WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Grand Bay Management Company v. Allegory Investments

Case No. D2001-0874

 

1. The Parties

The Complainant in this administrative proceeding is Grand Bay Management Company, a Florida corporation with its principal place of business in Texas, United States of America.

The Respondent in this Administrative Proceeding is Allegory Investments, P.O. Box 29836, London, England, United Kingdom.

 

2. The Domain Name and Registrar

The disputed domain name is <casinograndbay.com>. The Registrar of this domain name is Tierranet, Inc., of San Diego, California, United States of America.

By registering the subject domain name with the Registrar, the Respondents agreed to the resolution of disputes pursuant to the Policy and Rules.

 

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of three members was appointed on September 7, 2001, by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 11, 2001, by email and on July 12, 2001, by hard copy. The Center dispatched to the Registrar a Request for Registrar Verification on July 12, 2001. On July 17, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. The Respondent filed its Response with the Center on August 2, 2001, by email and on August 7, 2001, by hard copy. The Respondent filed an amendment to its Response on August 8, 2001, by email and on August 15, 2001, by hard copy.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

 

4. Factual Background

The following information is derived from the Complainantís material.

The Complainant is a wholly-owned subsidiary of Wyndham International, Inc., which owns, leases, manages, and franchises hotels in the United States, Canada, Mexico, the Caribbean and Europe.

The Complainant is the owner of the following United States Trademark Registrations and applications for the GRAND BAY mark:

Mark

Registration No.

Registration Date

Services

GRAND BAY HOTEL

1,438,386

April 28, 1987

Hotel services

GRAND BAY

74,802,554

January 30, 1996

Real estate

GRAND BAY CLUB

2,187,097

September 8, 1998

Beach club services

GRAND BAY HOTEL AND RESORTS

75,643,527

ITU

Resort hotel and Related services

GRAND BAY

75,980,232

ITU

Health clubs

The Complainant and its predecessors have used the mark since 1983 in connection with hotels and resorts and more recently, with condominiums and houses. Over the years, the GRAND BAY mark has developed an international reputation for excellence. The GRAND BAY mark has appeared in several newspapers and virtually every major industry guide for lodging and resorts. The Complainant and its predecessors have made considerable expenditures to establish the GRAND BAY mark in the minds of customers as designating a source of unparalleled excellence and high quality service. As a result of this use and promotion, consumer recognition of the GRAND BAY mark has grown throughout the United States and abroad. Consumers associate the GRAND BAY mark with the Complainant as one of the most prestigious companies in the world for resort and hotel services.

The corporate parent of the Complainant, Wyndham International, Inc., is the owner and holder of the domain name <grandbay.com> which transfers all inquiries to the Wyndham Hotel and Resort's home page.

Due to its continuous and extensive use of the GRAND BAY mark prior to the Respondent's registration of the subject domain name in October 2000, and the Complainant's registration of this mark as a trademark in the United States, it has strong trademark rights in the name and mark used in connection with hotel and resort services. In addition, due to the Complainant's extensive use of the mark and substantial promotional activities over the last eighteen years, the words "GRAND BAY" have acquired a secondary meaning in connection with hotel and resort services.

Several of the hotels in the Wyndham Hotel & Resort chain prominently include the word "Casino" in their respective trade names, including the Wyndham Aruba Beach Resort & Casino, and Wyndham El San Juan Hotel & Casino.

The Respondent is not identified or commonly known by the name CASINOGRANDBAY. It is not affiliated with the Complainant. The Complainant has not licensed the Respondent to use its trademark and the Respondent is not an agent or a distributor of the Complainant's products and services.

The following information is derived from the Respondentís material.

The LiveWeb N.V. is the proprietor of the <casinograndbay.com> web site. An exclusive, indefinite agreement exists between it and the Respondent for the use of the subject domain name. This relationship exists for a number of important reasons, such as but not limited to: digital certification, tax implications and responsible domain name administration. The Respondentís sole purpose is the registration and administration of domain names. LiveWeb N.V. is the end user and primary beneficiary of the subject domain name. Although it was named as a Respondent in the response, it was not so described in the Complaint and no application has been made to join it as a respondent.

LiveWeb N.V. and the Respondent provide online gaming services to the international community.

They first decided to adopt the subject domain name for the provision of online gaming services in the year 2000. It was chosen after a visit to the Tropical Island of Mauritius in the Indian Ocean. A popular tourist destination on the island of Mauritius is a former fishing village called "Grand Bay", home to many fine hotels, resorts and villas.

