WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swiss Casinos Brands AG v. Protected Domain Reg Ltd / Linh Wang
Case No. D2012-1352
1. The Parties
The Complainant is Swiss Casinos Brands AG of Rapperswil, Switzerland, represented by Wenger & Vieli AG, Switzerland.
The Respondent is Protected Domain Reg Ltd of London, United Kingdom of Great Britain and Northern Ireland (“UK”), and Linh Wang of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <swisscasino.org> is registered with Alantron Bilişim Ltd Şti. (the Registrar).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2012. On July 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2012, 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. The Center sent an email communication to the Complainant on July 12, 2012 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 12, 2012.
The Center verified that the Complaint together with the amendment to 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 July 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2012.
The Center appointed Stefan Naumann as the sole panelist in this matter on August 15, 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.
The Complainant points out that the Registrar’s Domain Name Registration Agreement is available in English and Turkish and that absent any information about the language of the Registration Agreement, the language of the proceeding should be English rather than Turkish on the basis that English is the world’s by far more spoken language and that the Respondent is domiciled in China. Both grounds are factually and intellectually flawed. However, the privacy registration service (Protected Domain Reg Ltd) that appears as the Respondent pursuant to the amended Complaint is located in the UK and the Registrar informed the Center that the specific language of the Registration Agreement in this case is English.
In view of the above, the Panel is satisfied that the language of the proceeding should be English pursuant to paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is a Swiss company that operates casinos. The Complainant owns three Swiss and three international trademarks containing the terms “Swiss Casinos” in capital letters and in specific fonts, alone or in combination with graphic elements that designate services in international classes 35, 36, 37, 41, 42 and 45:
Swiss Registration No. 418930 SWISS CASINOS (fig.) of March 31, 1995;
International Registration No. 645160 SWISS CASINOS (fig.) with priority of March 31, 1995;
Swiss Registration No. 551086 SWISS CASINOS (fig.) of March 2, 2006;
International Registration No. 919117 SWISS CASINOS (fig.) of January 22, 2007;
Swiss Registration No. 569377 SWISS CASINOS (fig.) of March 12, 2008;
International Registration No. 963920 SWISS CASINOS (fig.) with priority of March 12, 2008.
The Complainant asserts that the SWISS CASINOS marks are well-known and enjoy a protectable level of acquired distinctiveness. All of the trademarks were filed before the disputed domain name was registered on August 29, 2008. The international registrations expressly but incorrectly state that “The words contained in the mark have no meaning”.
The disputed domain name <swisscasino.org> was registered on August 29, 2008.
The evidence shows that the website that appears at the disputed domain name contains a text in German stating that the website is “an officially accredited Swiss online Casino that is monitored and controlled by the State”. An online verification by the Panel of the WhoIs information revealed that the terms “Swiss Casinos” are used as meta description and as meta keywords for the website at the disputed domain name.
5. Parties’ Contentions
The SWISS CASINOS marks are well-known and have acquired distinctiveness.
The Respondent has no relationship with the Complainant and has no permission from the Complainant to use any of the Complainant’s trademarks, nor is it or he commonly known by the disputed domain name.
The disputed domain name leads to a website that misleads visitors by making them believe that the gambling website is owned by a Swiss owner or guaranteed under Swiss law.
The Complainant asserts that the Respondent’s registration and use of the disputed domain name violates the Complainant’s rights in the registered SWISS CASINOS trademarks. The Complainant alleges that <swisscasino.org> is identical or confusingly similar to the SWISS CASINOS trademarks, and that the only difference between the Complainant’s trademarks and the disputed domain name is the use of the singular and the absence of a space between the words “Swiss” and “casino”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated 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 with respect to 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 disputed domain name incorporates the verbal element of the SWISS CASINOS trademarks, which are registered internationally and in Switzerland. The verbal element alone of the SWISS CASINOS trademarks is composed of a geographical term and a generic or descriptive term. The Complainant indicates that one of its Swiss marks was registered as a mark which acquired distinctiveness through use, and that previous panels have found that the marks are or have become sufficiently distinctive to be protected (Swiss Casinos Holding AG v. Intercontinental Casino Consul & Global Interest Gaming, WIPO Case No. D2003-0246; Swiss Casinos Brands AG v. Angels Finance Swiss SA, Nicola Auciello, WIPO Case No. D2011-1630; Swiss Casinos Holding AG and Swiss Casinos Brands AG v. Marlen Hurter, WIPO Case No. DLI2011-0001).
