WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mansion (Gibraltar) Limited, Prevent Holdings Ltd. v. Brandon Lewis
Case No. D2011-0720
1. The Parties
The Complainant is Mansion (Gibraltar) Limited , Prevent Holdings Ltd. of Gibraltar, Overseas Territory of the, United Kingdom of Great Britain and Northern Ireland represented by Lawrence Quake & Woo LLC of Singapore.
The Respondent is Brandon Lewis of Jakarta, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <indocasino.net> is registered with Active Registrar, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2011. On April 26, 2011, the Center transmitted by email to Active Registrar, Inc. a request for registrar verification in connection with the disputed domain name. On April 27, 2011, Active Registrar, 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 April 29, 2011.
The Center verified that the Complaint together with 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 on April 29, 2011... In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on May 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.
4. Factual Background
Mansion (Gibraltar) Limited (“the First Complainant”) is a company incorporated in Gibraltar. It is an international online casino company, licensed by the government of Gibraltar to operate online casinos, sports book and exchange gaming. It has operated a commercial online casino, poker and sports exchange website since August 2004 under the website “www.casino.com”. Various games of skill and chance are offered on the website which is accessed by some 200,000 visitors each month.
Prevent Holdings Limited (“the Second Complainant”) is a company incorporated in the British Virgin Islands. It owns the domain name <casino.com> and has licensed it to the First Complainant.
The Second Complainant owns trademarks for the words CASINO.COM in Australia, Philippines, Taiwan and the European Union. It has trademark applications pending in China and the United States. The registration dates vary, with the earliest being EU Registration 001324904 and Australian Registration 1323792 both registered on October 2, 2009. The Second Complainant has licensed the use of its trademarks to the First Complainant.
Because of the close association between the Complainants, it will be convenient in this decision to refer to them collectively as “the Complainant”.
The Complainant markets the trademark CASINO.COM and the domain name <casino.com> in conjunction with other related domain names such as <mansioncasino.com> and <mansionpoker.com>.
The Complainant, between 2006 and 2010, was a sponsor of the English Football Club, Nottingham Hotspurs. One of the incidents of the sponsorship arrangement was the prominent display of the mark CASINO.COM at the Hotspurs’ London Stadium which regularly holds up to 36,310 spectators. Moreover, the matches at this stadium are televised internationally to millions of people.
The Complainant also produces goods such as lighters, iPods, and mouse pads with the trademark prominently displayed.
The disputed domain name was registered on August 12, 2010. It directs visitors to a website in the Indonesian language, which provides services identical to the Complainant’s. It is visually similar to the Complainant’s website. The Respondent has never been licensed by or affiliated to the Complainant.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademarks. The addition of the geographical reference “indo”, which denotes Indonesia, does not prevent a finding of confusing similarity.
The Respondent has no rights or legitimate interests such as would justify the reflection of the Complainant’s trademarks in the disputed domain name. None of the provisions of paragraph 4(c) of the Policy applies to the Respondent.
The disputed domain name was registered and is being used by the Respondent in bad faith. The Respondent’s website essentially “masquerades” as the Complainant’s website. It is visually similar and offers the same products and services, albeit in the Indonesian language.
The Respondent is attempting to attract users seeking services associated with the Complainant’s website. It is therefore highly unlikely that the Respondent did not know of the fame of the Complainant’s mark when registering the disputed domain name.
The Respondent is using the disputed domain name to capture an Indonesian-speaking clientele seeking products and services similar to those offered by the Complainant.
The Complainant has invested substantial time and resources on advertising and marketing its online casino business under the brand of the trademark CASINO.COM and associated domain names and trademarks. Its sponsorship of Nottingham Hotspurs brought the trademark to the attention of many spectators at the stadium and of thousands of television viewers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark.
The incorporation in a domain name of the relevant word of the Complainant’s registered trademark (i.e. Casino) indicates confusing similarity with the trademark (see Société des Produits Nestlé S.A. v. Cess De Los Reyes, WIPO Case No. D2011-0020).
The addition of the geographical indication “indo” does not change this finding. See Société des Produits Nestlé S.A. "Nestlé SA" v. Transsude Entreprises Ltd, WIPO Case No. D2009-1666. In that case, the disputed domain name was <nestleusa.com> and the trademark was Nestle.
In another Nestlé case, Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954 the Panel said in a passage which the present Panelist adopts and applies to the present situation mutatis mutandis.
“The general test as to what constitutes "confusing similarity" in proceedings such as these, in the Panel’s opinion, is whether an informed potential customer of a company’s products or services would, during the process of contacting the domain name, reasonably believe that the website to be accessed was operated by, or on behalf of, the owner of a trademark in connection with that owner’s business.
It is common knowledge that apostrophes cannot be used in domain names, and that lower case letters are used. Accordingly, anyone with any knowledge of the Internet accessing the website would be reasonably likely to regard the domain name in dispute as being equivalent to "Nestlé’s USA" in standard written English. The name Nestle is clearly the dominant element of the domain name. The Panel has had little difficulty in finding that the domain name is confusingly similar to the trademark NESTLE, as the additional elements are, in a trademark sense, banal.”
Accordingly, the Panel in the present case finds first limb of paragraph 4(a) of the Policy has been established.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights such as would entitle the Respondent to register the disputed domain name incorporating the Complainant’s trademark.
That fact is sufficient to satisfy paragraph 4(a) (ii) of the Policy in the absence of any evidence from the Respondent which could have invoked any of the situations envisaged by paragraph 4(c) of the Policy.
Accordingly, the Panel finds the second limb of the Paragraph 4(a) is established.
C. Registered and Used in Bad Faith
In the Panel’s assessment, there can be no doubt that bad faith registration and use can be inferred from the following matters.
(a) The format of the Respondent’s website is clearly copied from the Complainant’s website - although the Indonesian language is used.
(b) The Respondent cannot have been unaware of the fame of the Complainant’s mark and its worldwide online gaming website.
(c) Internet users accessing the Respondent’s website could easily think that it had some connection with the Complainant.
(d) The Respondent’s operation has the potential to disrupt the Complainant’s business and to tarnish its trademark.
This is an attempt by the Respondent to exploit the fame of the Complainant’s trademarks and reputation and interfere with its business as an online gaming operator.
Accordingly, the Panel finds the third limb of paragraph 4(a) of the Policy is established and the Complaint succeeds.
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 <indocasino.net> be transferred to the Complainant.
Hon. Sir Ian Barker
Dated: June 3, 2011