WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Swiss Casinos Holding AG v. Intercontinental Casino Consul& Global Interest Gaming

Case No. D2003-0246

 

1. The Parties

1.1.The Complainant is Swiss Casino Holding AG of Appenzell, Switzerland.

1.2.The Respondents are Intercontinental Casino Consul, St. Johns, Antigua (AG) and Global Interest Gaming, St. Johns, Antigua.

 

2.The Domain Name and Registrar

The disputed domain name <swisscasino.com> is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.

 

3.Procedural History

3.1.The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2003. On April 1, 2003, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On April 1, 2003, Intercosmos Media Group, Inc. d/b/a directNIC.com transmitted by email to the Center its verification response. The Center verified that 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").

3.2.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 April 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for filing the Response was April 23, 2003.

3.3.On April 28, 2003, the Respondent No.2 filed a request for extension of the due date by 14 days to prepare and submit their Response due to the delay in delivery of the Complaint. On April 30, 2003, the Center forwarded the Complaint to the Respondent by email again. On May 1, 2003, the Center acknowledged receipt of the Respondent's request for a 14-day extension to file its Response and the Complainantís objection to the Respondent's request. The Center did not find any exceptional circumstance in the case and did not grant the extension as their courier (FedEx) tracking records showed receipt of the Complaint by the Respondent at the given address on April 8, 2003.

3.4.On May 1, 2003, a notification of the Respondentís default was forwarded to the parties and the Center stated that it did not see any exceptional circumstances in this case and shall not grant the extension requested. The Center further stated that a late response filed by the Respondent would be forwarded to the administrative panel once appointed. The administrative panel was left to decide in its sole discretion whether to consider a late response for deciding the case. On May 1, 2003, the Center was in receipt of a response by email and on May 6, 2003, by hardcopy.

3.5.The Center appointed the sole panelist in this matter on May 7, 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.

3.6.The Panel did not see any exceptional circumstances to review the decision of the Center i.e. not to grant an extension of 14 days to file the Response.

3.7.At the same time, for fairness, the Panel saw the entire case file and on May 14, 2003, in its sole discretion under Paragraph 12 of the UDRP Rules requested for an additional submission from the Complainant within 5 days i.e. by May 19, 2003. On May 16, 2003, the Complainant sought an extension of the due date for additional submission by 2 more days. The Panel accepted this request and extended the due date to May 21, 2003, since the clarifications were being sought to satisfy the panel that no important point was left out due to the Respondentís default.

3.8.On May 20, 2003, the Center forwarded the additional submission of the Complainant to the Panel.

3.9.On May 21, 2003, the Panel received a unilateral communication from the Respondent. In this communication the Respondent had replied to the Complainantís additional submission. The Respondent was informed by the Center of the prohibition under Paragraph 8 of the UDRP Rules from having any unilateral communication with the Panel. Thereafter the Respondent routed its response to the Complainantís additional submission through the Center. The reply to the additional submission was not taken on record by the Panel as under Paragraph 12 of the UDRP Rules it is only on request of the Panel that an additional submission can be made to the Panel.

3.10.The Panelist is not obliged to look at the Response since it is beyond time and no exceptional circumstances exist, yet the Panelist has, to be fair, seen the full case file and in places where it needed to be satisfied sought clarifications from the Complainant. No clarifications were sought from the Respondent. Moreover it is in the interest of fairness to the Respondent (which they may not be procedurally entitled to), which led to the request for clarifications. Hence they have no right to respond to such clarifications.

 

4.Facts

4.1.The Complainant has been active in the casino business for many years. The Swiss Casinosís Group companies plan, build and operate gaming casinos. The Complainant was registered on October 15, 1993. Until January 29, 2001, the Complainantís company name was Swiss Casinos AG.

4.2.Since 1993, the Complainant has been intensively using the company name, trademark and business name "Swiss Casinos". The Complainant has a majority stake in casinos domiciled in the Swiss cities of Berne, Pfäffikon (SZ), St. Gallen, St. Moritz and Schaffhausen. "Swiss Casinos" is well-known in Switzerland because of its market presence. The Complainant is not only well-known in Switzerland but also in the international casino and gambling community. It is regularly mentioned in The Gambler Magazine and on various online news sites of the casino world. The Complainant also organizes on regular basis, big events such as the Swiss Casinos Comedy Award, the All Star Hockey Gala Events, the Swiss Slot Tournaments and Dart Casino Cups.

