WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Genting Berhad v. peerapap, peerapap sasomsub/ Protected Domain Services, Gentingonlinecasino.com
Case No. D2011-1552
1. The Parties
The Complainant is Genting Berhad of Kuala Lumpur, Malaysia, represented by Naqiz & Partners, Malaysia.
The Respondent is peerapap, peerapap sasomsub of Bangkok, Thailand/ Protected Domain Services, Gentingonlinecasino.com of Denver, United States of America.
The disputed domain name <gentingonlinecasino.com> is registered with Name.com LLC.
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 Name.com LLC. a request for registrar verification in connection with the disputed domain name. On September 16, 2011, Name.com LLC. 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. The Center sent an email communication to the Complainant on September 19, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 25, 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 September 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2011.
The Center appointed David Levin Q.C. as the sole panelist in this matter on November 4, 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 investment holding and management company of a large conglomerate group of companies which operate generally as the Genting Group. It is a Malaysian company, incorporated since 1968. It is a substantial group of companies in world terms: as at December 2009 the Genting Group had over 35,000 employees, primarily engaged in leisure, hospitality and casino operations operated under the GENTING trademark. It has won many international awards as an operator of casinos and entertainment resorts. It has operated the sole Malaysian casino for more than 30 years, it operates casino resort in Singapore and in New York and runs the largest group of casinos in the United Kingdom under the name Genting Stanley plc. It is recognized as operating the World’s Largest Hotel by the Guinness Book of Records, First World Hotel in Malaysia, which welcomed nearly 20 million visitors in 2010. Its Singapore subsidiary, Genting Singapore PLC had a market capitalization of over SGD 23 billion in February 2011.
The Complainant is the owner of the GENTING trademark and has secured registrations of variations of this mark (including device marks) in Malaysia and in many other foreign jurisdictions.
The Complainant also operates a website located at “www.genting.com”. It is a heavily trafficked site, with nearly 400,000 visits recorded for November 2010 alone. The Complainant has also registered numerous other domain names comprising including or incorporating the trademark GENTING including <genting.com>. It holds registrations for over 191 in the “com” extension, 33 in the “.net” extension, 9 in the “.org” extension and 37 in the “.uk” extension, together with numerous other domain names in various top level domains.
The disputed domain name was registered in July 2010.
5. Parties’ Contentions
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. The Complainant contends that it meets these requirements in that, on the evidence:
(i) the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights;
(ii) the Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) the Respondent registered and uses the disputed domain name in bad faith.
The Complainant maintains that on the evidence produced it has established each of the three elements required.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The dominant and initial part of the disputed domain name comprises the word “genting”, which is identical to the registered trademark GENTING, a mark registered by the Complainant in and as part of numerous trademark registrations and domain names throughout the world. The Complainant is particularly active in the leisure, hospitality and casino area, with a worldwide reputation. The use of the Complainant’s world renowned mark as the initial seven characters of the disputed domain name makes the disputed domain name confusingly similar to the Complainant’s trademark. Given the Complainant’s reputation, the impression conveyed by the Respondent’s use of GENTING mark is that the website resolving from the disputed domain name is in some manner authorised by or connected with the Complainant, which the Panel is satisfied is a completely false conclusion.
The additional words “online” and “casino”, added to the GENTING trademark, does not detract from the disputed domain name overall confusion indeed the reverse is true. The Complainant’s reputation worldwide is partly in the promotion, operation and management of casinos. In the internet world it is registered, inter alia, as the holder of the domain names <gentingstanleycasinos.com>, <gentinglivecasino.com>, <gentingcasinos.com>, <gentingonline.com>, and <gentingcasinos.net>. The addition of the further word or words to the GENTING mark adds to the deception confusion created by the Respondent’s registration of the disputed domain name.
The additional word or words do not have any impact on the overall impression of the dominant part of the name, GENTING, instantly recognizable as a well-known trademark. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. The disputed domain name must therefore be considered to be confusingly similar with the Complainant’s trademark.
The Panel determines that the disputed domain name is confusingly similar to the Complainant’s well-known trademark GENTING and that this is further compounded by the addition of words “online” and “casino” requently found in other domain names registered and used by the Complainant and their connection with the Complainant’s well-known commercial activities.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights to the mark of the Complainant or that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent does not assert any such entitlement, and the Panel finds that it has no rights or legitimate interests to use the mark GENTING in or in connection with its business or disputed domain name. The Panel accepts the contention advanced by the Complainant that in circumstances where its mark is so well-known throughout the world, it is very likely that any use of it by the Respondent cannot be a bona fide use.
The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has produced evidence which the Panel accepts, which shows that the Respondent’s website contains a link to an unauthorized gambling website “www.casino8sports.com”. It may be inferred in the absence of evidence to the contrary that the Respondent derives commercial gain from the link in some manner.
The use of the disputed domain name to direct Internet traffic to sponsored links is not a bona fide offering of goods or services of the disputed domain name: see earlier UDRP decisions including one involving the LEGO trademark, LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156, where the panel stated: “Further, Respondent’s use of the Disputed Domain Name to sponsor links to paid advertising is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services.”
The Complainant has established that it attempted to make contact with the Respondent to encourage it to voluntarily give up the registration of the disputed domain name by a letter dated July 6, 2011. No response was ever received to the letter.
In the circumstances the Panel is reinforced in its conclusion that the registration of the disputed domain name was undertaken in bad faith and the continued use of the disputed domain name is also in bad faith.
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 <gentingonlinecasino.com> be transferred to the Complainant.
David Levin Q.C.
Dated: November 18, 2011