Complainant is Stanworth Development Limited, of Isle of Man, United Kingdom of Great Britain and Northern Ireland represented by Bowman Gilfillian Incorporated, of South Africa.
Respondent is Texas International Property Associates- NA NA, of Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, of United States of America.
The disputed domain name <riverbelleflash.com> is registered with Compana LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2008. On October 30, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On November 8, 2008, after two reminders, Compana 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” or “UDRP”), 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 November 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2008. The Response was filed with the Center on December 4, 2008.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on December 17, 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.
The Center, noting that the disputed domain name was set to expire on December 13, 2008 wrote to the parties and to the Registrar directing attention to the provisions of paragraph 126.96.36.199 of the ICANN Expired Domain Name Deletion Policy relating to the expiry of a domain name the subject of a UDRP dispute and the rights of a successful Complainant pursuant thereto.
The disputed domain name was registered on December 13, 2005.
Complainant has, since December 1997 operated an online gaming site under the name and trade mark RIVER BELLE. Complainant is the owner of many domain names which include the name “riverbelle” either alone or in combination with descriptive elements, such as <riverbelleonline.com>, and of many trade marks consisting of or including the words “river belle”. Complainant has registrations of its trade marks in many countries, including the United States of America dating from June 20, 2001. Complainant licenses its name and trade mark to Carmen Media Group Ltd, which operates an online gaming site at “www.riverbelle.com” for which it receives 250,000 visits per month. Advertising and promotion expenditure exceeds USD50,000 per month.
On July 23, 2008 Complainant's solicitors sent a letter of demand to Respondent asserting Complainant's rights in the name and mark RIVER BELLE and demanding, inter alia, transfer of the disputed domain name to it. Absent a reply Complainant sent a further letter on August 5, 2008. Respondent replied asserting that it had not received the July 23 letter and that it had forwarded the letter to its attorneys for reply.
Complainant contends that:
- its RIVER BELLE trade mark is well and widely known due to its extensive use, registration, and promotion;
- the disputed domain name comprises Complainant's trade mark with the mere addition of the descriptive word “flash” which is the name of software used by Complainant and others in gaming operations;
- the disputed domain name is therefore confusingly similar to a trade mark in which Complainant has rights.
- Respondent uses the disputed domain name to direct traffic to a portal site from which it derives revenue on a “pay-per-click basis”;
- at the date of registration of the disputed domain name, some eight years after Complainant commenced operation, Respondent must have been aware of Complainant's mark and its reputation;
- Respondent's use is, therefore, not a bona fide offering of goods or services;
- Respondent is not commonly known by the disputed domain name;
- Respondent has no connection with Complainant, and there is no basis upon which it could claim any legitimate rights or interests in the disputed domain name;
- the goods and services promoted on Respondent's website at the disputed domain name include those of Complainant's competitors;
- Respondent's failure to make a substantive response to Complainant's July 23, 2008 letter amounts to an adoption by silence of the material allegations made therein; and
- Respondent's use and registration of the disputed domain name is in bad faith.
Respondent makes no substantive response to the allegations and contentions contained in the Complaint but agrees to transfer of disputed domain name as a “unilateral consent to transfer” without admission to the three elements of paragraph 4(a) of the Policy. Respondent asserts that it made an offer to Complainant to transfer the disputed domain name by e-mail dated October 15, 2008. The Response attaches as Exhibit B a hard copy of what purports to be an “excerpt” of the e-mail which states that “…we intend to assign our rights…”. The excerpt is not fully legible as the right hand side of the page is missing. It appears, however to include a “release” in favour of Respondent. Respondent asserts that Complainant did not respond by way of offer to suspend or withdraw the proceeding.
Respondent cites a number of prior UDRP decisions which support the proposition that where there is unilateral consent by the respondent to transfer the domain name, after the proceedings have commenced it is in the interest of judicial economy and expeditious resolution of disputes that the panel proceeds to order transfer without further consideration of the merits – Citigroup Inc. v. Texas International Property Associates- NA NA, NAF Claim No. FA 1210904.
Respondent requests that the Panel order the immediate transfer of the disputed domain name but further requests that “if the Panel decides that analysis is required” it be given the opportunity to prepare a more formal response.
Respondent is a serial cyber squatter which has been the subject of numerous adverse UDRP decisions (see, for example, Countrywide Financial Corporation v. Texas International Property Associates, NAF Claim No. FA1075750, and the cases discussed therein). In many of these cases, Respondent has adopted the same tactic as here, of filing a response and inviting the panel to order immediate transfer on the basis of its unilateral consent, rather than engaging in analysis of the merits. The cases cited by Respondent support the view that in such cases immediate transfer without analysis is the appropriate course. There are, however, several panelists who have taken a different view (see for example the views expressed by learned panelist in Messe Frankfurt GmbH v. Texas International Property Associates, WIPO Case No. D2008-0375. The panel agrees with this latter view in cases where, as here, it appears that Respondent's motivation is to avoid an adverse finding of bad faith. Had Respondent genuinely wished to end the matter expeditiously, it could have simply provided Complainant with the necessary codes to effect the transfer. By adopting the course that it has, Respondent has gained extra time and, therefore, extra revenue from the operation of its website at the disputed domain name.
The Panel, therefore, considers this case to be one on which findings should be made under paragraph 4(a) of the Policy. The Panel denies Respondent's request for an opportunity to file a more formal Response. Respondent had the opportunity to do that at the time the response was filed and there are no exceptional circumstances which would warrant the filing of a supplementary or further response
Complainant has several registered trade marks which include as their dominant particular the words “river belle” and which date from well prior to the date of registration of the disputed domain name. In addition, Complainant has produced evidence of extensive use of RIVER BELLE as its name and trade mark. The disputed domain name consists of Complainant's trade mark plus the descriptive word “flash”. It is generally accepted under the UDRP that such an addition does not serve to negative the likelihood of confusion with the trade mark. Indeed, in this case it serves to heighten the likelihood, as the word “flash” is itself a word denoting software employed in online gaming operations which is Complainant's field of business.
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which Complainant has rights.
Complainant has produced a prime facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to rebut that showing. In the present circumstances, adoption of a domain name knowingly or recklessly disregarding that it comprises the trade mark of Complainant cannot constitute a bona fide offering of goods or services by reference to the domain name.
The Panel, therefore, finds this ground of the Policy has been established.
At the time of registration of the disputed domain name, Complainant's reputation in its trade mark was well established. The Panel accepts Complainant's submission that at time of registration Respondent would have known of that reputation and deliberately chose the disputed domain name in order to divert Internet users to its website and to profit either directly or by payments per-click from confusion thus caused. The Panel, therefore, finds that the domain name was registered and is 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 disputed domain name <riverbelleflash.com> be transferred to Complainant
Desmond J. Ryan AM
Dated: December 31, 2008