WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Media Communications, Inc. v. Kairo Management (Ireland) Limited

Case No. DIE2014-0003

1. The Parties

The Complainant is General Media Communications, Inc. of Boca Raton, Florida, United States of America (“US”), represented by FRKelly, Ireland.

The Registrant is Kairo Management (Ireland) Limited of Dublin, Ireland, represented by Eamonn Greene & Company, Ireland.

2. The Domain Name and Registrar

The disputed domain name <penthousecasino.ie> is registered with IE Domain Registry Limited (“IEDR”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2014 via email and on June 30, 2014 by courier. On June 23, 2014, the Center transmitted by email to IEDR a request for verification in connection with the disputed domain name. On the same day, IEDR transmitted by email to the Center its verification response confirming the Registrant as the registrant and providing contact details.

The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on July 4, 2014. The extended due date for Response was August 6, 2014. The Response was filed on August 5, 2014.

The Center appointed Adam Taylor as the sole panelist in this matter on August 20, 2014. 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

Since 1965 the Complainant, incorporated in the US, has published an international adult magazine under the name “Penthouse”.

The Complainant owns registered trade marks worldwide for PENTHOUSE including Irish trade mark No. 107214 registered on December 22, 1982 in class 16 and Community Trade Marks 4012027, 4481172 and 4588912, registered on November 11, 2005, August 8, 2006 and August 3, 2006 respectively, all in class 41. The Complainant also owns Community Trade Mark No. 9519844 for PENTHOUSE 3D registered on July 14, 2011 in classes 9,16,35,38 and 41 including “casino and nightclub services; gambling and gaming services” in class 41.

On March 5, 2012, the Registrant registered “Penthouse Casino and Card Club” as a business name in Ireland, with its address given as “Penthouse Unit Block B, Airside Leisure Scheme, Nevinstown, Swords Co. Dublin”.

The Registrant registered the disputed domain name on May 24, 2012.

5. Parties’ Contentions

A. Complainant

In summary, the Complaint contends as follows:

Identical or Misleadingly Similar

There are approximately 109,000 worldwide monthly subscribers to the Complainant’s magazine.

The Complainant also offers or licenses a wide range of other adult-related goods and services worldwide under its trade mark including broadcasting, videos/DVDs, an online store, merchandise, nightclubs, restaurants, lounges, hotels and 16 “gentlemen’s clubs”. The Complainant has approximately 33 licensees manufacturing 125 different products which are being sold in 50 countries worldwide.

The Complainant’s main website at “www.penthouse.com” attracts approximately 2.5 million visitors per month.

The Complainant promotes its goods and services in a wide range of media.

The Complainant’s trade mark has acquired enormous goodwill and reputation in its trade mark over the years.

The Complainant’s publications are accessed online by subscribers worldwide including in Ireland. Therefore the Complainant is commercially using its trade mark in Ireland.

The reputation and fame of the Complainant’s trade mark has been confirmed in various cases under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and by courts in Spain and Greece.

The Complainant has exclusive rights to its trade mark and the public associate it with the Complainant’s goods and services.

The disputed domain name fully incorporates the Complainant’s trade mark and is confusingly similar to it. The addition of a generic term does not distinguish the disputed domain name from the trade mark, particularly where the generic term refers to a service covered by the Complainant’s registered trade marks. The disputed domain name is likely to cause confusion and deception.

Rights in Law or Legitimate Interests

The Complainant has not authorised or licensed the Registrant to use its trade marks.

The normal English meaning of the word “penthouse” as defined in the Oxford English Dictionary is a flat on the top floor of a tall building, typically one that is luxuriously fitted, is not compatible with a “casino”, which is a business premises.

The disputed domain name does not correspond to the company name of the Registrant. The Registrant must have been aware of the fame of the Complainant’s mark. Any use by the Registrant of the disputed domain name must have been in the knowledge of the Complainant’s mark with the intention of taking advantage of its reputation of fame. It therefore cannot be a good faith offering of goods or services or operating of a business.

Any business operated at the disputed domain name would be designed and intended to attract consumers under the misapprehension that it is associated with the Complainant. Even if a consumer realised that there was no such association, the Registrant will have benefitted from initial interest confusion. This is analogous to the “disclaimer cases” under the UDRP.