The same village is known by its French translation, "Grande Baie" and the Respondents have registered the French translation of this domain name <casinograndebaie.com>, which registration was finalized on the same day as the subject domain name.

Due to the lush tropical settings and the friendly local people, it was decided to promote their online gaming service based on this tropical theme. It is the adoption of this theme that has resulted in the association of the subject domain name with a fictitious luxury liner as the setting for this online casino.

The fictitious luxury liner, named (CGB Ė Casino Grand Bay), is a floating casino that travels the world and anchors in exotic destinations when it is not anchored in Grand Bay Mauritius itself. The entire Casino Grand Bay web site is based on this theme, offering its "guests" the use of its exclusive onboard casino, while the liner transverses the globe.

The name "Grand Bay" is found in a number of other geographical locations around the world. A spot Internet search revealed that there are at least 5 other geographical locations called "Grand Bay" around the world.

The web site is a well developed, established, and distinctive, secure online gaming site and is run by some of the most powerful security, encryption, and gaming, software in the world. It receives an average of 10,000 unique visitors to its site per month, originating from a number of countries around the world. According to internal forecasts this number should triple within the next few months.

The CASINO GRAND BAY web site is reviewed by Pricewaterhousecoopers, Inc., and its reports are published on the web site from time to time.

The Respondent has spent in excess of US$600,000.00 in building, branding, marketing and advertising the subject domain name since its registration in 2000. The forecasted marketing budget for this venture is set at US$1,000,000.00 per annum, a substantial amount of money by anyoneís standards.

At present the Respondent has sought and obtained banner exchanges and listings on a number of well-known related online gaming sites.

In addition to the subject domain name the Respondent registered and uses the following URLís in association: <casinograndebaie.com> (French); <grandebaiecasino.com> (French); <casinograndbay.net>; <casinograndbay.org>

All of the above domain names were registered on the same date as the subject domain name.

A search on the well-known (predominantly US) Internet search engine "YAHOO.COM", using "Grand Bay" as a search parameter, revealed 36 different results relating to various organizations and geographical locations around the world, including references to the Respondentís online gaming services.

If the search parameter were restricted to "CASINO GRAND BAY" on the YAHOO search engine, only one result would be generated, that of the Respondent.

The Respondent has branded, marketed and advertised its services under the name "CGB -CASINO GRAND BAY" and has not purported to offer any services other than online gaming services. The Respondent has, through the expenditure of substantial amounts of money and time, developed and sustained substantial reputation and goodwill in and to the subject domain name.

The Complainantís <grandbay.com> web site appears not to associate directly with a dedicated web site, but rather forwards to the following URL: tp://www.wyndham.com/AboutWyndham/luxury.cfm. After a number of maneuvers the user is directed to a web page relating to GRAND BAY HOTEL ISLA NAVIDAD (Mexico). Nowhere is there a mention of, or reference to, gaming services or the like. There is no association or combination of the words "CASINO" and "GRANDBAY" on the site.

 

5. Partiesí Contentions

A. Complainant

The Complainant says that the subject domain name is confusingly similar to Complainant's GRAND BAY trademark. The domain name incorporates the "Grand Bay" name with the addition of the generic word "casino." The Complainant relies on prior UDRP panel decisions that have recognized that confusing similarity exists where the respondent merely adds generic terms to a mark. For example: Arizona State University v. Value Holdings, Inc., WIPO Case No. D2001-0445 (May 31, 2001)(finding <asunudes.com> confusingly similar to complainant's "ASU" mark); Ebay Inc. v. Ebay4sex.com, WIPO Case no. D2000-1632 (January 18, 2001)(<ebay4sex.com> was confusingly similar to complainant's "EBAY" mark); Caterpillar, Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275 (March 25, 2000)(<catmachines.com> confusingly similar to complainant's "CAT" and "CATERPILLAR" marks). In addition, the Complaint points to the form of the subject domain name.

The Complainant asserts that the Respondent does not have a legitimate interest in the subject domain name because it is not known by it, and is not connected to the Complainant, and is not using the name for a legitimate purpose.

Bad faith is said to be based on the timing of the registration, a similarity in style and an allegation that customers are drawn to the Respondent by reason of the Complainantís goodwill.

B. Respondent

The Respondent denies all of the allegations of the Complainant and questions the validity of its intellectual property rights because documentation to support them has not been filed in this proceeding. Pointing to the genesis of the decision to use the words "grand bay" and to the use by others of the words, the Respondent says that the Complainant does not have exclusive rights to them.

