The Complainant is Genting Berhad of Kuala Lumpur, Malaysia, represented by Naqiz & Partners, Malaysia.
The Respondent is Christopher Ang of Simpang Bedok, Singapore.
The disputed domain name <gentingcasino.com> is registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2009. On January 14, 2009, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On January 14, 2009, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 January 20, 2009. In accordance with the Rules, paragraph 5(a) and (d), and an extension to the due date for Response granted by the Center, the due date for Response was February 16, 2009. The Response was filed with the Center on February 16, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on February 19, 2009. 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 is a company incorporated in Malaysia. The core business of the Complainant and its related entities (the Genting group) includes leisure, hospitality and casino operations. It also includes palm oil plantations, power generation, oil and gas exploration and production. The Complainant operates in Malaysia and various other countries.
The Complainant is the owner of registered trademarks for GENTING, registered in various countries including Malaysia.
The Complainant is the registrant of a number of domain names which incorporate its trademark, including <genting.com.my>.
There is little information in the Response, or otherwise in the case file, which outlines the activity of business of the Respondent. The Respondent appears to be a private individual. The Respondent does not indicate what his motivation was for registering the disputed domain name.
The disputed domain name was first registered in June 2001.
At the date of this dispute, and in evidence provided by the Complainant as at November 28, 2008, the disputed domain name reverts to a portal website. Evidence provided by the Complainant indicated that the website then included “sponsored” listings such as “MGM Mirage Las Vegas” and “Casino Consultant” as well as links such as “Genting Highlands”, “Genting Rooms”, “Book Genting Hotel”, and “Bellagio Casino”. At the date of this dispute, the disputed domain name reverts to a portal website with a more limited list of links, including “Australian Casinos” and “Genting Highlands”, in addition to a facility to make an offer to buy the disputed domain name.
The Complainant makes the following allegations.
The disputed domain name is identical and/or confusingly similar to the Complainant's registered mark. The mere addition of the word “casino” does not alter the overall impression of the disputed domain name as one connected with the Complainant. (In this connection, the Complainant refers to a number of previous decisions under the Policy relating to the addition of descriptive words to trademarks.)
The Respondent has no connection to the Complainant. The Respondent is not licensed or otherwise authorized by the Complainant. The disputed domain name is not connected with the name under which the Respondent holds the domain name registrations. The Respondent has not been commonly known by the disputed domain name. Neither is the Respondent making a legitimate non-commercial or fair use of the disputed domain name. Rather, the Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from the Complainant.
Pursuant to paragraph 4(b)(iii) of the Policy, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. The Respondent has also attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark. Bad faith registration can be inferred from the Respondent's registration of the Complainant's well-known mark, and it can be inferred that the Respondent was aware of that mark.
The Respondent responds to the Complainant's allegations as follows.
The Respondent refers to two previous cases in which the Complainant was unsuccessful and says that these are “self explanatory”: Genting Berhad v. Tan Kim Sin, NAF Claim No. FA94735; Genting Berhad v. Tan Kim Sin, WIPO Case No. DBIZ2002-00071.
The Respondent states that his “best understanding” is that the Complainant derived its name from “Genting Sempah”, a transit town to the Genting Highlands which is a location between the States of Selangor and Pahang in Malaysia. The Respondent refers to several place names in Malaysia which include the word Genting. To claim that a casino is synonymous with “genting” is overly presumptuous. The Complainant has registered several trademarks but none explicitly for casino services.
“Genting” is not a truly global brand or distinctive outside its region, as the Complainant claims. “Genting” is but a descriptive word, referring to “something, somewhere”. The Respondent claims that the Complainant has not taken issue with the registration of other domain names that incorporate its mark.
In relation to his rights or legitimate interests, the Respondent states that it has taken the Complainant more than 7 years (since the first registration of the disputed domain name) to assert its “rights” in relation to it. This infers that the Complainant has no real interest in the domain name. The Respondent refers to other domain names which the Complainant might have registered corresponding to its name.
