The Complainant is Dice Partners, Inc. of Panama, Panama represented by Kelly Egan LLC, United States of America.
The Respondent is J.C. of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”), represented by Harrison IP, U.K. 2. The Domain Names and Registrar
The disputed domain names and are registered with SafeNames Ltd. and Instra Corporation Pty Ltd. (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2012. On May 10, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 11, 2012, the Registrars transmitted by email to the Center a verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 16, 2012.
The Center verified that the Complaint together with the amended 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 May 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2012. The Response was filed with the Center on June 6, 2012.
The Center appointed Sir Ian Barker as the sole panelist in this matter on June 12, 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
It is not as easy to set out the undisputed facts in this case as it is in the average proceeding under the Policy.
The Complaint is not formulated in an orderly way, focusing on the provisions of the Policy. It is rather prolix and is structured more in the nature of a statement of claim in a court proceeding. Moreover, the Annexures to the Complaint are over-burdened with unnecessary material – some of it in the Spanish language. Some documents are virtually unreadable – probably because they did not transition well to electronic transmission. There is no concise chronology of the somewhat extended relevant registration history of the disputed domain names. Rather, the Panel is expected to piece together this information from exhibited random communications from a variety of domain name registrars. The following facts seem, however, to be established.
The Complainant is a Panamanian corporation which is involved in the business of on-line gambling. Its shares are currently owned by a Mr. D. Baret who acquired them on July 18, 2011. Part of the assets passing to Mr. Baret by way of transfer from a subsidiary of the Complainant, Zia Marketing, were said to include the disputed domain names. The beneficial majority shareholder of the Complainant at the time of this transfer was a Mr. J. Barnett. The Complainant asserts the right to operate on-line gambling businesses under the style of “Rome Casino” and “Diceland Casino”.
The Respondent was appointed CEO of the Complainant’s business “Rome Casino” by Mr. Barnett under an employment contract dated February 2, 2008. The Respondent took control of the disputed domain names and the associated businesses. He had not then and has not now any beneficial interest in the Complainant.
The disputed domain name was purchased by Mr. Barnett from the original registrant on November 14, 2007.
On April 5, 2008, Mr. Barnett changed the registration information for the disputed domain name to show the registrant as Dice Partners Inc. and the Respondent as administrative contact. Rome Casino, operating under the laws of Panama, began accepting on-line players in April 2008 and the numbers of players increased steadily.
On August 19, 2008, the registrar for the disputed domain name was changed and the Respondent was recorded as the registrant and administrative contact. On October 21, 2008 the registrar was again changed and the “registrant organisation” was shown as Zia Marketing, a legal entity associated with the Complainant run by a Mr. Casaus who is related to Mr. Barnett.
On January 5, 2009, Mr. Casaus registered the disputed domain name . On June 12, 2010, the Respondent became the registrant for this disputed domain name , with Zia Marketing shown as the owner organisation.
On October 17, 2009, the Respondent became the registrant and administrative contact for the disputed domain name with the Complainant shown as the “owner organisation” at the Complainant’s Panama address. 5. Parties’ Contentions A. Complainant
The Complainant has common law trademark rights in the disputed domain names. The disputed domain name was acquired by the Complainant through its then owner, Mr. Barnett, before the Respondent had any involvement with the Complainant. The disputed domain name was acquired by Mr. Casaus on behalf of the Complainant after the Respondent had commenced his employment with Rome Casino.
After registration of the disputed domain names, the Complainant established business structures for building and growing the Rome Casino and Diceland Casino businesses. It raised capital and entered into an agreement with a provider for the use of servers and software for use in an on-line casino operation. The Respondent had been engaged to manage the operation of these businesses and to staff a call center. Cash flow statements show considerable growth of players and revenue for the business. The Complainant entered into an oral agreement with a company called Top Game Technologies Ltd in January 2008 – subsequently documented in June 2008 for the provision of computer games to the Complainant.
The common law marks have acquired a secondary meaning in that the public associates the marks with the Complainant’s goods and services. An Internet user entering the words “Rome” and “Casino” or “Diceland” and “Casino” will find the Complainant’s name displayed. The Complainant has established that the disputed domain names are used in a manner so that the public can come to recognize them as an indication of source. See Pet Food Experts, Inc v. R. Ryner,WIPO Case No. D2005-0536.
The Complainant is uncertain whether the Respondent has filed any trademark application in respect of the disputed domain names.
The Respondent has no rights or legitimate interests in the disputed domain names. He wrongfully procured the registration of the disputed domain names into his name. The Complainant goes so far as to allege fraudulent misrepresentation by the Respondent to a provider called Web Developments which resulted in his taking control of the disputed domain names. He allegedly changed an access password and refused to share information concerning the password with Mr. Barnett who was his employer.
