The Complainant is Salt River Community Gaming Enterprises (d/b/a Casino Arizona) of Scottsdale, Arizona, United States of America, represented by Osborn Maledon, P.A., United States of America (the "USA").
The Respondent is Traffic Label Limited of St Albans, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2014 identifying "Winning Partner, Traffic Label Limited" as the Respondent. On April 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response stating:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of Traffic Label Limited (the Respondent) and not "Winning Partner";
(c) the contact details for the Respondent (which are the same as those used in the Complaint);
(d) the registration agreement is in English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 April 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 8, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 14, 2014. 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 operates a casino with associated entertainment services in Arizona in the USA by reference to "Casino Arizona". It has been doing so since June 1998. Its gaming and entertainment services attract over 400,000 patrons each month. It has advertised its casino by reference to the name "Casino Arizona" extensively via radio, magazines, billboards and brochures. Before the Respondent registered the disputed domain name in 2006, the Complainant's expenditure on advertising had reached USD 60 million in total. It has spent a further USD 100 million on advertising and promotion since then.
The Complainant applied to register CASINO ARIZONA (in block capitals) as a trademark in the USA on October 31, 2005 in respect of casino and entertainment services in International Class 41. This application became registered, as Trademark No. 3,157,839 on October 17, 2006 in the Principal Register.
From mid-1998 until 2007 or 2008, the Complainant promoted its casino from a website to which the domain name resolved. The Complainant successfully obtained the transfer to it through a complaint under the Policy of the domain name .1 Since the transfer of that domain name, it has been used to promote its casino.
The disputed domain name was registered on January 12, 2006. Shortly before the Complaint was filed, it resolved to a website. As illustrated in the printout included in Annex 13 to the Complaint, the website featured display advertisements on the left and right hand sides and on the bottom of the page. These appear to be click-through advertisements for online gambling or casino services. The body of the page includes short descriptions with links through to five other casinos unassociated with the Complainant. 5. Discussion and Findings
No response has been filed. Apart from the reference to "Winning Partner", the Complaint named and was addressed to "Traffic Label Unlimited", the registrant identified by the Registrar. The Complaint has been served on electronic coordinates specified in the WhoIs record. The Center's Notification of Complaint was transmitted by email (apart from the Annexes to the Complaint which were rejected by the mailbox of the Respondent due to the size limit). The Center noted unsuccessful delivery of Annexes to the Complaint and sent an email communication to the Respondent on the same day of Notification of Complaint, requesting alternative email address(es) of the Respondent. The Center did not hear further from the Respondent in response to this request. The Center's attempt to notify the Written Notice by fax failed as "no carrier detected". However, the Written Notice was delivered by courier to the address for the Respondent confirmed as correct by the Registrar. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of US registered trademark No. 3,157,839 referred to above. Although the quality of the reproductions makes it hard to discern the use of the name "Casino Arizona" in some of the materials in the Annexes, the length of use, the number of visitors or patrons and the expenditure claimed by the Complainant are sufficient to support a finding that it also has common law or unregistered rights in the name CASINO ARIZONA as well: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name includes, in addition to the Complainant's trademark, the term "online" and the generic Top-Level Domain ".com". There is also no space between "casino" and "Arizona". So the disputed domain name cannot be described as identical to the Complainant's trademark.
It is permissible in the present circumstances, however, to disregard the ".com" component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 and Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252. And the word "online" is merely an apt descriptor for the types of services offered by the Complainant in an online environment and so reinforces rather than dispels the potential for confusion: Dixons Group plc v. Mr. Abu Adbdullaah,WIPO Case No. D2000-1406 and Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Traffic Label Limited,WIPO Case No. D2013-0067.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The Respondent is not apparently licensed to operate a casino in Arizona in the USA. The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The Respondent is using the disputed domain name in relation to a website which appears to contain pay-per-click advertisements to casinos which are not the Complainant's casino or authorized by or otherwise associated with it. Such conduct has been repeatedly found not to constitute a bona fide offering of goods or services for the purposes of the Policy where it trades on, or appears to trade on, the trademark significance of a complainant's trademark: see e.g. Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
The disputed domain name was registered before the Complainant's application to register its trademark had crystallised into a registration. The Complainant had been using its trademark for more than seven years by that date and, as the Panel has found above, the record in this case supports a finding that the Complainant has rights in its unregistered trademark.
In these circumstances, therefore, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the Respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the Complainant.
As discussed in Section 5.B. above, the way the disputed domain name is being used as what appears to be a means of generating revenues by pay-per-click advertisements re-directing traffic to casino services that are not associated with the Complainant does not qualify as bona fide use under the Policy. The requirement of use in bad faith is therefore satisfied.
While the disputed domain name does contain descriptive terms, "casino" and "arizona", their combination conveys some association or relationship with a casino in that place. It is not a place where the Respondent is domiciled. It is also not apparently a place where the Respondent has obtained regulatory approval. It is a combination, however, with a specific relationship to the Complainant.
Further, as the Complainant points out, the Respondent has been found to have embarked in a pattern of conduct of registering without permission other people's trademarks or brand names in association with the term "casino".
- ACCOR v. Traffic Label Limited,WIPO Case No. D2008-1240;
- La Société des Bains de Mer et du cercle des Etrangers à Monaco v. Oded Keinan, Traffic Label Limited,WIPO Case No. D2008-1388;
- Microgaming Software Systems Limited v. Oded Keinan, Traffic Label Limited,WIPO Case No. D2009-0261;
- Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Traffic Label Limited,WIPO Case No. D2013-0067; and
- La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Traffic Label Limited,WIPO Case No. D2013-1840.
In at least some of these decisions, including the Accor case, supra, the domain names in dispute resolved to websites which used pay-per-click advertisements for competitive casinos.
In these circumstances, the history of the Respondent's registration of other domain names based on "casino" with the use for pay-per-click advertising and the specificity of the combination of terms in the disputed domain name with which the Respondent otherwise appears to have no association leads to an inference that the Respondent registered the disputed domain name with knowledge of the Complainant and its trademark and with an intention to take advantage of the Complainant's trademark. Accordingly, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. 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.
Warwick A. Rothnie
Sole Panelist
Date: May 26, 2014
1 Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casion,WIPO Case No. D2007-0416.
Full & Egal Universal Law Academy