WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rank Leisure Holdings Limited v. Fundacion Private Whois / PPA Media Services
Case No. D2012-1842
1. The Parties
The Complainant is Rank Leisure Holdings Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Fundacion Private Whois of Panama, Panama / PPA Media Services of Santiago, Chile.
2. The Domain Name and Registrar
The disputed Domain Name <wwwmeccabingo.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2012. On September 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On September 18, 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 September 18, 2012, 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 amendment to the Complaint on September 18, 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 September 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2012.
The Center appointed Junghye June Yeum as the sole panelist in this matter on November 2, 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 a private limited company, incorporated in the United Kingdom. It was founded in the United Kingdom in 1937, and has continued to operate in the gaming and betting industry. The Complainant acquired Mecca Leisure PLC in 1990. It merged its Top Rank clubs with Mecca Bingo, and positioned itself as Britain’s leading operator of bingo clubs. While its principal market is the United Kingdom, the Complainant also operates in Spain and Belgium.
The Complainant owns a UK trademark with registration number 472545, dated December 7, 1989 for the term “mecca.” The Complainant has registered over 170 domain names, including the name “mecca” to date and also operates websites including “2www.meccabingo.com” (registered in 2004) and “www.meccabingo.co.uk” (registered in 1997).
The disputed Domain Name <wwwmecabingo.com> was registered on September 11, 2009. The corresponding website is a parking page with links to other websites.
The Complainant tried to contact the Respondent on August 21, 2012 through a cease and desist letter, sent by email, advising the Respondent that the unauthorized use of the MECCA trademark within the disputed Domain Name violated the Complainant’s trademark rights and requested a voluntary transfer of the disputed Domain Name. The Respondent did not reply.
5. Parties’ Contentions
(i) Identical or confusingly similar
The Complainant contends that the disputed Domain Name is confusingly similar to the Complainant’s MECCA registered trademark.
In support of this argument, the Complainant states that it has registered MECCA as numerous trademarks and domain names. Further, the Complainant contends that combining the Complainant’s MECCA mark with the terms “bingo” and “www” does not prevent the disputed Domain Name from being confusing similar. Rather, considering the Complainant’s area of business and its association with “mecca bingo” this combination makes it more confusing. The Complainant also asserts that it contains an obvious association with the trademark of the Complainant and that a person who sees the disputed Domain Name will mistake it for a name related to the Complainant.
Accordingly, the Complainant asserts the disputed Domain Name is confusingly similar under paragraph 4(a)(i) of the Policy, as well as paragraphs 3(b)(viii) and (b)(ix)(1) of the Rules.
(ii) Rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy, as well as paragraph 3(b)(ix)(2) of the Rules.
First, the Respondent cannot claim any rights established by common usage. The Complainant has not found the Respondent to have any registered trademarks or trade names corresponding to the disputed Domain Name, nor is there any reason to assume the Respondent has been using the term “mecca” in any other way to give them legitimate rights.
Second, the Respondent cannot claim to have been using MECCA without being aware of the Complainant’s rights to it because it is highly unlikely that the Respondent did not know of the Complainant’s legal rights in the name “mecca” at the time of registration.
Third, the Respondent is not using the disputed Domain Name as a company name nor does it have any other legal rights in the name “mecca” and it is not a bona fide use to register with the Complainant’s trademark and a misspelling of the Complainant’s own website in order to generate Internet traffic to a website displaying nothing but sponsored links.
(iii) Registered and used in bad faith
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed Domain Name pursuant to paragraphs 4(a)(iii) and 4(b) of the Policy, as well as paragraph 3(b)(ix)(3) of the Rules.
First, the Complainant asserts that the MECCA trademark has gained substantial reputation in the online gaming industry in the United Kingdom and other countries, and that the Respondent registered the Domain Name at issue for purposes of utilizing the value and goodwill of the MECCA trademark.
Second, the Complainant asserts that failure to respond to a cease and desist letter has been considered relevant to a finding of bad faith.
Third, the Complainant asserts that the use of parking or landing pages, where such links are based on trademarks, have been considered generally as unfair use that can result in misleading diversions. According to the Complainant, using a misspelling of the Complainant’s website strengthens the impression that the Respondent is trying to sponge off the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of Proceedings
Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the registration agreement unless otherwise agreed by the parties, unless the panel determines otherwise. Here, the Registrar confirmed that the language of the Registration Agreement is in English and there is no reason to suppose agreement by the parties not to use English as the language of the administrative proceeding.
Therefore, the Panel renders its decision in English.
A. Identical or Confusingly Similar
The Panel finds that the disputed Domain Name <wwwmeccabingo.com>, by incorporating the name “mecca” it its entirety, plus the word, “bingo” which is related to the Complainant’s business, strengthens the impression that the disputed Domain Name is associated with the Complainant and thus, is confusingly similar.
