WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vegasinsider.com, Inc. v. Knot Investments

Case No. D2001-0963

 

1. The Parties

The Complainant in this administrative proceeding is VegasInsider.com, Inc., a Delaware corporation with its principal place of business at 2200 W. Cypress Creek Road, Ft. Lauderdale, FL 33309.

The Respondent in this Administrative Proceeding is KNOT INVESTMENTS. The administrative contact is Jerry Stein; e-mail:jeghopper@hotmail.com; telephone: 268-480-0012; facsimile:

 

2. The Domain Names and Registrar

The disputed domain names are <vegasinsder.com>, <vegasinsidr.com>, <vgasinsider.com>, <vegsinsider.com>, <vegasnsider.com> and <veagasinsider.com>. The Registrar of these domain names is Tucows, Inc., of Toronto, Ontario, Canada.

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 Policy for Domain Name Dispute Resolution, 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 one member 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 26, 2001, by hard copy and on August 2, 2001, by email. The Center dispatched to the Registrar a Request for Registrar Verification on August 7, 2001. On August 8, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding and notified the Respondent that its Response would be due by August 29, 2001. The Respondent did not file a response by the due date.

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 well-known Internet sports odds and analysis, media and entertainment company, which owns and operates numerous websites, including the VegasInsider website, operated at the domain <vegasinsider.com>.

The Complainant is the owner of trademark registration number 2,367,391 for the VEGAS INSIDER mark in international class 42, for the provision of information on gambling via a global computer network; providing interactive games and contests via a global computer network; production of television and radio programming in the field of gambling contests via a global computer network; production of television and radio programming in the field of gambling.

It has spent a substantial sum of money advertising and promoting the Vegas Insider website and other VEGAS INSIDER branded products and services, which has resulted in the creation of a great deal of goodwill and popularity for the VEGAS INSIDER mark. Complainantís advertising and promotional efforts have included, among other things, Internet, television and radio advertisements and promotions, as well as the use of promotional merchandise, such as t-shirts and hats that display the VEGAS INSIDER mark.

As a result of the Complainant's use of the VEGAS INSIDER mark, its advertising and promotional efforts and expenditures in connection with the mark, and the wide recognition achieved for the mark, the public has come to associate the VEGAS INSIDER mark with services originating with, emanating from, sponsored by or otherwise associated with or approved by Complainant.

The Complainant also owns common law trademark rights in the name and mark "VEGAS INSIDER".

On or about May 11, 2000, the Respondent registered the subject domain names.

On or about December 12, 2000, the Complainant sent a cease and desist letter to Respondent, demanding that it transfer the <vegasinsder.com>domain name to Complainant. The Complainant received no response. Subsequently, the Complainant discovered that the Respondent registered the remaining subject domain names which are the subject of this action.

The Respondent is not commonly known by the name VEGAS INSIDER and has not been authorized by the Complainant to use the VEGAS INSIDER name or mark.

Each of the subject domain names resolves to a website branded as "WORLDWIDE GAMBLE" and promoted as an online casino and sportsbook. The subject domain names do not remain in the browser window.

The Respondent is also a respondent in a separate action brought by SportsLine.com, Inc., the parent company of the Complainant, but with respect to SportsLine.com, Inc.ís CBS SportsLine website and the related "cbs.sportsline.com" domain.

The Respondent made no submission in this proceeding.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on its use and registration of the words "vagas insider". It asserts that the subject domain names are essentially identical or confusingly similar. The Complainant relies on the use to which the Respondent puts the subject domain names as showing that it does not have a legitimate interest in them. They merely attract customers to the Respondent's website. It also notes that the Respondent is not known by the names.

Bad faith is shown by the similarity, registration and use of the subject domain names.

B. Respondent

The Respondent has not participated in this proceeding.

 

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 service mark in which the Complainant has rights;

(ii) the Respondent has no legitimate interest in respect of the domain name;

(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 website 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 website 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.

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

The Complainant clearly has rights to the words "vagas insider". The subject domain names essentially are identical. They merely are various misspellings of the words. The fact that the Respondent uses them to attract customers to its website and then causes them to disappear supports the conclusion that they are confusingly similar.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Respondents Legitimate Interest

The fact that the Respondent uses the subject domain names to attract customers to its website and then causes them to disappear supports the conclusion that it does not have a legitimate interest in them. While the Respondent carries on commercial activities associated with the subject domain name, the abuse of a trademark to do so is not legitimate in the context of the Policy. The fact that it is not known by the names also is relevant.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Bad Faith

The facts that a respondent has registered a domain name in which it has no legitimate interest and which is identical or confusingly similar to rights of a complainant does not lead necessarily to the conclusion that the domain name was registered and used in bad faith, but the information which leads to those conclusions may be relevant to a consideration of bad faith.

In this case, the creation of the subject domain names which merely are misspellings of the Complainantís mark, prima facie is a blatant misuse of the words by which the Complainant is known and to which it has rights. The use of the subject domain names to lead customers to the Respondent's commercial activities again appears to be a blatant misuse of the domain name registration process. These facts support an inference of bad faith.

There is no question that by the Respondent's actions the Complainant's rights are compromised.

In the absence of any explanation by the Respondent, the Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and its findings, the Administrative Panel concludes that the Complaint has established its case. It asked that the subject domain names be transferred to it.

The Administrative Panel so orders.

 


 

Edward C. Chiasson, Q.C.
Sole Panelist

Dated: September 12, 2001