The Complainant is Seminole Tribe of Florida, United States of America (“United States”), represented by Miriam Richter, Esq., United States.
The Respondent is propertyusa, ltd, New Zealand, represented by Lewis & Lin, LLC, United States. 2. The Domain Names and Registrar
The disputed domain names , , and (together the “Disputed Domain Names”) are registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 7, 2019, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2019. The Response was filed with the Center September 9, 2019.
On September 25, 2019, the Complainant submitted a supplemental filing to the Center. On September 26, 2019, the Respondent submitted a supplemental filing to the Center.
The Center appointed Nick J. Gardner, Diane Cabell, and Frederick M. Abbott as panelists in this matter on October 8, 2019. 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. 4. Factual Background
The Complainant is a Native American tribal government recognized by the Federal government of the United States. 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.
Details as to the Respondent are discussed below.
The Disputed Domain Names have been the subject of a previous UDRP case brought by the Complainant against an entity called “m.m.commerce” in 2012 – see Seminole Tribe of Florida v. m.m.commerce,WIPO Case No. D2012-0960 (the “2012 Seminole case”). In that case the Complainant did not succeed. In that case the respondent had argued its registration of the Disputed Domain Names had occurred pursuant to contractual dealings between the parties. A three‑member Panel found that the Complainant had failed to establish the Disputed Domain Names had been registered and used in bad faith. The panel considered the Complainant had not established it had any significant trademark rights at the time the Disputed Domain Names were registered. The panel stated “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”.
In the present case, the 2012 Seminole Case was not mentioned at all by the Complainant in the Complaint. It was raised by the Respondent (see below). Material relevant to that case was then included in the supplemental filings each party produced. It is clear to the Panel (see below) that the determination of whether or not the present Complaint is barred as result of the 2012 Seminole Case is a fundamental threshold issue which it has to decide. The Panel will therefore in its discretion admit the supplemental filings as they each contain material directly relevant to this issue. 5. Parties’ Contentions A. Complainant
The Complainant says it has used the trademark SEMINOLE CASINO in the United States in connection with casinos since at least as early as 1980. It says its SEMINOLE CASINO‑branded casinos have gained recognition and stature around the world as the “archetype Native American gaming facilities”, with the Seminole Casino Classic Hollywood facility in Hollywood, Florida being the first Native American casino in the United States. It says SEMINOLE CASINO has also gained international fame through its association with, and ownership of, Hard Rock International, Inc. and the operation of Seminole Casinos in connection with Hard Rock Cafes and Resorts. The Complainant says it has multiple casino locations including one in Hollywood, Florida known as the Seminole Hard Rock Hotel & Casino which is currently undergoing a USD 1.5 billion expansion.
The Complainant relies upon various United States trademark registrations which include the term SEMINOLE CASINO – for example Registration No. 3501804 for SEMINOLE CASINO and design registered on September 16, 2008 (these trademarks are referred to in this decision as the “SEMINOLE CASINO trademarks”).
The Complainant, either directly or through its licensees, controls domains containing the words SEMINOLE CASINO, such as: , , , , and , among others. These domains are linked to websites promoting gambling facilities.
The Complainant says the Respondent acquired the Disputed Domain Names on August 14, 2012. It says that is linked to a website which offers online gaming in direct competition with the Complainant. It says that and domains are being passively held and do not resolve to any websites.
The Complainant says that the Disputed Domain Names are identical or confusingly similar to the SEMINOLE CASINO trademarks.
The Complainant says that the Respondent has no rights or legitimate interests in the term “seminole casino”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Names is in bad faith and relies on various previous UDRP decisions in this regard.
So far as the 2012 Seminole case is concerned the Complainant says it is irrelevant which is why it did not raise it originally. It says the present Respondent is a different owner and it says that the Respondent’s evidence to the contrary is unsatisfactory and does not prove otherwise. This evidence is discussed below. B. Respondent
The Respondent says that the present case is a refiling that is prohibited under the applicable rules and procedures. It says that it and the respondent in the 2012 Seminole case are both under the common control of a Mr. Nolter and provides a sworn declaration from Mr. Nolter dealing with this – which is discussed below. It refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.18; and various previous UDRP cases including Reliance Telecom Limited v. Domains By Proxy, LLC, Sukhraj Randhawa,WIPO Case No. D2014-0947.