4.3.The Complainant is the owner of three Swiss, three international, two U.K., one Canadian and three U.S. trademark registrations containing SWISS CASINOS. Among other things Complainant is the owner of Swiss registration no. 459.961 SWISS CASINOS (fig.) of March 12, 1999, and of International Registration No. 718.906 SWISS CASINOS (fig.) with a priority of the same date. Both enjoy protection for the management of casinos and consulting services in the field of casinos. Further, the Complainant is also the owner of the domain names <swisscasinos.com> and <swisscasinos.ch>.

4.4.Furthermore, the Complainant was operating gaming facilities in the Netherlands and operated such facilities in Great Britain also under the trademark Swiss Casinos.

4.5.On October 16, 2002, Complainant sent a warning letter to Global Interest Gaming and the former Registrant Net Equity, Ltd. It was pointed out that by using the domain name <swisscasino.com> confusion was caused in the market place with the Complainantís trademarks, company name and business activities. They were asked to transfer the domain name <swisscasino.com> to the Complainant by November 18, 2002. There was no reaction to this warning letter.

4.6.On November 26, 2002, Complainant sent a reminder to which no reply was received. Further, on November 29, 2002, Complainant sent a warning letter to first Respondent, who is domiciled at the same address as the former Registrant Net Equity, Ltd. Both Respondents did not react to the various warning letters.

 

5.Parties Contentions

Identical or confusingly similar

5.1The Respondentsí second level domain name <swisscasino.com> is almost identical and highly confusingly similar to Complainantís company name Swiss Casinos Holding AG (formerly Swiss Casinos AG) and its Swiss, US, UK and International trademark registrations for SWISS CASINOS (fig.). The fact that SWISSCASINO is spelled in one word in the domain name is only due to technical reasons. Furthermore, it has to be taken into account that the Complainant has been using SWISS CASINOS for so many years and so extensively in Switzerland that it has become distinctive of the Complainant. Moreover, the Complainant has established a valuable reputation and goodwill in association with the trademark SWISS CASINOS.

5.2.It is the contention of the Complainant that the Respondents use of the "Swiss Coat of Arms" on the website to which the disputed domain name resolves to would mislead the visitors of that website to believe that the Respondents are connected with the Complainant and Switzerland.

Rights and Legitimate Interest

5.3.At the time of registration of the domain name the Respondent was not commonly known by that tradename/mark. The Complainant has been using Swiss Casinos and was the owner of trademark registrations before the Respondent registered the almost identical domain name. The Complainant has not licensed or permitted the Respondent nor has any affiliation whatsoever with the Respondent. Further, the Respondents were not given any permission to register the disputed domain name. It is highly unlikely that the Respondent didnít have any knowledge of the Complainant and its brand / international presence while registering the disputed domain name. It is also the contention of the Complainant that online and offline gaming services are potentially in competition and cannot be regarded as different branches of the economy or different markets.

Registered and used in Bad Faith

5.4.The domain name has been registered and used in bad faith. The Complainant contends that the use of "Swiss casino" by the Respondent instead of any other domain name such as <Antiguacasino.com> would mislead the consumers into believing that the Complainant operates this online business or otherwise permits or endorses its operation. Further, it is contended that since Article 5 of the Swiss Gambling Act 1998, prohibits such online activities the use of the disputed domain name by the Respondent would cause the authorities to believe that the Complainant has engaged in illegal activities. Further, since the disputed domain name is identical/ similar to the Complainantís registered Trademark, confusion would definitely occur in minds of consumers and it is highly unlikely that the Respondent had no knowledge of the Complainant. Thus, such registration is deemed to be in bad faith.

5.5Further, there was no response by the Respondents to the warning letters sent by the Complainant and the change of the name of the Registrant with the same address as the old registrant is evidence of their bad faith.

5.6.For reasons as mentioned in paragraph 3.10 of the decision the following were the issues to which clarifications were sought from the Complainant:

5.6.1. "Please provide copies of certificates of your USA and UK trademark registrations. Also a copy of the certificate of the international registration and a translation of the Swiss registration.

5.6.2.Generally the laws of most jurisdictions donít permit trademarks to be registered for generic words and geographical terms. But there are exceptions. Please provide comments on this.

5.6.3.The Respondents have mentioned the name of the owner of the website on the website. Is it your submission that mentioning of the name is inadequate?