The Panel is persuaded by the analysis and reasoning in the previous UDRP decisions (i) regarding the SWISS CASINOS brand and (ii) regarding other cases that involved the combination of a geographical term with the word “casino” in trademarks designating gambling and casinos related services (EH New Ventures Inc. v. WW Processing, WIPO Case No. D2003-0007; La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Lotteries, WIPO Case No. D2000-1326; see also Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. 21LLC, WIPO Case No. D2003-0241; Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. Roger LaPort IMC, WIPO Case No. D2001-1047; Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc/Jumeira.com, WIPO Case No. D2009-0203. Where a mark is composed of a geographical term and the word “casino”, and has acquired a reputation for gambling and casino-related services covered by that mark, the combination should be considered a trademark or service mark in which a complainant has rights. The Panel does not need to, and does not, decide whether all combinations or uses of geographical terms, alone or with generic or descriptive terms, should be considered trademarks that a complainant can enforce in an UDRP proceeding.
The Panel thus finds that the SWISS CASINOS marks meet a threshold level of protectability for their verbal component alone for the purpose of the first UDRP element.
The disputed domain name only differs from the SWISS CASINOS trademarks in details that do not diminish the risk of confusion resulting from the similarity to the trademarks in which the Complainant has rights. Specifically, the absence of a space between the terms “Swiss” and “casino”, and the use of a singular omitting the final letter “s”, are not sufficient to dispel the confusing similarity between those marks and the disputed domain name.
The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s SWISS CASINOS trademarks for the purposes of the Policy.
B. Rights or Legitimate Interests
One would expect a legitimate business to provide information that allows it to be contacted. Here, however, the Respondent has hidden his identity by using a privacy registration service.
The Panel notes that in addition the Respondent repeatedly uses the German terms “Schweizer Casinos” and “Schweizer Online Casinos ” in a descriptive fashion on the website, in the meta description and as meta keywords, thereby reinforcing the impression that the English language terms “Swiss Casinos” are used as a distinctive sign.
The Respondent has chosen not to reply to the Complaint and the Panel has found no indication in the evidence that the Respondent claims or could have claimed rights or legitimate interests of its own in the terms “Swiss Casino”. To the contrary, the Panel considers that the claim on the website “www.swisscasino.org” that it is “an officially accredited Swiss online Casino that is monitored and controlled by the State” is designed to create or reinforce the false impression that the Respondent may have rights in the Complainant’s SWISS CASINOS trademarks and/or a relationship with the Complainant, insofar as the Complainant is in fact an accredited Swiss casino operator that uses the marks SWISS CASINOS and certain SWISS CASINOS domain names. Since in reality the Respondent has no rights from the owner of the SWISS CASINOS marks, its use of the disputed domain name is without rights or legitimate interests.
The Panel considers that in the present case the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent’s use of a webpage claiming to be an accredited Swiss online gambling service and its use of the terms “Swiss Casinos” as meta description and as meta keywords for a website (i) that in reality does not have any connection to the Complainant or Switzerland, (ii) that apparently does not comply with Swiss gambling laws and regulations, and (iii) that has not received any approval or accreditation from any Swiss authority, indicates that the Respondent registered and is using the disputed domain name in bad faith.
In view of the above, the Panel also finds that by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as per paragraph 4(b)(iv) of the Policy.
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 <swisscasino.org> be transferred to the Complainant.
Dated: August 28, 2012