WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marina District Development Company, LLC d/b/a Borgata Hotel Casino & Spa v. Fred Zugibe / Whois Privacy Services Pty Ltd.

Case No. D2013-0837

1. The Parties

The Complainant is Marina District Development Company, LLC d/b/a Borgata Hotel Casino & Spa of Atlantic City, New Jersey, United States of America (“U.S.”), represented by Covington & Burling, U.S.

The Respondents are Fred Zugibe of Newark, New York, U.S., and Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <borgatapoker.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2013. That same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on May 14, 2013, 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 May 16, 2013 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 amended Complaint on May 21, 2013, naming as Co-Respondents both Whois Privacy Services Pty Ltd. (the originally named Respondent) and Fred Zugibe (the registrant as indicated by the Registrar).

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 transmitted notification of the Complaint to the Respondents, and the proceedings commenced on May 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for any Response was June 13, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 14, 2013.

The Center appointed D. Brian King as the Sole Panelist in this matter on June 21, 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 Complainant is a New Jersey limited liability company that provides, inter alia, casino and entertainment services through the Borgata Hotel Casino & Spa (“The Borgata”). Poker is a significant part of the Complainant’s business: The Borgata offers an 80-table poker room, which generates over USD 22 million in annual revenues. Amended Complaint, p. 5; Declaration of R. Stefanelli, Amended Complaint, Annex 4, par. 5. The Borgata further conducts daily poker tournaments, and it hosts the Borgata Poker Open tournament, which has been part of the World Poker Tour tournament for over ten years. Id.

The Complainant bases its Amended Complaint on its ownership of several Service Marks registered in the United States, and accessible in the U.S. Principal Register, in particular BORGATA and BORGATA HOTEL CASINO & SPA (together, the “BORGATA Marks”). According to the evidence before the Panel, the Complainant’s earliest relevant registered Service Mark is for THE BORGATA (October 7, 2003). The Complainant further owns numerous registrations for BORGATA (June 1, 2004; August 10, 2004; March 8, 2005; June 19, 2007; and August 14, 2007). Amended Complaint, Annex 2. Its registration of August 10, 2004 refers to “casino services” and “live sporting events,” and its registration of June 19, 2007 adds the specific clarification “live sporting events namely, poker tournaments.” Id. The Complainant has also demonstrated the existence of three registrations for BORGATA HOTEL CASINO & SPA (February 3, 2004; March 23, 2004; and July 6, 2004), of which its registration of March 23, 2004 specifically lists “casino services” and “live sporting events.” Id.

The Complainant provides services and information on its website, hosted at the domain name <theborgata.com>. Its website prominently displays the BORGATA Marks. The Complainant’s primary website has been accessible since 1999. Complaint, p. 5. According to the evidence before the Panel, between 2011 and 2012, the website received over one hundred million page views, over fifteen million visitor sessions, and over eight million unique IP visitors. Within the same time period, the poker section of the Complainant’s website received 1.9 million hits and over six million page views. Complaint, p. 5.

The Panel has before it scant evidence of the Co-Respondents’ relationship to the disputed domain name. Indeed, there has been some lack of clarity as to the proper Respondent in this case from the outset. At the time of the Complainant’s initial filing, the Registrar’s WhoIs records identified Co-Respondent Whois Privacy Services Pty Ltd. (“WPSP”) as the registrant of the disputed domain name <borgatapoker.com>. WPSP appears to be a privacy service that shields the identities of domain name registrants. Based on an uncontested report generated through DomainTools, WPSP licensed use of the disputed domain name to an individual, Fred Zugibe. According to the DomainTools report, Mr. Zugibe was the registrant of <borgatapoker.com> as of May 22, 2012, and became the registrant not earlier than April 12, 2012. However, that same report identifies WPSP as registrant of the disputed domain name as of November 12, 2012. On May 16, 2013, the Registrar identified Mr. Zugibe as the domain name registrant, prompting the Complainant to submit its Amended Complaint naming both WPSP and Mr. Zugibe as Co-Respondents.

In the Panel’s view, the Complainant has in these circumstances properly named both Mr. Zugibe and WPSP as Co-Respondents. The Order contained in section 7 below will run against both of them.

The disputed domain name has been parked with Sedo, a company that specializes in domain name parking. It currently resolves to a webpage offering a variety of links to services offered by various providers – identical to, competitive with, or complimentary to those offered by the Complainant in connection with its BORGATA Marks. Amended Complaint, Annex 8. These “sponsored links” include poker services in competition with the Complainant, as well as other casino services, information about The Borgata and its competitors, and various other online games. Every section of the website includes a prominent banner indicating that the domain name <borgatapoker.com> is for sale by its owner, hyperlinked to Sedo’s Domain Marketplace.