5.6.4.The present owner of the website is Intercontinental Online Gaming Ltd. and not Global Interest Gaming. Does Respondent No. 2 need to be substituted with Intercontinental Online Gaming Ltd?

5.6.5.Is it factually correct that none of your casinos use the name Swiss Casino. If so, what is the manner in which you use the mark? If not, does it impact the Complainant in any manner?"

 

6. Discussions and Findings

6.1.This has been a difficult case to decide. The difficulties arose on account of several reasons:

The Respondentsí Response to the Complaint is technically time barred under Paragraph 5 of the UDRP Rules and there do not exist exceptional circumstances for permitting them an extension of time to place their Response on record. It is a case where I felt that even though not obliged to look at the Response I should see the full record in order to satisfy myself that there was no miscarriage of justice. For this reason, in areas where I needed clarifications for my satisfaction, I asked the Complainant to provide them through a list of 5 questions.

The Complainant responded and the Respondents replied to the Complainantís response. No clarifications were sought from the Respondents as my request was motivated by a desire to be fair to them although procedurally they were not entitled to any indulgence. The Respondentsí main response was not taken on record so much less its reply to the additional submissions could be looked at.

Consequently, although the replies of the Respondents are not taken on record due to the Centerís decision that the Response was beyond time and no exceptional circumstances existed (with which I am in total agreement) yet I have broadly considered various points taken by them to ensure that my decision in allowing the Complaint is fair and reasonable and affords a Ďfair opportunityí to the parties.

The second difficulty of this case has been that the word SWISS is a geographical term and the main objection in this Complaint appears to be that such terms are not trademarks or at any rate not good trademarks either because :

-They are generic and hence unprotected; or
-They are disclaimed in some registrations, and the rights are therefore confined to graphic elements or the manner of depiction of the words in question.

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

-that the domain name registered by the Respondent is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
-that the Respondent has no legitimate interests in respect of the domain name; and
-that the domain name has been registered and is being used in bad faith.

Each of these requirements will be dealt with separately.

6.2.Before I apply each of the three elements of paragraph 4(a) of the UDRP Policy, I would like to examine some general principles, which have emerged from earlier decisions relating to geographical terms.

6.2.1In Société des Bains de Mer et du Cercle des Etrangers de Monaco limited v. International Lotteries (WIPO Case No.D2000-1326), there were two domain names involved, namely:

(i)<casinomontecarlo.com>
(ii)<montecarlocasinos.com>

The Complainant alleged that Casino de Monte-Carlo is a renowned trademark as the Principauté de Monaco is inter-alia known worldwide for its casinos. They alleged that the domain names in question were identical or confusingly similar to the Complainantís trademarks; that the Respondent had no rights and it displayed bad faith by adoption of these domain names. One of the main defence was that the term Monte-Carlo is used as a generic connotation of luxury and high living and has been diluted by continual use in commerce by third parties. Several other defences were taken which are not relevant for the decision.

The Panel allowed the complaint and transferred the domain name holding:

"The panel notes that any rights or legitimate interests in the terms Monte-Carlo, Monaco and Casino are to be examined in respect of these terms used together and not independently. The panel will not examine the protection to be granted to the terms Monte-Carlo alone. The terms Casino and Monte-Carlo, i.e. Casino de Monte-Carlo, are protected."

The panel further held citing Article 6 bis of the Paris Convention "in the light of this provision it can only be considered that the Casino de Monte-Carlo trademark is well known over the world and is protected as such".

The Panel observed that :

"Ö..the claims that Respondent derives from the very recent incorporation of its Panama and Dutch-Antilles corporations cannot be recognized, for it is well known that many such corporations are often devoid of any important assets and are used as tax vehicles and/or for offshore activities not afforded of legal protection in the jurisdictions they precisely purport to avoid, even when they are lawfully organized under the corresponding offshore laws. Therefore the panel cannot find any right or legitimate interest in favour of the Respondent."

It was further held:

"The panel notes that one of the so called work of design at <montecarlocasino.com> is an almost exact reproduction of the Casino de Monte-Carlo building and that the similarity between the two would confuse any Internet user".

6.2.3.In EH new Ventures Inc. v WW Processing, WIPO Case No. D2003-0007, the panelist ordered the transfer of the domain name <caribbeangoldcasino.com> to the Complainant on account of its identity to the mark and website owned by the Complainant. This was despite geographical terms being involved.

