WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stanworth Development Limited v. Genuity Services Limited
Case No. D2011-0253
1. The Parties
Complainant is Stanworth Development Limited of Douglas, the Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
Respondent is Genuity Services Limited of Road Town, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <wwwriverbellepoker.com> is registered with Moniker Online Services, LLC (the “Domain Name”).
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 Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On February 10, 2011, Moniker Online Services, LLC. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on March 23, 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.
On February 8, 2011 the Center transmitted by email to Moniker Online Services, LLC a request that, as the Domain Name was set to expire on February 13, 2011, Moniker Online Services, LLC confirm that the Domain Name would remain in Registrar LOCK status until the UDRP proceedings were concluded. On February 10, 2011, Moniker Online Services, LLC responded to the Center advising that the expiration date for the Domain Name was to be in 2012 and that the Domain Name would remain locked with them. On February 11, 2011, the Center requested by email that Moniker Online Services, LLC verify the expiration date in light of the discrepancy between the publicly available WhoIs information and the Registrar’s communications. On February 15, 2011, the Center advised Complainant of the advice of Moniker Online Services, LLC, that the parties will be given the opportunity to renew the Domain Name if it expires during the course of the proceeding.
4. Factual Background
The Domain Name was registered with Moniker Online Services, LLC on February 13, 2007.
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 “river belle” 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 ”river belle”.
Complainant states that one of the ways in which it uses its trade marks is through its licensee Carmen Media Group Ltd. (“Licensee”) and the Licensee is authorised to and operates, under the RIVER BELLE trade mark, an online gaming site at “www.riverbelle.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 asserts that the “www.riverbelle.com” gaming site was established in 1997 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 riverboat casino. 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.riverbelle.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 RIVER BELLE 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 RIVER BELLE 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 wholly incorporates its RIVER BELLE trade mark and that the inclusion of the generic word “poker” does not add distinctive matter so as to distinguish it from Complainant’s trade mark. Complainant also contends that the Domain Name is so similar to its registered trade mark THE RIVER BELLE ONLINE CASINO 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 states that on May 25, 2010, its legal counsel sent a “cease and desist” letter to Respondent by email, fax and registered post informing Respondent of Complainant’s extensive RIVER BELLE 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 June 7, 2010. On July 28, 2010, Respondent responded to Complainant’s legal counsel and advised that the <riverbellepoker.com> domain name was registered in the name of Complainant and not Respondent. On August 10, 2010 Complainant’s legal counsel responded to Respondent advising them that the Domain Name is not <riverbellepoker.com> but rather <wwwriverbellepoker.com>. Complainant advises that Respondent has failed to provide it with any detailed response to its allegations and demands.
Complainant states that to the best of its knowledge the Domain Name has not pointed to an active website and contends that such use does not constitute a fair use of the Domain Name.
Complainant states that it is the exclusive proprietor of the RIVER BELLE 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 RIVER BELLE mark or marks confusingly similar to this mark in the Domain Name.
Complainant 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 also suggests that because its RIVER BELLE trade mark is so well-known in relation to casino and gaming services that Respondent should have reasonably known of Complainant’s prior rights before registering the Domain Name and the Domain Name could never have been put to legitimate use by Respondent. Complainant asserts that the assumption that Respondent was and is fully aware of Complainant and Complainant’s rights in and to the RIVER BELLE trade mark is supported by the fact that Respondent and William Hill, which appears to own the e-mail address associated with the Domain Name, are competitors of Complainant and submits that Respondent has registered the Domain Name with the intention of diverting internet users to Respondent’s website and to mislead internet users into believing that Respondent is associated with Complainant and thus disrupting the business of Complainant.
Complainant states that the Domain Name was registered nearly 10 years after Complainant’s <riverbelle.com> domain name registration in 1997 and all information available to Complainant indicates that Respondent is a passive holder of the Domain Name since it does not resolve to an active web site. Complainant submits that this is evidence of use in bad faith.
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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant submits that the “www.riverbelle.com” gaming site was established in 1997 and was designed to embody a theme that would identify with gambling on a worldwide basis. It further submits that the RIVER BELLE concept is based both visually and thematically on that of a riverboat casino.
It is clear from the evidence that RIVER BELLE is a trade mark in which Complainant has rights. Complainant is the proprietor of a number of pending and registered trade marks consisting of or incorporating the words “river belle”, in various jurisdictions including Australia, Canada, the European Union, the United Kingdom and the United States of America. Complainant has provided evidence that it has traded extensively in or by reference to the RIVER BELLE trade mark and that the trade mark has substantial recognition and reputation internationally.
The Domain Name was registered by Respondent some 10 years after Complainant asserts it first began operating its “www.riverbelle.com” gaming site and at a point in time after its first use of the RIVER BELLE trade mark. The Domain Name appears to be deliberate misspelling or embellishment of the RIVER BELLE trade mark, by the addition of the letters “www” and the descriptive term “poker”. It is confusingly similar to the trade mark RIVER BELLE in that letters “www” are simply a generic reference to the “World Wide Web” and “poker” is self evidently a descriptive reference to the type of activity likely to be undertaken on RIVER BELLE gambling facilities or websites.
On this basis it is found the trade mark RIVER BELLE is a trade mark to which the Domain Name is confusingly similar.
This element of the Policy is made out.
B. Rights or Legitimate Interests
It is difficult to understand why Respondent (which is alleged to be, directly or indirectly, a competitor of Complainant) chose the Domain Name other than as a reference to RIVER BELLE and thus Complainant or a licensee and their gaming and online casino related services. Respondent has not sought to explain why it chose the Domain Name and might be entitled to do so without interfering with Complainant's business and interests. Nor has any argument been advanced that RIVER BELLE has any meaning other than as an indication of origin of Complainant’s said services.
There is no evidence that Respondent has put the Domain Name to active use on the Internet. Even so, Complainant contends that there is equally 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 also suggests that because its RIVER BELLE trade mark is so well-known in relation to casino and gaming services that Respondent should have reasonably known of Complainant’s prior rights before registering the Domain Name. Accordingly it suggests that the Domain Name could never have been put to legitimate use by Respondent. There is substance to this submission.
Complainant also notes that Respondent and William Hill, (which the Panel understands to be reference to the United Kingdom based betting and gambling organization) which it is alleged owns the e-mail address associated with the Domain Name, are competitors of Complainant and submits that Respondent has registered the Domain Name with the intention of diverting Internet users to Respondent’s website.
Given the substantial exposure, registration and use of the trade mark RIVER BELLE 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 was registered and is being held for purposes inconsistent with a legitimate interest or right.
Again, this element of the Policy is made out.
C. Registered and Used in Bad Faith
It is now well established that the passive holding of a domain name without any active attempt to sell or to contact the trade mark holder does not prevent a finding of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel is still required to examine all the relevant circumstances to determine whether it is reasonable to infer that Respondent is acting in bad faith. Considerations which are considered relevant and are taken into account in the present case are that Complainant has a distinctive and well-known trade mark in relation to casino and gaming services and that Respondent has filed no response or sought to distinguish or contradict the allegations made in the Complaint.
Accordingly, the Panel finds that the Domain Name was registered in bad faith and that even though Respondent has evidently done no more than passively hold the Domain Name since, that under the circumstances such holding is synonymous with bad faith use.
Accordingly, for the reasons set out above this element of the Policy is also 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, <wwwriverbellepoker.com> be transferred to Complainant.
Clive L. Elliott
Dated: April 1, 2011