WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Genting Berhad v. Ric Internet
Case No. D2011-1776
1. The Parties
The Complainant is Genting Berhad of Kuala Lumpur, Malaysia, represented by Naqiz & Partners, Malaysia.
The Respondent is Ric Internet of Paranaque, Philippines.
2. The Domain Name and Registrar
The disputed domain name <resortsworldmanila.com> is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2011. On October 19, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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. On November 24, 2011, the Complainant filed an amended Complaint.
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 November 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on January 11, 2012. 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 the Genting Group of Companies (“the Group”). It was incorporated 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 states that it is one of the largest listed companies in Malaysia with a market capitalisation of about MYR 41.5 billion (USD 13.85 billion) as at December 31, 2010. As at December 31, 2009, the Group had 35,749 employees. 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 palm oil plantations, power generation in Malaysia and various other countries, as well as oil and gas exploration and production.
The Complainant states that the Group operates its leisure, hospitality and casino business under the GENTING as well as RESORTS WORLD trade marks. The Complainant asserts that it has directly or through its affiliated companies secured trade mark registrations for the RESORTS WORLD trade mark and variations thereof including and in Malaysia and in other countries (e.g. Philippines; Singapore; Thailand; Indonesia; China; Macau, China; Hong Kong, China; and Japan). The Complainant also identified a Philippine trade mark registration for RESORTS WORLD AT MANILA in the list of marks annexed to the Complaint.
The Complainant operates a website located at “www.rwmanila.com”. The business is owned and operated by Genting Malaysia Berhad, a 48.6% owned company of the Complainant according to the Complaint. Genting Malaysia Berhad owns the Genting Highlands Resort which is a leading integrated leisure and entertainment resort in Asia. It claims to have been was a five-time winner of the World’s Leading Casino Resort (2005 to 2010) awarded by World Travel Awards, and has been voted as Asia’s Leading Casino Resort for six consecutive years (2005 to 2010). The Complainant claims that the RESORTS WORLD trade mark is synonymous with casino and other related gaming activities, as the Group has owned and operated the only casino and entertainment resort in Malaysia for more than 30 years.
The Complainant claims that it has generated and acquired substantial reputation and goodwill in the RESORTS WORLD trade mark through its continuous and consistent promotional and advertising efforts and activities. The Complainant also identified numerous domain name registrations that it or its affiliate companies own, e.g. <resortsworldmalaysia.com>, <resortsworldsingapore.com>, <resortsworldmanila.cn>, <resortsworldmanila.com.cn> and <resortsworldmanila.com.hk>.
5. Parties’ Contentions
The Complainant asserts, firstly, that the disputed domain name is identical and/or confusingly similar to the Complainant’s RESORTS WORLD trade mark as it comprises the Complainant’s trade mark RESORTS WORLD in its entirety, followed by the descriptive word, “manila”. It submits that the mere addition of the descriptive term “manila” to the Complainant’s RESORTS WORLD trade mark, does not alter the overall impression that the disputed domain name is connected to the Complainant.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant had demanded the transfer of the disputed domain name to the Complainant by way of correspondence sent on July 6, 2011 by the Complainant’s solicitors to the Respondent. The Respondent apparently refused to accede to the Complainant’s demands. In relation to this issue, the Complainant contends that (i) the Respondent has no connection with the Complainant; (ii) neither has the Respondent been licensed or authorized by the Complainant to use the disputed domain name; (iii) the Respondent does not appear at any time to have been commonly known by the disputed domain name; (iv) 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; and (v) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as the Respondent’s website links to an unauthorized gambling website landing page from which the Respondent, in all likelihood, derives commercial gain. The Complainant contends that the Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from the Complainant’s website at “www.rwmanila.com”.
Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith. On this point, the Complainant’s contention is that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant by diverting Internet traffic intended for the Complainant to the Respondent’s website containing sponsored links. 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. The Complainant submits that it is highly unlikely that the Respondent was not aware of the Complainant’s well-known RESORTS WORLD trade mark. The intentional selection of the Complainant’s RESORTS WORLD trade mark combined with the word “manila”, to form the disputed domain name, itself, evidences the Respondent’s knowledge of the Complainant’s trade mark and business. This creates a presumption that the disputed domain name was registered in bad faith. Reference was made by the Complainant to the case of Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Casino on-line, WIPO Case No. D2000-1329 in which the panel found that the use of a domain name which is so obviously connected with the complainant and its products and services that its very use by someone with no connection with the complainant suggests “opportunistic bad faith”. The Complainant also submitted that previous panel decisions under the Policy have established the principle that bad faith registration may be inferred by the registration of a well-nown trade mark (The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM AND NASAQ.COM, WIPO Case No. D2001-1492).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to succeed in these proceedings and to have the disputed domain name transferred to it, the Complainant must prove each of the following under paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated that it has rights to the RESORTS WORLD trade mark, and that this mark is well-known in the industry. The Panel is of the view that the inclusion of the word “manila” to the disputed domain name does not serve to distinguish it from the Complainant’s RESORTS WORLD trade mark nor from its RESORTS WORLD AT MANILA trade mark which is a registered in the Philippines where the Respondent is located. The word “manila” serves only to indicate or suggest the location which Internet users would expect the Respondent’s website at the disputed domain name to relate to.
The Panel therefore finds that the disputed domain name is identical and/or confusingly similar to the Complainant’s trade marks RESORTS WORLD and RESORT WORLD AT MANILA.
The first requirement under paragraph 4(a) of the Policy has therefore been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trade mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of production passes to the respondent. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). The Panel is of the view that the Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In the absence of a Response, the Panel accepts as valid the Complainant’s allegations that the Respondent has no authorization to use the Complainant’s trade marks in the disputed domain name and that the Respondent is not commonly known by the disputed domain name.
The Respondent’s website as shown in evidence displays the Complainant’s trade mark prominently and the impression given is that it is a website that is operated or endorsed by the Complainant or its affiliates. The Panel concludes, therefore, that the Respondent is seeking to attract Internet users through the incorporation of the Complainant’s trade mark in the disputed domain name for the Respondent’s own commercial purposes.
The Panel agrees with the Complainant that the Respondent’s use of the disputed domain name demonstrates the Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name.
The Respondent has not furnished any evidence which would rebut the Complainant’s prima facie case or invoke any of the circumstances of paragraph 4(c) of the Policy to support the existence of its rights or legitimate interests in respect of the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second requirement under paragraph 4(a) of the Policy has therefore been satisfied.
C. Registered and Used in Bad Faith
The Policy sets out four circumstances which would constitute evidence of the registration and use of the disputed domain name in bad faith (paragraph 4(a)(iii) of the Policy).
“(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 trade mark 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 trade mark 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 on-line 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.”
Of these four illustrations, the Panel is of the view that the fourth one describes the facts of this case as presented in evidence. The Respondent’s use of the disputed domain name incorporating the Complainant’s trade marks which resolve to a website which bears an appearance of legitimacy, with links to a gambling website, clearly reflect the circumstances envisaged by paragraph 4(b)(iv) of the Policy. Internet users who come across the Respondent’s website would very likely be confused into thinking that the Respondent’s website has some connection with or is endorsed by the Complainant. The Panel agrees with the Complainant that the Respondent must have been aware of the Complainant and of its trade marks when it selected and registered the disputed domain name. The Panel concludes that there was opportunistic bad faith in this case and accordingly finds that the Respondent has registered and uses the disputed domain name in bad faith.
The third requirement under paragraph 4(a) of the Policy has therefore been satisfied.
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 <resortsworldmanila.com> be transferred to the Complainant.
Dated: January 17, 2012