World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Genting Berhad v. DC

Case No. D2011-1551

1. The Parties

Complainant is Genting Berhad of Kuala Lumpur, Malaysia, represented by Naqiz & Partners, Malaysia.

Respondent is DC of Togo.

2. The Domain Name and Registrar

The disputed domain name <gentingclub.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2011. On September 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2011 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 21, 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 October 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2011. Respondent sent an email communication to the Center on October 20, 2011 but did not submit a formal Response.

The Center appointed Roberto Bianchi as the sole panelist in this matter on November 25, 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

Complainant’s group operates its leisure, hospitality and casino business under the GENTING trademark. The business is owned and operated by Genting Malaysia Berhad, which owns the Genting Highlands Resort, one of the leading integrated leisure and entertainment resorts in Asia. The GENTING trademark is clearly related to casino and other related gaming activities as Complainant's group owns and has been operating the one and only casino resort in Malaysia for more than 30 years. Complainant's group has also built another casino resort in Singapore. Genting Stanley plc (formerly Stanley Leisure plc), a member of Complainant's group, owns and operates the largest group of casinos in the United Kingdom of Great Britain and Northern Ireland ( “United Kingdom”). One recent development in Complainant's business is the establishment of Resorts World Casino New York City at the historic Aqueduct Race Track, a video lottery facility scheduled to open in the fourth quarter of 2011.

Complainant owns numerous registrations for the trademark GENTING, inter alia, in Malaysia, Reg. No. 93003819, Reg. Date June 9, 2000, coverings goods of International Class 6; Reg. No. 8404895, Reg. Date November 16, 2005, covering goods of International Class 16; Reg. No. 8404896, Reg. Date November 16, 2005, covering goods of International Class 20; Reg. No. 07019137, Reg. Date September 28, 2007, covering services of International Class 41, etc. Complainant and other members of Complainant's group also own numerous trademark registrations of GENTING marks in Malaysia and many other countries, such as the United States of America, the People’s Republic of China, India, Japan, Singapore, the United Kingdom of Great Britain and Northern Ireland, etc.

The disputed domain name was registered on August 7, 2007.

On October 26, 2011, according to a lookup conducted by the Center, the website at the disputed domain name re-directed the browser of the Center to a website located at “http://lucky2you,net”, which contained links to numerous Internet locations, such as “www.mmmbet.net”, “www.108bookie.com”, “www.omdbet.com”, “www.lbcbet.com”, “www.sbocasino.com”, “www.108horse.com”, “www.pokerking.me”, etc., presumably offering online betting. On December 8, 2011, as shown during an independent visit conducted by the Panel to the “www.gentingclub.com” website, the website continued to offer the same or similar content.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is identical and/or confusingly similar to Complainant’s GENTING trademark as it comprises the trademark GENTING in its entirety followed by the descriptive word “club”.

Complainant has demanded Respondent for the transfer of the disputed domain name to Complainant. Respondent has refused to accede to Complainant’s demands. Respondent has no connection with Complainant whatsoever. In particular, Respondent has not been licensed or authorized by 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 Respondent has at any time been commonly known by the disputed domain name. Furthermore, Complainant is not aware of any trademarks in which Respondent may have rights that are identical or similar to the disputed domain name. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Respondent’s website at the disputed domain name links to an unauthorized gambling website landing page for which Respondent, in all likelihood and notwithstanding Respondent’s responses to the contrary, derives commercial gain. 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 Respondent is attempting to obtain commercial gain, whether directly or indirectly, by luring Complainant’s customers to Respondent’s own website by exploiting Complainant’s trademark in conjunction with the word “club” which is synonymous with one of Complainant’s principal business activities through its group of companies. For these reasons, it is submitted that Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name was registered and is being used in bad faith. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of Complainant. The disputed domain name is a combination of Complainant’s trademark and one of its principal business activities namely “club”, which is commonly associated with Complainant. Respondent registered the disputed domain name with the primary aim of diverting Internet traffic intended for Complainant to Respondent’s website containing sponsored links. It is submitted, therefore, that the disputed domain name was registered with the intention of disrupting Complainant’s business. Respondent also intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with Complainant’s trademark.

B. Respondent

Respondent did not submit a formal Response. However, the Center received on October 20, 2011, an email communication from the Respondent, indicating as follows:

“”Genting" is a general word in Melayu language, think not suitable to claim the "trade mark" “.

