WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stanworth Development Limited v. Traffic Label Limited
Case No. D2011-0683
1. The Parties
The Complainant is Stanworth Development Limited, Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Traffic Label Limited1 of St. Albans, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <bestjackpotcity.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2011. On April 18, 2011, the Center transmitted by email to GoDaddy.com, Inc. (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On April 19, 2011, the Registrar 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 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2011.
The Center received an email communication from Traffic Label Limited on May 18, 2011.2
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 16, 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 is the proprietor of a number of pending and registered trademarks consisting of or incorporating the words JACKPOT CITY in various jurisdictions including Australia, Canada, the European Union, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), and the United States of America, covering entertainment services including the provision of on-line games of chance, games of skill and casino-style gaming services rendered on-line. In particular, the Complainant is the proprietor of United Kingdom registered trademark number 2273751 for the device and word mark JACKPOT CITY registered on July 12, 2002 in international class 41.
The Complainant uses its trademarks inter alia through its licensee Carmen Media Group Limited which operates an online gaming site at “www.jackpotcity.com”. In terms of the licence agreement, all benefits arising out of the use of the trademarks by the Complainant’s licensee inure to the benefit of the Complainant.
The website at <jackpotcity.com> was conceptualised in 1998 and officially launched in early 1999. The theme of the brand is “Vegas-type”, having lots of bright chaser lights and bold typography. The “www.jackpotcity.com” website has established itself as a highly recognized online gaming brand, receiving in the region of 250,000 visitors per month and having many thousands of registered players, a substantial portion of whom are active on the site at any given time. The Complainant and/or its licensee spend an amount in excess of USD 50,000 per month on various advertising, marketing and other promotional activities, including banner listings on portal sites and search engines, direct mailing campaigns, affiliate programs, print advertisements and television commercials.
The Respondent is the present registrant of the disputed domain name. As at the date of this Decision, the disputed domain name is registered in the name of the Respondent and is pointing to a website parking page operated by the Registrar which provides a series of advertising links for inter alia gaming websites relating to online bingo and casinos.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The disputed domain name wholly incorporates the Complainant’s JACKPOT CITY trade mark. The inclusion of the generic word “best” does not add distinctive matter so as to distinguish it from the Complainant’s trademark. Moreover, the disputed domain name is so similar to the Complainant’s JACKPOT CITY trademark, 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 the Complainant and the Respondent, when in fact, there is no such relationship.
The Respondent has no connection or affiliation with the Complainant or the Complainant's licensee, and has not received any license or consent, express or implied, to use the Complainant’s JACKPOT CITY trademark, or marks confusingly similar to this mark, in a domain name or in any manner whatsoever. The Complainant is unaware of any legitimate right the Respondent could have in the words “jackpot city” which are both confusingly similar to the Complainant’s well-known JACKPOT CITY trademark. Thus, the Respondent has no legitimate interest in the disputed domain name and has made no good faith or fair use of the disputed domain name at all.
There is no evidence whatsoever that the Respondent has been commonly known by the disputed domain name and the Respondent has not acquired any trademark or service mark rights in and to the disputed domain name. In fact the Complainant’s JACKPOT CITY trademark is so well-known in relation to casino and gaming services that the Respondent should have reasonably known of the Complainant’s prior rights before registering the disputed domain name. In light of this knowledge, albeit not actual but inferred (partly due to the distinctiveness associated with the JACKPOT CITY mark; partly due to the lack of any apparent explanation or justification for adopting such a distinctive mark; and partly due to the Respondent pointing the disputed domain name to a website offering competing goods and services), the disputed domain name could never have been put to legitimate use by the Respondent.
The Complainant has a long established reputation in many jurisdictions in the use of its JACKPOT CITY trademarks in relation to gaming and casino services, especially if one considers that the Complainant’s <jackpotcity.com> gaming site has been in operation since at least 1999. It is therefore highly unlikely that the Respondent just happened to unintentionally select the Complainant’s distinctive JACKPOT CITY trademark and inadvertently incorporate it into the selected domain name. It is most likely that the Respondent was fully aware of the Complainant’s JACKPOT CITY trademark rights and its reputation in the gaming and casino industry when registering the disputed domain name.
It appears that the Respondent has engaged in a pattern of registering domain names related to the casino industry in bad faith. There have been three adverse decisions against the Respondent, namely: Microgaming Software Systems Limited v. Oded Keinan, Traffic Label Limited, WIPO Case No. D2009-0261; La Société des Bains de Mer et du cercle des étrangers à Monaco v. Oded Keinan, Traffic Label Limited, WIPO Case No. D2008-1388; and ACCOR v. Traffic Label Limited, WIPO Case No. D2008-1240. In each of these cases, the panel found that the domain name registrations in question were made in bad faith.
The Complainant also wishes to draw the Panel's attention to the fact that Oded Keinan of the Respondent is a former employee of the Complainant’s licensee and is thus intimately aware of the Complainant and its branding strategies.
