WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Easthaven Ltd.
Case No. D2010-1167
1. The Parties
The Complainant is La Société des Bains de Mer et du Cercle des Etrangers à Monaco, of Monaco, Monaco, represented by De Gaulle Fleurance & Associés, Paris, France.
The Respondent is Easthaven Ltd., of St. Michael, Barbados and Scarborough, Ontario, Canada, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <suncasino.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2010. On July 16, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on July 19, 2010. The Center verified that the Amended 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 July 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2010. The Response was filed with the Center August 9, 2010.
On August 20, 2010 the Complainant submitted a Supplemental Filing, receipt of which the Center acknowledged on the same day. On September 1, 2010 the Respondent submitted a Supplemental Filing in reply to the Complainant’s Supplemental Filing. The Panel accepts these Supplemental Filings for its consideration.
The Center appointed John Swinson, Stefan Naumann and The Hon. Neil Brown QC as panelists in this matter on August 31, 2010. The Panel finds that it was properly constituted. Each member of 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
The Complainant is a Monegasque company with approximately 70% of its share capital owned by the Government of the Principauté de Monaco (“Monaco”). The Complainant has been granted a monopoly for casino and gambling activities in Monaco and has been operating casinos in Monaco for more than 140 years. It has been operating the Sun Casino since 1975.
The Complainant owns Monegasque trademark registration number R01.22852 for SUN CASINO. The Complainant’s trademark was filed on July 5, 1991.
Little information is known about the named Respondent. The information provided in the Response actually relates to a purported related entity, Atlantis Gaming Inc. Atlantis Gaming Inc. was previously (and may still be) involved in the online casino industry.
The disputed domain name was acquired by the Respondent in January 2010. The disputed domain name does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant makes the following submissions and arguments:
The Complainant has been granted a monopoly for casino and gambling activities in Monaco (under the Privilege des Jeux, which has been renewed by the Ordonnance Souveraine no. 15.732). The Complainant has been operating the Casino de Monte-Carlo in Monaco for more than 140 years and has been operating the Sun Casino since 1975. The Complainant’s casinos are famous around the world, attracting a geographically diverse customer base.
The Complainant is the owner of numerous trademarks for SUN CASINO including Monegasque trademark registration number R01.22852 for SUN CASINO. The disputed domain name is confusingly similar to the Complainant’s trademark as it consists entirely of the Complainant’s trademark. The only difference is the space between the words “Sun” and “Casino” which does not erase the strong similarity between the disputed domain name and the Complainant’s trademark (see Playboy Enterprises International, Inc. v. Hector Rodrigues, WIPO Case No. D2000-1016).
Based on a search of the Barbados and other trademark registers, it does not appear that the Respondent has any trademark rights in the words “Sun” or “Casino”. The Complainant has not authorized the Respondent to use its SUN CASINO trademark or the disputed domain name. The Complainant does not have a business relationship with the Respondent.
The following elements show that the Respondent has registered and used the disputed domain name in bad faith:
- the strong notoriety of the Complainant’s trademark, especially in the field of gambling;
- the disputed domain name reproduces the Complainant’s trademark in its entirety;
- the Respondent has sought the services of a third party to assist it in selling the disputed domain name to the Complainant for an amount that exceeds its out-of-pocket expenses (EUR 1 million, compared to an assessed value of USD 1,100);
- the third party engaged to sell the disputed domain name has contacted the Complainant stating that he already has reputable offers for the disputed domain name in an attempt to put pressure on the Complainant to purchase the disputed domain name; and
- the disputed domain name was acquired for the purpose of selling it for valuable consideration as shown by the contact details for the disputed domain name (firstname.lastname@example.org).
In its Supplemental Filing, the Complainant wished to draw the Panel’s attention to the large number of abusive and threatening emails that had been received by the Complainant’s legal representation from the third party engaged to sell the disputed domain name by the Respondent. The Complainant also provided the Panel with a WhoIs search result to show that the Respondent acquired the disputed domain name in January 2010, not on January 11, 1998, as stated in the Response.
The Respondent makes the following submissions and arguments:
The Respondent registered the disputed domain name on January 11, 1998, more than 12 years ago to potentially use an additional site for its online gaming business at “www.casinoland.com”. In 2000, the Respondent was forced to close “www.casinoland.com” as a result of computer software difficulties. The Respondent never utilized the disputed domain name as a website and has not used it for any other purpose to date.
