WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ontario Lottery and Gaming Corporation v. Paul Sweitzer

Case No. D2002-0602

 

1. The Parties

The first Complainant in this administrative proceeding is Ontario Lottery and Gaming Corporation. It is a corporation and Crown agency incorporated as a public authority under the laws of Ontario, through legislative authority of the Ontario Lottery and Gaming Corporation Act, 1999 ("OLGCA"). Its principal place of business is in Toronto, Ontario, Canada.

The second Complainant in this administrative proceeding is Ontario Casino Corporation. It is a corporation and Crown agency incorporated as a public authority under the laws of Ontario, through legislative authority of the Government of Ontario. Its principal place of business is Toronto, Ontario, Canada.

According to the WHOIS database searches of Namescout Corp., the Respondent is Paul Sweitzer, whose principal address is in Niagara Falls, Ontario, Canada.

 

2. The Domain Name and Registrar

The disputed domain name is <casinoniagaraonline.com>.

The Registrar is Namescout Corp.

 

3. Procedural History

The Complaint was submitted to the WIPO Arbitration and Mediation Center ("the Center") by email on June 28, 2002. The Center received a hardcopy of the Complaint on July 2, 2002. The Center acknowledged receipt of the Complaint on June 28, 2002.

The Center issued a request for Registrar Verification from the Registrar on June 28, 2002. The Registrar responded by email on June 28, 2002. Communications from the Respondent were received on June 28, 2002. The Center responded on July 3, 2002. Further correspondence was received from the Registrar (additional confirmations) on July 1, 2002, to which the Center responded on July 2, 2002.

A Formal Requirements Compliance Checklist was initiated by the Center, and completed on July 3, 2002. The Center determined that Complainant was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Policy"), in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The Panelist has independently reviewed the requirements and finds that Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.

Complainant has paid the required fees for a single-member Panel on time and in the required amount.

No formal deficiencies having been noted, on July 3, 2002, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"). Having reviewed the communications records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent".

Correspondence took place between the Center and the Complainantís authorized representative on July 12, 2002.

On July 24, 2002, the WIPO Center transmitted to the Parties a Notification of Respondent Default.

On July 26, 2002, the Center invited Leon Trakman to serve as the Sole Panelist in Case No. D2002-0602 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Leon Trakmanís Statement of Acceptance and Declaration of Impartiality and Independence was received on July 29, 2002. On July 29, 2002, the Center transmitted a Notification of Appointment of Administrative Panel and projected decision date of August 12, 2002. On July 29, 2002, the Center transmitted the case file to the Sole Panelist.

The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

 

4. Factual Background

According to the WHOIS records, the Respondent registered the domain name <casinoniagaraonline.com> on April 16, 2002. The Complainant alleges that the Respondentís registration follows, by at least eight years, the Complainant's first use of the trade mark CASINO NIAGARA in Canada and the United States. (See further Section 6 below.)

There is no evidence on the record of the Respondent registering the trade mark or domain name CASINO NIAGARA or CASINO NIAGARA ONLINE prior to the Complainantís use of the same, if at all.

On June 25, 2002, the Respondent sent an email from his email account at <sweitzers@sympatico.ca>, to the Complainant at <info@casinoniagara.com>, declaring that the domain name would be posted for sale on the auction site, eBay, by the "end of the week". The email added that, "The starting bid is 20,000. If this auction does not end with any bids, there will be an off shore casino online for Niagara."

Complainant provides evidence that, since registering the domain name, Respondent did not appear to be using the website to offer goods or services on an ongoing basis. In support, Complainant provides copies of screenshots of error messages dated June 27, 2002, that the domain name registered by the Respondent did not resolve to an active website.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, the Respondent has no rights or legitimate interests in respect of the domain names at issue, and the Respondent has registered and is using the domain names in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

As a preliminary matter, the Complainant submits that, the two Complainants are in fact the same entity and should be treated collectively as a single "Complainant". Given the merger of the Complainants, as outlined below, the Panel so holds.

The Complainant contends that this dispute is properly within the scope of the Policy, that the Administrative Panel has jurisdiction to decide the dispute, and that the registration agreement, pursuant to which the domain name that is the subject of the Complaint is registered, incorporates the Policy. The Panel agrees.