The Respondent’s website does not exclusively contain links to the Complainant’s website, but points to a website in direct competition thereto. The Respondent is essentially trading on the goodwill and reputation of the Complainant’s JACKPOT CITY trademark to promote competing products and services to those of the Complainant. Internet users are likely to employ the disputed domain name when attempting to locate the Complainant’s website. Upon entering the disputed domain name, Internet users have in fact been "mousetrapped" to a website offering services that are not sponsored or endorsed by, or affiliated with the Complainant, thus creating a likelihood of confusion regarding Complainant’s sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent did not submit a formal Response. However, on May 18, 2011, Mr. O. Keinan, Managing Director of the Respondent, sent an email to the Center in which he made the following contentions:
“This case is identical to Internet Opportunity Entertainment Limited v. Zubee.com Networks Inc., WIPO Case No. D2006-1086. The Respondent purchased this domain name from a GoDaddy auction a year ago. The Respondent has not been using the disputed domain name at all. The disputed domain name has been parked with GoDaddy who have provided their own ad sense while the site remains unused. The allegations provided by the Complainant are false. The Respondent could have never acted in bad faith as the site has never been used.
The trademark for Jackpot City is a rather general one. “Best Jackpot City” can be a term for any city in which a casino operates i.e. Las Vegas, Macau, London etc. This is exactly the information that the Respondent wanted to provide on that site. To rule in favour of Jackpot city [sic] would simply encourage the bullish behaviour those larger cooperates have set out over the years. Accordingly the Complaint should be denied.”
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed 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;
(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.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the trademark JACKPOT CITY by virtue of the registered trademark cited in the “Factual Background” section above. The disputed domain name however consists of this trademark with the laudatory prefix “best”. The Panel considers that the word “best” in this context is generic and descriptive.
Numerous previous decisions under the Policy have found that the use of descriptive or generic words in addition to a trademark in a domain name does not prevent the domain name from creating a likelihood of confusion. A descriptive element cannot remove the overall impression made on the public by a trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent. The Complainant contends that the Respondent has no connection or affiliation with the Complainant or its licensee and has not received any permission or authority to use the Complainant's JACKPOT CITY trademark. The Complainant also submits that there is no evidence that the Respondent has been commonly known by the disputed domain name and that the Respondent has not acquired any corresponding trademark rights. The Panel is satisfied that this constitutes a prima facie case and the burden thus passes to the Respondent to show that it has rights or legitimate interests in or to the disputed domain name.
The Respondent contends that the Complainant's trademark is not distinctive and that it acquired the disputed domain name at auction with the intention of providing information on cities in which casinos operate. The Panel does not agree that the Complainant's trademark is not distinctive. As such, the Panel considers that had the disputed domain name been used in the manner proposed by the Respondent it would not have constituted a bona fide offering of goods and services in that it would effectively be targeting the Complainant's trademark and thereby causing consumer confusion. In any event, the disputed domain name is presently being used to display advertisements to the Complainant's competitors. In the Panel's view, it matters not that the advertising feed has been provided by the Registrar rather than by the Respondent; in no way could this be held to confer any rights or legitimate interests upon the Respondent, nor is it a bona fide offering of goods and services.
Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present case, the Panel is satisfied that the disputed domain name has been registered in bad faith. The Complainant has noted that the Respondent's managing director is a former employee of the Complainant's licensee. The Respondent notably has not denied this. As such, it may reasonably be inferred that the Respondent registered or acquired the disputed domain name with actual knowledge of and intent to target the Complainant's trademark. Furthermore, the previous cases cited by the Complainant indicate that the Respondent has followed a similar course of bad faith conduct in the past with regard to the trademarks of other online gaming website operators. The Respondent does not provide any submissions distinguishing those cases from the present case and does not provide any explanation as to why the Panel should treat the present case any differently.
The Respondent states that this case is identical to a case in which the complaint was denied, namely Internet Opportunity Entertainment Limited v. Zubee.com Networks Inc., WIPO Case No. D2006-1086. The Panel does not agree. In that case, the complainant failed to provide evidence of its rights in the unregistered marks SPORTINGBET or SPORTINGBET.COM at the time of the respondent’s registration of the domain names <sportingbet.net> and <sportingbets.biz>. In the present case, on the contrary, the Complainant has provided evidence that the Complainant's registered trademarks predate the registration of the disputed domain name by at least eight years, during which time the Complainant's licensee has established a well-known and popular website at the domain name <jackpotcity.com>.
Finally, the Panel turns to the current use of the disputed domain name which is “parked” on a website provided by the Registrar. Clearly this is capable of disrupting the Complainant’s business and likewise is liable to give rise to consumer confusion in light of the advertising links to goods and services which are in competition with those of the Complainant. Whether or not the Respondent itself is the recipient of revenues from the website associated with the disputed domain name, the Panel notes that there is a reasonable likelihood that unjustified revenues will be generated thereby which are directly referable to the inclusion of the Complainant's trademark in the disputed domain name. The Panel has already found that it is reasonable to infer that the Respondent was well aware of the Complainant's trademarks and indeed of the fame of the website at <jackpotcity.com> operated by the Complainant’s licensee. Nevertheless, the Respondent appears to have made no good faith efforts to prevent the inclusion by the Registrar of the various advertising links on the website associated with the disputed domain name. In these circumstances the Panel is also satisfied that the disputed domain name has been used in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith and thus that the third element under the Policy has been established.
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 <bestjackpotcity.com> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: June 20, 2011
1 The Complainant named as Respondents Traffic Label Limited and a certain Mr. J. Kutzer. The Registrar has confirmed that the registrant of the disputed domain name is Traffic Label Limited.
2 The Center received email communications from Mr. Kutzer on April 28, 2011, May 2, 2011 and June 20, 2011. Mr. Kutzer indicated that he once registered the domain name but has since allowed it to expire.