WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mansion (Gibraltar) Limited, Provent Holdings Ltd. v. Nguyen Thai Hoc
Case No. D2012-2382
1. The Parties
The Complainants are Mansion (Gibraltar) Limited of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Provent Holdings Ltd. of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lawrence Quahe & Woo LLC, Singapore.
The Respondent is Nguyen Thai Hoc of Ha-Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <mansionviptips.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2012. On December 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2012, 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. In response to a notification by the Center that the Complaint and Annexes exceeded the maximum file size allowed, the Complainants filed a new Complaint on December 10, 2012.
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 December 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2013.
The Center appointed WiIliam A. van Caenegem as the sole panelist in this matter on January 14, 2013. 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 disputed domain name was registered on October 4, 2012.
5. Parties’ Contentions
According to the Complaint, the first Complainant has operated online casinos, poker and sports exchange gaming websites at “www.mansion.com” and “www.mansioncasino.com” since August 2004. It has also operated a free online poker gaming website at “www.mansionpoker.net” since November 2005. According to the Complaint, the first Complainant’s websites attract a very substantial number of visitors each month.
According to the Complainants the domain names of the abovementioned websites are registered in the name of the second Complainant. The second Complainant is also the owner of numerous trademark registrations for MANSION, MANSION and M Device, MANSION SPEED POKER, MANSION SPEED POKER and M Device, and MANSION POKER, in numerous countries and classes (the “MANSION trademarks”). The Complainants attach registration certificates in relation to the relevant trademarks.
According to the Complaint, the second Complainant has licensed the abovementioned domain names and trademarks to the first Complainant.
The Complaint asserts that the first Complainant has engaged in significant marketing of the MANSION trademarks and the “Mansion” websites. The Complaint further asserts that from mid-2006 to mid-2010 the first Complainant was the premier sponsor of the Tottenham Hotspur Football Club in the English Premier League, and that this created significant public awareness of the Mansion websites and businesses due to the trademark being emblazoned on jerseys and merchandise.
Furthermore, the Complaint asserts that, since mid-2011, the first Complainant has been the “Official International Betting Partner” of the Manchester City Football Club, also in the English Premier League, and that this has generated further international exposure for the relevant websites and trademarks. The signature pages of the sponsorship agreement with Manchester City Football Club are attached to the Complaint.
In addition, the Complainants assert that the first Complainant organised several Speed Poker tournaments, which were very widely televised, and included significant highlighting and advertising for the Complainants’ trademarks and business. The first Complainant has many other significant partnerships to promote its business, including the manufacture of advertising paraphernalia sporting the company logo.
According to the Complaint, the Respondent’s “www.mansionviptips.com” website appears to provide sports betting tips, which activity relates closely to the goods and/or services the first Complainant provides under its various trademarks and websites. The Respondent is not licensed or authorized by the Complainants. Further, the Complaint asserts that the relevant trademarks were registered more than 10 years prior to the registration of the disputed domain name.
According to the Complainants, the disputed domain name wholly incorporates the MANSION trademarks. The Complainants further contend that numerous UDRP panel decisions establish that the addition of generic terms does not suffice to alter the fact that a disputed domain name is confusingly similar. According to the Complainants, the term “mansion” remains the key feature of the disputed domain name. The additional terms “vip” and “tips” suggest services which relate to the businesses the Complainants engage in using the relevant trademarks. The additions fail to distinguish the disputed domain name. The words “vip” and “tips” when read together suggest the providing of betting tips for VIP’s in casinos, so that Internet users could easily be confused into thinking the disputed domain name is related to the Complainants’ businesses or trademarks.
The Complainants also assert that the second Complainant has rights in the MANSION trademarks by virtue of registration, whereas the first Complainant has rights by virtue of use.
The Complainants submit that the Respondent has not used or prepared to use the disputed domain in connection with a bona fide offering of goods or services. The Complainants assert that the Respondent’s website masquerades as an affiliate of <mansion.com> and <mansioncasino.com>, and is used to deceive consumers into thinking there is an affiliation. According to the Complainants it is highly unlikely if not impossible that the Respondent was not aware of the Complainants as they are so well known in the gambling community. The use of the Complainants’ trademarks for a related business defeats any claim of bona fide use.
