WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stanworth Development Limited v. Michael Rand
Case No. D2008-0158
1. The Parties
The Complainant is Stanworth Development Limited, of Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Michael Rand, of Tel Aviv, Israel.
2. The Domain Names and Registrar
The disputed Domain Names <riverbellecasin.com> and <riverbellecsaino.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2008. On February 1, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names at issue. On February 1, 2008 and February 4, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed Domain Names which differed from the to the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on February 5, 2008 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 9, 2008. 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 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2008.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on March 14, 2008. 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
As the following facts and circumstances have been alleged and satisfactorily evidenced by the Complainant, and by the Respondent’s default have not been contested, they are being held as true by the Panel.
The Complainant is the owner of pending and registered trademarks consisting of or incorporating the words “river belle” in various jurisdictions, covering in general gaming services. For the purpose of these proceedings the Complainant presented an enumeration of these trademarks and submitted copies of five trademark registrations, namely:
a. EU-trademark RIVER BELLE, registered by the Complainant at the Office of Harmonization for the Internal Market (hereafter: OHIM) on September 21, 2005, under number 003937026;
b. Australian trademark RIVER BELLE, registered by the Complainant with The Registrar of Trade Marks of the Commonwealth of Australia on May 23, 2005, under number 1021696;
c. EU-trademark THE RIVER BELLE ONLINE CASINO, registered by the Complainant at OHIM on January 1, 2005, under number 003131448;
d. Canadian trademark RIVER BELLE ONLINE CASINO, registered by Complainant at the Canadian Intellectual Property Office on April 14, 2005, under the number TMA637,431;
e. EU-trademark (logo in colour) RIVER BELLE ONLINE CASINO, registered by the Complainant at OHIM on March 2, 2005, under number 003174042;
The Complainant uses its trademarks through its licensee, Carmen Media Group Limited, who operates an online gaming site which can be found at “www.riverbelle.com”. This site was conceptualized in August 1997 and launched in December 1997;
The Respondent is an individual who registered the disputed Domain Names <riverbellecasin.com> and <riverbellecsaino.com> at GoDaddy.com through the provider of a proxy registration service called “domains by proxy” on July 30, 2007. The Domain Names point to a website offering gaming services.
5. Parties’ Contentions
1. According to the Complainant, the disputed Domain Names create a substantial likelihood of consumer confusion. The Complainant states that consumers will be confused into falsely assuming some affiliation, connection, sponsorship, approval or association between the Complainant and the Respondent. According to the Complainant such consumer confusion is caused by the following reasons:
a. the disputed Domain Names point to a website offering goods and services identical to those of the Complainant;
b. the disputed Domain Names are to a high degree similar to the Complainant’s trademarks: <riverbellecasin.com> shows merely a de minimis change and <riverbellecsaino.com> is visually similar;
c. the non-generic part of the disputed Domain Names incorporates the Complainant’s trademark RIVER BELLE in toto.
2. The Complainant alleges that the Respondent’s use of the disputed Domain Names does not constitute fair use, because the disputed Domain Names point to a website in direct competition to the services offered by the Complainant’s licensee’ “www.riverbelle.com”gaming site.
According to the Complainant, the Respondent is not offering the Complainant’s trademarked goods or services but uses the disputed Domain Names to bait Internet users. Also the Respondent is not taking any steps to prevent confusion. Therefore its use cannot be qualified as bona fide.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed Domain Names because the Complainant is the exclusive owner of the RIVER BELLE trademark in relation to gaming and casino services and the Respondent is neither an agent nor a licensee of the Complainant. Furthermore there is no connection or affiliation whatsoever between the Complainant and the Respondent, the Complainant did not express its consent to the use of its trademarks in a Domain Name and the Respondent was not commonly known by the disputed Domain Names.
3. The Complainant alleges that because of the reputation which its licensee’s “www.riverbelle.com” gaming site had already gathered when the registration of the Respondent’s Domain Names took place the Respondent was fully aware of the Complainant’s RIVER BELLE trademark rights and that the Respondent was explicitly trading on the value established by the Complainant in associating the disputed Domain Names with a website offering competing goods. The failure to respond to a cease and desist letter constitutes an adoption by silence of the material allegations by the Respondent. Bad faith use and registration are therefore indicated because the Respondent uses the Domain Names to redirect users to a web site offering competing goods.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As stated in Keesing Capital International N.V. Locatech NV-SA, WIPO Case No. D2005-0575, Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295 and in Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna Espaņa S.A v. Ocxon Media S.A., WIPO Case No. D2001-0128, according to the Rules, in case of failure of the respondent to provide a response to the allegations of the complainant, the panel is directed to decide the administrative proceeding on the basis of the complaint (Paragraph 14(a)), and “shall draw such inferences therefrom as it considers appropriate” (Paragraph 14(b)). Nonetheless the default of the respondent does not exempt the complainant of its burden of proof (Paragraph 4(a)), see Brooke Bollea, a.k.a. Brooke Hogan v. Robert Mc Gowan, WIPO Case No. D2004-0383, Berlitz Investement Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, regarding each of the following elements: the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (A.), the Respondent has no rights or legitimate Interests in respect of the Domain Names (B.) and the Domain Names have been registered and are being used in bad faith (C.).
