WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EH New Ventures Inc. v. WW Processing
Case No. D2003-0007
1. The Parties
The Complainant is EH New Ventures Inc., C/O John Warren, St. Johnís, Antigua and Barbuda, represented by Fasken Martineau DuMoulin, LLP of Canada.
The Respondent is WW Processing, Domain Administrator, Heritage Plaza, Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <caribbeangoldcasino.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 5, 2003. On January 7, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 7, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 29, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondentís default on February 26, 2003.
The Center appointed Kenneth A. Genoni as the sole panelist in this matter on March 13, 2003. The Panel finds that it was properly constituted. 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, EH New Ventures owns the trade name and trademark CARIBBEAN GOLD CASINO for use in association with on-line gambling services on the Internet.
EH New Ventures owns and operates websites in connection with the following domain names, in association with on-line gambling and casino services over the Internet:
(vi) <caribeangold.com>; and
(hereinafter referred to as the "Domain Names").
EH New Ventures has invested a substantial amount of money and significant efforts in advertising and promoting these websites and domain names incorporating the trade-mark and trade name CARIBBEAN GOLD CASINO in association with on-line gambling and casino services (hereinafter the "Mark"). As a result, EH New Ventures has achieved a significant degree of consumer recognition that the Mark and the Domain Names, such that these have become known as websites that originate from EH New Ventures and its on-line gambling and casino services, and as a symbol of the goodwill and excellent reputation represented by EH New Ventures.
The websites operated by the Complainant receive a significant amount of web traffic for on-line gambling and casino services. The Respondent knew of the Complainantís on-line activities and use of CARIBBEANGOLDCASINO as a Mark and as Domain Names.
5. Partiesí Contentions
(1) The <caribbeangoldcasino.com> Domain Name is Identical to the Complainantís Mark and Domain Names
The domain name registered and used by the Respondent is identical to the Mark and websites owned by the Complainant. The Complainant and its predecessor in title have used the Mark and Domain Names for many years in association with on-line gambling and casino services.
The domain name <caribbeangoldcasino.com> uses the identical character string as the Complainantís Mark and Domain Names. The contested domain name uses the very same naming convention as the Complainant itself uses when formulating its own Domain Names. The domain name in dispute, <caribbeangoldcasino.com>, is identical.
Respondentís website <caribbeangoldcasino.com> reverts to the website "sportsbookusa.com". It is obvious that the Respondent has registered a domain name that is identical or confusingly similar to the Complainantís Mark and Domain Names, for the sole purpose of redirecting traffic to its websites of others, likely for a fee. The linked website advertises on-line sports wagering as well as casino and fantasy league wagering. The first page of the website states that "Sportsbook USA Casino gives you more variety in game play than any other casino on the net! Begin playing our FREE instant play casino games by clicking on the Play in Window or Play in Full Screen icon." Accordingly, the Respondent has linked the domain name to a website that provides competing on-line gambling services.
The Respondentís awareness that visitors to its website would obviously access the site believing it to be related to Complainantís websites, is evidenced by the fact that the <caribbeangoldcasino.com> website does not contain one single reference to the Complainantís Mark and the Domain Names, and reverts to the <sportsbookusa.com> website. The <sportsbookusa.com> website does nothing to dispel confusion by offering on-line casino services.
(2) Respondent Has No Rights or Legitimate Interests in the Domain Name
Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use the Complainantís Mark as a domain name. The words "CARIBBEAN GOLD CASINO" are not the subject of any trademark registrations belonging to Respondent. Moreover, to the best of Complainantís knowledge, the domain name is not a legitimate name of any business of the Respondent, nor in any other way identified with or related to a legitimate interest of the Respondent.
By letter dated July 3, 2002, sent by e-mail and mail, Complainantís counsel notified the Respondent of the Complainantís predecessor in titleís rights to the Mark and Domain Names that include the words CARIBBEAN GOLD CASINO and sought the transfer of the domain name.
By e-mails dated July 5, 2002, Complainantís counsel received responses from firstname.lastname@example.org, requesting payment of $500.00 to transfer the domain name and ultimately agreeing to accept $350.00 Cdn. in payment for the domain name. The Respondent also sent details for where to send the cheque.