The Respondent states its case in this way: “Respondent Propertyusa, Ltd. was an entity organized by Nick Nolter, who also formed M.M. Commerce, Inc. and registered the domain names , and (the “Domain Names”) on their creation dates in 1997 and 1998. […] At all times since original registration by Nolter in 1997 and 1998, the Domain Names have been under control by Nolter, or by entities owned and controlled by Nolter, including Respondent”.
Mr. Nolter himself, in a sworn declaration says:
“1. I organized the entity identified as the Respondent [in the present case] and I formed the entity identified as the respondent “m.m. commerce” in the [2012 Seminole case].
2. I registered the [Disputed Domain Names] on their creation dates in 1997 and 1998.
3. At all times since I originally registered the [Disputed] Domain Names they have been under my control or controlled by entities owned and controlled by me.
4. I have had a lengthy history with the Seminole Tribe of Florida involving the [Disputed] Domain Names. I expended substantial resources to establish a joint venture with Complainant but the venture failed leading to numerous unresolved business disputes, as detailed in the papers filed in the [2012 Seminole case]. The Seminole Tribe of Florida refiled this case fully aware of my common control over the [Disputed] Domain Names and the named respondents in the current and prior proceedings.
5. I changed the listed registrant of the [Disputed] Domain Names to “PropertyUSA, Ltd” after the favorable outcome in [2012 Seminole case] further to a business venture that never materialized. But I have always been the Administrative Contact for, and owner of, the [Disputed] Domain Names. I have never transferred the [Disputed] Domain Names since I initially registered them on their creation dates.
6. I registered the [Disputed] Domain Names in good faith.
I declare under penalty of perjury that the foregoing is true and correct”.
The Respondent points out that Mr. Nolter is shown in the WhoIs results filed with the Complaint as being the “admin” and “tech” contact in respect of each of the Disputed Domain Names.
The Respondent goes on to say that even if it is wrong as to the Complaint being a refiling, the Complaint should not succeed on its merits. Given the Panel’s finding (below) the Panel does not need to set out the Respondent’s case in this regard.
The Respondent seeks a finding of Reverse Domain Name Hijacking (“RDNH”). It says the present Complaint has been brought in bad faith both because of the fact of the 2012 Seminole case and because of the Complainant’s failure to disclose the details of that case in the Complaint. 6. Discussion and Findings
Clearly the Panel has to determine as a preliminary threshold matter whether or not the Respondent is correct that the present Complaint is barred as being a refiling. If it is then the substance of the Complaint becomes irrelevant.
As noted in GBI Prosperities Pty Ltd., Dr Grow It All Sales Pty Ltd. v. Private Registration / Dave Lovegrove, Real Estate Educational Programmes,WIPO Case No. D2016-0879, there is no express provision in the Policy dealing expressly with this issue. Conscious of the potential for well-resourced complainants to harass potential respondents by repeated filings following an unsuccessful complaint, UDRP panels have exercised their powers under the Policy to reject further complaints over the same domain name against the same respondent in the interests of finality and certainty, bearing in mind that no decision under the Policy precludes a party from pursuing its grievance in an appropriate court. The basic position is fairly summarized in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)
Section 4.18 which provides as follows:
“Under what circumstances would a refiled case be accepted?
A refiled case is one in which a newly-filed UDRP case concerns identical domain name(s) and parties to a previously-decided UDRP case in which the prior panel denied the complaint on the merits. (The previous case may or may not be from another UDRP provider.) As the UDRP itself contains no appeal mechanism, there is no express right to refile a complaint; refiled complaints are exceptional.
Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a ‘without prejudice’ basis.
In the refiling itself, a complainant must clearly indicate the grounds it believes would justify acceptance of the refiled complaint. The WIPO Center would initially assess whether grounds have been pleaded which prima facie justify accepting the refiled complaint. It remains however for any appointed panel to ultimately determine whether such preliminarily-accepted refiled complaint should proceed to a decision on the merits.
In certain highly limited circumstances (such as where a panel found the evidence in a case to be finely balanced, and opined that it may be possible for future respondent behavior to cast a different light on a panel’s assessment of bad faith), a panel may record in its decision that in the event certain conditions would be met, acceptance of a refiled complaint may be justified. The extent to which any such conditions have been met would bear on determining whether a refiled complaint should be accepted prima facie by the provider, and subsequently by the panel.”
In the present case the Complainant’s position is that this is not a refiled complaint. In substance it says this is a new complaint against a different respondent. As such it does not assert that exceptional circumstances apply and does not seek to show it satisfies the requirements outlined above. Rather it says that the Respondent is a different entity to the respondent in the 2012 Seminole case and that its date of acquisition of the Disputed Domain Names, in August 2012 should be taken to be the date at which it registered the Disputed Domain Names and the Complaint should be determined as a fresh complaint.