There are descriptions in the Complaint of various interactions between the Complainant and the Respondent, none of which, in the Panel’s view, is helpful to narrate in detail. According to the Complainant, the Respondent was not supposed to have access to the password for the disputed domain names and he has committed breaches of his fiduciary duty as an employee.
The Respondent registered and is using the disputed domain names in bad faith. He registered the disputed domain names in his name for the purpose of disrupting the business of a competitor – his employer. The case of Top Driver, Inc. v. Benefits Benefits,WIPO Case No. D2002-0972 is apposite. Lengthy declarations under penalty were made by investors in the Complainant, but the Panel considers these irrelevant because of the view which the Panel takes, namely that this case is unsuitable for an adjudication under the Policy. B. Respondent
Other than what has been noted in the Factual Background section above, the Respondent agrees with little in the Complaint. He strenuously denies any allegations of fraud and misconduct. He claims that Mr. Barnett in an email of September 8, 2010, said, inter alia, “J., I am asking for your help. The company is yours. take it – but please understand the incredibly tough situation I am in.” This email was sent against a background of the business which the Respondent was managing undergoing such severe financial problems that it was unable to pay the Respondent’s salary. The Respondent considered that Mr. Barnett was unable to support the business financially any longer and wished to distance himself from it.
There is no evidence that the Respondent’s employment contract was ever assumed by the Complainant.
The Respondent then had the disputed domain names transferred into his name. He invested some USD 900,000 of his own money and the business then started to become profitable. It was only when this profitability occurred that the present Complainant sought to recover the disputed domain names – some time after they had been registered in the Respondent’s name.
The Respondent’s interaction with the provider which resulted in his obtaining the relevant password was in the course of his duties as CEO and was an attempt to resolve a technical issue. The Respondent denies any breach of fiduciary duty and considers as defamatory certain remarks made in the Complaint to the effect that he was affiliated with “some dangerous people”.
Mr. Barnett was unable to transfer the disputed domain names to Mr. Baret in 2011 because the Respondent was by then the registrant.
The Respondent uses the disputed domain names in connection with a bona fide offering of goods and services. He has become associated with the disputed domain names. None of the instances of bad faith detailed in Paragraph 4(b) of the Policy apply to him. He denies any bad faith. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
If the Complainant has common law trademark rights in the expressions “Rome Casino” and “Diceland Casino” then the disputed domain names are identical with the common law mark. However, the Panel is somewhat skeptical that the Complainant has provided sufficient evidence to satisfy the requirement for a common law mark. Since September 2010, the Respondent seems to have been running the gaming businesses rightly or wrongly. There is insufficient evidence of the fame of the marks during the time of the Complainant’s operation of the businesses.
Moreover, the evidence falls rather short of the standard for proof of unregistered trademarks as articulated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) (“WIPO Overview 2.0”). B. Rights or Legitimate Interests
Even giving the Complainant the benefit of the doubt and assuming that it has rights in the alleged unregistered trademarks, the Complaint cannot possibly succeed because the Panel is quite unable to make findings on either legitimate rights and interests or bad faith.
The documents disclose sharp conflicts of fact between the parties, including allegations of fraud against the Respondent and allegations of breach of employment contract against the Complainant.
The Top Driver decision (supra) is not helpful, since that case, unlike the present, was undefended. The respondent there did not indicate that the complainant’s allegations were denied. The other case cited by the Complainant, Champion Innovations, Ltd. v. Udo Duisling (45FHH),WIPO Case No. D2005-1094, was likewise undefended.
Only a court would be able to decide where the truth lies in this case after a judge has seen and heard the witnesses. A proceeding under the Policy is quite an unsuitable vehicle for deciding disputed facts, such as are starkly at issue in this case.
The Policy was established primarily to combat cybersquatting as was said in Oki Data Americas, Inc. v ASD, Inc.,WIPO Case No. D2001-0903:
“It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names. The T, LLC v. Poploff, WIPO Case No. D2000-1470 (WIPO January 5, 2001). If trademark owners wish to prevent the use of their marks by authorized sales and repair agents in domain names, they should negotiate such protections through appropriate contractual language or, when permitted under the relevant law, seek recovery in classic trademark infringement or dilution litigations.”
Accordingly, the Complaint must be dismissed and the Complainant will have to resort to litigation if it wishes to obtain the return of the disputed domain names. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Sir Ian Barker
Sole Panelist
Dated: June 25, 2012
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