WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stanworth Development Limited v. Jazette Enteprises
Case No. D2011-0249
1. The Parties
Complainant is Stanworth Development Limited of Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
Respondent is Jazette Enteprises of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <gamingculb.com> (the “Domain Name”) is registered with Group NBT plc aka NetNames.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2011. On February 7, 2011, the Center transmitted by email to Group NBT plc aka NetNames a request for registrar verification in connection with the Domain Name. On February 11, 2011, Group NBT plc aka NetNames 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 February 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 8, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on March 22, 2011. 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
The Domain Name was registered with Group NBT plc aka NetNames on April 7, 2000.
5. Parties’ Contentions
Complainant states that it is the proprietor of a number of pending and registered trade marks consisting of or incorporating the words GAMING CLUB in various jurisdictions including Australia, Canada, the European Union, the United Kingdom and the United States of America. The trade marks cover in general entertainment services, namely providing on-line games of chance, games of skill and casino-style gaming services rendered on-line. Complainant states that it is also the proprietor of a number of domain names consisting of or incorporating the words “gaming club”.
Complainant states that one of the ways in which it uses its trade marks is through its licensee Carmen Media Group Ltd (the “Licensee”) and the Licensee is authorised to and operates, under the GAMING CLUB trade mark, an online gaming site at “www.gamingclub.com”. Complainant advises that the licence agreement contains quality control provisions regulating how the Licensee may use the trade marks and all benefits arising out of the use of the trade marks by the Licensee inures to the benefit of Complainant.
Complainant submits that the “www.gamingclub.com” gaming site was established in 1998 and the theme of the brand is one that would identify strongly with gambling on a worldwide basis and is based both visually and thematically on that of a gentleman’s club. Complainant further submits that it has become one of the most highly recognised online gaming brands currently available, receiving in the region of 250,000 visitors and facilitating over 25,000 software downloads monthly. Complainant asserts that many thousands of registered players regularly make use of the “www.gamingclub.com” gaming site with a substantial portion being active on the site at any given time. Complainant contends that in excess of USD 50,000 per month is spent on advertising, marketing and other promotional activities including banner listings on portal sites and search engines, direct mailing campaigns, affiliate programs, print ads, TV commercials and infomercials.
Complainant submits that as a result of the extensive use of the GAMING CLUB trade mark it is very well-known in relation to the provision of online games of chance and casino-style gaming services. Complainant contends that the words “gaming club” serve as a unique and distinctive element, which element is a determinative and well-known designation of source for its online casino and gaming related services.
Complainant advises that it, together with the Licensee, has implemented strict quality control measures in order to prevent and/or minimize any dilution of its trade mark rights worldwide.
Complainant contends that the Domain Name is so similar to its registered GAMING CLUB trade mark that there is a substantial likelihood that internet users and consumers will be confused into believing that there is some affiliation, connection, sponsorship, approval or association between Complainant and Respondent when in fact there is no such relationship. Complainant further contends that the change of its GAMING CLUB trade mark by Respondent in the Domain Name is so de minimus that the possibility of confusion on the part of consumers is further compounded.
Complainant states that on September 7, 2010 its legal counsel sent a “cease-and-desist” letter to Respondent by email, fax and registered post informing Respondent of Complainant’s extensive GAMING CLUB trade mark rights, alleging that Respondent has no rights or legitimate interests in and to the Domain Name and demanding that the Domain Name be immediately transferred to Complainant. When no response was received from Respondent a further follow-up letter was sent on September 21, 2010.
Complainant submits that as at the date of the submission of the Complaint, the Domain Name pointed to a website providing competing goods and services to those of Complainant under the address “www.mysportsbook.com”. Complainant submits that this does not amount to a bona fide offering of goods and services and suggests that the fact that Respondent has associated the Domain Name with a website providing competing casino and gaming services to those of Complainant is an indication that Respondent is aware of Complainant’s GAMING CLUB trade mark.