Further, the Respondent’s name bears no resemblance to the disputed domain name. Also, according to the Complainants, no faire use is made of the disputed domain name, rather, the Respondent is using the relevant website to attract users to its commercial website for its own benefit.
According to the Complainants, given that there is no bona fide use of the disputed domain name, the only inference open is that the Respondent acquired it to disrupt the business of the Complainants and/or divert Internet users for its own commercial gain or benefit. The intent to attract users for potential gain is said to constitute evidence of registration and use in bad faith. The fact that, at the time of registration of the disputed domain name, the Complainants’ trademarks and business had very wide exposure due to its active sponsorship of a Premier League football club also indicates bad faith, according to the Complainants. The Complainants’ trademarks were widely advertised at sports grounds and televised to millions of viewers at the time.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The complainant in a UDRP proceeding must establish that it has rights in the trademarks it relies on to file a complaint and request a remedy in relation to a registered domain name. Here the Complaint was filed by the second Complainant, registered owner of the relevant MANSION trademarks, and the first Complainant as its licensee. The first Complainant actually conducts the business which gives rise to the goodwill vesting in the trademarks, and is contractually licensed to do so by the trademarks’ owner. The facts thus establish that the Complainants jointly have the requisite rights in the relevant trademarks, and thus the requirements of the Policy are satisfied.
The disputed domain name is not identical to the Complainants’ trademarks. However, the Complainants’ trademark MANSION is wholly incorporated in the disputed domain name as its first and most prominent and distinctive part. UDRP panels have regularly decided that the addition of generic terms is not sufficient to distinguish a disputed domain name from a wholly incorporated trademark belonging to a complainant. In this case the addition of “vip” and “tips” constitutes the addition of a word and an acronym that are common in English usage. They are generic terms with an association with gambling and betting, the businesses in relation to which the Complainants have acquired considerable reputation in the trademark MANSION and related marks. Tips are commonly offered in relation to betting on sporting events, and gambling and casinos are regularly promoted to VIP’s or portrayed as activities peculiarly suitable for VIP’s. Therefore the addition of these generic terms does nothing to disassociate the disputed domain names from the business and the related trademarks of the Complainants. On the contrary, they have a tendency to reinforce the suggestion of a connection, taking also into account that the Complainants use the mark MANSION also with the extension “casino”.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainants’ MANSION trademark.
B. Rights or Legitimate Interests
The Respondent is neither licensed nor authorized to use the MANSION trademarks in any form nor to incorporate them in the disputed domain name or register that domain name. The Respondent is also not commonly known by the disputed domain name. The adoption of a trademark with an established reputation, the property of another party, as a prominent part of a domain name for the purpose of falsely suggesting a connection with the owner of the trademark does not give rise to rights or legitimate interests. Here it is apparent from the nature of the Respondent’s associated website, which offers betting tips and the like, and the inclusion of the terms “VIP” and “tips” that the Respondent aim is to rely on the false suggestion of a connection with the Complainants’ business to attract Internet users to its site for some commercial gain or advantage. In the circumstances no rights or legitimate interests arise in the Respondent.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainants establish that the online gambling and betting business they conduct via their various websites incorporating the MANSION trademarks, and their use in relation to that business of those trademarks, had achieved very considerable prominence online and more broadly, in particular through its sponsorship of a high profile football club. In the circumstances it is inconceivable that at the time of registration, the Respondent was not aware of the Complainants’ trademarks and business reputation. This conclusion is further reinforced by the fact that the Respondent incorporated terms that clearly refer to or are associated with the gambling, casino and betting business for which the Complainants have a wide reputation.
Further, the Respondent has not been licensed or authorized to use the trademark MANSION nor does he have some other legitimate claim to it. The disputed domain name the Respondent operates suggests a connection with the Complainants that does not exist, and the Respondent appears to offer some services connected with or relevant to the Complainants’ business. The only conclusion open is that the Respondent is using the disputed domain name to divert Internet users to his website for commercial gain by falsely suggesting there is some legitimate connection with the Complainants.
The Panel therefore holds that the disputed domain name was registered and used 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 <mansionviptips.com> be transferred to the Complainants.
WiIliam A. van Caenegem
Date: January 28, 2013