The Complainant has failed to provide evidence supporting its assertion that it is the owner of numerous trademarks, except in relation to the Monte Carlo trademark for SUN CASINO. Without evidence, other trademarks are unenforceable (Intrum Justitia Licensing AG v. PieterFloris, WIPO Case No. D2009-0914). The unidentified trademarks are further unenforceable as the Complainant has failed to show that they predate the registration date of the disputed domain name. Furthermore the Complainant has failed to provide evidence of the original registration date of the Monte Carlo trademark.
In previous UDRP cases, the Complainant has failed to refer to its SUN CASINO trademark and has argued that “sun” is a descriptive term (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. None, WIPO Case No. D2004-0415). The Complainant’s tacit waiver of its trademark rights in this case raises the question of the extent to which the Complainant was using this mark in 2004, if at all. “Sun Casino” is a descriptive term, which is the only reason the Respondent registered it. “Sun” is often associated with travel, beaches and vacations. As stated above, the Complainant has even admitted that “sun” is a descriptive term. This good faith registration of the disputed domain name, based on descriptiveness, establishes the Respondent’s legitimate interest (Baccus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., WIPO Case No. D2008-0321). The descriptiveness of “Sun Casino” is evidenced by the overwhelming use of “Sun Casino” in the gaming industry. A Google search undertaken by the Respondent for this term resulted in 220,000 results of which the Complainant was not even in the first 100 results.
Respondent asserts that there are several other registered or pending trademarks incorporating the words “sun” and “casino”, including CASINO OF THE SUN, RISING SUN CASINO and SUNCRUZ CASINO. These results show that the Complainant lacks the exclusive right to use the term, that the Respondent was permitted to register the disputed domain name in good faith under the Policy and that the registration of the disputed domain name establishes the Respondent’s legitimate interest. The Complainant does not have any trademarks for SUN CASINO in the United States of America. The Complainant’s applications for trademarks for SUN CASINO in the United States of America were refused on two occasions due to the existence of prior registered third party marks.
The Respondent’s legitimate interest is further supported by the fact that the disputed domain name was registered to use as a potential online casino website, to be used in conjunction with “www.casinoland.com”. This constitutes demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent has also registered other gaming related descriptive domain names such as <betprofit.com> and <casinojack.com>, showing that the Respondent has engaged in a pattern of registering descriptive domain names (not trademarks). The fact that the Respondent decided to sell the disputed domain name in 2010 does not effect the Respondent’s legitimate interest.
The Complainant’s failure to show that the Respondent had knowledge of its mark is fatal to its case, according to the Respondent. The evidence shows that it is more likely that the Respondent could not have gained knowledge of the trademark in 1998 even if it tried (on the basis that Monte Carlo trademark registrations were not online and due to the limited Internet search results at this time). It is also well established that a respondent is not required to conduct trademark searches in every country of the world (Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016).
The Respondent’s decision to subsequently sell the disputed domain name does not show that the disputed domain name was registered in bad faith (Audiopoint, Inc. v. eCorp a/k/a Chad Folkening, WIPO Case No. D2001-0509). Even if it is determined that this is bad faith, there is overwhelming evidence that the disputed domain name was registered in good faith. The Complainant’s delay in instigating these proceedings shows that the Complainant did not truly believe the Respondent had engaged in bad faith registration. While laches is not recognized under the Policy, a long delay in taking action “gives rise to the inference that the disputed domain name has not been registered and used in bad faith” (C Brewer and Sons Limited v. Vertical Axis, Inc. / wallpaperdirect.com/ c/o Nameview Inc. Whois IDentity Shield, WIPO Case No. D2009-1759).
The Complainant has abused the Policy by bringing a Complaint wholly without merit. There is no evidence that the Respondent registered the disputed domain name with the Complainant’s trademark in mind. Therefore a finding of reverse domain hijacking is warranted.
In its Supplemental Filing, the Respondent stated that it in no way authorized the abusive and threatening emails referred to above. The Respondent also stated that a related entity to the Respondent purchased the disputed domain name in January 11, 1998 which was transferred to the Respondent in January 2010. It was argued that both entities were beneficially controlled by the same people (with the exception of one party).
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant is the owner of a registered trademark in Monaco for SUN CASINO. No evidence was put forth in relation to the other “numerous” SUN CASINO trademarks around the world mentioned by the Complainant. The Panel finds that this one trademark registration is sufficient to establish trademark rights and that the Complainant is not required to have a trademark registered in the United States of America (as the Respondent seems to suggest is necessary).
The Respondent argues that the term “Sun Casino” is descriptive and that many other SUN CASINO trademarks are in use. However, it does not appear that any prior identical SUN CASINO trademarks exist and that most other marks actually use the term in combination with other words, for example RISING SUN CASINO HOTEL AND RESORT and CARIBBEAN SUN ON-LINE CASINO. Furthermore, the Panel does not find that the terms “sun” and “casino” are descriptive when used together for the services for which the trademark was registered.
