The Complainant is Seminole Tribe of Florida of Hollywood, Florida, United States of America, represented by Richter Trademarks, United States of America.
The Respondent is m.m.commerce of West Palm Beach, Florida, United States of America, represented by UDRPro, LLC, United States of America. 2. The Domain Names and Registrar
The disputed domain names , and (the “Domain Names”) are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2012. On May 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 7, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Names. 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 May 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response May 30, 2012. The Response was filed with the Center May 25, 2012.
The Center appointed W. Scott Blackmer, Beatrice Onica Jarka and Andrew D. S. Lothian as panelists in this matter on July 25, 2012. The Panel finds that it was properly constituted. Each member of 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.
The Complainant also filed a “Reply” to the Response on June 5, 2012, and the Respondent filed “Additional Statements” on June 6, 2012, addressing points in the Reply. Both attached additional documents for consideration by the Panel. 4. Factual Background
The Complainant is a Native American tribal government recognized by the Federal government of the United States. It is undisputed that the Complainant is a legal entity that is legally competent, among other things, to engage in commerce and to own and use trademarks in commerce.
The Complainant states that it has operated gambling casinos in the State of Florida since 1979. The record indicates, however, that this activity was briefly commenced at that time and then suspended for a protracted period due to legal, regulatory, and legislative proceedings. It appears that trading in this market recommenced at some time in the mid-1990s, although the record does not establish when this was first done using a SEMINOLE CASINO brand. Indeed, materials submitted by the Complainant suggest that the business was initially referred to as ''Seminole Indian Bingo & Poker Casino''.
The Complainant owns United States Trademark Registration No. 3501804 for a design mark featuring the words “Seminole Casino” (the “SEMINOLE CASINO Mark”). This mark, which disclaims rights to the word “casino” apart from the specific design mark, was registered on September 16, 2008.
In correspondence with the Respondent, the Complainant referred to its SEMINOLE CASINO and SEMINOLE GAMING “names”, but the latter is not claimed or supported as a mark in the Complainant’s filings in this proceeding. The Complainant expressly asserts common law trademark rights in SEMINOLE CASINO, which it claims to have used since 1980.
The Complainant, either directly or through licensees, controls several domain names incorporating the words “Seminole casino”, which are used in connection with websites advertising the Complainant’s casinos. These include “www.the”, “”', “”, “”, “”, “” and “”.
The Domain Name was first registered on October 2, 1997. The Domain Names and were registered on July 30, 1998. It is undisputed that the Domain Names have been “parked” and used in connection with pay-per-click (PPC) advertising landing pages. The Domain Names do not currently resolve to active websites of any kind.
All of the Domain Names are currently registered in the name of the Respondent, which is, according to the business entity database operated by the Florida Department of State, an inactive business corporation initially registered in Florida in January 2002. After receiving notice of the Complaint in this proceeding, a Mr. Tanney responded to the Center and identified himself and two others as persons with an interest in the Domain Names, saying, “[w]e registered these domains in October 1997 and July 1998.” The Center requested further information about the relationship of these three individuals with the Respondent, but the record does not indicate that such information was furnished. Instead, a Response was filed in the name of the Respondent, which is identified as a wholly owned subsidiary of “World Net Companies” (or “WorldNetCo”), in whose name the Domain Names were originally registered.
The Respondent claims that its parent World Net Companies entered into a joint venture agreement with the Complainant some two months after commencing negotiations in April 1997, to develop gaming software and establish an online casino. No written agreement was submitted with the Response in this proceeding, but the account of the joint venture in the Response is supported by affidavits from Mr. Benami, former network engineer for World Net Companies, Mr. Nolter, former managing director of World Net Companies, Ms. Gambrill, former president of World Net Companies, and Ms. Castro, a former administrative assistant to Mr. Nolter with “WorldNetGaming” in Costa Rica. According to the Response, the parties agreed that the Respondent would establish offices in Costa Rica and register the Domain Names for use in the online gambling joint venture, but a representative of the Complainant visited the Respondent’s office in Florida in May 1998, and informed the Respondent that the agreement was terminated.
The Complainant offers evidence that the Respondent and World Net Companies each existed for only a short period as registered business corporations in Florida, and that neither entity was a registered Florida company in 1997 or 1998. Interestingly, the Complainant does not actually deny that there were discussions with Mr. Nolter and his associates in 1997, and the Complainant does not offer affidavits describing from its perspective the agreement, or lack thereof, between the parties. Instead, the Complainant’s supplemental filings allege that the Respondent, WorldNetCo, Mr. Nolter, Ms. Gambrill, and Mr. Benami have been involved in litigation and UDRP proceedings concerning their use of casino trademarks in domain names, and that a Florida court in 2005 entered a damages award of more than USD 15 million against the Respondent and Mr. Nolter for fraud.
