WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Genting Berhad v. Minakumari Periasamy/ Vanilla Inc.
Case No. D2011-0616
1. The Parties
The Complainant is Genting Berhad of Kuala Lumpur, Malaysia, represented by Naqiz & Partners, Malaysia.
The Respondent is Minakumari Periasamy/ Vanilla Inc. of Kuala Lumpur, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <gentinggames.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2011. On April 7, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 7, 2011, 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 April 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2011.
The Center appointed Hariram Jayaram as the sole panelist in this matter on May 18, 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 Complainant, Genting Berhad is the investment holding and management company of the Genting Group of Companies. GENTING is a trade mark used in connection with the Complainant’s services.
The disputed domain name was registered on February 28, 2005.
5. Parties’ Contentions
The Complainant was incorporated under the Malaysian Companies Act 1965 on July 30, 1968 under the original name of Genting Highlands Hotel Sdn Bhd to operate a hotel and casino, and to develop an integrated tourist complex in Genting Highlands, Malaysia. The Complainant changed its name to Genting Highlands Hotel Berhad upon its conversion into a public company on July 24, 1970. It assumed its present name of Genting Berhad on June 9, 1978. The shares of the Complainant were listed on the Main Board of Bursa Malaysia Securities Berhad (“Bursa Malaysia”) (formerly the Kuala Lumpur Stock Exchange) in 1971. A restructuring exercise was undertaken in 1989, which involved the initial public offering and listing on Bursa Malaysia of Genting Malaysia Berhad (formerly known as Resorts World Berhad) a 48.6% owned company of the Complainant, resulting in the Complainant becoming an investment holding and management company.
The Complainant is one of the largest listed companies in Malaysia with a market capitalisation of about RM 85.4 billion (USD 25.1 billion) as at December 31, 2009. The authorized share capital of the Complainant was RM800 million (comprising 8 billion ordinary shares of RM 0.10 each) and the issued and paid-up share capital of the Complainant was RM 370.3million (comprising approximately 3,703 million ordinary shares of RM 0.10 each) as at September 30, 2009. As at December 31, 2009, the Group has 35,749 employees and 1,401 employees were honoured with Long Service Awards for 5, 10, 15, 20, 25, 30 and 35 years of service.
The core business of the Complainant is in leisure, hospitality and casino operations. Since its inception, the Complainant has expanded and diversified its business to include oil palm plantations (Genting Plantations Berhad), power generation (Genting Power Holdings Limited) in Malaysia and various other countries such as China, Indonesia, Morocco and India as well as oil and gas exploration and production (Genting Oil & Gas Limited).
The Genting group operates its leisure, hospitality and casino business under the GENTING trade mark. The business is owned and operated by Genting Malaysia Berhad. Genting Malaysia Berhad owns the Genting Highlands Resort which is the leading integrated leisure and entertainment resort in Asia. It was a four-time winner of World’s Leading Casino Resort (2005 to 2009), awarded by World Travel Awards and has been voted as Asia’s Leading Casino Resort for five consecutive years (2005 to 2009). In many ways, the GENTING trade mark is synonymous with casino and other related gaming activities as the Genting group owns and operates the one and only casino resort in Malaysia for more than 30 years. The Complainant has also generated and acquired substantial reputation and goodwill in the trade mark GENTING through its continuous and consistent promotional and advertising efforts and activities. These initiatives have resulted in the Complainant being recognised as Malaysia’s Top 50 Brands 2008: Most Highly Rated Malaysian Brand and Genting Malaysia Berhad having received the BrandLaureate Award 2008-2009: Best Brands in Leisure and Hospitality as well as being recognised as one of Malaysia’s Most Valuable Brands of 2009.
The Genting group also owns and operates the First World Hotel which was officially recognised by Guinness World Records and Ripley’s Believe It or Not as the World’s Largest Hotel with 6,118 rooms in 2006 and continued to maintain this title in 2007. The Resort remains a key economic contributor to the tourism industry in Malaysia by registering a new high of 19.5 million visitors in 2009 and providing leisure-related jobs to over 13,000 people. Genting Singapore PLC (“Genting Singapore”) is also a subsidiary of the Complainant and was incorporated in 1984 to invest in leisure and gaming-related businesses outside of Malaysia. Genting Singapore is listed on the Main Board of the Singapore Exchange Securities Trading Limited. Genting Singapore is a leading integrated resorts development specialist with over 20 years of international gaming expertise and global experience in developing, operating and/or marketing internationally acclaimed casinos and integrated resorts in different parts of the world, including Australia, the Americas, Malaysia, the Philippines and the United Kingdom. Its market capitalisation as of 28 February 2011 was approximately SGD 23.3 billion. In 2006 Genting Singapore won a competitive tender to build and operate an integrated resort in Singapore’s Sentosa Island called Resort World at Sentosa (“RWS”). The integrated resort opened in 2010 and now houses Universal Studios theme park, water rides, casino and six hotels. On May 28, 2007, Genting Singapore acquired the remaining 25% equity interest in RWS from Genting Hong Kong Limited (formerly known as Star Cruises Limited) and at present Genting Singapore has full control over RWS in Singapore.