For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. It is well established that the suffix “.com” can be ignored for this purpose. The disputed domain name reproduces the Complainant’s trademark in its entirety. The only difference between the disputed domain name and the Complainant’s trademark is the space between the two words. The Panel finds that this difference is not enough to distinguish the disputed domain name from the Complainant’s trademark.
The Panel finds that the disputed domain name is identical or confusingly similar to a registered trade mark in which the Complainant has rights.
Accordingly, the first element has been met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant must make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
From the evidence before the Panel, it does not appear that the Respondent has any trademark rights in the words “Sun” or “Casino”. The Complainant has stated that it has not authorized the Respondent to use its SUN CASINO trademark or the disputed domain name and that it does not have a business relationship with the Respondent, and this does not appear to be contested by the Respondent.
The Respondent states that it registered the disputed domain name in January 1998 to use in conjunction with its online gaming business. However, in its Supplemental Filing the Complainant showed that the Respondent only acquired the disputed domain name in January 2010. The Panel finds that in light of the new information, the evidence provided in the Response is actually misleading as it is designed to give the impression that the Respondent has owned the disputed domain name for a long period of time, which is not the case. The Respondent in its Supplemental Filing clarified that a related entity to the Respondent (Atlantis Gaming Inc.) purchased the disputed domain name on January 11, 1998 and that the disputed domain name was transferred to the Respondent in January 2010. It was argued that both entities were “beneficially controlled” by the same people (with the exception of one party). Despite these claims, the Panel was not provided with extrinsic evidence to prove these assertions (see also, the Panel’s concluding observations made in the penultimate paragraph of this section 6b regarding an affidavit provided by Respondent’s marketing manager), nor was it provided with a clear indication of the ownership structure of both organizations.
The Panel decides, based on the evidence before the Panel, that the Respondent acquired the disputed domain name in January 2010.
Accordingly, in these circumstances, this Panel finds that Atlantis Gaming Inc.’s alleged intention to use the disputed domain name in January 1998 is irrelevant in this situation. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (“The Respondent, however, fundamentally misperceives the Policy and its objectives in asserting that a previous registrant’s good faith registration of a domain name immunizes one who subsequently acquires the domain name from further scrutiny.”), cited with approval in TCN, Inc. v. 3v Networks, WIPO Case No. D2008-0134 (“Prior decisions have held that a transfer and re-registration between related parties is still considered a new registration for purposes of this analysis.”)
Thus, it is the named Respondent’s rights and interests that must be examined. The Respondent has not used the disputed domain name. The Panel also finds that the Respondent made no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services; rather the Respondent’s intention was merely to speculate in the sale of domain names. The Panel acknowledges that in some circumstances this may constitute a legitimate use (see Audiopoint, Inc., supra), however in this case finds that it does not.
The Panel also notes the Respondent’s assertions in relation to third party rights in trademarks or domain names that include the terms “Sun” and “Casino”. Such rights cannot create a right or legitimate interest by the Respondent in the disputed domain name, and therefore legitimize its effort to sell that domain name to a casino operator that owns the trademark SUN CASINO.
Even if the Panel considered whether the previous owner, Atlantis Gaming Inc., had rights or legitimate interests in the disputed domain name, the answer would be the same. Based on all of the evidence available to the Panel, it would appear that the original owner, Atlantis Gaming Inc., may have intended to use the disputed domain name in relation to gaming, but never did so. It passively held the disputed domain name for more than 10 years and never established a gaming website or used the name “Sun Casino”. Even if the Panel would accept the Respondent’s link as to ownership, the Panel has not been provided with any evidence of demonstrable preparations to use the disputed domain name. The claim that Atlantis Gaming Inc. may have intended to use the disputed domain name in relation to gaming is just that – an assertion by the Respondent that is not supported by any persuasive or tangible evidence. The Respondent has provided an affidavit by its marketing manager (and a purported “beneficial owner” of Atlantis Gaming Inc. and the Respondent), but this affidavit has no supporting materials. On balance, this Panel is not persuaded by such unsupported claim. It is not enough to assert that the domain name was to be used, extrinsic evidence of such intended use must be provided (see Universal City Studios, Inc. v. Antonio Paez, WIPO Case No. D2000-0569).
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, which the Panel finds has not been rebutted by the Respondent.
