA CASINO mark following Advanced Comfort Inc. v. Frank Grillo, WIPO Case No. D2002-0762.
The Complainant submits that the Respondent lacks any rights or legitimate interests in the PALA CASINO mark or in the Disputed Domain Name as it is not an authorized dealer of goods or services in connection with which the mark is used, nor is it licensed to use such trade mark or the Disputed Domain Name. The Complainant submits that it has been unable to find any registered trade mark rights owned by the Respondent in its home jurisdiction of India. Further, the Respondent is neither making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, nor is the Respondent commonly known by the Disputed Domain Name.
The Complainant submits rather that the Respondent is using the Disputed Domain Name for a “placeholder” website. In this regard it says that the Respondent’s website at the Disputed Domain Name includes a “Your Slogan Here” advertisement and a body of placeholder text into which the Complainant’s mark has been inserted.
As far as bad faith is concerned the Complainant submits that as the Respondent does not appear to have any rights or legitimate interests in the Disputed Domain Name and the Complainant has neither authorized nor licensed the Respondent to use its mark in the Disputed Domain Name, it can only be inferred that the Respondent’s motivation was to divert Internet users and potential business by using a confusingly similar domain name to the Complainant’s mark.
The Complainant also says that the Respondent is in breach of its representation and warranty under paragraph 2 of the Policy that the registration of the Disputed Domain Name does not infringe or otherwise violate the rights of any third party. As the Complainant’s domain names and were easily searchable by the date of registration of the Disputed Domain Name the Respondent certainly must have known that such domain names were unavailable. The Respondent had an obligation to investigate the extent of that interest and to refrain from registering and using a domain name that infringes a third party’s rights, but in this case failed to do so and therefore it should be concluded that the Disputed Domain Name was registered and is used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in PALA CASINO in the United States under trade mark Registration No. 2735292. As the Disputed Domain Name only differs by the inclusion of the letter “s” from the Complainant’s mark, the Panel has no difficulty in finding that it is confusingly similar to that mark under the Policy.
As a result the Panel finds that the Complaint succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that it has not authorized the Respondent’s use of the PALA CASINO mark in the Disputed Domain Name and that the Respondent is not commonly known by or otherwise has rights in the Complainant’s mark. In addition it says that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel accepts the Complainant’s submission that the website to which the Disputed Domain Name resolves contains a “Your Slogan Here” advertisement. The website also refers in numerous places throughout to “Pala casino” in the singular. This reference appears to be a place filler for a potential advertiser’s mark or name. Much of the website’s text seems to be about gambling in general but the references to “Pala casino” make the website appear as if there is some association with the Complainant. The use of the invitation to advertisers “Your Slogan Here” appears to be commercial in nature. In addition on reviewing the website the Panel notes that there are different available “ad spaces” on other webpages of the website. Overall it appears to the Panel that the Respondent is using the Complainant’s PALA CASINO mark in the Disputed Domain Name to attract potential advertisers to its website.
In these circumstances the Panel is satisfied that the website is intended for commercial purposes and that the use of the Complainant’s PALA CASINO mark in the Disputed Domain Name falsely imports a reference to the Complainant’s mark and business and is intended to attract Internet users and in particular potential advertisers to the Respondent’s website. Considering that the Respondent has not taken the opportunity to respond to the Complainant to rebut the Complainant’s assertions in relation to this element of the Policy, the Panel infers that the Respondent does not have a credible response for such use. Therefore the Panel finds that the Complainant has demonstrated to the necessary standard that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Disputed Domain Name was registered on January 13, 2012 many years after the first use of the Complainant’s mark for its business and significantly at a time when the Complainant was using its mark in the and domain names. In these circumstances and in view of the distinctive nature of the Complainant’s PALA CASINO mark, the Panel considers that the choice of the near identical “palacasinos” in the Disputed Domain Name is on the balance of probabilities very unlikely to be coincidental. In view of the Respondent’s failure to explain its use of this term in the Disputed Domain Name the Panel infers that the Respondent registered the Disputed Domain Name in bad faith.
As described above in relation to the second element of the Policy the use of the “Your Slogan Here” advertisement and other available “ad spaces”, suggests that the Respondent is using the Disputed Domain Name for commercial purposes in order to attract Internet traffic and in particular, potential advertisers, to its website by creating a likelihood of confusion. Purposefully incorporating a distinctive mark in a domain name without the right or authority to do so in order to attract Internet users for commercial purposes amounts to use in bad faith and fulfills the requirements of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is used in bad faith under 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 the Complainant.
Alistair Payne
Sole Panelist
Dated: March 22, 2012
Full & Egal Universal Law Academy