WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stanworth Development Limited v. E Net Marketing Ltd.
Case No. D2007-1228
1. The Parties
Complainant is Stanworth Development Limited, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
Respondent is E Net Marketing Ltd., St. Johns, Antigua, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <homecasinoonline.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2007. On August 23, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On August 27, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2007. Respondent did not submit any response. The Center notified Respondent’s default on October 2, 2007.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 10, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
By order dated October 16, 2007, the Panel directed Complainant to furnish a copy of an annexure referred to in the Complaint but not annexed to or otherwise included in its initial filing.
4. Factual Background
Complainant and a licensee operate a number of online gambling websites, including a website operated at “www.homecasino.com”. Complainant has registered trademarks for the phrase HOME CASINO in the United Kingdom of Great Britain and Northern Ireland, Australia, United States of American, European Community, and Canada. The Australian and UK marks issued in December 2001 based upon applications filed earlier that year. All other marks issued in 2004 or later based upon applications filed in 2003 or later. Complainant earns substantial revenues from its online gambling websites and spends substantial sums to promote its business, marks, and brands.
Because of Respondent’s default, all that is known of that company comes from the contact details furnished by the registrar and information submitted with the Complaint. Respondent appears to be based in Antigua and Barbuda. It registered the disputed named on September 3, 2002. Respondent today maintains at a website using the disputed domain name a list of online gambling websites, with hyperlinks, and other “related topics” about various forms of gambling activities. Respondent did not reply to a cease-and-desist letter sent to it by Complainant’s counsel.
5. Parties’ Contentions
Complainant contends as follows:
Confusingly Similar to a Mark in which Complainant has Rights
The disputed domain name differs from Complainant’s registered marks only by the addition of the word “online” and the addition of a top-level domain identifier. The latter of these is irrelevant in determining identity or confusing similarity. As to the former, addition of a common word (and in particular the word “online”) to a mark has been held not to obviate any confusion between a disputed domain name and the mark in question.
Rights or Legitimate Interest
Complainant has never licensed Respondent to use its marks. Respondent has not been commonly known by the disputed domain name and has acquired no trademark or service mark rights in the phrase embodied in it. Respondent’s use of the disputed domain name for goods or services that compete with those of Complainant is not bona fide under the Policy.
Because of Complainant’s continuous use of its mark since 1999 and registering HOME CASINO as a trademark, Respondent knew or should have known of Complainant’s exclusive rights in that phrase when it registered the disputed domain name. Respondent could easily have picked another name for its website but chose to proceed using a domain name that incorporated Complainant’s mark. The similarity between the Complainant’s mark and the disputed domain name creates a likelihood that Internet users will assume affiliation with Complainant or approval by Complainant of Respondent’s activities.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove the elements set out in paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
Complainant bears the burden of proof on each of these elements. Respondent’s default does not automatically result in judgment for the Complainant and does not constitute an admission of any pleaded matter.
A. Identical or Confusingly Similar.
Complainant succeeds on this Policy element. HOME CASINO is the operative or dominant feature of both Complainant’s mark and the disputed domain name, and the addition of a common word – particularly “online” – does not obviate any confusion.
B. Rights or Legitimate Interests
Complainant also succeeds on this element of the Policy. Since paragraph 4(a)(ii) requires proof of a negative, prevailing practice (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), paragraph 2.1) is to require Complainant to make out a prima facie case that Respondent lacks rights or legitimate interests. Complainant has done so by presenting evidence of its registered marks and use for a business under that name, and by showing that Respondent has made commercial use of the disputed domain name for competing services without license or other authority. Respondent has not countered with proof of rights or legitimate interests in the domain name, so this Policy element is satisfied.