6.2.4.In Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. 21LLC, WIPO Case No. D2003-0241, the domain name <saharalasvegas.com> was transferred on the force of the trademark registration of the word SAHARA in connection with the hotel and casino services and common law rights in the mark SAHARA LAS VEGAS, based on long-standing use of the mark in trade. The Respondent had registered several trademarks and names of hotels and casinos located in Las Vegas. A three-member panel ordered the transfer of the domain name although mainly on the ground that the Respondent had not used the domain name.

6.2.5.In Gordon Gaming Cor. v. IMC, WIPO Case No. D2001-1047, a three-member panel ordered the transfer of the domain name <thesahara.com> to the Complainant Sahara Hotel and Casino. Although the Respondent had not responded the facts accepted by the panel and relied upon for its decision were:-

The Respondent knew the fame of the Complainantís casino in Las Vegas;

a)The Respondent intended to obtain a commercial benefit by selecting a name which Internet users recognize as being the name of the Complainantís casino;

b)The Respondent is not commonly known as the Sahara; and

c)The Respondent does not have the Complainantís permission to use the name.

6.2.6.In Austrian Airlines v. Minos Bekeridis, WIPO Case No. D2001-0945, the domain name <austrianairlines.net> was transferred to the Complainant. The panelist held that the main "identifying element" was the words AUSTRIAN AIRLINES as, a graphic symbol which is part of the Complainantís registered trademark cannot be pronounced. Based on general principles of trademark law, the domain name was considered to be confusingly similar with the Complainantís principle identifier Austrian Airlines. The panelist further reasoned that should the Respondent open a website, potential customers would be inclined to believe that his agency belongs to the Complainant or was authorized by it or otherwise related to it. Such risk of confusion would arise not only for potential customers who know the Complainant under its trademark and business name Austrian Airlines but also for other potential users as the domain name is composed in a manner in which names of main carriers of many countries are created. Many customers will therefore automatically relate a tradename, mark or domain name, which combines the name of a country with the generic term "airlines" to be the carrier of the respective country.

6.3.Geographical terms have been held in many decisions not to be covered by the UDRP. A report from WIPO issued in September 2001 entitled "The Recognition of Rights and the Use of Names in the Internet Domain System: Report of the Second WIPO Internet Domain Name Process" dealt with this issue. Yet geographical terms have been protected from time to time in several decisions.

6.4.I believe that "fair opportunity" as it appears in Rule 10(b) of the URDP Rules must mean an "effective" opportunity. Consequently, if it is conceivable that due to some accidental omission such as if someone did not receive a message, so long as the omission is not a deliberate one, it might deserve another chance particularly when the stakes, financial, reputational or otherwise, are heavy.

6.5.Having said this the panelists in various UDRP proceedings have emphasized the expeditious nature of the whole procedure by using expressions such as:

-"more rapid and cost effective resolution of disputes".[Gordon Sumner, p/k/a Sting v Michael Urvan (WIPO Case No. D2000-0596) and Document Technologies , Inc. v International Electronic Communications Inc. (WIPO Case No. D2000-0270)]

-"Simple Speedy Process" [First Conference Ltd. v. Ecorp.com (WIPO Case No. D2000-1797)]

6.6.It is for this reason that a 14-day delay cannot be overlooked and condoned. At best, I can deal with some of the points raised by the Respondent and satisfy myself that there has not been any miscarriage of justice. I am aware that this is not an approach in every case but I believe that in this case whichever way I look at it whether technically or liberally the Complaint deserves to succeed.

A. Complainantís trademark rights; identical/confusing similarity

6.7.The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has been using SWISS CASINOS for many years and extensively in Switzerland that it has become distinctive of the Complainant. Moreover, the Complainant has established a valuable reputation and goodwill in association with SWISS CASINOS. The Complainant is the owner of a number of Swiss, International, US and United Kingdom trademark registrations. They are as follows:

- Swiss Registration No. 459.961
- Swiss Registration No. 418.930
- International Registration No. 718.906
- International Registration No. 645.160
- UK Trademark Registration No. 2150109

The fact that SWISSCASINO is spelled in one word is only due to technical reasons.