The Respondent states that just because he does not have a functioning website does not mean that it will remain so. It is unthinkable that the Respondent will be a competitor of the Complainant. The Complainant should not draw any premature conclusions about the Respondent's intended use of the disputed domain name.
In relation to bad faith, the Respondent says that he found the disputed domain name by chance and did not, in any way, target it for the purpose of riding on its goodwill, as alleged by the Complainant. The Respondent claims that prior to registering the disputed domain name, he conducted a due diligence search on the USPTO website for the word “genting”. Sometime later, he “came across” two panelists' decisions dismissing the Complainant's claims under the Policy and the Start-up Trademark Opposition Policy, which affirmed his belief that he had not acted in bad faith.
The Respondent states that he has not made any attempt to sell the disputed domain name despite offers for it.
The current website at the disputed domain name is the registrar's domain parking page, which is a standard default page inserted by many domain registrars. The Respondent claims not to receive any payment or commercial gain from the registrar.
To succeed under paragraph 4(a) of the Policy, the Complainant must prove 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 was registered and is being used in bad faith.
These issues are discussed in turn as follows.
There is no dispute that the Complainant has rights in a registered trademark, including in Malaysia and Singapore where the Respondent has his address. Paragraph 4(a)(i) of the Policy requires that the Complainant establish that it “has rights”. Evidence of the Complainant's registered rights is clearly sufficient for this purpose.
Under paragraph 4(a)(i), the Complainant must also establish that the disputed domain name is identical or confusingly similar to its mark. The disputed domain name is self-evidently not identical to the Complainant's mark. On balance however, the Panel finds that it is confusingly similar.
At the outset, the Panel accepts, as argued by the Respondent, that the Complainant's mark contains a term which is also descriptive of a particular region (Genting) in Malaysia. The Panel also notes that the disputed domain name adds another descriptive term: “casino”. The Respondent's argument is therefore that there is no confusing similarity because these terms have a number of other associations which are unconnected with the Complainant. The Panel does not accept this argument for the following cumulative reasons.
Firstly, although the word “Genting” may have a number of geographic associations in Malaysia and Singapore, there is no doubt that the word, as well as the location in Malaysia, has a prominent association with the Complainant. (This was recognized by the Panel in e.g. Genting Berhad v. Tan Kim Sin, WIPO Case No. DBIZ2002-00071, to which the Respondent referred.) The fact that it might have other associations does not prevent a significant portion of the public from potentially being confused. For this reason, there is a likelihood that a significant portion of the public in those jurisdictions might identify the “Genting” element of the disputed domain name with the Complainant and assume that the addition of the word “casino” describes another aspect the Complainant's business. Such a conclusion is also consistent with the relevant, and unanimous, findings of the three-member panel in Genting Berhad v. Tan Kim Sin, NAF Claim No. FA94735, to which the Respondent also referred. (In that case, the panel relevantly found that the subject domain name, <genting.com>, was identical or confusingly similar to trademarks in which the Complainant has rights, although that panel found against the Complainant on the second and third grounds of the Policy in the circumstances of that case.)
Secondly, the term “casino” describes an aspect of the Complainant's business. The inclusion of that term in the disputed domain name serves to potentially emphasize an association with the Complainant. This case therefore appears to the Panel to be different in degree to some past cases decided under the Policy, which considered the addition of the word “casino” to a geographic identifier in which the Complainant also had rights. See Grand Bay Management Company v. Allegory Investments, WIPO Case No. D2001-0874 (in which the majority of the panel found against the then complainant in this respect, in relation to the domain name <grandbaycasino.com>).
