Complainant is Swiss Casinos Brands AG of Rapperswil, Switzerland, represented by Wenger & Vieli AG, Switzerland.
Respondent is Atlas Protecta Co. Ltd. of Macau, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2012. On July 4, 2012, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed domain name. On July 5, 2012, eNom. 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 Respondent of the Complaint, and the proceedings commenced on July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 1, 2012.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on August 9, 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
Complainant is the owner of several registrations in Switzerland and elsewhere for the figurative trademark SWISS CASINOS in connection with setting up and operating casinos, including for example Swiss Registration No. 551086, registered March 2, 2006 (as a mark which acquired distinctiveness through use) and International Registration No. 919117 registered January 22, 2007.
Complainant also owns numerous domain name registrations that include the “swisscasinos” term, such as:
(registered April 18, 1996);
(registered June 30, 2010);
(registered January 17,1997);
(registered March 26, 2006);
(registered January 21, 2000);
(registered January 14, 2000); and
.
Complainant’s activities in association with the mark include providing online gambling services. See “www.”.
The disputed domain name was registered October 5, 2002 and presently routes to a directory webpage with various links to third-party websites. The links in some cases relate to casinos and online gaming.1 5. Parties’ Contentions A. Complainant
Complainant avers that it has used its SWISS CASINO marks in connection with its business of setting up and operating casinos since the 1980s, achieving earnings of EUR 156 million in 2011. Complainant also contends that its trademark is well known in Switzerland. Complainant’s allegations under the Policy follow.
First, Complainant alleges that the disputed domain name is identical to Complainant’s trademarks. Acknowledging that its marks are figurative and not word marks, and citing previous decisions by UDRP panels, Complainant contends that “graphic elements, such as contained in Complainant's trademarks, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.”
Second, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, that Respondent has no authorization to use Complainant’s trademarks, that Respondent is not commonly known by the disputed domain name, and that Respondent uses the disputed domain name for a parking page with links that generate commercial revenues for Respondent.
Third, in respect of registration in bad faith under the Policy, Complainant alleges that Respondent must have known of Complainant’s rights since (1) Complainant’s business using the Swiss Casinos name has been commercially registered since the early 1980s; (2) there are substantial registrations for the SWISS CASINOS mark; (3) Complainant’s domain names that include the “Swiss Casinos” phrase have a substantial web presence; and (4) Complainant’s “” website appears first in any Google search for the term “swiss casinos.”
Complainant also alleges that “Setting up a parking domain while using the Complainant's trademark itself proves that the Respondent has known about the Complainant's trademark and well known name. A parking domain can only generate profit if it generates a certain amount of traffic. The trademark of the Complainant is clearly the traffic generating element of the disputed domain name. According to previous decisions this combination is sufficient to prove bad faith.”2
Complainant cites a 2007 UDRP decision ordering transfer against Respondent, alleging that “Respondent is apparently inclined to engage in bad faith behaviour.” The circumstances in that case involved a phishing scam allegedly run by Respondent. Mininova BV v. Atlas Protecta Co. Ltd., NAF Claim No. FA0702000921341.
Finally, Complainant alleges that the impossibility of reaching Respondent via the email and postal addresses provided in the registrar’s WhoIs database “proves that the domain was registered in bad faith, because the Respondent is hiding from legal action.”
On the basis of the foregoing allegations, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier notification of these proceedings. The Center used the address listed in the WhoIs record for the disputed domain name, but the courier company indicated that the notification was not deliverable. The Center also notified Respondent by using an email address provided by the registrar in its verification response to the Center, but the electronic notifications returned delivery errors.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent. B. Substantive Rules
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(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.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the SWISS CASINOS marks in which Complainant has rights.
Complainant’s SWISS CASINOS figurative marks consist of the words “swiss casinos” in various artistic type fonts and colors. The Panel considers the dominant element of Complainant’s figurative marks consist of the combination of the words “swiss” and “casinos.” See, e.g., Cambridge Nutritional Foods Limited and Cambridge Manufacturing Company Limited v. Cambridge Diet Pty Ltd,WIPO Case No. DAU2010-0021.