6.8.One issue is whether under Swiss laws generic terms and names of places were not worthy of trademark protection. To better understand this issue the Panel had sought clarification in which the Complainant submitted that SWISS may not be monopolized per se but may be registered as a word element of a distinctive trademark registration as long as it is not deceiving. According to Art. 47 (3) (a) of the Swiss Trademark Act it shall be prohibited to use incorrect indications of geographical origin. Further, according to Art. 49 of the Swiss Trademark Act the origin of services is determined by the place of business of the person who is rendering the service. Since the owner of the trademarks is a Swiss company there is no deception of the public. According to the Swiss Trademark Office (Swiss Federal Institute of Intellectual Property) a trademark has acquired distinctiveness through use if it has been used for approximately ten years. A shorter period is acceptable if it can be demonstrated that the trademark has been intensively advertised and/or used. The Complainant in their additional submission stated that the mark SWISS CASINOS is being used for casinos. It is like a "parent mark" which is used for all the casinos and for all the management and consulting services in the field of casinos. The mark is used in addition to local sub-brands such as Casino Zürichsee or Grand Casino Berne. It is usual for corporates to have Parent, umbrella or House marks. These are applied as a Top layer to a sub mark for geographically wider regions than the sub mark or to a wider range of goods or services. Consequently the commercial or business value of these brands may be far greater than of the sub marks.

6.9.From time to time, Panelists have applied "general principles of Trademark laws" as applied in "Austrian Airlines v. Minos Berkeridis WIPO Case No. D2001-0945. In this case we are concerned with the mark which comprises of the combination of the Geographical Terms "Swiss" and Generic Term "Casinos" in the context of a casino business. The combination of the two words has acquired a protectable level of distinctiveness (both due to use and registration) so as to constitute the Complainant's Service Mark.

6.10.It may be that in some countries there may be disclaimers to the two words used separately yet the combination of the two words may be registered. It may also be that the Registration is strictly confined to the stylized manner in which words are depicted. However, a disclaimer only implies that the statutory right is disclaimed and that too in those countries where such a limited registration is granted. Even here, the combination of the words may be a protectable trademark (or service mark) since the words are in fact being so used and practically serving the function of distinguishing the proprietors services from those of third parties.

6.11.Consumers and customers seeing the said words do not see the disclaimer or any condition of the register and would indeed get confused if one trader attempts to usurp the marks which had in fact become distinctive of the proprietor.

6.12.Consequently, although the word Swiss or the word Casino alone may not receive trademark protection, the combination of Swiss and Casino is a Trade and Service Mark the use of which by the Respondent in the domain name <swisscasinos.com> would create confusion.

6.13.Interestingly a Respondent who in one breath uses SWISSCASINO as a trademark while in the other claims that it is a bad trademark or not at all one is contradicting its own business conduct.

6.14.Therefore, based on the above, the disputed domain name is confusingly similar to the mark in which the Complainant has rights.

B. Rights/Legitimate Interests

6.15.At the time of registration of the disputed domain name the Respondent was not commonly known by the disputed domain name. The Complainant has not licensed or permitted the Respondent and has no affiliation whatsoever with the Respondent nor has the Respondent been given any permission to register the disputed domain name.

6.16.It is highly unlikely that the Respondent didnít have any knowledge of the Complainant and its brand / international presence while registering the disputed domain name. The Complainant further has stated that "Swiss Casinos" is a parent mark and is used for all the casinos and for all the management and consulting services in the field of casinos.

6.17.One issue that arises is whether the fact that the Complainant had no online presence while the Respondents were only into online gaming activities gave them any legitimate rights in the domain name.

6.18.The businesses are not separate or different activities from the trademark perspective. I refer to Société des Bains de Mer et du Cercle des Etrangers de Monaco v. International Services Inc. et al., WIPO Case No.D2000-1328, where the domain names were transferred. The Respondent in this case had claimed that the domain names are used only in connection with an online gaming business rather than an actual casino and the Complainant does not provide online gaming/casino services. The panelist disagreed with this contention and held "The Respondent fails to see that a website is in itself an actual undertaking. The distribution of goods or services through the internet is similar to the distribution of the same goods or services through other means. In particular it cannot be considered so different that it should be deemed a different branch of the industry or a different market in terms of unfair competition law".

6.19.In some cases like Mountain Gear Vs. Kruzicevic, Case No. CPR0019 (CPR 2001), the panelist disagreed with the Barcelona ruling striking a distinction between whether the Respondent had any rights or legitimate interest rather than who had better rights to the disputed domain name. This is an important distinction which seems to suggest that panelists should not weigh the Respondentís rights with those of the Complainant but concentrate on the legitimacy of the Respondentís rights.