In 2007 Genting Singapore paid GBP 613 million to acquire Stanley Leisure plc which subsequently changed its name to Genting Stanley plc. The Genting group via this acquisition now owns three of United Kingdom’s most popular land-based casino chains - Circus, Mint and Maxims – and has a total of more than 40 casinos nationwide in the United Kingdom. The Complainant is the owner of the GENTING trade mark and has secured registrations of variations of this mark (including device marks) in Malaysia and in other foreign jurisdictions. Some of the trade mark registrations and applications are standing in the name of Genting International Management Limited, an indirect subsidiary. The Complainant also operates a website located at ”www.genting.com” which commands heavy Internet traffic. The Complainant has also registered numerous other domain names comprising of the trade mark GENTING including <genting.com>. Aside from these domain names, the Complainant is an affiliate of Genting Hong Kong Limited who owns a number of domain names comprising of the trade mark GENTING. The disputed domain name is identical and/or confusingly similar to the Complainant’s GENTING trade mark as it comprises the Complainant’s trade mark GENTING in its entirety followed by the descriptive word “games”. The mere addition of the descriptive term “games” to the Complainant’s GENTING trade mark, does not alter the overall impression of the domain name as one connected to the Complainant. Hence, the incorporation of the Complainant’s trade mark in its entirety can be sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The Complainant has demanded for the transfer of the domain name to the Complainant. The Respondent has refused to accede to the Complainant’s demands. The Respondent has no connection with the Complainant whatsoever. In particular, the Respondent has not been licensed or authorized by the Complainant to use the disputed domain name. Furthermore the domain name is not similar or in any way connected with the name under which the Respondent holds the domain name registrations. It does not appear that the Respondent has at any time been commonly known by the disputed domain name. Furthermore, the Complainant is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name. The Respondent is not making a legitimate non commercial or fair use of the disputed domain name. The Respondent’s website provides unauthorized links to other websites (including the Complainant’s website) for which the Respondent, in all likelihood and notwithstanding the Respondent’s responses to the contrary, derives commercial gain. The Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from the Complainant’s website at “www.genting.com”. It is submitted that the Respondent is attempting to obtain commercial gain, whether directly or indirectly, by luring the Complainant’s customers to the Respondent’s own website by exploiting the Complainant’s trade mark in conjunction with the word “games” which is synonymous with one of the Complainant’s principal business activities through its group of companies.
The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. The disputed domain name is a combination of the Complainant’s trade mark and one of its principal business activities namely “games”, which is commonly associated with the Complainant. The Respondent registered its domain name with the primary aim of diverting Internet traffic intended for the Complainant to the Respondent’s website containing sponsored links. Therefore the disputed domain name was registered with the intention of disrupting the Complainant’s business. The Respondent also intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trade mark. It is highly unlikely that the Respondent was not aware of the Complainant’s well-known GENTING trade mark. The intentional selection of the Complainant’s trade mark combined with the word “games”, to form the disputed domain name, itself evidences the Respondent’s knowledge of the Complainant’s trademark and business.
It may be inferred from the Respondent’s conduct in registering obvious combinations of the well-known GENTING mark and the descriptive “games” that such registration was in bad faith. Further, it may be inferred from the Respondent’s conduct in registering the domain name consisting of “genting” and “games”, that the Respondent was aware of the GENTING trade mark. This creates a presumption that the disputed domain name was registered in bad faith. The Respondent had registered the disputed domain name in bad faith primarily to disrupt the business of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be transferred to it:
- The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As the Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint.