UDRP panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
The Panel concludes, therefore, that Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Respondent’s website is used to display links to third-party websites promoting products and services of others. By diverting traffic to third parties and their products, the Panel finds that Respondent uses Complainant’s marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
Complainant alleges that Respondent has no authorization to use the SWISS CASINOS mark in its domain name and that Respondent is not commonly known by the disputed domain name. In the absence of a response, the Panel accepts these undisputed allegations.
As noted above, the record establishes that Respondent is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds there is no bona fide offering of goods or services by Respondent.
Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel also agrees with Complainant that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel infers that the disputed domain name was registered with awareness of Complainant’s trademark because of Complainant’s long-standing business activities, numerous international trademark registrations and use of several domain names that include the SWISS CASINOS trademark.
The Panel finds therefore that the registration was made with the intention of trading on the value of Complainant’s trademark. The Panel concludes that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Under the circumstances, this constitutes registration in bad faith for purposes of the Policy.
The Panel also concludes that the circumstances show bad faith use of the disputed domain name as elaborated below.
First, Complainant’s trademarks and the disputed domain name are dictionary terms. As previously noted by this Panel and others, a party is entitled to register and use such terms as domain names so long as they are being used in their ordinary or dictionary sense.3 In this case, Respondent does use the disputed domain name to refer to online gaming and casinos. By failing to refer to enterprises or activities related to the adjective “Swiss,” however, Respondent is not using the disputed domain name in a way related to the ordinary meaning of the term “Swiss casinos.” Under these circumstances, the Panel finds this is an indication of bad faith use.
Second, Respondent’s website shows that the disputed domain name is used to promote the products of Complainant’s competitors in the field of online gaming. The Panel concludes that this activity demonstrates bad faith use by Respondent. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. 2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
Additional circumstances supporting the Panel’s finding of bad faith use include Respondent’s failure to respond both to the Complaint and to Complainant’s cease and desist letters, sent to the registrant’s address listed in the WhoIs record. See, e.g., Ebay Inc. v. E and Tony Caranci, WIPO Case No. D2000-1632.
It is possible that Respondent never received Complainant’s letter or the notification of these proceedings. If so, it was due to Respondent’s failure to maintain accurate contact information, as required in the registration agreement. That failure by Respondent would constitute further evidence of bad faith. E.g., Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393 (citing The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340).4
The Panel therefore concludes that the requirements of 4(b)(iv) of the Policy are fulfilled. 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 domain name be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Dated: August 22, 2012
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5. The appearance of the website on line is consistent with its appearance and content in the screen captures annexed to the Complaint.
2 Complainant cites Freistaat Bayern v. Michael Kutzer,WIPO Case No. D2005-0839 (); homegate AG v. Name Invest Limited,WIPO Case No. DCH2011-0031 (); and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753 ().
3 See, e.g., Johnson & Johnson v. Chad Wright, WebQ, Inc.,WIPO Case No. D2012-0010 (“a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar to a complainant’s registered mark. [. . .] However, that domain name must have been registered because of its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark; the use of the domain name must also be consistent with its attraction as a dictionary word or descriptive term.” (citations omitted))
4 Having concluded that the disputed domain name was registered and used in bad faith on other grounds, the Panel need not rule on Complainant’s other allegations of bad faith. In passing, however, there are a few points that bear note: First, there is no clear requirement under UDRP decisions or the Policy that a registrant must undertake a Google search although some panels have suggested that such a requirement applies to parties engaging in registration of large numbers of domain names. Second, the Complaint does not attempt to establish that Complainant’s marks are well known, which would be necessary to support Complainant’s argument that a finding of bad faith may be based on the use of a well-known trademark as a domain name for a parking page. Finally, while the cited 2007 UDRP decision against Respondent reflects an abusive and possibly illegal practice employing the website in that case, it is not clear in this case that “[the disputed] domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” under paragraph 4(b)(ii) of the Policy -- since Complainant has several other domain names that include its marks. Moreover, a showing of bad faith based on a pattern of conduct under the Policy usually requires more than a single relevant example. E.g., WIPO Overview Version 2.0 paragraph 3.3.
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