Beyond the disputed domain name itself, and lacking any Response by either named Respondent, the Panel has before it no evidence linking either Respondent to the name “borgatapoker.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that its BORGATA Marks are well known within the casino industry, and among poker players and spectators generally. The Complainant contends that its broad-based name recognition as a poker service provider is due to extensive long-term use of the Marks and significant investment. The Complainant argues that its reputation extends not only to poker as a casino service, but also to internationally televised tournaments. According to its uncontested submissions, the “Complainant has spent over [USD] $3.5 million promoting its poker tournaments and poker room, including over six-hundred thousand in hosting major tournaments such as the World Poker Tournament.” Declaration of R. Stefanelli, Amended Complaint, Annex 4, 7.

The Complainant contends that the disputed domain name is confusingly similar to its Marks. It argues that the domain name <borgatapoker.com> simply combines its distinctive BORGATA mark with the generic word “poker.” Complaint, p. 6. In the Complainant’s view, the word “poker” is already “indisputably associated with the Complainant’s casino and gaming services.” Id. Moreover, the Complainant notes that several UDRP panels have previously held that a domain name that incorporates a complainant’s marks with the addition of only a generic term will meet the “confusingly similar” standard, citing in particular two cases finding the word “poker” to be just such a generic term. ESPN, Inc. v. Minsung Kim, NAF Claim No. 1375960 (adding generic terms “poker” and “club” to the complainant’s distinctive ESPN mark made the domain name confusingly similar); Hard Rock Cafe International (USA), Inc. v. Ronald Robinson, NAF Claim No. 1290206 (finding the addition of generic term “poker” to the complainant’s distinctive HARD ROCK marks as being confusingly similar).

To establish that neither Co-Respondent has any rights or legitimate interest in respect of the disputed domain name, the Complainant marshals four arguments. First, because the Complainant can make a prima facie showing that the Co-Respondents lack rights in the disputed domain name – as they have no relationship or affiliation with the term “borgatapoker,” and the Complainant neither licensed nor authorized either to use its BORGATA Marks – the burden shifts to the Co-Respondents to prove their rights or legitimate interests: a burden they fail to meet in the Complainant’s submission. Id., at p. 7. Second, the Complainant points out that there is no evidence that either Co-Respondent is commonly known by the disputed domain name. Id., at p. 7. Third, the Complainant suggests that the Co-Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services, or any other legitimate noncommercial or fair use that might evidence or create any rights or legitimate interest. Fourth, the Complainant contends that the Co-Respondents’ standing offer to sell the disputed domain name, appearing on the <borgatapoker.com> website and on Sedo.com, is further evidence that the

Co-Respondents lack any rights to or legitimate interest in the disputed domain name. Id., at p. 8.

Finally, the Complainant makes five arguments in support of its contention that the Co-Respondents have registered and used the disputed domain name in bad faith. First, the Complainant contends that the

Co-Respondents have not only registered a domain name confusingly similar to the BORGATA Marks, but that they have also done so intentionally in an attempt to attract Internet users to their website for commercial gain – by parking the domain name with Sedo, with the effect that the disputed domain name now resolves to a website providing revenue-generating sponsored links to third-party websites that “offer services that are the same as, competitive with, or complimentary to those offered by the Complainant in connection with its BORGATA Poker Marks.” Id., at p. 9. Second, the Complainant alleges that given its widespread use of the distinctive and well-known BORGATA Marks in connection with poker, the Co-Respondents are attempting opportunistically to trade off of the Complainant’s goodwill. Third, the Complainant argues that the Co-Respondents “clearly had actual knowledge” of the Complainant’s rights in the BORGATA Marks – a negative inference it draws from the fact that, in its view, “[t]here is no other logical explanation for the Co-Respondents’ registration of the disputed domain name and association of that domain name with a website allowing consumers to play poker, make hotel reservations, or obtain information about Borgata.” Id., p. 9. Fourth, the Complainant contends that the Co-Respondents’ bad faith is further evidenced by their standing offer to sell the disputed domain name, which appears at each section of the <borgatapoker.com> website. Id., p.10. Fifth, the Complainant notes that one Co-Respondent, WPSP, has already been the subject of nearly fifty adverse decisions in UDRP proceedings, which demonstrates that it has engaged in a systematic pattern of bad faith registration and use under paragraph 4(b)(ii) of the Policy. Id., at 10; Annex 10 (listing adverse decisions against WPSP).