None of the circumstances in paragraph 3 of the Policy demonstrating rights or legitimate interests exist.

Registered or Used in Bad Faith

The Complainant’s trade mark long predated the disputed domain name.

The Registrant’s registration and use of the disputed domain name infringes the Complainant’s registered trade marks.

The Registrant has intentionally attempted to attract Internet users to a website or other online location by creating confusion with the Complainant’s trade mark.

The disputed domain name is used in a way that is likely to dilute the reputation of the Complainant’s trade mark.

The use of the disputed domain name is in bad faith because of the Complainant’s fame; such use cannot establish rights or legitimate interests. Use of domain name that intentionally trades on the fame of another cannot constitute a bona fide offering. Bad faith can be inferred if the Registrant knew or should have known of the Complainant’s mark.

The Registrant must clearly have been aware of the Complainant’s trade mark because of its fame and must therefore be regarded as intentionally attempting to attract the Complainant’s customers through confusion with the disputed domain name.

Any use of the disputed domain name will dilute the Complainant’s reputation in its mark as that reputation has been proven to subsist under the UDRP and other authorities and the Complainant’s trade marks specifically include casino services. The ability of the Complainant’s marks to identify the Complainant as the source of its goods and services is weakened as use of the disputed domain name will lead to dispersion of the identity and “hold” on the public mind of the Complainant’s marks. That is particularly the case when the disputed domain name means that the Complainant’s marks are no longer capable of arousing immediate association with the goods and services for which they are registered.

B. Registrant

In summary, the Registrant contends as follows:

The Registrant registered the disputed domain name in good faith to advertise the “Penthouse Casino and Card Club” in Dublin. The Registrant was not aware of the Complainant’s registered trade marks.

The Registrant has been using the disputed domain name since it was registered with an average of 4,000 views per month. The Registrant has been commonly known by the disputed domain name since its registration.

The Registrant disagrees that it “must have known” of the Complainant.

The word “penthouse” is a generic term. The Registrant’s casino is in fact situated on the top floor of a tall building. The disputed domain name refers to the location of the casino which is in fact in a penthouse. The disputed domain name corresponds to a business run from that location, the “Penthouse Casino and Card Club”, Dublin, Ireland run by the “Penthouse Casino and Card Club”, established as a registered business name in Ireland.

Contrary to the Complainant’s claim that the disputed domain name was used intentionally to attract confused Internet users, had the Registrant been aware of the Complainant’s trade mark, it would not have gone to such “strident” efforts to register its business name in 2012.

The Registrant was not aware of the Complainant’s fame and so could not have acted in bad faith.

The disputed domain name was not registered to disrupt the Complainant’s business or cause confusion with it but purely in good faith to promote its own business.

It is incorrect to say that the Registrant used the Complainant’s trade mark because of its repute and fame. The Complainant is not well-known in Ireland. A Google search for the words “penthouse” and “ireland” brings up no reference to the Complainant. If the Complainant was famous, one would expect the Complainant’s trade mark to appear in such a search.

The Complainant delayed in bringing the Complaint, which indicates that it did not truly believe that the Registrant had engaged in bad faith registration. The Registrant was first made aware of the “trade mark dispute” on June 27, 2013, and by then had been using the disputed domain name for over one year.

C. Complainant’s Supplemental Filing

The gist of the Complainant’s supplemental filing insofar as admitted (see below) is as follows.

A photograph shows that the Registrant’s business is situated in a low-rise commercial building and not a tall residential building for which the word “penthouse” might be appropriate as per the dictionary definition provided in the Complaint. This highlights the inaccuracy and misleading nature of the Registrant’s claims.

The Complainant wrote to the Registrant as soon as it became aware of the existence of the disputed domain name. This action was followed promptly by the institution of the Complaint once it became clear that the matter would not be resolved otherwise. There has been no delay at all on the part of the Complainant. Notwithstanding this, delay is not a ground for rejection of the Complaint.