Complainant states that it is the exclusive proprietor of the GAMING CLUB mark in relation to gaming and casino services and asserts that Respondent is neither an agent nor a licensee of Complainant and therefore has no right to the use of the GAMING CLUB mark or marks confusingly similar to this mark in the Domain Name.
Complainant submits that Respondent’s registration of the Domain Name occurred nearly 2 years subsequent to Complainant commencing operation of its “www.gamingclub.com” gaming site and further submits that there is no evidence that Respondent has been commonly known by the Domain Name or acquired any trade mark or service mark rights in and to the Domain Name. Complainant therefore contends that Respondent is trading on the value established by Complainant in its marks to attract Internet users when entering the Domain Name. Complainant asserts that Respondent is deriving economic benefit from the Domain Name either by attracting Internet users to its website where goods and services are offered or by the receipt of compensation from the owners of other websites for delivering users to those sites, which Complainant contends, constitutes bad faith registration and use.
Complainant asserts that Respondent’s failure to respond in any substance to its “cease-and-desist” letter must be viewed as significant and can be interpreted as an adoption by silence of the material allegations made by Complainant regarding Respondent’s lack of any rights or legitimate interests in the Domain Name and bad faith in its registration and use.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is clear from the evidence that GAMING CLUB is a trade mark in which Complainant has rights. Complainant asserts, without contradiction, that the “www.gamingclub.com” gaming site was first established in 1998.
Complainant is the proprietor of a number of pending and registered trade marks consisting of or incorporating the words GAMING CLUB, in various jurisdictions including Australia, Canada, the European Union, the United Kingdom and the United States of America. Complainant has traded extensively in or by reference to the GAMING CLUB trade mark. There is clear support for the assertion that GAMING CLUB is a trade mark which has substantial recognition and reputation internationally.
The Domain Name was registered by Respondent after Complainant asserts it first used its “www.gamingclub.com” gaming site. It is reasonable to infer that it represents a subtle but deliberate misspelling of “gaming club” i.e. to “culb”. It is, on its face, confusingly similar to the trade mark GAMING CLUB as used and registered by Complainant in the course of its business. In this Panel’s view, this seems to be a case of “typo-squatting”.
On this basis it is found the trade mark GAMING CLUB is a protectable trade mark to which the Domain Name is confusingly similar.
This ground is made out.
B. Rights or Legitimate Interests
It is difficult to understand why Respondent chose the Domain Name other than as a reference to GAMING CLUB and thus Complainant or its Licensee and their gaming and online casino related services. Nor has any argument been advanced that “gaming club” has any meaning other than as an indication of origin of Complainant’s said services.
Complainant asserts that the Domain Name has been used to direct Internet users to a website providing competing goods and services to those of Complainant, under the name “www.mysportsbook.com”, such competing goods and services including casino and gaming services.
Given the substantial exposure, registration and use of the trade mark GAMING CLUB the Panel finds that there is no indication that Respondent has any rights or legitimate interests in respect of the Domain Name. Indeed, the evidence suggests that the Domain Name which is confusingly similar to Complainant’s trade mark, is being used for improper purposes or at least purposes inconsistent with a legitimate interest or right.
Again, the ground is made out.
C. Registered and Used in Bad Faith
For the reasons given above it is difficult to see how Respondent can claim to have registered and used the Domain Name in good faith. Rather, it is reasonable to infer that Respondent has engaged in both “typo-squatting” and monetary gain through some form of “click through” scheme. Accordingly, the Panel has little difficulty in finding that the Domain Name was registered and is being used in bad faith. Respondent’s failure to file a response or challenge any of Complainant's assertions suggests that the Complaint is justified and that Respondent has no basis to resist the relief sought.
It is thus found that this ground is made out.
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 <gamingculb.com> be transferred to Complainant
Clive L. Elliott
Dated: March 31, 2011