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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Stanworth Development Limited v. Dotster, Inc.

Case No. D2008-0367

 

1. The Parties

The Complainant is Stanworth Development Limited, Isle of Man, of United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.

The Respondent is Dotster, Inc., Vancouver, Washington, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <redriverbellecasino.com> is registered with Secura GmbH.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2008. On March 10, 2008, the Center transmitted by email to Secura GmbH a request for registrar verification in connection with the domain name at issue. On March 17, 2008, Secura GmbH 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”), 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”).

On April 22, 2008, the Center transmitted by email to Secura GmbH a request in connection with Paragraph 3.7.5.7. of the ICANN Expired Domain Deletion Policy. On April 22, 2008, Secura GmbH transmitted by email to the Center its confirmation to place and to keep the domain name under Registrar LOCK status. On April 22, 2008, the Center transmitted by email to the Complainant a notification regarding the communications exchanged with Secura GmbH.

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 March 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2008.

The Center appointed Luca Barbero as the sole panelist in this matter on May 2, 2008. 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 a number of pending and registered trade marks consisting of or incorporating the words “River Belle” in various jurisdictions including Australia, Canada, the European Union, the United Kingdom, and the United States of America in class 41 covering entertainment services, namely, providing on-line games of chance, games of skill and casino-style gaming services rendered on-line.

The Complainant is also owner of a number of domain names consisting of or incorporating the words “River Belle”.

The Respondent registered the domain name <redriverbellecasino.com> on December 30, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant points out that its trade marks are used i.a through its licensee Carmen Media Group Limited.

The Complainant states that its licensee operates under the RIVER BELLE trade mark an online gaming site, all benefits arising out of the use of the trade marks by the Licensee inures to the benefit of the Complainant.

The Complainant emphasizes that the gaming site, “www.riverbelle.com”, was conceptualised in August 1997 and officially launched in December 1997. The Complainant contends that the “www.riverbelle.com” gaming site has established itself as one of the most highly recognized online gaming brands currently available.

The Complainant informs the Panel that the “www.riverbelle.com” gaming site receives in the region of 250 000 (two hundred and fifty thousand) visitors and facilitates over 25, 000 (twenty five thousand) software downloads each month. In addition, many thousands of registered players regularly make use of the <riverbelle.com> gaming site with a substantial portion being active on the site at any given time. An amount in excess of US$50,000.00 (fifty thousand US Dollars) per month is spent on various advertising, marketing and other promotional activities, including banner listings on portal sites and search engines, direct mailing campaigns, affiliate programs, print ads, TV commercials and infomercials.

The Complainant asserts that the RIVER BELLE trade mark is very well known in relation to the provision of on-line games of chance and casino-style gaming services and that the words “River Belle” serve as a unique and distinctive element, which element is a determinative and well-known designation of source for the Complainant’s online casino and gaming related services.

The Complainant states that the disputed domain name combines the Complainant’s entire distinctive RIVER BELLE trade mark with a second term “red”, which is non-distinctive and descriptive. In view of the Complainant, the inclusion of the word “red” still yields a domain name that is a visual equivalent to the Complainant’s RIVER BELLE mark. The Complainant infers from the above that the contested domain name is confusingly similar to the trademark RIVER BELLE.

The Complainant contends that there is a substantial likelihood between the disputed domain name and the trade mark THE RIVER BELLE ONLINE CASINO trade mark. The Complainant asserts that Internet users will be confused into believing that there is some affiliation, connection, sponsorship, approval or association between the Complainant and the Respondent, when in fact, there is no such relationship.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the contested domain name is passively held since its registration and that such passive use does not constitute a legitimate non-commercial or fair use without any intent to misleadingly divert consumers or tarnish the trademark or service mark at issue.

The Complainant states that the Respondent has no connection or affiliation with the Complainant or the Licensee, and has not received any license or consent, express or implied, to use the Complainant’s RIVER BELLE mark, or marks confusingly similar to this mark, in a domain name or in any manner whatsoever.

The Complainant underlines that there is no evidence whatsoever that the Respondent has been commonly known by the disputed domain name, and that the Respondent has not acquired any trade mark or service mark rights in and to the disputed domain name.

With reference to the circumstances evidencing bad faith the Complainant indicates that the RIVER BELLE trade mark is well known in relation to gaming and casino services, especially if one considers that the Complainant’s “www.riverbelle.com” gaming site has been in operation since at least late 1997.

The Complainant asserts that it is therefore highly unlikely that the Respondent just happened to unintentionally select the Complainant’s distinctive RIVER BELLE trade marks and inadvertently incorporate them into its selected domain name.

The Complainant states that it is most likely that the Respondent was fully aware of the Complainant’s RIVER BELLE trade mark rights and its reputation in the gaming and casino industry when registering the disputed domain name.

The Complainant asserts that the registration of the disputed domain name occurred nearly seven years subsequent to the Complainant commencing operation of its “www.riverbelle.com” gaming site and subsequent to the success of the Complainant’s River Belle goods and services.

The Complainant states that there is no prominently displayed disclaimer on the Respondent’s website, permitting Internet users to know the precise relationship, if any, between the Respondent and the Complainant.

