The Complainants are Mansion (Gibraltar) Limited of Gibraltar, Overseas Territory of the United Kingdom and Provent Holdings Ltd. of British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Rajah & Tann of Republic of Singapore.
The Respondent is Michael Moore of Florida, United States of America.
The disputed domain name <mansioncamclub.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2009. On March 23, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 23, 2009, eNom 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 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 17, 2009.
The Center appointed Ross Wilson as the sole panelist in this matter on April 30, 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.
Mansion (Gibraltar) Limited is an international online casino, poker, sportsbook and sports exchange gaming entertainment company. It has been operating since August 2004. One of its website poker games attracts more than 275,000 visitors each month. Its free online poker game, operating since November 2005, attracts over 500,000 visitors each month.
Mansion (Gibraltar) Limited undertakes extensive marketing including a branded jet aircraft with a European airline and various paraphernalia featuring the licensor's trademarks. It sponsors the Tottenham Hotspurs Football Club through a deal worth £34 million over our years. The MANSION trademark is on the club's jerseys and merchandise. It organises poker tournaments, several of which have been broadcast. One of the broadcasts took place in the United Kingdom in 2005 on the Disney Channel's Real Time Channel and another on the Fox Sports Network in the United States of America in 2006. The latter was estimated to have attracted over 1,320 million viewers.
Provent Holdings Ltd. is the registered owner of over 150 registered trademarks. It has licensed the use of its trademarks to Mansion (Gibraltar) Limited. Mansion (Gibraltar) Limited promotes the licensor's trademarks to educate the public and its customers about its online casino and gaming business.
The Complainants contend that they have registered and unregistered rights in the trademark MANSION. They assert that the disputed domain name is substantially the same or confusingly similar because the only distinction between their trademark and the disputed domain name is the addition of the generic descriptive term “camclub”. They argue that such an addition does not serve to distinguish the domain name from the MANSION trademark as the term merely serves as a misleading description of a service that the Complainants could possibly provide, being live-video feeds of gambling or poker games.
The Complainant's argue that the Respondent has no rights or legitimate interests in the disputed domain name because the goods or services to be offered on the website, if at all, constitute pornography or at the very least, adult oriented services of a lewd nature which generally does not constitute a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. Also, even if it were found that goods or services were being offered on the website there is clear lack of good faith in connection in the use of the disputed domain name in connection with such provision of services which would prevent the supply of goods or services as being regarded as bona fide.
The Complainants further assert that the domain name bears no relationship to the Respondent and that they have not in any way licensed, authorized or permitted the Respondent to use their trademark.
In the Complainants' view the Respondent is using the disputed domain name to divert Internet users who are attempting to access the Complainants' websites or are searching for information regarding the Complainants. Further, the Complainants submit that the Respondent's registration and use of the disputed domain name for a pornographic website does not constitute a legitimate non-commercial fair use pursuant to paragraph 4(c)(iii) of the Policy. The Complainants contend that the Respondent's use of the disputed domain name for a pornographic website serves only to tarnish their trademark.
The Complainants submit that the disputed domain name has been registered and used in bad faith because it diverts Internet users to the Respondent's website for commercial gain. In their view, the only plausible reason for the Respondent to use the domain name is its similarity with the Complainants' trademark to mislead third parties into inferring some relationship between the domain name and the Complainants' trademark which mistake the Respondent will seek to exploit or profit. A further indicator of the Respondent's bad faith is that the Respondent is seeking to exploit and benefit from the goodwill and publicity generated by the Complainants in relation to the MANSION trademark.
The Respondent did not reply to the Complainants' contentions.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainants provided extensive evidence that the registered rights in the trademark MANSION are owned by Provent Holdings Ltd and have been licensed to Mansion (Gibraltar) Limited.
The disputed domain name consists of the Complainants' trademark in full followed by the descriptive term “camclub” and the suffix gTLD “.com”.
It has long been held that adding a gTLD to a registered trademark does not provide sufficient differentiation for a disputed domain name to be considered distinctive from the dominant element of a complainant's trademark (see Gianfranco Ferre' S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802). Similarly, the addition of a discriptive term to a trademark in the present circumstances does not serve as a distinguishing feature and does not necessary make the domain name distinctive (see Kabushiki Kaisha d/b/a Toshiba Corporation v. Marko Tusla d/b/a Toshiba-Club.com, WIPO Case No. D2004-1066). In this case, the addition of “camclub” does not obscure the dominance of the Complainants' MANSION trademark in the domain name.
In view of the above, the Panel finds that the Complainants have proven that the disputed domain name is confusingly similar to the Complainants' trademark in which they have demonstrable rights. The Complainants therefore have satisfied the first element of the Policy.
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name <mansioncamclub.com>. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to use a domain name that contains the Complainants' MANSION trademark in its entirety without authorisation by the Complainants and simply added the term “camclub”. As a consequence, the <mansioncamclub.com> domain name suggests a website with video-feeds related to the goods and services of the Complainants. Instead the Respondent uses the website for adult entertainment and pornography.
The evidence provided by the Complainants indicates that the Respondent has used their trademark in the disputed domain name to attract Internet users to an active pornographic website. Clearly, no rights or legitimate interests derive from this type of use of another's trademark.
There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Moreover, the Complainants have denied providing any authorisation at all.
Despite the opportunity through this dispute process, the Respondent has chosen not to rebut the Complainants' case or assert any rights in the domain name.
Based on the above the Panel considers the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainants have proven the second element of the Policy.
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Complainants have made a case that the Respondent is attempting to confuse Internet users seeking information about the Complainants and attract them to its website for commercial gain. The evidence provided shows that the disputed domain name resolves to a website called XXXBlackBook and subsequently diverts Internet users to another website “www.xxxblackbook.com” where visitors are invited to sign up as a member of the website.
Such activity represents bad faith as envisaged by paragraph 4(b)(iv) both in respect to registration and use of the disputed domain name. As stated in National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387, where there was a finding of bad faith, “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”. Similar cases of bad faith findings involving the diversion of domain names to pornographic sites include Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860 and Bass Hotels & Resorts, Inc. vs. Mike Rodgerall, WIPO Case No. D2000-0568.
On the basis of the above and the evidence provided by the Complainants, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainants have demonstrated that the disputed domain names were registered and 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 name <mansioncamclub.com> be transferred to the Complainants.
Dated: May 14, 2009