In 2009, the parties exchanged correspondence concerning the Complainant’s demand, at that time, to transfer the Domain Names to the Complainant. Mr. Nolter referred in emails to the joint venture agreement and argued that the Respondent should be reimbursed for funds it expended in connection with that agreement. Subsequently, in April 2011, counsel for the Complainant sent a cease-and-desist letter to the contact address in the WhoIs database concerning the Domain Name and “any other domain names which contain terms identical or confusingly similar to” the registered SEMINOLE CASINO Mark. In a letter dated January 17, 2012, the Complainant’s representative referred again to the registered SEMINOLE CASINO design mark but also mentioned “the famous SEMINOLE CASINO and SEMINOLE GAMING names”. The Respondent denies receiving the 2011 and 2012 demands. 5. Parties’ Contentions A. Complainant
The Complainant argues that all three Domain Names are confusingly similar to its SEMINOLE CASINO Marks (the registered design mark and the claimed common law word mark), and that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant does not admit or deny that it had discussions with Mr. Nolter and his associates in 1997, concerning an online gambling venture that would use the Domain Names, but the Complainant suggests that the Respondent’s actions in registering the Domain Names and using them for PPC landing pages evinced bad faith, as the Respondent was aware of the Complainant’s marks and sought to defraud the Complainant:
“In summary, Respondent and WorldNetCo were not legitimate businesses and were not involved in a ‘joint venture’ with Complainant but rather, were setting up an elaborate scheme to defraud Complainant which luckily did not come to fruition.” (The Complainant’s Reply, para. 21.) B. Respondent
The Respondent challenges the existence of a common law SEMINOLE CASINO trademark in 1997 and 1998, and argues that, in any event, the Respondent had a legitimate, good-faith interest in registering the Domain Names in furtherance of a planned joint venture with the Complainant.
The Respondent raises the issue of laches, since the Complainant did not seek transfer of the Domain Names for more than a decade. Further, the Respondent requests a finding of reverse domain name hijacking, since the Complaint was grounded on a trademark registration obtained many years after the Domain Names were registered in 1997 and 1998, with little, if any, evidence of common law rights at that time. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed 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. Supplemental Filings
The Policy contemplates prompt, efficient resolution of domain name disputes on a narrow range of issues and with only two limited remedies, transfer or cancellation of a domain name. Accordingly, the Rules and Supplemental Rules provide only for a complaint and response, within strict time and word limits. There is no explicit provision for additional filings except for further statements or documents provided in response to a request from the Panel (Rules, paragraph 12). Paragraph 10 of the Rules directs the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” Panels are consequently reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. See, e.g., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447, which describes appropriate criteria for considering supplemental filings.
Here, the Complainant filed a “Reply” to the Response, offering evidence of the use of SEMINOLE CASINO as a common law word mark before the Domain Names were registered. Such evidence should have been available to the Complainant and submitted with the Complaint. The Complainant also submitted evidence and arguments in response to the Respondent’s laches and reverse domain name hijacking arguments, and on the issue of bad faith in connection with the Respondent’s version of events. The Respondent countered by filing “Additional Statements” addressing allegations made in the Reply.
Some of these arguments and evidentiary submissions clearly could have been introduced in the Complaint and Response. In the interest of completeness, however, and to avoid successive UDRP complaints concerning these Domain Names, the Panel elects in this instance to consider the supplemental filings of both parties as part of the record in this proceeding. B. Laches
The Respondent refers to the equitable doctrine of laches in arguing that the Complainant’s claims are undermined by its failure to raise them for more than a decade. The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace. See Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35, and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. See cases cited in the Legal index to WIPO Panel Decisions, section III(G)(1)(c) and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 4.10.
The Panel in this proceeding similarly declines to dismiss the Complaint on the ground of laches but observes that the Complainant’s burden to establish bad faith is made more difficult, as an evidentiary matter, by the passage of time since the events surrounding the registration of the Domain Names. C. Identical or Confusingly Similar
The dubious status of the Complainant’s common law rights in SEMINOLE CASINO at the time the Domain Names were registered in 1997 and 1998 is not material for the first element of the Complaint. Rather, this “standing” requirement of the Policy concerns only whether the Domain Names are identical or confusingly similar to a mark in which the Complainant currently has rights.
UDRP panels typically apply a “low threshold” test for confusing similarity under the first element of a Policy complaint, proceeding to the merits of the case under the other elements of the Policy if there is “sufficient similarity” between the disputed domain name and the relevant trademark. See, e.g., Research in Motion Limited v.One Star Global LLC,WIPO Case No. D2009-0227; and Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. See WIPO Overview 2.0, paragraph 1.2.
Here, the Complainant’s registered trademark consists of words and design. The prominent textual elements of the mark are the words “Seminole” and “casino,” which must be taken together because rights to “casino” alone are disclaimed. These elements appear together in two of the Domain Names, and . The third, , uses the word “gaming”, which is closely associated in meaning with “casino”. Hence, there is a plausible case for confusing similarity for the purpose of meeting the “low threshold” standing test for the first element of the Complaint.
