WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
English Harbour Entertainment Limited v. RaveClub Berlin
Case No. D2002-0287
1. The Parties
The Complainant is English Harbour Entertainment Limited, 11 Old Parham Road, St. Johnís, Antigua.
Represented by Fasken Martineau DuMoulin LLP, Toronto Dominion Bank Tower, Suite 4200, PO Box 20, Toronto-Dominion Centre, Toronto, Ontario, M5K 1N6 Canada.
The Respondent is RaveClub Berlin, 600 Haddonfield Road, Cherry Hill, New Jersey, 08034, United States of America.
2. The Domain Name and Registrar
The Domain Name is <englisharbor.com>.
The Registrar is Computer Service Lagenbach GmbH d.b.a. Joker.com ("CSL").
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") on March 26, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). CSL has confirmed that the domain name <englisharbor.com> ("the Domain Name") was registered through CSL and that RaveClub Berlin ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On April 5, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was April 25, 2002.
No Response was received and on April 26, 2002, the Center issued a Notification of Respondent Default.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center, as a consequence of which the date scheduled for the issuance of the Panelís Decision is May 20, 2002.
4. Factual Background
The Complainant is a company, which was incorporated in Antigua in December 2000. It provides online gambling and casino services to the public under the name English Harbour via the internet at www.englishharbour.com. It claims to have been using the name English Harbour since January 1998. The Complaint does not explain how the Complainant was using the name for nearly three years prior to its incorporation, but the Panel assumes that the Complainant was incorporated to carry on the business of an unincorporated entity trading under that name. Currently the Complainant is using the domain name Ďenglishharbour.comí, which was first registered on September 22, 1999 and which is now registered in the name of the Complainant.
The Respondent, RaveClub Berlin, is a business with an address in Cherry Hill, New Jersey. It registered the Domain Name on July 6, 2001. The Domain Name is currently connected to a website at www.amaturevideos.nl. This website contains pornographic pictures and advertises pornographic services. On the date that the Panel visited the site (May 13, 2001) on seeking to exit the site, the Panel was faced with a window advertising online casino services at www.888.com under the name Casino On Net.
On October 18, 2001, in an action between Federal Trade Commission and John Zuccarini (trading under a variety of business names including the name RaveClub Berlin) the United States District Court for the Eastern District of Pennsylvania issued a wide-ranging preliminary injunction. Under the heading of Ďprohibited business activitiesí paragraph 1 reads:
"It is therefore ordered that, in connection with the advertising, promotion, offering for sale, sale or provision of any goods or services on the internet, the world wide web, and/or any web page or website the Defendant is hereby preliminarily restrained and enjoined from both: (i) the combined practice of redirecting and obstructing consumers on the internet or world wide web and (ii) obstructing consumers on the internet or world wide web."
Paragraph 4 reads:-
"It is further ordered that the Defendant and/or any agent, employee or associate of Defendant, or any host or hosting company of the Defendant shall:
AImmediately take whatever steps may be necessary to ensure that the following web pages or websites operated, in whole or in part, by the Defendant cannot be accessed by the public: Ö (4) www.amatuervideos.com.
On March 14, 2002, the Complainantís attorney sent a cease and desist letter to the Respondent, but has received no reply.
5. Partiesí Contentions
The Complainant contends that the Domain Name is confusingly similar to a trade mark or service mark in which it has rights. Insofar as similarity is concerned it points to the fact that in substance the Domain Name only differs from the Complainantís name and domain name in that it omits an Ďhí and the Ďuí.
As to its trade mark rights, the Complainant claims no registered trade mark rights, but seeks to rely upon its unregistered rights i.e. its common law rights derived from what it claims to be the significant degree of consumer recognition that its name has achieved. It claims that it receives significant website traffic using its domain name, englishharbour.com and that its name and website is well-known. It claims that its name is a symbol of the goodwill and excellent reputation, which the Complainant enjoys for its on-line gambling and casino services.
The Complainant claims that the similarity between the Domain Name and the Complainantís common law trade mark, English Harbour, is such that confusion is likely. It points to the fact that the two names are phonetically similar and claims that the differences are trivial. The meaning of each is the same.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not licensed the Respondent to use its name. The company name of the Respondent is RaveClub Berlin. It has no apparent connection with the name English Harbor/Harbour. The Domain Name is connected to a website at www.amaturevideos.nl which contains pornographic material and nothing to do with English Harbor/Harbour. So far as the Complainant is aware the Domain Name is not the name of any legitimate business of the Respondent. In the view of the Respondent the connecting of the Domain Name to the pornographic website cannot in all the circumstances of the case be regarded as a genuine business use of the Domain Name.
The Complainant contends that the Domain Name was registered in bad faith and is being used in bad faith. The Complainant claims registration of the Domain Name to have been a deliberate act on the part of the Respondent to register a mis-spelling of the Complainantís well-known domain name and mark, the objective being to divert to itself traffic intended for the Complainant and with a view to attracting customers for its services.