C. Registered and Used in Bad Faith
Complainant’s evidence of Respondent’s unauthorized promotion of competing services at the disputed domain name demonstrates use in bad faith, assuming that Respondent has knowledge of Complainant and its HOME CASINO mark. That evidence does not by itself suffice to show bad faith registration. Under the Policy there must be evidence to demonstrate that Respondent registered the disputed domain name with knowledge, actual or imputed, of Complainant’s mark. Overview, paragraph 3.4; see also, e.g., Net2phone Inc v. Delta Three Inc., WIPO Case No. D2007-0644 and cases cited at notes 5-11.
There is understandably no evidence of actual knowledge. Complainant advances two arguments as to why the Panel should accept its allegation that “Respondent must have known of the fame of the Complainant in the online casino and gaming industry when [it] registered the disputed domain name”. First it asserts that knowledge was likely because “Complainant’s HOME CASINO trademark is so well-known in relation to the provision of on-line games of chance and casino-style gaming services knowledge”. Complainant has however provided no evidence of widespread recognition of its mark within the gaming industry in September 2002, when Respondent registered the disputed domain name. Except for Australia and Complainant’s home jurisdiction of the United Kingdom of Great Britain and Northern Ireland Complainant did not apply for a trademark until 2003. According to statistics submitted with the Complaint Complainant did not launch its own website until November 2002. Complainant has furnished no other evidence of any substantial use of its mark before that date other than claimed use in commerce in its trademark applications.1
Complainant next alleges that “Respondent has registered a number of domain names, all of which relate to online casinos and gambling. It is therefore highly probable that the Respondent was aware of the Complainant’s prior rights at the time of registering the disputed domain name”, and in support submits a reverse domain name search showing five hundred such domain names owned by Respondent. Like the disputed domain name almost all of these are common words or phrases that refer to gambling (e.g., bet, gambling, casino, Vegas). None incorporates a well-known, distinctive mark of a third party, in the gaming industry or otherwise. Mass registration or ownership of domain names is not in and of itself unlawful or in violation of the Policy, and there is no evidence before the Panel that Respondent is a regular or even occasional cybersquatter. The record is thus insufficient to show the “pattern” of “register[ing] the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” condemned in paragraph 4(b)(ii) of the Policy. See Overview, paragraph 3.3, and cases there cited.
Complainant’s mark consists of two everyday words that are to some extent descriptive of Complainant’s services. Similarly those words (with or without the addition of online) describe the services Respondent offers at the disputed domain name. As noted, the Respondent does not appear to be a cybersquatter, and there is no evidence of actual knowledge or targeting of the mark. Moreover, the HOME CASINO mark is on its face towards the weaker end of the spectrum, and there is little evidence before the Panel of such widespread use of that mark from which Respondent’s knowledge could be inferred at the time the disputed domain name was registered. In these circumstances a registered mark incorporating this common phrase2 does not without more allow the Panel to conclude that Respondent targeted Complainant or its mark when the disputed domain name was registered. Evidence to demonstrate that this mark had gained some special association with Complainant in November 2002 was available to Complainant and submitted with the Complaint. Presumably evidence of such recognition in September 2002, if it exists, was similarly available and could have been submitted.3
On the evidence before the Panel, it appears equally as likely that Respondent selected the disputed domain name as a common phrase to describe its services, without knowledge of Complainant’s mark, than that Respondent did so to take advantage of Complainant’s mark and customer base. Complainant bears the burden of proof under each Policy element, and it has not carried that burden under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Dated: October 23, 2007
1 The Panel is aware of the findings in Stanworth Development Limited v. Michael Gordon, WIPO Case No. D2007-1227, that “Complainant is widely known and enjoys success in the online gambling industry” and “Complainant’s licensee has operated the website [incorporating a different domain name Home Casino] successfully since 1997, enjoying over 25,000 software downloads, and thousands of regular players each month”. That proceeding involved a less descriptive domain name than the one at issue here, and one that had been registered in 2005. More importantly, however, Complainant has in this proceeding submitted no evidence to support any use of its HOME CASINO mark prior to November 2002.
2 Compare Carbon Footprint Ltd v. Adrian Fuller, WIPO Case No. D2007-0642.
3 Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.