The Panel agrees with previous decisions which have held a domain name that wholly incorporates a complainant’s registered trademark is sufficient to establish confusing similarity. See, e.g. Allstate Insurance Company v. Callum Macgregor/Privacy –Protect.org, WIPO Case No. D2011-0244, citing, e.g. Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105 and AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
Furthermore, it has also been found that a domain name that comprises the “www” World Wide Web prefix with a complainant’s trademark and the generic top level domain suffix “.com” that is identical to one of the URLs leading to the complainant’s main website, is identical or confusingly similar to a trademark in which the complainant has rights. See, Raymond Weil SA v. Fancy Bandwith Inc., WIPO Case No. D2012-1987; see also, Barclays Bank PLC v. Private Registration, WhoisGuardService.com, WIPO Case No. D2012-1662, finding that it is permissible for the panel to ignore the generic top level domain suffix and also that the addition of the descriptive and generic term “www,” one of the common server names which forms part of a website’s URL, does not negate the confusing similarity encouraged by the respondent’s complete integration of the complainant’s trademarks in the domain name.
“Typosquatting” has consistently been regarded as creating Domain Names confusingly similar to the relevant mark. See, e.g. Deutsche Bank AG v, New York TV Tickets Inc., WIPO Case No. D2001-1314. As in the current case, where the disputed Domain Name is a combination of the Complainant’s trademark MECCA, and the word “bingo”, which is directly related to the Complainant’s area of business, the likelihood of confusion has been found to be greater in the case words closely related to the Complainant’s business are used. (See e.g. Allstate Insurance Company v. Callum Macgregor/Privacy –Protect.org, WIPO Case No. D2011-0244).
B. Rights or Legitimate Interests
The Panel finds the Complainant has met its burden of establishing a prima facie case by providing information that was available to support its claim. The burden of production shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed claim. Massive, Inc. v. Ricky Park, WIPO Case No. D2008-1375, citing Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, the Complainant alleges that it has not licensed, consented or otherwise authorized the Respondent to use its MECCA trademarks in the disputed Domain Name or any other manner. The Respondent is apparently not commonly known by the disputed Domain Name, nor is there any evidence to indicate an association between the Respondent with the disputed Domain Name.
As such, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed Domain Name within the meaning of paragraph 4(a) of the Policy and the burden has shifted to the Respondent to show one of the following circumstances under paragraph 4(c) of the Policy:
(i) Before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed Domain Name or a name corresponding to the disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as an individual, business, or other organization) have been commonly known by the disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent are making a legitimate non-commercial or fair use of the disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, the Respondent has failed to respond to the Complaint. The Panel concludes that the Respondent does not have rights or legitimate interests in the disputed Domain Name.
C. Registered and Used in Bad Faith
The Policy paragraph 4(b) sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names:
(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 trademark 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 trademark 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 website 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 website or location or of a product or service on your website or location.
The Panel finds that the Complainant has shown circumstances as described in paragraph 4(b)(iv).
As discussed above, it is likely that Respondent was aware of the Complainant and its use of the MECCA mark, given the Complainant’s widespread use of the mark in the gaming and betting industry.
The Panel also finds bad faith evidenced by the fact that the Respondent did not use the disputed Domain Name in connection with a legitimate offering of any goods or services, and other panels have already determined typosquatting to be inherently parasitic and of itself evidence of bad faith. See e.g. Allstate Insurance Company v. Callum Macgregor/Privacy –Protect.org, WIPO Case No. D2011-0244, citing National Association of Professional Baseball Eagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.
Furthermore, a trademark or general search would have found that the Complainant’s trademark was being used by the Complainant in addition to other similar domain names including the trademark MECCA, and previous panels have found lack of such a search to be indicative of bad faith. See, Allstate Insurance Company v. Callum Macgregor/Privacy –Protect.org, WIPO Case No. D2011-0244, citing RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242. Previous panels have also found that content of the website is relevant to a finding of bad faith and websites containing links to third parties has been interpreted as a respondent’s intent to free ride on a complainant’s reputation and goodwill by diverting Internet users and customers for commercial gain. See, e.g., Comercia Incorporated v. Shu Lin, WIPO Case No. D2011-0709, Allstate Insurance Company v. Callum Macgregor/Privacy –Protect.org, WIPO Case No. D2011-0244, Document Technologies, Inc., v. International Electronic Communications Inc., WIPO Case No. D2000-0270, Do the Hustle, LLC v. Tropic Wachem d.o.o., WIPO Case No.D2000-0624, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, the disputed Domain Name fully incorporated the Complainant’s trademark and replicated to a substantial degree the Complainant’s registered domain name (<meccabingo.com>) and a substantial number of Internet users could enter the disputed Domain Name by mistake, believing they were accurately entering the URL to the Complainant’s website, causing potential confusion of Internet users.
Accordingly, the Panel finds that the Respondent’s actions constitute bad faith registration and the use of the disputed Domain Name <wwwmeccabingo.com> in violation of paragraph 4(a)(iii) of the Policy.
In view of the above, the Panel finds that the Respondent has registered and used the disputed Domain Name in bad faith within the meaning of 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 disputed Domain Name <wwwmeccabingo.com> be transferred to the Complainant.
Junghye June Yeum
Date: December 6, 2012