WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
San Manuel Band of Mission Indians v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2018-2640
1. The Parties
The Complainant is San Manuel Band of Mission Indians of Highland, California, United States of America (“United States”), represented by Dentons US LLP, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <sanmanuelcasino.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2018. On November 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2018, 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.
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 November 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on January 2, 2019. 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 tribe of Serrano people, recognized by the federal government of the United States as an indigenous people of the United States State of California. The San Manuel Reservation, home to the Yuhaaviatam Clan of the Serrano Indians, was established in 1891.
The Complainant owns and operates a number of business enterprises including a casino which was established in 1986. This was initially named San Manuel Indian Bingo and Casino, but, more recently, has generally been known as the San Manuel Casino. The San Manuel Casino attracts over 8.3 million guests each year to its dining facilities and has over 4,700 gaming machines as well as the largest slot-machine floor on the west coast of the United States.
The Complainant has an active presence on social media and is also the owner of United States Service Mark, Registration No. 5,407,685, registered on February 20, 2018, for SAN MANUEL CASINO in International Classes 41 (including casinos, gambling and associated services) and 43 (including restaurant, bar and associated services).
The Complainant conducts governmental affairs and its commercial enterprises under the San Manuel name with two differently styled logos, the wording on one logo being San Manuel Band of Mission Indians and the other being San Manuel Casino.
The Complainant has maintained an Internet presence since December 1995 when it registered the domain name <sanmanuel.com>. Screen prints from the Wayback Machine Internet archive show that, as at December 23, 1996, the home page of the website to which the domain name <sanmanuel.com> resolved took the form of a page which prominently promoted “SAN MANUEL INDIAN BINGO & CASINO” in conjunction with a claim that “Since 1986 San Manuel has been the premier gaming establishment in the Inland Empire” (the Inland Empire being a metropolitan area and region within the Greater Los Angeles combined statistical metropolitan area in Southern California). The home page of the Complainant’s website took essentially the same form in the period 1997-2000. From 2001, the home page was slightly more elaborate but featured the same underlying claim. The Complainant has since registered additional domain names which resolve to websites associated with its various operations, including <sanmanuelcasino.biz> and <sanmanuelcasino.poker>.
The disputed domain name was registered on May 10, 2003. As at 2018, it resolved to a directory page containing pay-per-click links to services including “San Manuel Casino”, “Free Online Casino”, and “Casino Fun”. Clicking on these links takes the Internet user to a variety of online gaming websites as well as to a website for a physical gaming entertainment destination.
5. Parties’ Contentions
The Complainant says that the dispute domain name is identical or confusingly similar to a trade mark or service mark in which it has rights.
The generic Top-Level Domain (“gTLD”) component of the disputed domain name, that is “.com”, is without legal significance. The Complainant’s SAN MANUEL CASINO service mark, details of which are set out above, and its long history of trading as SAN MANUEL CASINO provide the Complainant with both registered and unregistered trade mark rights in this mark. The disputed domain name comprises the entire registered service mark with no distinguishing features between the disputed domain name and the mark.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not, and never has been, a licensee or business associate of the Complainant, nor is it otherwise authorized by the Complainant to use its SAN MANUEL CASINO service mark. The Respondent is using the disputed domain name to redirect users searching for the Complainant’s SAN MANUEL CASINO website to pay-per-click affiliate links.
The Respondent has no interest in the SAN MANUEL CASINO mark other than reaping commercial gain from misleading customers and potential customers seeking the Complainant’s website and diverting them to the Respondent’s website, thereby enabling it to profit from consumer confusion. The Respondent is accordingly falsely suggesting that the Complainant is the sponsor, affiliate, endorser of the website at the disputed domain name. See the decisions of the panels in Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 and Lardi Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1437, which provide support for the argument that the Respondent’s use of the disputed domain name cannot be considered bona fide, nor a fair, nor a noncommercial, use of it.
Lastly, the Complainant says that the disputed domain name was registered and used by the Respondent in bad faith. The Respondent is likely to have been aware of the Complainant’s SAN MANUEL CASINO mark because it is established and well known and the Respondent could easily have found it through an Internet search. The Respondent is deliberately using the disputed domain name to create confusion and to mislead customers and potential customers of the Complainant and the public into falsely believing that a relationship of source, sponsorship, affiliation or endorsement exists between the Complainant and the website located at the disputed domain name. The website to which the disputed domain name resolves promotes affiliate links and monetizes the disputed domain name to redirect users searching for the Complainant’s SAN MANUEL CASINO website, that is the Respondent is intentionally attempting to use the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s SAN MANUEL CASINO service mark. As is evident from, by way of example, the decision of the panel in Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437, this comprises bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its service mark registration for SAN MANUEL CASINO. As explained at section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
When considering whether a domain name is identical or confusingly similar to a complainant’s service mark, it is established practice to disregard the gTLD, that is “.com” in the case of the disputed domain name, as it is a technical requirement of registration. The disputed domain name therefore comprises the entirety of the Complainant’s SAN MANUEL CASINO service mark without alteration or addition.