The Complainant contends further, that the domain name, <casinoniagaraonline.com> referred to in Section 2 violates the Policy in three respects. Firstly, it is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Secondly, the Respondent has no rights or legitimate interests in respect of the disputed domain name. Thirdly, the domain name was registered and is being used in bad faith. As will be outlined below, the Panel concurs in these substantive contentions.

The Complainant clearly has a long-standing trade mark. The history of that legal right is outlined below.

The first Complainant is the Ontario Lottery and Gaming Corporation ("OLGC"), a Crown agency created on April 1, 2000. It owned the CASINO NIAGARA trade marks, official marks and trade name until that date. At that date, the Government of Ontario merged the first Complainant with the second Complainant, Ontario Casino Corporation ("OCC") another Crown agency, established by legislation in 1994 and the Ontario Lottery Corporation ("OLC"), established in 1975. The merger gave rise to the OLGCA. The OCC, and now the OLGC, were and are statutory agencies. They were created to have the sole and exclusive right within the Province of Ontario to conduct, manage and provide for the operation of casinos.

The Complainant alleges that, until the merger, the OCC had been the registered owner of trade marks and official marks used in association with casino and related entertainment services. The Complainant alleges further that the OLGC is now the effective owner of these marks as a consequence of the merger of the OCC into the OLGC, and the transfer of the OCC's property, rights and assets to the OLGC.

The Complainant adduces further evidence that it owns various trade marks in Canada

including, among others, CASINO NIAGARA, CASINO NIAGARA & FALLS Design, NIAGARA CASINO, CASINO NIAGARA & Design. It also provides evidence that it has applied for trade mark rights in the United States under the trade mark CASINO NIAGARA.

The Complainant also argues that it has a pre-existing common law trade mark right in the CASINO NIAGARA mark, used in Canada and the United States as an unregistered trade mark and trade name since at least as early as October 1996. It alleges that this common law right arises on consequences of services it has provided since that time, including the operation of a casino, restaurant and food services, the operation of retail stores, and the sale of wares including clothing (such as t-shirts, golf shirts, jackets, hats), merchandise and novelty items, including mugs, pens, key chains, playing cards and rolling dice. In support of its alleged common law right, the Complaint includes copies of brochures used or being by used the Complainant since 2001.

The Complainant contends that, under its operating agreement with the Falls Management Corporation ("FMC"), the FMC is authorized to operate the CASINO NIAGARA interim Complex and to use the CASINO NIAGARA mark and name under license. It maintains that the use of the Complainant's trade marks, official marks, and trade names, and the use and registration of domain names, including the CASINO NIAGARA or NIAGARA CASINO designations, are licensed under the operating agreement to FMC. It maintains, too, that all such use by the FMC accrues to the benefit of the Complainant.

The Complainant owns and uses three domain name registrations, through its authorized licensee, Falls Management Corporation. These include: <casinoniagara.com>, <casino-niagara.com>, <casinoniagara.ca>. All three domain names resolve to the Complainant's official CASINO NIAGARA website at the Uniform Resource Locator ("URL") "http://www.discoverniagara.com". At that site, the Complainantís trade marks and official marks are identified. There, too, Complainant advertises its CASINO NIAGARA services and wares bearing the CASINO NIAGARA mark sold through its retail outlets.

While the Complainant does not significantly substantiate its allegation that it enjoys pre-existing common law trade mark rights, it does provide reasonable evidence that it has acquired legal rights to both trade marks and domain name protection over an extended period of time. It has also adduced evidence, to the satisfaction of this Panel, that it has a cogent legal interest in identifiable and ongoing commercial activities in the exercise of these rights.

The Respondent does not enjoy comparable rights. On the first ground, the Respondentís <casinoniagaraonline.com> domain name registered is confusingly similar to the Complainant's CASINO NIAGARA official marks and trade marks. It is also confusingly similar to the Complainant's NIAGARA CASINO mark, consisting of the two primary components of the mark in reverse order. The Panel also agrees with the Complainant that the word ONLINE in <casinoniagaraonline.com> is merely descriptive of CASINO NIAGARA services or goods offered over the Internet. In particular, the word "online" has no distinguishing attributes that are identified with the Respondent. In all other respects, the disputed domain name is identical to the various trade marks rights of the Complainant. The Respondentís use of the ".com" top level domain ("gTLD") in <casinoniagaraonline.com> also does not negate its confusingly similar character to the Complainantís trade mark and domain name rights. The ".com" is a generic; it has no distinctive value in itself sufficiently to justify legal protection in this case.