The Complainant also claims that the Respondent registered the Domain Name and connected it to a pornographic site with a view to extorting from the Complainant a sum of money in excess of the Respondentís out-of-pocket expenses relating directly to registration of the Domain Name.
The Complainant also points to the fact that the Respondentís name is a business name of John Zuccarini, a notorious Ďcyberscammerí. The Complainant claims that in doing what the Respondent is doing the Respondent is in breach of an order of the US District Court for the Eastern District of Pennsylvania (extracts quoted above) and is therefore in contempt of that court.
The Respondent has not responded
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical to a trade mark 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 in bad faith and is being used in bad faith.
Where a Respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)).
Identical or confusingly similar
There is no question but that the Domain Name is very similar, indeed confusingly similar, to the Complainantís name and domain name. The Domain Name is in substance identical phonetically to the Complainantís name and domain name. The absence of one of the Ďhís is insignificant and Ďharborí is the American equivalent of Ďharbourí. While the Complainant is in the business of online gambling and the Respondent is in the business of online pornography, as is recorded above, the Panel having visited the Respondentís website was faced with a window advertising online casino services under the name Casino On Net.
The question is: does the Complainant have common law rights in its name? While the Complainant makes substantial claims as to the reputation and goodwill associated with its name, it produces no evidence to support those claims beyond exhibiting print-ups from its website. It provides no details of the extent of its trade under and by reference to the name, not even the numbers of visitors to its website.
Despite the weakness of the evidence, the fact is that the Respondent has not disputed any of it. Moreover the exhibited pages from the website seem to demonstrate a substantial business. The Panel is prepared to accept that on the balance of probabilities the Complainantís claims in this regard are accurate.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
Respondentís Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any one of which if found by the Panel to have been proved shall demonstrate the Respondentís rights or legitimate interests in respect of the Domain Name.
However, the need for the Respondent to demonstrate anything only arises once the Complainant has shown a prima facie case, the burden of proof under paragraph 4(a) being on the Complainant.
The Complainantís case is that the Respondent is not licensed to use its trade mark, is not known by the Domain Name, has not been conducting any genuine business under and by reference to the Domain Name and is not making a non-commercial or fair use of the Domain Name. The Complainant asks the Panel to infer from the track record of Mr John Zuccarini, who has a business name, which is the same as the name of the Respondent, that this is just another example of the cybersquatting activity of that individual.
In the view of the Panel the Complainant has made out a prima facie case. The Respondentís name has no obvious association with the Domain Name and the use that the Respondent has made of the Domain Name has no obvious connection with the name the Respondent has selected for the Domain Name. Moreover, given the very close similarity between the web address to which the Domain Name is connected (www.amaturevideos.nl) and the web address the subject of the preliminary injunction quoted above www.amatuervideos.com , the Panel is of the view that the Respondent is in all probability an alter ego of Mr Zuccarini.
In other words the Respondent has a case to answer. The Respondent has not answered and the Panel can think of no reason why the Respondent might reasonably be said to have rights or legitimate interest in respect of the Domain Name.
The Panel finds on the balance of probabilities that the Respondent has no rights or legitimate interest in respect of the Domain Name.
The Complainant asserts that the Domain Name was registered in bad faith and is being used in bad faith. The Complainant claims that the Respondent registered the Domain Name with a view to extorting money from the Complainant in return for transfer of the Domain Name. The allegation is that the sum of money involved would be in excess of the Respondentís out-of-pocket expenses relating directly to the registration of the Domain Name and that this, therefore, constitutes bad faith registration and use within the meaning of paragraph 4(b)(i) of the Policy. The Complainant also claims that the Respondent registered the Domain Name deliberately with a view to diverting customers from the Complainantís website to its own website for commercial gain, which constitutes bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel notes that the Respondent has made no attempt to approach the Complainant with a view to selling the Domain Name to the Complainant and that the Respondent did not respond to the Complainantís Attorneyís cease and desist letter. The Panel doubts therefore that the Respondent has any immediate intention of offering to sell the Domain Name to the Respondent. Whether or not that is the Respondentís long-term objective, it is not possible to say.
However, it is clear that would-be visitors to the Complainantís website who spell the name in the American fashion and omit the second "h" will be faced with the advertisements referred to above, including the Casino On Net online gambling advertisement. The Panel is of the view that that is likely to have been the Respondentís intention when the Respondent registered the Domain Name.
The Panel finds that by its use of the Domain Name the Respondent has intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainantís mark as to the source of the Respondentís website or location of a product or service on the Respondentís website.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith, the Panel directs that the Domain Name, <englisharbor.com>, be transferred to the Complainant.
Dated: May 13, 2002