The question for the Panel then is whether or not this Complaint is a new complaint given the identity of the present Respondent as against the respondent in the 2012 Seminole case. In other words was there a new registration when propertyusa, ltd became the registrant of record in August 2012?
The Panel considers that where there is a transfer of a domain name between commonly controlled entities that transfer generally does not amount to a new registration for the purposes of the Policy. See Schweizerische Bundesbahnen SBB v. Gerrie Villon,WIPO Case No. D2009-1426, where a panel held that an initial registration in good faith does not become a potential registration in bad faith when the transfer is between commonly controlled entities. The panel explained as follows:
“... the transfer of a domain name or trademark between commonly-controlled persons does not act of itself to extinguish rights and legitimate interests that may have accrued in that domain name or trademark. Business enterprises commonly assign and transfer trademarks among commonly controlled entities for a variety of reasons. The assignees and transferees of those marks do not generally abandon prior rights and interests that have accrued in those marks [...] In the absence of some exceptional circumstance, there is no reason to conclude that transfers of domain names between commonly-controlled entities extinguishes pre‑existing rights or legitimate interests in those domain names”.
It follows that, applying this principle, if Mr. Nolter’s evidence is accepted then a transfer has taken place between entities under his control and the Complaint is barred. Before turning to Mr. Nolter’s evidence the Panel will set out what it knows based on the limited record before it as to the entities involved.
In the 2012 Seminole case the Panel recorded that “a Response was filed in the name of the Respondent [i.e., m.m. commerce], which is identified as a wholly owned subsidiary of “World Net Companies” (or “WorldNetCo”), in whose name the Domain Names were originally registered” and that “the account of the joint venture [with the Complainant] 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”. The present Panel is not clear as to what documentary evidence, if any, was before that panel as to the precise nature of the entities in question. In the present case the Complainant says that it has been unable to identify any corporate body in New Zealand with the name “propertyusa, ltd.” It also says it has been unable to identify any Florida limited partnership of that name. It does however exhibit details of two corporations. The first is a Florida State record relating to a “Foreign Profit Corporation” called “Property U.S.A. Inc.” This has a Florida address in Fort Lauderdale and records Mr. Nolter at the same address as being its agent. The filing appears to indicate that its registration was effected in August 1993 and then its status was “revoked” in August 1994. The registration does not indicate whereabouts “Property U.SA. Inc.” was incorporated, assuming it is a foreign (i.e., non‑Florida) corporation. The second is a “Florida Profit Corporation” named “M.M. Commerce Inc.” with a different address in Fort Lauderdale. This record records Mr. Nolter as a director. The record shows an “admin dissolution” of the corporation having occurred on “09/19/2003”.
How, if at all, does this material relate to what Mr. Nolter says in his declaration? The Panel does not know. Mr. Nolter’s declaration talks about “entities” which he says he controls without identifying exactly what these “entities” actually are (beyond specifying what he says is their name). He does not identify whether they have legal personality and he does not exhibit any documents which confirm the position. He says nothing about WorldNetCo – which in the 2012 Seminole case was said to be the owner of m.m. commerce.
Mr. Nolter is represented by counsel who presumably could have ascertained from Mr. Nolter rather more precisely exactly what the position was. Most if not all of these matters are clearly within Mr. Nolter’s knowledge and he could have been much clearer in his explanation. The Panel has no documentary evidence to corroborate what Mr. Nolter says about both these “entities” being controlled by him.
The Panel is left with the strong impression that Mr. Nolter’s statement is deliberately vague as to these matters.
On the evidence before this Panel the only documentary evidence of an “entity” with a name likely to correspond to the Respondent in the 2012 Seminole case appears to be a Florida corporation which was dissolved in 2003 and the only documentary evidence of an “entity” with a name likely to correspond to the Respondent in the present case is an unspecified foreign corporation whose Florida registration was revoked in 1994. Both these entities appear to be connected in at least some respects to Mr. Nolter but there is no evidence one way or another (apart from Mr. Nolter’s assertion) as to who owns these entities. Of course these may not in any event be the “entities” Mr. Nolter was referring to in his declaration. The Panel does not know. It could also be the case that Mr. Nolter (or whoever effected the registrations in question if not him) may have chosen to use a fictitious or non-existent name as registrant. In the Panel’s experience it is relatively common for this to occur and whilst the Registrar’s terms and conditions require the submission of complete and accurate information, in practice no checks are carried out to ascertain whether a named registrant is a real person (individual or legal). In some circumstances use of a non-existent or fictitious name may amount to evidence of bad faith particularly if it appears part of a scheme to obscure actual ownership. The Panel is not however sure whether that is the case here given that Mr. Nolter’s name was recorded on the WhoIs data as admin and tech contact for the Disputed Domain Names.