A. Identical or Confusingly Similar
The Complainant has registrations for the GENTING trade mark in Malaysia and many other countries for goods and services falling in various international classes. The Complainant and its group of companies own and operate leisure, hospitality and casino businesses using the GENTING trade mark in Malaysia as well as in other countries. Apart from the “.com” gTLD, the disputed domain name incorporates the Complainant’s GENTING trade mark in its entirety with the addition of the word “games”. The word “games” is a descriptive and a generic word and the addition of the said word is insufficient to distinguish the disputed domain name from the Complainant’s GENTING trade mark. Several WIPO UDRP decisions on domain name disputes have confirmed that the mere addition of generic or descriptive words to a trade mark owned by another to form a domain name will not diminish the confusing similarity between the domain name and the said trade mark. Some of these cases are as follows:
- In The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010, the disputed domain names <nasdaqstockexchanges.com>, <nasdaqstockmarket.com>, <nasdaqamexstockexchange.com> and <nasdaqexchanges.com>, were found to be confusingly similar to the NASDAQ and THE NASDAQ STOCK MARKET trade marks;
- In Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464, the disputed domain name <toshibastore.com>, was found to be confusingly similar to the TOSHIBA trade mark;
- In SANOFI AVENTIS v. ProtectFly.com/RegisterFly.com, WIPO Case No. D2006-1272, the disputed domain names <getambienfree.info>, <getambienhere.info>, <getambien.info> and <purchaseambien.info> were found to be confusingly similar to the AMBIEN trade mark;
- In Gateway Inc. v. Domains by Proxy Inc. / NetWeb, Inc., WIPO Case No. D2008-0063, the disputed domain names <e-gatewaycomputer.com> and <e-gatewaycomputers.com> were found to be confusingly similar to the GATEWAY trade mark;
In Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, the panel observed:
“[…] the Sole Panelist finds that the Domain Name is confusingly similar to the trademark BMW. As numerous prior panels have held, when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish confusing similarity for purposes of the Policy [...] That is especially the case where the word that is added to the Complainant's trademark is not distinctive, as is the case in the present matter (addition of “car”) ... Moreover, the Sole Panelist finds that the addition of the word “car”, which refers to the main product of the Complainant, increases the likelihood of confusion between the Domain Name and the Complainant's BMW trademarks ...”
Similarly, in this proceeding, the disputed domain name incorporates a descriptive word i.e. “games” which is connected and descriptive of the businesses of the Complainant and its group of companies. Such reference serves to increase and not diminish the likelihood of confusion between the disputed domain names and the Complainant’s GENTING trade mark.
The Panel agrees with the findings in the above decisions and concludes that the disputed domain name is confusingly similar to the Complainant’s GENTING trade mark.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has no rights or legitimate interests in the disputed domain name. It has alleged that the Respondent has no connection with the Complainant; the Respondent has not been licensed or authorized to use the GENTING trade mark; the disputed domain name is not similar or connected to the name under which the Respondent has registered the disputed domain name; the Respondent is not commonly known by the disputed domain name; the Complainant is not aware of any trade mark belonging to the Respondent which is identical or similar to the disputed domain name; the Respondent is not making any non commercial or fair use of the disputed domain name; and the Respondent is misleading the consumers by diverting the Internet traffic away from the Complainant’s official website. The Respondent, who did not file a Response, neither disputed these contentions nor provided information as to the Respondent’s rights or interests in the disputed domain name.
On the basis of the Complainant’s submissions and evidence at hand, the choice of words in the disputed domain name and the provision of sponsored links by the Respondent on the website corresponding to the disputed domain name, the Panel finds that the Respondent is not making use of the disputed domain name for a bona fide offering of goods and services and not making a legitimate noncommercial or fair use of the disputed domain name.
In GoDaddy.com, Inc., v. GoDaddysDomain.com, Clark Signs, Graham Clark, WIPO Case No. D2007-0303, the panel held:
“Further, no evidence exists of record that the Complainant has ever authorized the Respondent to utilize any of its DADDY Marks or any mark confusingly similar thereto in conjunction with the specific goods and services which the Complainant provides under its DADDY Marks, nor does the Complainant apparently have any relationship or association whatsoever with the Respondent. As such, any use to which the Respondent [was] to put the marks DADDY or GO DADDY or one confusingly similar thereto, in connection with the goods or services provided by the Complainant or those similar thereto, would violate the exclusive rights now residing in the Complainant.”
The Panel agrees with the above decision and finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name resolves to a website which offers sponsored/unauthorized links to other websites as well as the website of the Complainant. Such use of the disputed domain name and the registration of the disputed domain name show that the Respondent is well aware of the businesses of the Complainant and its group of companies and that the disputed domain name has been created with the intention to reap commercial benefit generated through confusion and customer diversion. Considering the fact that the Complainant and the Respondent are both residents in Malaysia, it is implausible in this Panels’ view that the Respondent independently registered and used the disputed domain name without knowledge of the Complainant’s registered trade mark.
This is an obvious attempt to capitalize on the Complainant’s trade mark and as alleged by the Complainant, to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondents’ website.
In Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Casino on-line, WIPO Case No. D2000-1329, the panel held:
“… the Panel is of the opinion that the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests “opportunistic bad faith“ ...”
In the absence of any explanation or rebuttal by the Respondent, it is apparent from the Complainant’s submissions that the Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <gentinggames.com> be transferred to the Complainant.
Date: June 1, 2011