Accordingly, the second element has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
The Panel notes that some of the Respondent’s contentions in relation to this element concern the conduct of Atlantis Gaming Inc., not the Respondent, presumably because of Respondent’s claims of continuing beneficial ownership of the disputed domain name. As noted, the Panel is not persuaded by these claims on the present record. (Despite presenting itself as a professional organization in the gaming area, the Respondent argues that the Complainant’s trademark could not have been known to Atlantis Gaming Inc. due to the inability to access trademarks from Monaco online. Although it is not necessary to decide this issue, had the Panel been persuaded by the Respondent’s claim of continuing beneficial ownership of the domain name from Atlantis Gaming Inc. to the Respondent, the Panel would have rejected the Respondent’s reasoning as imputed to Atlantis Gaming Inc. on the basis that it would create a division between trademarks with online registries and those without. Since Atlantis Gaming Inc. was presented to the Panel as a professional gaming/casino organization, the Panel finds that it could or should have been aware at least of the trademark and the name SUN CASINO as actually used since 1975 by a well-known casino in Monte Carlo, when registering the disputed domain name.)
For this element, the Panel only considers whether the Respondent registered the disputed domain name in January 2010 in bad faith and used the disputed domain name in bad faith.
The Panel finds that when the Respondent acquired the disputed domain name it was aware of the Complainant and its trademarks. Once acquired, the Respondent immediately sought to sell the disputed domain name to someone in the “casino industry”, in particular the Complainant. Registering or acquiring a domain name primarily for the purpose of selling the domain name to the trademark owner (or to a competitor of the trademark owner), for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is evidence of registration and use of a domain name in bad faith (paragraph 4(b)(i) of the Policy). The disputed domain name was clearly offered to the Complainant at a price of EUR 1 million, which is far in excess of any out-of-pocket expenses that may have been directly related to the disputed domain name.
The Panel finds that the Respondent’s acquisition and offer to sell the disputed domain name to the Complainant, the owner of the SUN CASINO trademark, qualifies as registration and use of the disputed domain name in bad faith.
Accordingly, on the evidence available to it, the Panel finds that the third element has been met.
D. Delay in Commencement of Proceedings
The Panel has not been provided with any evidence that would make it decide against the generally recognized position that there is no limitation period under the Policy and that the doctrines of acquiescence or laches do not apply in UDRP proceedings. The Panel further notes that the Complainant brought this Complaint soon after the bad faith of the Respondent was brought to its attention and in the same year that the Respondent acquired the disputed domain name.
E. Reverse Domain Name Hijacking
The Panel finds that the Respondent’s claim of reverse domain name hijacking is without merit.
F. Abusive and Threatening Emails
The Panel wishes to make it clear that the large number of abusive and threatening emails made to the Complainant’s legal representation in conjunction with this case are not appropriate in any circumstances. However, the Panel accepts the Respondent’s evidence that it had no knowledge of these emails, and that it did not authorize these emails to be sent. The Panel reiterates the Respondent’s statement that the “transmission [of the emails] to opposing counsel was entirely inappropriate”.
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 <suncasino.com> be transferred to the Complainant.
The Hon. Neil Brown QC
Dated: October 22, 2010
Identical or Confusingly Similar
As a matter of formality, it should first be said that the evidence adduced by the Complainant of the trademarks it relies on is hardly satisfactory.
It has alleged in the Complaint that it has a Monegasque trademark for SUN CASINO and that it is “the owner of numerous ‘Sun Casino’ trademarks all around the world”. However, it has not produced evidence of those international trademarks or even the countries in which they are registered. Clearly, it cannot rely on any of those trademarks in this proceeding.
With respect to the Monagasque trademark, the Complainant has adduced evidence to the effect that its trademark, having been filed on July 5, 1991, was renewed on October 25, 2001. The supporting certificate, however, is not a certificate to the grant of the trademark, which is the usual and established way of proving a trademark in UDRP proceedings. In particular, it is not evidence that the trademark was in force in 1998 when the disputed domain name was registered. It is generally accepted that it is sufficient for the purpose of the first element of the Policy if a complainant establishes that it holds a trademark at the time the Complaint is filed, but it is certainly important to have evidence of when the mark was registered for the purposes of applying the later provisions of the Policy.
This Panelist would not usually be concerned about formalities of that sort if it were not for the fact that this matter is hotly defended and the Respondent made it plain that it was putting the Complainant to its proof and wanted evidence of the grant of the trademark to be adduced. Although the Complainant made what has been accepted as a Supplementary Submission, it still did not adduce documentary evidence of the issuing of the trademark.
Moreover, as the majority has ruled against the Respondent substantially on the inadequacy of its evidence, including a finding that the Respondent’s affidavit had “no supporting materials” and other evidentiary shortcomings that the Respondent has not been invited to rectify, it seems incongruous that the Complainant should be able to succeed on patently inadequate evidence.