6.20.Under paragraph 4 (c) of the UDRP four circumstances are stated which are indicative of the Respondent's right of a legitimate interest to the disputed domain name.

(a) First, in a case where the Response is not taken on record, it cannot be said that the Respondent has proved any of these circumstances.

(b) Second, at the time of registration of the domain name on March 29, 2000, the Respondent was not commonly known by the domain name. The Complainant has not only used Swiss Casinos but had Trademark registration well before the Respondent came into the picture.

(c) Third, due to the Complainant's international activities, it is highly unlikely that the Respondent would not have known about them and the Trademark Swiss Casinos or about their several registrations which would have showed up in standard trademark searches.

(d) Fourth, the Respondent has nothing to do with Switzerland but wrongly show the 'Swiss Coat of Arms' and mentions "Welcome to Switzerlandís Casino! All the security, strength and privacy you expect from a Swiss bank. Ö Swiss Casino adheres to the strictest Swiss privacy and security laws Ö".

These factors are not compatible with :-

- A bona fide offering of the goods or services; or

- Legitimate or fair use.

6.21.The fact that the traffic of the Respondentsí site may be high or higher than the Complainantís does not make their use legitimate if it is tainted with an intention to achieve commercial gain by misleading consumers.

Hence, this element of the Policy is established.

Therefore, based on the above the Panel holds that the Respondent does not have any legitimate rights in the disputed domain name.

C. Bad Faith

6.22.The Complainant has rights in the mark Swiss Casino. It is highly unlikely that the Respondent did not know of the Complainantís mark while registering the domain name. There is no reason why the Respondents chose "swisscasino" as the second level domain and did not choose any other second level domain name. The Respondents have no connection with Switzerland nor do they have any physical presence in Switzerland. By the use of the ĎSwiss Coat of Armsí and by mentioning that they abide by the strict laws of Switzerland on their website they give a clear indication that they are affiliated to the country. The truth is that they are a company of Antigua and appear to be regulated by the Government of Antigua.

6.23.Use of geographical terms in a manner, which wrongly indicates the place of origin, is dishonest use. In the case City of Hamina v. Paragon International Projects Ltd. WIPO Case No. D2001-0001, the panel ruled that the Port of Hamina was a service mark but the complaint failed because the respondent was found to have a legitimate interest in <portofhamina.com>. He had been making honest use of the mark as an indication of geographical origin.

6.24.By applying the principles laid down in this case to the present facts it is clear that the Respondent has registered the domain name and is using it in bad faith.

6.25.Further, Article 5 of the Swiss Gambling Act 1998, prohibits carrying out of the gaming transactions online and the use of the disputed domain name by the Respondent would cause the authorities to believe that the Complainant has engaged in illegal activities. Since the disputed domain name is confusingly similar to the Complainantís registered Trademark, confusion would definitely occur in minds of consumers regarding the ownership of the domain name.

6.26.Therefore, based on the above the Panel holds that such registration and use is evidence that the domain name has been used and registered in bad faith.

6.27.The Respondents not responding to the warning letters sent by the Complainant and changing the name of the registrant from Net equity Ltd to Intercontinental Casino Consul after the warning letter dated October 16, 2002, is further evidence of their bad faith.

6.28.There are several other issues to be further considered.

6.29.First the change in ownership of the domain name from Intercontinental Casino Consul. This change may not be relevant unless on account of the notice of the filing of the Complaint went to a wrong party which then resulted in delayed response by the Respondent.

6.30.According to the facts of this case on of April 1, 2003, Intercosmos Media Group Inc. d/b/a direct NIC.com verified the ownership of the Intercontinental Casino Consul. Under paragraph 2(a) of the UDRP rules, it is the provider's responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent. The Respondent is defined as the holder of the domain name registration. Consequently, as on the date of filing the Complaint, Intercontinental Casino Consul was the Respondent to whom there is an obligation to serve under Para 2 of the UDRP Rules. This obligation having been discharged fully the Complainant cannot be blamed in any manner.

6.31.Interestingly, the address of the second Respondent is exactly the same as the address of Intercontinental Online Gaming Limited. Hence, a notice having gone successfully to each of the two Respondents, it cannot be said that due to a change, the notice may have gone to the wrong place or address.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <swisscasino.com> be transferred to the Complainant.

 


 

Pravin Anand
Sole Panelist

Dated: July 7, 2003