Thirdly, it also appears to this Panel that a finding of confusing similarity in the circumstances of this case is more consistent with the majority of other cases under the Policy which considered a domain name combining a mark with a geographic association, as well as the word “casino”. This includes cases under the Policy previously decided in favor of the same Complainant in this case. See Genting Berhad v. Genting Casino, Inc., WIPO Case No. D2001-1192 (<genting-online-casino.com>). For other cases, see e.g. La Société Anonyme Des Bains De Mer Et Du Cercle Des Etrangérs A Monaco v. Internet Marketing Associates, WIPO Case No. D2000-1317 (<casinomonaco.com>); Caesars Entertainment, Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411 (<parislasvegascasino.com>); Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. E-Casino Marketing, WIPO Case No. D2003-0242 (<saharacasino.com>); Swiss Casinos Holding AG v. Intercontinental Casino Consul& Global Interest Gaming, WIPO Case No. D2003-0246 (<swisscasino.com>).
The Respondent makes a number of other arguments in relation to this ground, however the Panel does not find them relevant. These include arguments that the Complainant's mark is not a ‘global' brand; that it is not registered in the USA “where the dot com extension originated from”; and the failure of the Complainant to challenge other domain name registrations including the word “Genting”. The simple response to these arguments are that: there is no requirement for the Complainant to demonstrate that it owns a ‘global' brand (however that might be defined); there is no requirement for the Complainant to have a mark registered in the USA – which is otherwise not relevant to these proceedings; and the existence of other domain names registered by third parties are not relevant to the current dispute between the Complainant and Respondent.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
In relation to this element of the Policy, the Respondent provided little information or explanation concerning its activities or motivation for registering and using the disputed domain name. Much of the Response is, instead, a series of rhetorical questions concerning the motivations and actions, or claimed inactions, of the Complainant. The Respondent's failure to say why it chose this particular domain name does little to rebut the Complainant's case. Panels in similar circumstances have drawn a negative inference from failures of a respondent to provide any such explanation: See e.g. Chi-Chi's, Inc. v. Restauran Commentary (Restaurant Commentary), WIPO Case No. D2000-0321.
As recognized in previous cases under the Policy referred to above, the Complainant is well-known in Malaysia and Singapore, where the Respondent resides. As such, in the absence of a proper explanation from the Respondent, it is difficult to conceive of what legitimate interest the Respondent might have in the disputed domain name.
For these reasons, the Panel finds that the Complainant has established it case under paragraph 4(a)(ii) of the Policy.
It is central a finding of bad faith that the Respondent intended to unfairly take advantage of the Complainant's mark. Necessarily for such a finding, as required by paragraph 4(a)(iii) of the Policy, the Respondent must have known of the Complainant when the disputed domain name was registered and then used.
As noted above, the Complainant is well-known in Singapore, where the Respondent resides. The Respondent claims to have conducted ‘due diligence' searches prior to registering the disputed domain name, including (for reasons not explained in the Response) a search of the USPTO's website. The Respondent does not however explain why he would not have conducted such searches with the Intellectual Property Office of Singapore – his own jurisdiction, and the place it might be expected that any such search would start. It is also barely credible that the Respondent's searches revealed nothing of the Complainant's rights, when the Complainant is well-known in the Respondent's own jurisdiction. Rather, the Respondent's evidence suggests that he has some familiarity with conducting trademark searches, and it might be inferred that he would be similarly familiar with conducting such searches in Singapore, where the Complainant has registered rights dating as far back as 1984.
In these circumstances, the Respondent's claimed refusal of offers by third parties to purchase the disputed domain name does little to establish a lack of bad faith. The Respondent provides no direct evidence of such refusals (such as copies of emails).
The Respondent also makes some claims that the Complainant failed to take action in relation to the disputed domain name for 7 years, having regard to the first registration of it in 2001. From this the Respondent suggests that the Complainant “did not feel that their mark has been infringed all these years”. The Panel finds no basis for such an inference. It presumes that the Complainant was aware of the Respondent's registration but deliberately chose not to pursue it. There is no such evidence in this case. Even despite this, a delay in bringing a Complaint does not generally act as a waiver of the right to do so. See Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <gentingcasino.com> be transferred to the Complainant.
James A. Barker
Dated: March 5, 2009