B. Respondent

As noted previously, the Co-Respondents did not reply to the Complaint. Paragraph 5(e) of the Rules provides that “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint.” There being no evidence supporting a finding of any such exceptional circumstances in this case, the Panel shall decide the dispute on the basis of the Complaint alone.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(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 in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

The Complainant bears the burden of proving each of these elements. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

The Panel has no difficulty in concluding that the disputed domain name <borgatapoker.com> is confusingly similar to the Complainant’s Service Mark, BORGATA. As noted by the panel in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, pairing well-known marks with generic prefixes and suffixes will generally not defeat a claim of confusing similarity. The Panel agrees with the panels in ESPN, Inc. v. Minsung Kim, supra, and Hard Rock Café International (USA), Inc. v. Ronald Robinson, supra, that the addition of the term “poker” as a suffix cannot overcome the confusing similarity between the disputed domain name and the Complainant’s Marks – especially given this particular Complainant’s connection to casino services generally, and poker services in particular. The Panel finds it especially probative that the Complainant has registered its BORGATA Service Mark for the specific purpose of casino services and live poker events, as early as June, 2007. Amended Complaint, Annex 2.

B. Rights or Legitimate Interests

On the facts before the Panel, the Co-Respondents appear to have registered the disputed domain name successively in 2012 – with Mr. Zugibe having effected his registration no earlier than April 2012, and WPSP effecting its registration no earlier than November of that same year. Though the exact date of registration remains unclear, the precise details are immaterial here, as neither Co-Respondent has any other claim to a right or legitimate interest in respect of the disputed domain name. As UDRP panels have consistently held, the mere registration of a domain name does not, alone, confer upon the registrant a right or a legitimate interest in respect of that domain name. See, e.g., Scania CV AB (Publ) v. Autovuokraamo H Laurila Ky / Scandia Rent, WIPO Case No. D2013-0331.

As the Complainant demonstrates, neither Co-Respondent has any relationship with The Borgata, and the Complainant has neither authorized nor licensed either Co-Respondent to use any of the BORGATA Marks. Moreover, there is no indication that either Co-Respondent is commonly known by the disputed domain name, or that either is connected with the name “borgatapoker” in any other way beyond their registration of the disputed domain name. The Panel agrees with the reasoning in Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, Incorporated, WIPO Case No. D2001-0826, where the panel gave significant weight to the fact that “[t]he [r]espondent is not connected to the subject domain names either through its name or its business.”

On the evidence before it, the Panel can see no legitimate connection between the disputed domain name and the Co-Respondents’ businesses, if any. Accordingly, the Panel finds that the Complainant has demonstrated that neither Co-Respondent has any rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

(i) circumstances indicating that the Respondent has registered or 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 the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location, or of a product or service on the website or location.

In this case, the Panel finds that the Complainant has established that the Co-Respondents registered and are using the disputed domain name in bad faith.

First, the Panel is convinced that the Co-Respondents knew (or at the very least should have known) of the Complainant’s ownership of and legitimate interests in the BORGATA Mark. They nonetheless registered and are using a domain name wholly incorporating that Mark. Added to this is the fact that the disputed domain name currently resolves to a website providing links to, inter alia, the Complainant’s own services as well as those of its competitors. Taken together, these facts reduce to nil any likelihood that the

Co-Respondents registered this confusingly similar name by coincidence.

Second, it is just as clear that – with actual or constructive knowledge of the Complainant’s ownership of the BORGATA Marks – the Co-Respondents registered and used the disputed domain name intentionally to attract Internet users to a website replete with revenue-generating links to, inter alia, the Complainant’s competitors. As a result, the Complainant suffers injury, while the Co-Respondents generate revenue by trading off the former’s Mark. Such action falls squarely within the scenario envisioned by paragraph 4(b)(iv) of the Policy.

Third, the Panel further finds that, if not necessarily the primary purpose of registration within the meaning of paragraph 4(b)(i) of the Policy, the Co-Respondents’ public offer to sell the disputed domain name (displayed prominently on all sections of the parked website and on Sedo.com) constitutes corroborative evidence of their bad faith in registering the disputed domain name. In short, it effectively amounts to an admission that they have no real interest in using it.

On these grounds, the Panel concludes that the registration and use of the disputed domain name were done in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <borgatapoker.com> be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: July 3, 2013