Given the rather unsatisfactory position the Panel has turned to consider where the burden of proof lies. Its seems to the Panel that in circumstances where a second UDRP complaint is brought in respect of the same domain name or names the burden is prima facie on the Complainant to show that the complaint in question is not a refiling (or that if it is exceptional circumstances make it permissible). However it may be the case that the relevant determinative information is in the possession of the Respondent and the Complainant in effect has to prove a negative – namely that two different entities are not under common control.
In such circumstances the Panel takes the view that if a complainant can establish a credible case that there has been a transfer of ownership, then an evidential burden passes to the Respondent who asserts that common control exists.
In the present case although the Complainant has dealt with the issue rather belatedly the Panel considers that the Complainant has raised a credible case that the present Respondent and the respondent in the 2012 Seminole Case may not be under common control. They have different names and addresses in different countries and the Complainant has searched but has not been able to identify any satisfactory corporate records establishing who or what these entities are, or how they are owned and by whom. Accordingly, the Panel considers an evidential burden falls on the Respondent to establish that it and the respondent in the 2012 Seminole case are under common control.
Does Mr. Nolter’s declaration satisfy that burden? The Panel has concluded, not without hesitation, that it does. Mr. Nolter’s declaration is not entirely satisfactory for the reasons discussed above, but ultimately Mr. Nolter expressly states that such common control exists. Procceedings under the UDRP are not well suited to resolving contested factual issues like this, lacking mandatory discovery, oral evidence, and cross examination. The Panel has to do the best it can with the material that is before it. A sworn statement carries some weight but is not necessarily conclusive – it depends on the totality of the evidence. In the present case the Panel considers there is at least some circumstantial evidence which appears to corroborate Mr. Nolter’s claim to always have been in control of the Disputed Domain Names. First Mr. Nolter’s name appears on the WhoIs records relating to the present registrant. Second, Mr. Nolter was identified in the 2012 Seminole case as the former managing director of the company that was said to own the respondent in that case. Third, as a practical matter, Mr. Nolter is the person handling the Response. Fourth, so far as there is any corporate documentation before the Panel that documentation consistently shows Mr. Nolter as having some connection with the bodies in question. Finally, the Panel also notes that Mr. Nolter has said in his declaration that the Complainant was “fully aware of my common control over the [Disputed] Domain Names and the named respondents in the current and prior proceedings”. The Panel has no knowledge (beyond what has been set out above) as to the history of dealings between Mr. Nolter and the Complainant but Mr. Nolter’s declaration has not been answered by any declaration from anyone on behalf of the Complainant challenging what he has said in this regard. Taking all of this evidence as a whole the Panel has concluded that it is more likely than not that the Disputed Domain Names have been under the control (directly or indirectly) of Mr. Nolter in both the 2012 Seminole case and in the present case. That being so the Panel concludes that the present case is a refiling. As the Complainant has not sought to argue that any exceptional circumstances apply the merits of the Complaint will not be considered.
In reaching this conclusion the Panel makes no finding at all as to whether the Complainant is or is not entitled to any remedies in any applicable legal forum. 7. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking (“RDNH”) is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the [p]anel 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 [p]anel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
As set out in the WIPO Overview 3.0, section 4.16, reasons articulated by panels for finding RDNH include:
“(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence”.
The Panel does not consider the Complainant’s conduct warrants a finding of RDNH. It considers that the Complainant should have appreciated at the outset that the Respondent was likely to argue that the complaint amounted to a refiling, and should have explicitly dealt in the Complaint with the 2012 Seminole case and explained why it considered the present case was maintainable. However, it seems to the Panel that the legal identity of the named Respondent is far from clear and establishing whether or not it was connected to the respondent in the 2012 Seminole case was not straightforward. Even now the evidence offered by Mr. Nolter does not explain properly who or what the named respondent actually is in terms of its legal identity. In those circumstances the Panel is not persuaded the Complainant’s conduct falls within the above guidelines nor that it deserves the censure of a finding of RDNH. 8. Decision
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Presiding Panelist
Diane Cabell
Panelist
Frederick M. Abbott
Panelist
Date: October 22, 2019
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