The Complainant underlines that the disputed domain name is not the only name which the Respondent can use to describe its business and the Respondent could have used any number of other domain names to describe its business.

As an additional circumstance evidencing bad faith in the use of the domain name, the Complainant highlights that the Respondent has not responded to the Complainant’s cease-and-desist letter thus adopting by silence the material allegations made by the Complainant regarding the Respondent’s bad faith registration and use of the domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain name registered by the Respondent is identical or confusingly similar to a trade mark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trade mark registration consisting in or comprising the RIVER BELLE.

The Panel finds that the disputed domain name is confusingly similar to the trade marks owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy the addition of descriptive terms to a trademark is not a distinguishing feature.

Therefore, the mere addition of the words “red” and “casino” does not exclude the likelihood of confusion between the domain name and the Complainant’s trade mark.

It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronics” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “music”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Web site Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark).

More in particular, the word “casino” should be regarded along the lines of the interpretation adopted in all the prior decisions mentioned above especially as it is likely to increase the likelihood of confusion in the context of the online games.

Indeed the word “casino” is descriptive of Complainant’s business See, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Microsoft Corp. v. StepWeb, WIPO Case No. D2000-1500.

The Panel concurs with the views expressed in Stanworth Development Limited v. Michael Gordon, WIPO Case No. D2007-1227 involving the same Complainant where the panel found that “the domain name <riverbellecasiino.com> is almost identical, and is confusingly similar to Complainant’s mark, RIVER BELLE, adding only a misspelling of the generic term “casino,” which describes Complainant’s services. The result is a domain name that is distinctly suggestive of Complainant’s “casino” services, linked with Complainant’s RIVER BELLE mark. It also is apparently derivative of Complainant’s RIVER BELLE ONLINE CASINO mark.”

See along these lines Stanworth Development Limited v. Kaneoka Senuchi, WIPO Case No. D2005-0703, Stanworth Development Limited v. 3748431 Canada Inc., WIPO Case No. D2005-0655 and Stanworth Development Limited v. Michael Rand, WIPO Case No. D2008-0158 where thepanel found that “the Respondent’s Domain Name <riverbellecasin.com> contains the Complainant’s trade mark RIVER BELLE in toto and the suffix “casin”. Taking into account that the suffix is an obvious misspelling of the word “casino”, the suffix does not only not prevent consumer confusion but is on the contrary suggestive of the services that the trademark is registered for (gaming services)”.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, it is sufficient that the Complainant shows prima facie case in order to shift the burden of proof on the Respondent. If a respondent fails to demonstrate rights and legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Met America Mortgage Bankers v. Whois ID Theft Protection, NAF Case No. 852581).

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.

Indeed there is no relation, disclosed to the Panel or otherwise apparent, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trade marks and name under any circumstance and to sell Complainant’s products.

Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the domain name in connection with a bona fide offering of goods or services or intends to make a legitimate, non-commercial or fair use of the domain name.

The Panel notes that the domain name is passively held. In view of the Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483 where the Panel found that “Absent some contrary evidence from Respondent, passive holding of a domain name does not constitute “legitimate non-commercial or fair use. See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195 (October 26, 2000) (noting that respondent was a passive holder of the disputed domain name <crateandbarrel.org> in that “the domain name does not resolve to a site” and ruling that, “[g]iven that the domain name has been registered since mid-March, 2000, it is fair to infer that the Respondent has not made, nor taken any preparatory steps to make,” any legitimate use of the domain name); Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672 (September 29, 2000) (finding that the complainant made the requisite showing under paragraph 4(a)(ii) where complainant argued that the domain name at issue had no value to the respondent apart from the goodwill and reputation associated with complainant’s mark).”

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

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

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

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or

(v) service on the holder’s website or location.

As to bad faith at the time of the registration the Panel notes that in light of the intense use of the trademark since 1997 and of the fact that the trade mark is being widely publicized globally and constantly featured throughout the Internet, the Respondent was well aware of the Complainant’s trade marks.

As in Gateway, Inc. v. Lorna Kang WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trade marks. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

With reference to the issue of the non use of the domain name by Respondent, the Panel finds that in this case the “passive holding” infers bad faith. As also established in a number of prior cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In Nike, Inc. v. Crystal International, WIPO Case No. D2002-0352 as well as in y other decisions, it was held that non-use as such does not determine bad faith. But the non-use for a long time of the domain name while the trade mark RIVER BELLE has been widely publicized globally and constantly featured throughout the Internet since 1997, is certainly evidence of bad faith (see among others, Banco Santander Central Hispano S.A. v. Taiwan Motorbikes Netherland BV Panamб, WIPO Case No. D2002-0192, “The non use for six months by the Respondent could be considered an element of bad faith, but it has to be preceded by the bad faith registration as that is presently required by the Policy”).

In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787. Any such bad faith is compounded when the domain name owner upon receipt of notice that the domain name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”

In view of the above, the Panel finds that the domain name was registered and is being used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <redriverbellecasino.com>, be transferred to the Complainant.

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Luca Barbero
Sole Panelist

Dated: May 14, 2008