6. Discussion and Findings

The Panel notes that the Policy is similar in many respects to the UDRP and therefore, to the extent applicable to the Policy, the Panel considers it appropriate to refer to authorities concerning the UDRP including the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

A. Supplemental Filing

The Complainant has made an unsolicited supplemental filing.

Paragraphs 9 and 11 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 9.4 states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Paragraph 11 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”

The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the UDRP. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

The Panel has decided to admit the supplemental filing insofar as it replies to the Registrant’s assertion that its business premises are located in a “penthouse” and in relation to the issue of delay. The Panel declines to admit the remainder of the filing, which is principally concerned with rejection of the Registrant’s claim that it was unaware of the Complainant’s trade mark when it selected the business name / disputed domain name. In the Panel’s view, at the time of filing its Complaint, the Complainant cannot have been unaware that the extent of the Registrant’s knowledge of the Complainant’s trade mark was likely to be an issue in the case and this point was indeed addressed to some degree in the Complaint.

The Panel would add, however, that the disallowed material in the supplemental filing would have made no difference to the outcome of this case.

B. Identical or Misleadingly Similar

The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.

Under paragraph 1.3.1 of the Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.

The Complainant’s Irish trade mark and Community trade marks for the word PENTHOUSE constitute “protected identifiers” as they are trade marks protected in the island of Ireland.

Paragraph 1.9 of WIPO Overview 2.0 states that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.

Here, the Complainant’s trade mark is undoubtedly the dominant component of the disputed domain name and, as indicated in paragraph 1.9 of WIPO Overview 2.0, the addition of the descriptive term “casino” is insufficient to avert a finding of misleading similarity.

Accordingly, the Panel concludes that, disregarding the country-code Top-Level Domain (ccTLD) suffix “.ie”, the disputed domain name is misleadingly similar to a protected identifier in which the Complainant has rights.

C. Rights in Law or Legitimate Interests

The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights in law or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006-0001.

Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests including, in paragraph 3.1.1, where the Registrant can demonstrate that, before being put on notice of the Complainant’s interest in the disputed domain name, it has made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business.

While the Complainant’s pre-action letter to the Registrant has not been produced by either party, the Complainant says that the Complaint was filed promptly following that letter and so the Panel infers that the Registrant was only put on notice of the Complainant’s interest in the disputed domain name relatively soon before the Complaint was filed on June 20, 2014.

The Registrant claims that it registered the disputed domain name on May 24, 2012, to promote its business known as the “Penthouse Casino and Card Club”, which it had previously registered as a business name on March 5, 2012.

The Complaint does not specifically mention the Registrant’s business and the Registrant has supplied little detail, let alone supporting evidence, concerning this business.

Paragraph 4.5 of WIPO Overview 2.0 expresses the consensus view that UDRP panels may undertake limited factual research into matters of public record including visiting the website linked to the disputed domain name. Accordingly, the Panel visited the website at the disputed domain name on September 15, 2014, which had not been referred to or exhibited by either party. The website is prominently branded “Penthouse Casino & Card Club” and contains much detail about the services on offer at the casino of this name including a “virtual tour” as well as the casino’s address, a map and directions.

Furthermore, the Complainant has exhibited to its supplemental filing a Google Maps photograph of the Registrant’s premises. This shows a building, the front section of which is curved in glass, three storeys high, with a large sign for “Penthouse Casino & Card Club” running along the entire top storey. The sign includes the Registrant’s name “Kairo” as well as “www.penthousecasino.ie”. There are also extensive poster displays for the business visible on the ground floor of the front part of the premises and a vertical sign for the business running down the top three storeys of an adjacent five-storey section of the building.

The Panel is therefore satisfied the Registrant is indeed operating an actual casino at a physical location in Ireland called “Penthouse Casino & Card Club” and that it is using the disputed domain name to promote this business.

Can it nonetheless be said that the Registrant’s use of a name for its business including the word “Penthouse” was not in “good faith” in accordance with paragraph 3.1.1 of the Policy? The Registrant specifically denies any knowledge of the Complainant’s registered trade marks when it chose its business name. It appears that the Registrant also denies knowledge of the existence of the Complainant at the time – although this is not entirely clear.

