The Complainant is Stanworth Development Limited of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Dana Paulson of St. Charles, Illinois, United States of America.
The Disputed Domain Names < bigjackpotcity.com> and<megajackpotcity.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2009. On February 26, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed domain Names. On February 26, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on April 3, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on April 21, 2009. 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.
Complainant is the owner of numerous registered trademarks worldwide which consist of or incorporate the term JACKPOT CITY.
Complainant is the owner of a number of domain names consisting of or incorporating the term JACKPOT CITY, including <jackpotcity.com> which resolves to an online gambling website and has been in operation since 1999.
The Complainant's trademarks are used in relation to the provision of online games of chance, games of skill and online casino-style gaming services.
Complainant licences the use of its registered trademarks to its licensee, Carmen Media Group Limited. The licensee operates under the JACKPOT CITY trade mark on <jackpotcity.com>.
The Disputed Domain Names resolve to websites which list sponsored links to third party casino and gambling services websites.
Complainant contends that the Disputed Domain Names are confusingly similar to the Complainant's JACKPOT CITY mark for the purposes of paragraph 4(a)(i) of the Policy as the Disputed Domain Names both comprise the Complainant's mark in its entirety prefixed by the words “big” and “mega” which are merely descriptive words. The inclusion of the words “big” and “mega” do not add distinctive character so as to distinguish the Disputed Domain Names from the Complainant's trademark.
Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy. The Complainant submits that the Respondent is not connected or affiliated with the Complainant in any way. Complainant contends that the Disputed Domain Names which resolve to the Respondent's website can never be put to a legitimate use by the Respondent as both websites provide sponsored links to third party sites including links to competing on line casino style sites.
Complainant contends that the Disputed Domain Names were registered and are being used in bad faith by the Respondent for the purposes of paragraph 4(a)(iii) of the Policy. The Complainant submits that the Disputed Domain Names were registered with the purpose of disrupting the Complainant's business.
Complainant seeks a transfer of the Disputed Domain Names in accordance with paragraph 4(i) of the Policy.
The Respondent has not filed a formal Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent's default where necessary.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
The Complainant has provided sufficient evidence of it's ownership of registered rights in the mark JACKPOT CITY. The Panel is satisfied that the Disputed Domain Names are confusingly similar to the JACKPOT CITY mark. Previous panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See: PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The mere addition of descriptive terms such as “big” or “mega” to the JACKPOT CITY mark does not distinguish the Disputed Domain Names.
The Panel considers that the Disputed Domain Names are confusingly similar to the Complainant's mark for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant must make out at least a prima facie case that the Respondent lacks rights or a legitimate interest in the Disputed Domain Names. Document Technologies, Inc. v International Electronic Communications Inc., WIPO Case No. D2000-0270. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent, which if found by the Panel to be proved based on its evaluation of all evidence presented, shall be demonstrative of the Respondent's rights or legitimate interests to the Disputed Domain Names for the purposes of paragraph 4(a)(ii):
(i) (demonstrable preparations to) use the Domain Names in connection with a bona fide offering of goods or services prior to the dispute;
(ii) an indication that the registrant has been commonly known by the Domain Names even if has acquired no trademark rights; or
(iii) legitimate noncommercial or fair use of the Domain Names without intent to divert consumers or to tarnish the trademark.
It is generally regarded as prima facie evidence, for a complainant to show that a disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark. Roust Trading Limited v AMG LLC, WIPO Case No. D2007-1857. The Panel notes that the Respondent's sites features links to inter alia online casino and gambling websites of third party competitors of the Complainant. There is no evidence to support the premise that the Respondent is operating a bona fide business through its sites, or that it is affiliated with, or authorised by, the Complainant. The Complainant has therefore made out a prima facie case.
The Respondent has failed to file a Response to the Complaint. It remains for the Panel to determine whether or not in this case the Respondent has no rights or legitimate interests in the Disputed Domain Names as a consequence of its actions. Previous panels have found that, in certain circumstances, domain name parking may not necessarily be indicative of bad faith. In this case the Disputed Domain Names are being used in connection with sites which have listed online third party casino and gambling websites and in circumstances as further outlined below which are indicative of bad faith. The Panel considers that the Respondent is intentionally engaging in misleading conduct by diverting Internet users away from the Complainant's website to third party competitor websites. In these circumstances the Respondents use is illegitimate. The Respondent has been unable to adduce any evidence to persuade the Panel otherwise.
Therefore the Panel considers that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Policy requires a complainant to prove both registration and use in bad faith.
paragraph 4(b) of the Policy lists a number of circumstances which without limitation, are deemed to be evidence of the registration and used of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the Respondent has registered or acquired the Domain Names primarily for purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
((iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on respondent's website or location.
The Respondent's websites both contain sponsored links to third party online gambling websites. The Panel is willing to infer that the Respondent registered the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement.
Additional evidence of bad faith on the part of the Respondent can be inferred from the fact that the Respondent failed to reply to the Complainant's cease and desist letter on November 10, 2008 or follow up letter on November 27, 2008. From the evidence provided the Panel is satisfied that the Respondent did not reply to these letters nor did she take the requested remedial action to cease unauthorised use.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(b)(iv) of the Policy and that accordingly the Disputed Domain Names were registered and used in bad faith under paragraph 4(a)(iii) of the Policy.
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 <bigjackpotcity.com> and <megajackpotcity.com> be transferred to the Complainant.
Dated: May 5, 2009