On the second ground, the Respondent lacks a legitimate right to the contested domain name. There is no evidence that the Respondent has any trade mark applications or registrations in Canada or the United States for CASINO NIAGARA or CASINO NIAGARA ONLINE. Nor does the Respondent have any legitimate pre-existing right or interest that otherwise might arise out of being associated with the name CASINO NIAGARA or CASINO NIAGARA ONLINE. This apparent lack of legitimacy is counterbalanced by the trade mark registrations and applications of the Complainant in both Canada and the United States.

The Respondentís lack of legitimate right or interest in the disputed domain name is also evident, given the time of its registration. According to the WHOIS records, the Respondent registered the <casinoniagaraonline.com> domain name only on April 16, 2002. In contrast, the Complainant had been using the CASINO NIAGARA for a number of years before that date. Nor does the record evidence any bona fide offering of goods or services by the Respondent in relation to the use of the disputed domain name that might otherwise render it legitimate.

The Panel also holds that the Respondent acted in bad faith in its use of the disputed domain name. This is reasonably evident from the fact that, two months after registering it, on June 25, 2002, the Respondent sent an email from his email account at <sweitzers@sympatico.ca>, to the Complainant at <info@casinoniagara.com>, declaring that the disputed domain name would be posted for sale on the auction site, eBay, by the "end of the week". It is also apparent that the Respondent was attempting to set an exorbitant price by which it would sell the name to the Respondent, by stating in the email that "The starting bid is 20,000. If this auction does not end with any bids, there will be an off shore casino online for Niagara." The Panel agrees with the Complainant that the Respondent's actions and timing, in proposing to auction the domain name at a price inflated well beyond the acquisition price and very soon after registering it, was intended to threaten the Complainant in bad faith. It is reasonable to assume that the Respondent intended his threat of an imminent sale of the domain name on e-Bay unless the Complainant paid the exorbitant price proposed. Of note, the cost to the Respondent of registering the domain name was USD$25. The amount identified in the email sent to the Complainant was "20,000". Whether the Respondent was referring to Canadian or American dollars, the amount in both cases is out of proportion to Respondentís cost of acquiring the domain name, in addition to using the domain name in bad faith.

As further evidence of the Respondentís bad faith, as well as the illegitimate nature of his interest, the Respondent does not appear to have taken any steps, since registering it, to use the disputed domain name for any purpose other than to threaten the Respondent with auctioning it on e-Bay. There is no evidence that the Respondent used the disputed domain name in connection with any bona fide offering of goods or services, or for any legitimate business or non-commercial purpose.

The principle that inaction by a Respondent can constitute bad faith is well evidenced in the jurisprudence. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel held that comparable "inaction" by a Respondent, in failing to use a domain name, can constitute a bad faith use. A comparable principle has been followed by subsequent panels as noted in Do The Hustle, LLC v. Donald Wilson, WIPO Case No. D2000-0627, paragraph 6.8.

In the current case, the Respondent has also demonstrated bad faith, not only by inaction, but also by action. Such action is evident in the Respondentís attempt to force the Complainant, a legitimate rightholder with a strikingly similar and commercially viable trade mark, to buy, rent, or otherwise secure transfer of the domain name to it.

Nor can the Respondent reasonably argue that it was somehow unaware of the status of gambling pursuant to the Ontario Lottery and Gaming Corporation Act and in particular, the status of Complainant under that Act. Indeed, the Respondent resides in Niagara Falls, the city in which the Complainant has operated its CASINO NIAGARA interim Complex facility since at least as early as 1996. It is reasonable to assume that the Respondent was aware of the Complainant's trade mark rights in the CASINO NIAGARA name prior to registering the disputed domain name. It is also reasonable to assume further, that the Respondent did so explicitly to take advantage of the Complainantís position in the market for lottery goods and services, in particular, by threatening to jeopardize it.

Using converse reasoning, it is unreasonable to assume that the Respondent had registered the disputed domain name in good faith, only becoming aware of the Complainantís trade mark license thereafter. Given the Respondentís geographic proximity to the Complainant, it is far more reasonable to assume that the Respondent secured the domain name with the explicit intention, shortly thereafter, of demanding an inflated price from this highly visible Complainant in exchange for the domain name, or failing that, to sell it online.

 

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the following domain name be transferred to Complainant: <casinoniagaraonline.com>.

 


 

Leon E. Trakman
Sole Panelist

Dated: August 7, 2002