The development and use of the subject domain name is relied upon to show that the Respondent does have a legitimate interest in the subject domain name and that there was no bad faith in its registration and use of the subject domain name.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the 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 interest in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant refers to a number of domain name dispute decisions. While these are neither controlling nor binding on this administrative panel, they can be of assistance in appropriate circumstances.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the words "grand bay".

It contends that the subject domain name is confusingly similar. It uses the words "grand bay". The Complainant says that the mere addition of the word "casino" does not make the subject domain name any less confusingly similar because that word is a generic description.

It relies on a number of cases in which Administrative Panels have so held. An examination of these cases shows that they clearly are different. The addition of the generic word in those cases integrated the generic word with the words to which the complainants had rights. (nudes + asu; 4sex + ebay; machines + cat). In this case, the word "casino" directs the mind to a specific activity. It is the main focus. The words "grand bay" merely are descriptive, essentially adjectival.

The Complainant stresses that its mark is used "in connection with hotel and resort services" and that it is known "as one of the most prestigious companies in the world for resort and hotel services". A user who wants to connect to the Complainant and its commercial activities is unlikely to be confused because the word "casino" is part of a domain name.

In addition, the words "grand bay" are used in many circumstances. They are the name of a place and can describe other places. To establish that their use in a domain name is confusingly similar to a trademark, which incorporates them, a complainant would have to show at least that the use is focused on the activities to which the trademark relates. While the Complainant is associated with hotels that have casinos, this connection is not sufficient to deprive others, especially those whose main business is casinos, of the right to use the word. Linking the word with others, which are descriptive, does not lead to confusion with the use by others of the descriptive words.

The majority of the Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Respondentís Legitimate Interest

The Respondent has described the genesis of its decision to register and use the subject domain name. It has spent a great deal of money to promote it and actively uses it in its business. That circumstance viewed in the context of the Respondent's explanation of the genesis does not in and of itself make the Respondentís use legitimate, but it is evidence that suggests a legitimate interest in the subject domain name.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Bad Faith

The Complainant has provided no positive information concerning bad faith. At best, it asks the Administrative Panel to infer bad faith from its allegation of similarity and lack of a legitimate interest. Even if these allegation were sustained as conclusions by the majority of the Administrative Panel, and they are not, standing alone, they would not meet the Complainant's obligation to establish its case.

The Respondentís use of the subject domain name and its explanation for why it was developed, belie bad faith.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on its consideration of the information and on its findings of fact, the Administrative Panel concludes that the Complainant has not established its case and it is dismissed.

 


 

Edward C. Chiasson, Q.C.
Presiding Panelist

Ian Donovan
Panelist

Dated: September 21, 2000

 


 

Concurring Opinion

I agree with the Majority that the Complaint should be denied.

However, I find that the Complainant has met the requirements of Paragraph 4(a)(i) of the Policy. With regard to whether the domain name is confusingly similar to Complainantís marks, that evaluation, under the Policy, should be based solely on the similarity of the marks and names at issue rather than on the traditional, multi-factor likelihood of confusion analysis. Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774 (February 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. WIPO Case No. D2000-1525 (January 29, 2001) (same).

Accordingly, I find that the domain name <casinograndbay.com> is confusingly similar to Complainantís mark GRAND BAY and the variations of that mark registered by Complainant, particularly since they differ only by the generic term "casino" and there is no question that casinos and hotels/resorts are closely related services.

I find with the Majority that Complainant has not met its burden in proving that Respondent does not have a legitimate interest in the domain name. However, I do not agree with the Majority that Respondentís investment, via its licensee, of $600,000 in the website automatically demonstrates Respondentís legitimate interest. Rather, Respondentís explanation for the geographic basis for the creation of the domain name suggests that Respondent selected that name in good faith.

As to bad faith, I find with the Majority that Complainant has not met its burden in proving that Respondent acted in bad faith. Complainant relied solely on the similarity of the names and the connection between casinos and hotels in alleging bad faith under Section 4(b)(iv). Complainant did not provide any other evidence of bad faith under the Policy (e.g., offer to sell the name, or pattern of registering trademark related domain names) or evidence of Respondentís attempt to trade off of Complainantís goodwill (e.g., using Complainantís logos or trade dress). Complainantís argument would have been more persuasive if its mark was coined or famous. However, because "Grand Bay" is an inherently weak term and there are other uses for the phrase "Grand Bay" that are not arbitrary, such as the names of geographic locations, I find that Complainant has not met its burden of proof in this case.

 


 

David M. Kelly
Panelist

Dated: September 21, 2000