WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Pala Band of Mission Indians DBA Pala Casino v. Admin
Case No. D2015-2332
1. The Parties
The Complainant is The Pala Band of Mission Indians DBA Pala Casino of Pala, California, United States of America ("United States"), represented by Morriss O'Bryant Compagni, P.C., United States.
The Respondent is Admin of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <paladine.com> is registered with Gabia, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 21, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
On December 30, 2015, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Name was Korean. On the same day, the Respondent requested for Korean to be the language of the proceeding, and the Complainant requested for English to be the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2016. The Respondent submitted an email communication to the Center on February 1, 2016.
The Center appointed Moonchul Chang as the sole panelist in this matter on February 26, 2016. 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 the owner of the trademark PALA and numerous trademarks in the United States that include the term "pala". Since September 2000 the Complainant has used the PALA mark in connection with the casino and gaming industry and in connection with other goods and services.
The Complainant has also registered many domain names containing the PALA mark such as <palacasino.com> and <palacasino.net>.
The disputed domain name <paladine.com> was registered on July 8, 2012 and was updated on July 4, 2015 according to the publicly available WhoIs information.
5. Parties' Contentions
The Complainant contends that:
(1) The disputed domain name <paladine.com> is confusingly similar to the Complainant's PALA mark. The disputed domain name consists of the Complainant's PALA mark and the additional word "dine" which is related to the Complainant's restaurant, banquet and hotel casino business.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. He appears to use the disputed domain names for a "placeholder" website. The disputed domain name is merely "parked". No evidence indicates that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or is commonly known by the dispute domain name.
(3) The disputed domain name has been registered and is being used by the Respondent in bad faith. Firstly, since the Respondent is not licensed to use the Complainant's trademark, it can be concluded that the Respondent's sole purpose was to divert business away from the Complainant by obtaining domain name registration. Secondly, although the Respondent had an obligation to refrain from registering and using a domain name that infringes the Complainant's rights, he failed to do so. This is evidence of bad faith under the Policy. Thirdly, the Respondent registered the dispute domain name for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of out-of-pocket costs.
The Respondent did not reply to the Complainant's contentions although in communication with the Center he objected to the administrative proceedings in English and asserted that the Complaint does not have a trademark in the term "paladine" and otherwise does not satisfy the criteria under the Policy.
6. Discussion and Findings
A. Language of Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise.
In this present case the Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Korean. However the Complaint was filed in English. The Complainant requests that the language of proceeding be English for the following reasons: (i) all the content displayed by the Respondent on the resolving website is in English; (ii) the auction service on the website used by the Respondent in its attempts to sell the disputed domain name is in English; and (iii) the Respondent communicates in English through the auction services. On the other hand in the communication with the Center the Respondent objected to the proceedings in English, states that he does not know English, and requested to proceed in Korean.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties' level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case (see Tumblr, Inc. v. Kenny Kim, WIPO Case No. D2013-0440).
B. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant's PALA mark in its entirety with the addition of "dine". The dominant feature of the disputed domain name is "pala" which is identical to the PALA trademark and the word "dine" is a generic term or only a descriptive suffix. Numerous UDRP panels have held that where a domain name substantially incorporates a complainant's trademark, this is sufficient to find the domain name "confusingly similar" within the meaning of the Policy (see Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678). The generic Top-Level Domain ("gTLD") suffix ".com" or ".net" can be generally disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653).
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on complainants. However, once a complainant presents a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show its rights or legitimate interests. If the respondent fails to come forth asserting any right or legitimate interest, the complainant is considered to have satisfied its burden (see Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Firstly, the Complainant has never licensed or authorized the Respondent to use the PALA trademark or to register any domain names incorporating the PALA mark. The Respondent has used the Complainant's widely known registered PALA mark without permission from the Complainant.
Secondly, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In this present case, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut the Complainant's prima facie case.
Thirdly, there is no evidence presented to the Panel that the Respondent has used, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain names. In addition, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name "has been registered and is being used in bad faith". As this requirement is conjunctive, a complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since the disputed domain name entirely incorporates the PALA mark, in this Panel's view it is highly unlikely that the Respondent was unaware of the Complainant's trademark at the time of the registration of the disputed domain name.
Secondly, the Respondent's disputed domain name is offered for sale on a website that provides an auction service for domain names. When the Complainant contacted the Respondent through the auction service and offered USD 1,000 to buy the disputed domain name, the auction service indicated that the average price on the service is in the thousands of dollars. It is considered that the Respondent deliberately chose to register the disputed domain name to sell the domain name to the Complainant for consideration in excess of out-of-pocket costs, in line with paragraph 4(b)(i) of the Policy.
Finally, the disputed domain name resolves to a website with sponsored links. The Respondent presumably earns click-through revenue while attracting users to its website by creating confusion with the Complainant's mark. Such a use is consistent with bad faith use under paragraph 4(b)(iv) of the Policy.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been established with respect to the disputed domain name.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
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 <paladine.com> be transferred to the Complainant.
Date: March 21, 2016