The Panel concludes that the first element of the Complaint has been established for purposes of the Policy, paragraph 4(a)(1). D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights to or legitimate interests in the Domain Names, by demonstrating any of the following:
“(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing indicating the absence of such rights or interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
Here, the Complainant relies on the fact that there is no evidence that the Respondent used the Domain Name for anything but a PPC landing page, advertising a range of commercial products and services, without evidence that the Respondent or its products were known by any corresponding names. The Complainant also shows that the Respondent and its “parent” company were not recognized as state-registered companies or federally-recognized employers at the time the Domain Names were registered. This effectively shifts the burden to the Respondent to demonstrate rights or legitimate interests in the Domain Names.
The Respondent has attempted to meet this burden by presenting affidavits of a proposed business joint venture in 1997. These are not supported by any written agreement with the Complainant or an explanation of the principals and legal entities involved, since it does not appear from public records that either the Complainant or its “parent” company legally existed at the time. Moreover, the Respondent does not explain why its predecessor registered two of the three Domain Names several months after the Complainant terminated the joint venture plans, by the Respondent’s own account.
On the present record, then, the Panel does not find that the Respondent has presented sufficient evidence of rights or legitimate interests in the Domain Names to rebut the Complainant’s prima facie case to the contrary. The Panel concludes that the second element of the Complaint has been established. E. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant argues that CASINO SEMINOLE was a well-known mark that the Respondent, which admittedly was aware of the Complainant’s business, sought to exploit. The Complainant also suggests that the Respondent’s activities were part of a scheme to defraud the Complainant, “which luckily did not come to fruition.”
The latter assertion is simply not supported by any evidence in this proceeding. The fact that a court found that the Respondent committed fraud several years later in another matter, or that the Respondent registered other domain names in bad faith, does not establish that the registration of the Domain Names in this instance was part of a fraud scheme. The Complainant does not describe the supposed fraud scheme, and the only affidavits submitted in this proceeding indicate that the Respondent expended substantial sums to establish the proposed joint venture. Indeed, the record suggests that there are unresolved business disputes between the parties that lie outside the scope of a UDRP proceeding – if they are not statutorily time-barred.
In any event, the principal weakness of the Complainant’s case is that it had no registered trademark at the time the Domain Names were registered and, even with the additional material submitted with the Complainant’s supplemental filing, there is very little evidence in the record that the Complainant had protectable common law rights in SEMINOLE CASINO as a word mark in 1997 or 1998. None of the dated, pre-1998, materials submitted by the Complainant display the name SEMINOLE CASINO or the design mark that was registered in 2008. To rely on an unregistered mark, a UDRP complainant must provide "[r]elevant evidence of...'secondary meaning' includ[ing] length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition." WIPO Overview 2.0, paragraph 1.7. Such evidence is not present in this record. Indeed, the trademark registered in 2008 is a design mark that disclaims rights in the word “casino”. It is not clear to the Panel that SEMINOLE CASINO could be trademarked as a standard character mark even today, since it could be viewed as merely descriptive of a casino operated by the Seminole Tribe (or in the town of Seminole, Florida, for that matter).
As recounted in the WIPO Overview 2.0, paragraph 3.1, there are cases where bad faith has been found when a respondent had advance knowledge of a trademark, and the Respondent here, by its own account, had dealings with the Complainant before registering the Domain Names. In the current proceeding, however, it is not clear that the Complainant itself had plans to trademark SEMINOLE CASINO in 1997 or 1998, or that this descriptive name could in fact be trademarked apart from some distinctive design motif – such as the one that was ultimately registered as a trademark a decade after its alleged discussions with the Respondent’s principals.
In sum, despite the Complainant’s assertions that SEMINOLE CASINO was a “famous” brand by 1997, the Panel finds that the record in these proceedings does not establish that SEMINOLE CASINO was a distinctive identifier in the marketplace at that time, or that the Complainant was engaged in plans or activities to make it one, much less that the Respondent was aware of those plans. In these circumstances, the Panel cannot conclude that the Complainant has met its burden of establishing the probability that the Respondent registered and used the Domain Names in contemplation of a SEMINOLE CASINO trademark associated with the Complainant. F. Reverse Domain Name Hijacking
As explained in the WIPO Overview 2.0, paragraph 4.17:
“Paragraph 15(e) of the UDRP Rules provides that, if ‘after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding’. Reverse Domain Name Hijacking is defined under the UDRP Rules as ‘using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name’.
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.”
While the Complaint does not succeed in this proceeding, the Panel does not find sufficient evidence of bad faith or harassment to make a finding of reverse domain name hijacking against the Complainant. The Complainant disputes the Respondent’s version of events (albeit without specificity) and asserts common law trademark protection at the time of the registration of the Domain Names, although its trademark registration occurred much later. Thus, the Panel declines to enter a finding of reverse domain name hijacking. 7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Presiding Panelist
Beatrice Onica Jarka
Panelist
Andrew D. S. Lothian
Panelist
Date: July 25, 2012
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