The Panel therefore finds that the disputed domain name is identical to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The circumstances of the Respondent’ use of the disputed domain name fall outside the scope of paragraph 4(c)(i) of the Policy. As explained at section 2.9 of the WIPO Overview 3.0 , panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links, as is the case here, compete with, or capitalise upon the reputation and goodwill of a complainant’s trade marks. See, by way of example, the decision of the panel in Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302.
Paragraph 4(c)(ii) of the Policy is inapplicable; there is no evidence that the Respondent has been commonly known by the disputed domain name. Paragraph 4(c)(iii) of the Policy is also inapplicable; the Respondent’s use of the disputed domain name is intended to be for commercial gain and to misleadingly divert Internet users seeking the Complainant’s services to websites from which it derives pay-per-click revenue or commission.
Section 2.1 of the WIPO Overview 3.0 explains that the consensus view of panellists is that, “while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
In the absence of any evidence from the Respondent in an attempt to satisfy the burden of production referred to above, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s service mark for SAN MANUEL CASINO was registered in February 2018, many years after the registration of the disputed domain name in May 2003. For the purpose of considering whether the disputed domain name was registered in bad faith, it is necessary to consider the extent of the Complainant’s use of the term “San Manuel Casino” (alternatively “San Manuel Indian Bingo & Casino”) as at the date of the registration of the disputed domain name. Note that, for the purpose of considering this element of the Policy, the Panel does not regard the difference in the trading styles referenced above as of significance as both incorporate the most material elements, namely “SAN MANUEL” and “CASINO”. Moreover, “San Manuel Casino” is a natural contraction of “San Manuel Indian Bingo & Casino”.
The Complaint states that San Manuel Indian Bingo & Casino was established in 1986 and asserts that “in view of the success of the San Manuel Casino, the Complainant has acquired a substantial reputation in connection with…gaming services and employment opportunities and the registered mark SAN MANUEL CASINO”.
The Complainant has submitted archived screenshots of the website to which the Complainant’s <sanmanuel.com> domain name resolved, which establish that, from 1996 and for many years afterwards, it featured a claim on its home page to the effect that the San Manuel Indian Bingo & Casino was “the premier gaming establishment in the Inland Empire”.
The Panel considers that the Complainant will have accrued at least some degree of repute in its San Manuel Indian Bingo & Casino brand as at 2003, having been operating its casino for approximately seventeen years by that point.
Moreover, it is, on a balance of probabilities, appreciably more likely than not, that the disputed domain name was registered by the Respondent as a result of its awareness of the Complainant’s reputation and activity and in order to take advantage of it. The likelihood that the Respondent chose to register a domain name comprising the name SAN MANUEL CASINO by happenstance and without any knowledge of the Complainant’s casino operations, is remote and, in itself, points to some degree of the Respondent’s awareness of the SAN MANUEL INDIAN BINGO & CASINO brand as at 2003. This is particularly the case when the only known use to which the disputed domain name has been put is to point to a page hosting pay-per-click links (related to casinos and gambling), which suggests that the Respondent did not have any other use in mind for the disputed domain name as at the date of registration.
In addition, the failure of the Respondent to respond to the Complaint further indicates that it does not have a positive case which might rebut the Complainant’s assertions.
The Panel therefore finds that the disputed domain name was registered for the purpose to which it has been put, namely to resolve to a directory page hosting pay-per-click links which, at present, include links to leisure and gaming services which compete with those offered by the Complainant.
Whilst the use of a domain name to point to parking pages hosting pay-per-click sponsored links is not inherently objectionable, it has been well established in previous decisions under the Policy that such conduct can constitute bad faith use, particularly if the combination of the characteristics of a domain name and the nature of the links on the website to which it points are intended to mislead Internet users. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.
The facts point to the Respondent having used the disputed domain name in circumstances similar to those outlined in Yahoo! Inc. v. Hildegard Gruener, supra. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
Lastly, the Panel has regard to the fact that the identity of the underlying Respondent is protected by a privacy service which, as explained at section 3.6 of the WIPO Overview 3.0, can be a factor indicative of bad faith.
The Panel therefore finds that the disputed domain name was registered and is being 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 <sanmanuelcasino.com> be transferred to the Complainant.
Date: January 16, 2019