There is an additional reason why the Panel was entitled to expect proper evidence of the trademark, namely that, as the Respondent rightly submits, the Complainant has acted in the past as if it did not have a Monagasque trademark for SUN CASINO and did not produce one when it clearly should have done so if it had one. That was on the occasion of the proceedings in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. None, supra. In that case, the complaint was that the respondent had registered, among other domain names, the domain names <suncasino-montecarlo.com>, <montecarlosuncasino.com>, <suncasino-monte-carlo.com> and <monte-carlosuncasino.com>. The best evidence for it to make out that claim was clearly evidence of a trademark for SUN CASINO, as SUN CASINO was clearly the dominant trademark invoked in two of the four domain names and a constituent element in the third and fourth domain name. But no such evidence was adduced and the Complainant argued instead that the domain names were confusingly similar, not to the trademark SUN CASINO, but to the trademark CASINO DE MONTE-CARLO, a tortuous argument that was unnecessary if there were a simple trademark for SUN CASINO. The panelist in that case was able to find, however, that “the addition of the term ‘sun’ cannot detract in any way from the existing similarity, especially due to the fact that this term is commonly used, as evidenced by the Complainant, in the casino industry, since it is a term that easily evokes farniente, beaches, holidays, etc.”
As noted above, the evidence is hardly satisfactory. However, the case can fortunately be decided on more substantial issues.
Right or Legitimate Interest
The Respondent’s case showing that it has a right or legitimate interest in the disputed domain name is that an associated company registered the disputed domain name January 11, 1998 as part of an Internet gaming business that it operated under the name Casinoland.com and that, although the disputed domain name itself was not used for a website, Casinoland.com was a going concern for two years but developed software problems in 1999 and ceased operations in 2000.
In support of its case, the Respondent tendered an affidavit by its marketing manager stating that he registered the disputed domain name because of the descriptive nature of the term, that it was suitable for a gaming enterprise and that he was not aware of the Complainant’s trademark at the time. Moreover, he said that he had registered other domain names that were also descriptive of gambling activities such as <casinoland.com>, <betprofit.com>, <casinojack.com>, <casinoratings.com>, <casinoroom.net> and <entertainmentcasino.com>. He also said that the disputed domain name was acquired as part of a plan to operate a series of gaming sites and that this enterprise was actually established, operated, had thousands of members and paid out hundreds of thousands of dollars in winnings. However, the enterprise had software problems and did not proceed. As the disputed domain name, which had not been used itself for a gaming site, was not being used and as his group was still paying registration fees on it, they decided to sell the disputed domain name and put in train a sales process through a broker.
Accepting this evidence would normally be seen as a plausible explanation for registering the domain name and giving rise to a right or legitimate interest.
However, the majority of the panel is concerned that in its Supplementary Submission the Complainant showed that the disputed domain name was not registered in the name of the Respondent prior to January 2010 and that until then it was registered in the name of Atlantis Gaming Inc. From this, the majority has argued that the Respondent must have been trying to mislead the Panel into thinking that the Respondent had owned the disputed domain name much longer than it actually had and that, as the Respondent acquired the disputed domain name only in January 2010, it should not consider the intention of Atlantis Gaming Inc. when it acquired the disputed domain name on January 11, 1998. It is then concluded that the Respondent acquired the disputed domain name purely for speculation, that such a use is not bona fide and that even if the intention of Atlantis Gaming Inc. were taken into account, it had made no demonstrable preparations to use the disputed domain name for a bona fide purpose.
For the following reasons, this Panelist does not accept those conclusions.
First, this Panelist finds that the evidence of the Respondent is far more extensive and has far more substance than has been given to it by the majority.
The evidence of the Respondent supporting the original Response, the affidavit by its marketing manager, had deposed to the fact that the Respondent was the ‘successor owner’ of the casinoland.com domain names. It is to be noted that he did not say that the Respondent was the original owner. The expression ‘successor owner’ may not be a term of art, but it is certainly used and in any event its meaning must be reasonably clear, namely as referring to a party who was not the original owner of some property but an owner who came later in time. It would appear to mean the same as the expression ‘successor in title’. At the least, it cannot be said that the use of the expression attempts to mislead anyone into believing that it means the opposite of what it clearly says. Thus, it is wrong to say that there appears to have been an attempt to mislead the Panel. So far as this Panelist is concerned, the Respondent’s original evidence is the same as its subsequent evidence, namely that it was an owner who came to that entitlement as successor to the previous owner.