After several e-mail exchanges, Complainantís counsel wrote to Respondent on November 7, 2002, and requested a copy of the executed Domain Name Transfer Agreement and requested a response by November 15, 2002. The Respondent has not responded to the Complainant.
In addition, Respondentís lack of any legitimate interest in the domain name can be inferred from the linking of the disputed domain name to <sportsbookusa.com>, an unrelated company that is a competitor of the Complainant in the on-line casino services. Further, the <sportsbookusa.com> website is registered to the Respondent, and therefore the Respondent is redirecting traffic intended for the Complainantís websites to his own website offering competing services for the Respondentís own profit.
(3) The Domain Name Has Been Registered and Used in Bad Faith
The Respondent obviously registered the domain name in a deliberate attempt to prevent the Complainant from registering <caribbeangoldcasino.com>.
The Respondent registered the domain name at issue in an attempt to attract, for commercial gain, Internet users to the Respondentís website by creating a likelihood of confusion with Complainantís Mark and Domain Names as to the source, sponsorship, affiliation, or endorsement of Respondentís website, products, and services by the Complainant. See Policy, para. 4(b)(iv).
The Respondent registered the domain name at issue in order to divert traffic intended for Complainantís website, using a domain name that is the same as the Mark and Domain Names of the Complainant and that then linking this to the Respondentís website at "sportsbookusa.com", where the Respondent is operating a competing business and service offering. See Policy. para. 4(b)(ii). Specifically, Respondentís conduct is enabling it to divert traffic to Complainantís well-known Domain Names and Mark for the benefit of the Respondentís website and at the Respondentís sole profit.
The Respondent defaulted.
6. Discussion and Findings
Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:
A. The Complainant has rights in a trade or service mark, with which
Respondentís domain name is identical or confusingly similar (Paragraph 4.a.(i));
B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
C. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar
There are two requirements that a Complaint must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
Complainant has alleged that it owns the trade name and trademark CARIBBEAN GOLD CASINO for use and association with on-line gambling services on the Internet. This allegation has not been challenged. Complainant has provided evidence that it owns and operates websites in connection with several domain names, including domain names <caribbeangoldcasino.net> and <caribbeangoldcasino.org>. Complainant has invested a substantial amount of money and significant efforts in advertising and promoting these websites. Therefore, Complainant clearly has rights to the mark CARIBBEAN GOLD CASINO. Respondentís domain name <caribbeangoldcasino.com> is clearly confusingly similar to the mark and websites owned by Complainant. Therefore, Complainant has established the first element required by the UDRP.
B. Respondent has no rights or legitimate interests in respect of the domain name
There is no evidence to suggest that Respondent has any rights or legitimate interest in <caribbeangoldcasino.com>. Respondent is not a licensee of Complainant, nor otherwise authorized by Complainant to use the mark as a domain name. There is nothing in the record to indicate that Respondent has used the mark in an way to establish independent rights to the mark. It is therefore clear that Respondent has no legitimate interest in respect to the domain name.
C. The Respondent registered and is using the domain name in bad faith
The final issue is that of bad faith registration and use by the Respondent. For Paragraph 4.a.(iii) to apply, Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
Since Respondent defaulted, we must accept Complainantís allegation that Respondent was aware of Complainantís use of the mark and the websites prior to registering the <caribbeangoldcasino.com> domain name. This knowledge can also be inferred from the fact that Respondent linked the <caribbeangoldcasino.com> website to the Respondentís website at <sportsbookusa.com>, where Respondent is operating a competing business. It is therefore clear that Respondent registered the domain name in bad faith.
Respondent also used the domain name in bad faith. He linked the disputed domain name to <sportsbookusa.com>, which clearly was an attempt to attract for commercial gain Internet users to Respondentís website by creating a likelihood of confusion with Complainantís Mark and Domain Names. This activity is described as an example of "bad faith" in Paragraph 4(b)(ii) of the Policy.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <caribbeangoldcasino.com> be transferred to the Complainant.
Kenneth A. Genoni
Date: March 27, 2003