6. Discussion and Findings

Under Policy, paragraph 4(a), a complainant must make out its case that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(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

Complainant has shown that it owns trademark rights in the GENTING mark. See “Factual Background” above.

The disputed domain name consists of the GENTING mark, with the only addition of the generic or descriptive term “club” and the gTLD “.com”. It is well established that the addition in a domain name of descriptive or generic terms or of gTLDs to a mark is generally inapt to distinguish the domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9: (“Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant's trademark? […] The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name […].”)

Moreover, in the present case the addition of the term “club” in the domain name rather reinforces the association with Complainant's mark because this term is usually related to leisure and, in certain contexts, to betting. Since Complainant and its group of companies conduct the leisure and betting business under the GENTING mark, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no connection with Complainant whatsoever and that it has not been licensed or authorized by Complainant to use the disputed domain name. Also, the disputed domain name is not similar or in any way connected with the name under which the Respondent holds the domain name registrations. Complainant adds that it does not appear that Respondent has at any time been commonly known by the disputed domain name. Furthermore, Complainant is not aware of any trademarks in which Respondent may have rights that are identical or similar to the disputed domain name. Respondent is not making a legitimate non-commercial or fair use of the disputed domain name because Respondent’s website at the disputed domain name links to an unauthorized gambling website landing page for which Respondent, in all likelihood and notwithstanding Respondent’s responses to the contrary, derives commercial gain. Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from Complainant’s website at “www.genting.com”. Complainant concludes that Respondent is attempting to obtain commercial gain, whether directly or indirectly, by luring Complainant’s customers to the Respondent’s own website by exploiting Complainant’s trademark in conjunction with the word “club” which is synonymous with one of Complainant’s principal business activities through its group of companies.

Considered together, Complainant’s contentions and evidence of Respondent’s use of the disputed domain name are sufficient to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It was then up to Respondent to come forward with any elements demonstrating that it does have some right or legitimate interest in the domain name. See WIPO Overview, 2.0, paragraph 2.1 (”Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.)

Respondent did not submit a formal Response, and is in default. However, the Center did receive on October 20, 2011 an email communication from Respondent, stating the following:

““Genting" is a general word in Melayu language, think not suitable to claim the "trade mark" ‘.

The Panel believes that this short statement is far from being a suitable defense for Respondent, for three reasons. First, absent any explanation or evidence by Respondent, this Panel – ignoring Malay (Bahasa Melayu) completely – cannot determine whether “genting” is a generic term – if Respondent indeed meant this. Second, Complainant has shown that it owns numerous registrations for the GENTING mark in Malaysia. This alone means that at least for the trademark authorities in Malaysia the term was apt to constitute a trademark, whether or not it is a generic term. Third, had Respondent really shown that “genting” actually was a generic word, it completely failed to explain which use, if any, it made of the disputed domain name in this purportedly generic meaning. In fact, the only use of the disputed domain name, shown in the Complaint and confirmed by the Center in its lookup visit and by the Panel in its independent visit of December 8, 2011, consists of redirecting Internet users to a website containing links to betting and gaming Internet locations, in competition with Complainant. See “Factual Background” above. Clearly, this use of the disputed domain name is neither bona fide nor legitimate and noncommercial.

Absent any element in Respondent's favor, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant and its group of companies use “Genting” and other Genting-related names as trade names for a long time now. Also, Complainant and its group of companies have used the GENTING mark extensively to protect goods and services mainly related to the leisure industry. Finally the GENTING mark had long been registered and used by Complainant and its group of companies before Respondent registered the disputed domain name. Together, these facts lead the Panel to infer that Respondent was fully aware of Complainant and had Complainant's GENTING mark in mind at the time of registering the disputed domain name, i.e. the disputed domain name was registered in bad faith.

Also, the disputed domain name is being used to divert Internet traffic, presumably intended for Complainant, to a website located at “http://lucky2you.net”, where online gambling and betting is being offered though various links See “Factual Background” above. Thus, Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site – if Respondent is the real owner of the website at http://lucky2you.net – or other on-line location – if it is not – by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s web site or location. This is a circumstance of registration and use of the disputed domain name in bad faith, pursuant to Policy paragraph 4(b)(iv).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gentingclub.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Dated: December 8, 2011

 

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