The marketing manager then continued in his affidavit to make it clear that he was the moving spirit behind the registration of the disputed domain name and the other names in the casinoland.com stable, including <casinoland.com>, <betprofit.com>, <casinojack.com>, <casinoratings.com>, <casinoroom.net> and <entertainmentcasino.com> and that the subsequent registration of the disputed domain name by the Respondent was nothing more than a transfer to another member of the same corporate group.
After the Complainant’s supplementary submission, the Respondent also made a supplementary submission in which it reminded the Panel that its original evidence had been that it was the ‘successor owner’ of the disputed domain name. It then went on to provide a further affidavit by the marketing manager of the Respondent to the effect that he is the beneficial owner, together with others, of both Atlantis Gaming Inc., i.e. the original registrant of the disputed domain name and the Respondent, the current registrant of the disputed domain name and that all that had happened was that the disputed domain name had been transferred from one member of the group to another member of the group with the intention of selling it.
That being the evidence, the substance of the case is that although, as a matter of formality the disputed domain name has had two owners, in reality it has been held by a common interest.
The majority is also concerned as to the meaning of the expression ‘beneficial owner’, but its meaning is sufficiently clear and means the entitlement to the fruits of ownership of property even if the title is in the name of another entity. In any event, whether it is a term of art or not, the sworn evidence is to the effect that the disputed domain name has been registered to one or the other of the same corporate group since 1998 and that it has been used as part of that group’s overall business activities.
In addition, an affidavit has been made by counsel to both companies, Atlantis Gaming Inc. and the Respondent, and the marketing manager swearing in effect that he knows the corporate structure of the group and that the beneficial ownership of Atlantis Gaming Inc. is the same as that of the Respondent.
The totality of this evidence is that it is far more than is usually provided in UDRP proceedings, truncated as they are and that its effect shows a legitimate and unsurprising transaction that should not give rise to suspicion in the absence of anything to the contrary.
It should also be said that it is not unusual for complainants in UDRP proceedings to rely on trademarks that are not actually in the name of the complainant but in the name of a separate company, formed sometimes specifically to hold intellectual property. If there is a case made out that the two companies are part of the same group or have a common ownership as a matter of reality, panelists regularly accept that evidence and accept that the Complainant has shown a trademark for the purposes of the Policy. Likewise, this Panelist accepts as a matter of commercial reality and convenience that, as in the present case, domain names will from time to time be held by different members of the same corporate group and that the same indulgence should be given to respondents as is given to complainants, unless of course there are other circumstances showing that such arrangement was or is dubious.
It therefore seems unreal to ignore the intention of Atlantis Gaming Inc. at the time it registered the disputed domain name and the use it made of the disputed domain name as part of an overall plan that was already in operation and continued for two years.
The majority maintains, however, that the intention of Atlantis Gaming Inc. must be disregarded because a transfer of registration is to be regarded as a new registration and that it is the legitimate interest of the current domain name owner that must be looked at, rather than that of a prior owner.
That would probably be so if the transfer is a sale to an unrelated party, as it would seem strange that a registrant could avoid liability for a plainly illegitimate acquisition by relying on the legitimate registration of an entirely unrelated registrant in entirely different circumstances and possible many years before.
But the more difficult question is whether such a rule should apply when the two parties are in common ownership.
It is true that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that the transfer of a domain name to a third party, as opposed to a mere renewal, amounts to a new registration. However, the Overview does not claim that this is an immutable rule or that it applies to transfers between entities with common ownership.
It is also true that the majority of the Panel has relied on two decisions that have expressed a view on this issue, namely HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 and TCN, Inc. v. 3v Networks, WIPO Case No. D2008-0134.
However, neither case is a basis for the proposition that such an immutable rule must or should be applied where the transfer is between two entities in a common ownership or where it is reasonable to allow the registrant to rely on the legitimate or good faith reasons that motivated the original party to register the domain name. Indeed, neither case justifies the reliance placed on it by the majority.
In the first of the two cases relied on, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, the panel adopted the view expressed in the WIPO Overview and said that for its part “the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name”. However, the panel in that case was not dealing with a case of common ownership between two entities, was not purporting to lay down a rule or principle that applied in such cases irrespective of the circumstances and made it clear on the facts of the case before it that “the [r]espondent cannot rely on a previous registrant’s good faith registration of the disputed domain name without more to establish that the Respondent possesses rights or legitimate interests in the disputed domain name” (emphasis added).
In that case there was nothing more that could be relied on and the whole factual situation made it clear that the respondent did not have much to stand on in arguing that it had a right or legitimate interest in the domain name. In the present case, there is more and it is plausible and certainly enough to show the requisite legitimate interest.