The Complainant refers to the fame of its trade mark. It invokes various UDRP decisions as well as decisions by Spanish and Greek courts. The Registrant counters that the Complainant is not well-known in Ireland and exhibits to the Response the first page of a Google search for the words “penthouse ireland” (not an exact phrase in quotes) which consists exclusively of results relating to apartments and hotels; there is no mention of the Complainant. Indeed one difficulty for the Complainant is that there is no detail, let alone supporting evidence, as to the extent of its reputation, if any, in Ireland, where the Registrant and its casino are located. All that the Complainant says on this subject is that its publications are accessed online by subscribers worldwide including in Ireland.

Nor is there any detail or evidence as to any actual involvement by the Complainant or its licensees in casino-related activities. Here, the Complainant relies entirely on the fact that its Community trade mark for PENTHOUSE 3D includes “casino and nightclub services; gambling and gaming services”, amongst a very long and diverse list of goods and services.

The Registrant explains that the selection of “Penthouse” as part of its business name was connected with the generic nature of that term, given that the casino is in fact situated on the top floor of a tall building. The Complainant’s response is that the casino is located in a low-rise commercial building and not in a tall residential building for which the word “penthouse” might be appropriate as per the dictionary definition of the term — namely a flat on the top floor of a tall building, typically one that is luxuriously fitted.

However, in the Panel’s view, what is relevant here is not whether the Registrant is using the term strictly in accordance with its dictionary meaning but rather whether it is credible that the Registrant in fact selected it in connection with that meaning without intent to capitalise on the Complainant’s reputation (whether or not it was aware of the Complainant when it selected the name). The Panel can see why a business, especially a casino, which is located on the top floor of a building, albeit not a particularly tall or luxurious one, may nonetheless wish to associate itself with the term “penthouse” and the exclusivity and luxury that this word denotes. Furthermore, the Registrant’s registered address indicates that, aside from its business name, its premises are in fact known as the “Penthouse Unit Block B”.

So in short, the Registrant is using the disputed domain name for its pre-existing business within an industry where, on the limited record before the Panel, there is no evidence of actual involvement by the Complainant – the position would be very different if say the Registrant offered some sort of adult services – and where the Registrant has put forward what on the face of it is in this Panel’s view a reasonably credible explanation for selection and use of the term “penthouse” by reference to its generic meaning. While a court may be able to test the veracity of the Registrant’s claim that it selected its name independently of the Complainant, the Panel under this Policy proceeding finds the Registrant’s claim to at least carry sufficient weight to rebut the Complainant’s prima facie case. There is no suggestion by the Complainant that the Registrant has, say, copied any aspect of the Complainant’s branding or otherwise set out to associate itself with the Complainant.

In these circumstances, based on all the evidence before it, the Panel is not satisfied that the Complainant has met its burden of showing that the Registrant intentionally traded on the fame of the Complainant’s trade marks as the Complainant claims, or that the Registrant has no rights in law or legitimate interests in the disputed domain name.

The Panel would add that, as explained above, the disputed domain name is really part of a wider dispute relating to the Registrant’s operation of a casino under the name “Penthouse Casino & Card Club”, which is probably best resolved by a court with the benefit of the tools of litigation such as disclosure of documents, cross-examination of witnesses etc., which are not available in this limited proceeding.

It is also worth noting that, although this has been asserted by the Complainant, it is not the Panel’s role to assess whether or not the Complainant’s trade marks have been infringed. Again, these are matters for a court. The Panel is purely concerned with whether or not the relevant conditions in paragraph 1.1 of the Policy have been satisfied. For the reasons explained above, the Panel concludes that the second condition in paragraph 1.1 has not been satisfied.

D. Registered or Used in Bad Faith

The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.

In view of the Panel’s finding regarding the second condition, it is unnecessary to reach any conclusion on this factor. However, in the circumstances of this case, this aspect overlaps with the second condition and it is likely that the Complainant would have failed to establish this condition under the Policy also for similar reasons to those set out above. As explained above, these are matters which are probably better suited for determination by a court of competent jurisdiction.

7. Decision

For the foregoing reasons, the Complaint is denied.

Adam Taylor
Sole Panelist
Dated: September 16, 2014