A. Identical or Confusingly Similar to Trademarks in which the Complainant has rights
1.a). The Domain Name <riverbellecasin.com>contains three parts of the trademark RIVER BELLE ONLINE CASINO. The omission of the letter “o” at the end of the suffix is irrelevant because it constitutes a misspelling of the word “casino” and domain names containing typographical errors or misspellings have been found to be confusingly similar to the marks that they imitate, see, Ingram Micro, Inc. V. Kalron, Inc, WIPO Case No. D2001-1252. The omission of the word “online” does not distinguish the trademark from the Domain Name in a way that would prevent consumer confusion, because “online” is only a descriptive part of the trademark indicating the medium in which the “River Belle Casino” is displayed. However, the arbitrary and distinctive parts of the trademark, RIVER BELLE, for game – services, are incorporated in toto. Thus, <riverbellecasin.com> imitates the trademark THE RIVER BELLE ONLINE CASINO and is confusingly similar to it.
Furthermore, the Respondent’s Domain Name <riverbellecasin.com> contains the Complainant’s trademark RIVER BELLE in toto and the suffix “casin”. Taking into account that the suffix is an obvious misspelling of the word “casino”, the suffix does not only not prevent consumer confusion but is on the contrary suggestive of the services that the trademark is registered for (gaming services), see Margadarsi Marketing Private Ltd. v. BitraNet India, WIPO Case No. D2000-1209.
Therefore, the Respondent’s Domain Name <riverbellecasin.com> is also confusingly similar to the Complainant’s trademarks.
b) The same reasoning applies to the Respondent’s Domain Name <riverbellecsaino.com>, because the name contains instead of the omission of one letter all the letters of the word “casino” but a typographical error: merely the order of the letters “a” and “s” is changed. Furthermore, the typographical error amounts to a conduct commonly referred to as “typo squatting”, because the substituted letters are located in proximity to each other on the standard keyboard, so it can be inferred that the word “csaino” constitutes a predictable mistyping of the word “casino”, see Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517. As stated in Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517, Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713, Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150, “Typosquatting” is causing confusing similarity between the Respondent’s Domain Name and the Complainant’s trademark. Therefore, the Domain Name <riverbellecsaino.com> is confusingly similar to the Complainant’s trademarks.
2. The Complainant has shown through the submission of copies of trademark registration certificates that the trademarks RIVER BELLE and RIVER BELLE ONLINE CASINO are registered in Australia, the European Union and Canada. The Complainant points out, that it has a licensee, Carmen Media Group Limited, which operates under the RIVER BELLE trademark an online gaming site but that all the benefits out of the use of the trademarks by the licensee inure to the benefit of the Complainant. Although the Complainant has conceded rights of exploitation of the trademarks to its licensee, it still is the exclusive owner of the trademarks as it is designated in the trademark registration certificates. Thus, the Complainant has rights in the trademarks RIVER BELLE and RIVER BELLE ONLINE CASINO because being the owner of a registered trademark satisfies the threshold requirements of having trademark rights, see Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661, Uniroyal Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503.
The Complainant has shown that the disputed Domain Names <riverbellecsaino.com> and <riverbellecasin.com> are confusingly similar to its trademarks RIVER BELLE and RIVER BELLE ONLINE CASINO and that it has rights in them.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent did not receive the permission nor did it acquire a license to use the Complainant’s trademarks in the Domain Names.
According to the Complainant the Respondent does not have any legitimate interests in the Domain Names either, for the following three reasons:
1. The Respondent’s Domain Names point to a website that is in direct competition to the business that the Complainant’s trademarks are registered for and is gathering commercial benefit by attracting the users to its website, thereby preventing an assumption of non-commercial fair use.
2. Neither is the Respondent’s use of the disputed Domain Names a bona fide offering of goods and services because the Respondent does not offer exclusively the Complainant’s trademarked services and it is not taking steps to prevent confusion through a disclaimer.
3. Nor has the Respondent been commonly known by the disputed Domain Names.
Therefore, the Complainant has made a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed Domain Names. Once a complainant makes out a prima facie showing, the burden of proof in this specific factor shifts to the Respondent, see Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent by default has failed to rebut the showing by evidence. Thus, the Respondent does not have rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The Complainant has shown that before the trademarks RIVER BELLE and RIVER BELLE ONLINE CASINO were registered in 2005, its licensee had already operated a website called “www.riverbelle.com” under the trademark RIVER BELLE since 1997. Thus, the registration of the disputed Domain Names in 2007 occurred 10 years after the registration of the website “www.riverbelle.com” and two years after the registration of the Complainant’s trademarks.
Not only did the Respondent create and register for Domain Names that were confusingly similar to the Complainant’s trademarked services, but pointed with these Domain Names to a website that is offering services that are in direct competition of the services the Complainant’s trademarks were registered for: gaming services. After the “www.riverbelle.com” website was in use for a long period of ten years and the Complainant’s trademarks were registered for two years, this conduct of the Respondent cannot be regarded as a mere coincidence but as an intentional redirecting of the Internet users seeking to find the homepage of the Complainant’s licensee to the Respondent’s website as described in Paragraph 4(b.(iv)) of the Policy.
Therefore the Panel finds the Domain Names were registered and are being used in bad faith.
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 Names <riverbellecasin.com> and <riverbellecsaino.com> be transferred to the Complainant.
Dated: April 3, 2008