Nor is the second decision, TCN, Inc. v. 3v Networks, WIPO Case No. D2008-0134, authority for such a broad proposition that in all circumstances an entity in common ownership with the original owner will be denied the right to rely on the legitimacy of the original registration by another member of the same group. In that case, the panel found that the evidence advanced by the respondent was not enough to show that there was a common ownership, but that in any event in the light of all the circumstances, it had not been shown either that the domain name had been registered in bad faith or that the respondent lacked a right or legitimate interest in the domain name. The decision is thus entirely different from the present case where there is direct evidence from both companies and from their counsel that the two companies are in virtual common ownership and that one is virtually the alter ego of the other.
Accordingly, neither of the decisions relied on by the majority prevents the Panel from taking account of the intention of a party in common ownership with the Respondent at the time the disputed domain name was registered.
Indeed, although UDRP decisions are not binding precedents, it should be noted that in at least one decision, observations were made that are quite contrary to the views contended for by the majority. In Schweizerische Bundesbahnen SBB v. Gerrie Villon, WIPO Case No. D2009-1426, on similar facts, the panelist in effect warned against being diverted by a change in the “formal identity” of a respondent. The panelist stated the issue in the following way:
“[c]omplainant's theory is that when the formal identity of the registrant changed all rights and legitimate interests in the disputed domain name that might have accrued on behalf of the transferor were extinguished, and that [r]espondent should now be treated as a ‘disinterested’ registrant of the disputed domain name seeking to take unfair advantage of [c]omplainant”.
The panelist’s response is made clear from the following observations:
“Here, this [p]anel is satisfied that [r]espondent is the individual who preponderantly owns and controls V-On, Ltd., the transferor of the disputed domain name to Small Black Box, Ltd., and he is the individual who preponderantly owned and controlled Small Black Box, Ltd. (which transferred the disputed domain name to him). The fact that [r]espondent controlled the transferor and transferee of the disputed domain name in each instance is evident from the Austrian court decisions furnished by [c]omplainant. It is evident that [c]omplainant knew of this common control relationship when it initiated this dispute.
In this [p]anel's view, the transfer of a domain name or trademark between commonly-controlled persons does not act of itself to extinguish rights and legitimate interests that may have accrued in that domain name or trademark. Business enterprises commonly assign and transfer trademarks among commonly controlled entities for a variety of reasons. The assignees and transferees of those marks do not generally abandon prior rights and interests that have accrued in those marks. In the [p]anel's view, [c]omplainant has presented no compelling legal grounds in the present case for distinguishing the treatment of assignment or transfer of domain names from the treatment typically accorded trademarks. In the absence of some exceptional circumstance, there is no reason to conclude that transfers of domain names between commonly-controlled entities extinguishes pre-existing rights or legitimate interests in those domain names. (emphasis added.)
The [p]anel is persuaded that on the record in these proceedings [r]espondent is the successor in interest to the rights and legitimate interests of Small Black Box, Ltd. and V-On, Ltd. in the disputed domain name. There is continuity and identity of ownership among these parties. From the [p]anel's perspective, each have or had rights and a legitimate interest in the term or mark SBB, and rights and a legitimate interest in the disputed domain name.
Accordingly, the [p]anel finds that [c]omplainant has failed in these Policy proceedings to establish that [r]espondent has no rights or legitimate interests in the disputed domain name”.
Those remarks are equally applicable to the present case. That being so, there is more than enough justification for having regard to the intention of Atlantis Gaming Inc. at the time it registered the disputed domain name.
That intention, so far as the evidence goes, is that it registered the disputed domain name for its use in an Internet gaming business that actually started and functioned, as the name was suitable for that purpose and that it also registered other domain names of the same ilk such as <casinoland.com>, <betprofit.com>, <casinojack.com>, <casinoratings.com>, <casinoroom.net> and <entertainmentcasino.com> to use in the same business.
The majority is prepared to go only as far as to say that Atlantis Gaming Inc. “may have intended to use the disputed domain name in relation to gaming, but never did so.”
However, the Respondent adduced evidence to the effect that the disputed domain name was acquired as part of an enterprise that functioned and operated. That evidence should be accepted unless some good reason is given for rejecting it. The evidence is unchallenged that an Internet gaming site was established, that it conducted business and produced revenue, that the disputed domain name was part of the corporate structure and that other domain names with a gaming colour about them were also registered.
That evidence makes the Respondent’s arguments at least plausible and more likely than not to be true. It amounts in the opinion of this Panelist to using the disputed domain name or making demonstrable preparations to use it for a bona fide offering of gaming services.
The difference is between those cases where the registrant has done nothing but register the domain name and those cases where it has done something tending to show that it is making preparations for a business use. In The Jolt Company v. Digital Milk, Inc., WIPO Case No. D2001-0493, cited by the Respondent, where the preparations were admittedly more than in the present case, the respondent had also changed its business plans as did the Respondent in the present case and did not proceed with its original venture. Yet, a demonstrable preparation was held to have been shown.
In substance, the preponderance of the evidence in the present case is that the registrant was on track to use the disputed domain name for the same purpose as other domain names in the group were already being used and producing income.
For the reasons given above, the apparent intentions of Atlantis Gaming Inc. should be taken into account; its intentions, the addition of the disputed domain name into the group as part of a gaming business and the actual conduct of the business by the group all constitute use of the disputed domain name or demonstrable preparations to use it for a bona fide offering of services.
Moreover, the expression ‘sun casino’ is clearly generic, as we have seen from the decision in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. None, supra, and is subject to very extensive third party use in the same generic sense and was registered in the absence of any circumstances showing targeting of the Complainant or any intention to infringe the Complainant’s trademarks or business interests.
All of these considerations show that the Respondent has a right or legitimate interest in the disputed domain name.
The finding by the majority against the Respondent on bad faith is essentially that it acquired the disputed domain name in breach of paragraph 4(b)(i) of the Policy, in effect that it registered the disputed domain name intending to sell it to the Complainant or a competitor. But that case has not been made out on the evidence.
It follows from this Panelist’s approach to matters dealt with in the previous section that the intention of Atlantis Gaming Inc. may also be examined to determine if the disputed domain name was registered in bad faith. It is unlikely that such was the case, for the reason that, on the evidence, it is far more likely that it was registered for use as a gaming site. Other domain names of the same genre were also registered and a gaming business was established and actually conducted business. It is therefore more likely than not that the disputed domain name was acquired for the same purpose.
Moreover, the unchallenged evidence is that the interests associated with the Respondent were not aware of the SUN CASINO trademark or its Sun Casino establishment when the disputed domain name was registered in 1998. In support of that evidence is the fact that it is difficult to see how the Respondent could have become aware of the trademark if it had followed the avenues then open to it. It would certainly not have been able to find it from the usual source, as the Monagasque trademark registry was not online, as it is not now online. The majority has said that such fact cannot be taken into account because it would create “a division between trademarks with online registries and those without”. Even if that were the result, the paramount consideration here is not the rights and wrongs of offering an online trademark registry, but whether a party to proceedings is to be denied a legitimate defence when it would have been impractical for it to find out if there was a registered trademark in the disputed domain name.
Indeed, although the Complainant asserts that it opened the Sun Casino in 1975, that event is not noted by the Complainant in the history of the Monte Carlo casino presently on its website1. A search of the Wayback machine at “www.archive.org” suggests that the Complainant has not maintained a website at all until recent years and that searching for the Sun Casino in 1998 would apparently have produced no information about a casino of that name in Monte Carlo. We have also seen that in 2004, in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. None, supra, when the Complainant had a clear opportunity to announce to the world that it owned the Sun Casino at Monte Carlo and had a trademark to that effect, it ignored it.
None of these aspects is conclusive, of course, but together they tend to make the Respondent’s point at least plausible, that is to say that it was not aware of the trademark or the Sun Casino and that all that was done in 1998 was that its interests registered a generic expression suitable for an online gaming business that it actually conducted and used to produce income. That view was the conclusion reached by the Panelist in La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Martimi Bt., WIPO Case No. D2000-1318 and it is the conclusion that should be reached in the present case. The panelist in that case said:
“In fact, there is no evidence that [r]espondent knew of [c]omplainant, of [c]omplainant’s trademark or of [c]omplainant’s exclusive rights on providing gambling services in the Princedom of Monaco. Therefore, the [p]anel finds that [r]espondent did not register the [d]omain [n]ame in bad faith.
Furthermore, the [p]anel finds that in this case, paragraph 4(b), (i) of the Policy is not applicable and that the [r]espondent did not use the [d]omain [n]ame in bad faith. Indeed, nothing indicates that [r]espondent was basing this activity on the inherent value of trademarks belonging rightfully to others thereby trying to get a free ride on somebody else’s goodwill. Consequently, the [p]anel finds that [r]espondent did not use the [d]omain [n]ames in bad faith”.
These considerations show that the Respondent is substantially correct in its submissions on this element and that, not only has a case of bad faith registration and use not been made out, but there is every ground for concluding that the registration and use of the domain name has been in good faith.
The Complainant thus fails on this count as well.
The inordinate delay until the Complainant filed the Complaint adds to the doubt whether the Complainant ever had grounds to claim the disputed domain name or, at the least, ever believed that it did.
The Hon. Neil Anthony Brown QC
October 22, 2010