DECISION

Societe Anonyme Des Eaux Minerales d' Evian v. Marques de Peralta

Claim Number:  FA0310000198913

PARTIES

Complainant is Societe Anonyme Des Eaux Minerales d'Evian, France (“Complainant”) represented by Jeffrey H. Kaufman, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street, Alexandria, VA  22314-3454.  Respondent is Marques de Peralta, calle 6 av 3 y 5, Cartago, Costa Rica (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eviancasino.com>, registered with Bulkregister.com, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 30, 2003; the Forum received a hard copy of the Complaint on October 1, 2003.

On October 2, 2003, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <eviancasino.com> is registered with Bulkregister.com, Inc., and that Respondent is the current registrant of the name. Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On October 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@eviancasino.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 29, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <eviancasino.com> domain name is confusingly similar to Complainant’s EVIAN mark.

2. Respondent does not have any rights or legitimate interests in the <eviancasino.com> domain name.

3. Respondent registered and used the <eviancasino.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds numerous marks for EVIAN registered with the United States Patent and Trademark Office (“USPTO”) and other countries (e.g. the Benelux, Switzerland, Spain, Italy, Sweden, and others).  Complainant has used the mark since 1981 in the U.S. and since 1960 in Europe.  Complainant uses the mark in relation to mineral water, liquor, clothing, cosmetics, as well as other trade and service marks incorporating the word mark EVIAN in international markets (e.g. Reg. No. 235956, Reg. No. 323720, Reg. No. 411912) and in the United States (e.g. Reg. No. 1,155,024, Reg. No. 1,778,995, Reg. No. 1,610,010, Reg. No. 2,711,967, Reg. No. (78/026,109), Reg. No. (76/314/100)).  Complainant has also registered EVIAN.COM with the USPTO.

Respondent registered the <eviancasino.com> domain name on March 22, 2000.  Respondent is using the disputed domain name to redirect Internet users to <theonlinebet.com>, an Internet gambling website.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the EVIAN mark through registration with the U.S. Patent and Trademark Office as well as through widespread and continuous use of the mark in commerce.

Respondent’s <eviancasino.com> domain name is confusingly similar to Complainant’s EVIAN mark. Complainant’s famous EVIAN mark is entirely incorporated into the disputed domain name, along with the generic word “casino.”  The dominant feature remains Complainant’s distinctive mark. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to Complainant’s mark); see also Arthur Guinness Son & Co. (Dublin) Ltd.  V. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

Accordingly, the Panel finds that the <eviancasino.com> domain name is confusingly similar to Complainant’s EVIAN mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent has not demonstrated anything that asserts rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that he has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the disputed domain name to divert Internet users to an Internet gambling website.  This type of use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(C)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(C)(iii).  See Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Respondent has not alleged that it is commonly known as EVIAN CASINO or <eviancasino.com>.  As a result, the Panel infers that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(C)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the disputed domain name to divert Internet users to <theonlinebet.com>, an online casino.  The Panel infers that Respondent is making a profit from the Internet traffic that is diverted to this website.  Respondent is therefore using a confusingly similar domain name to create Internet user confusion for its own commercial benefit, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant’s mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).

Furthermore, given the strength and fame of Complainant’s EVIAN mark, the Panel can infer that Respondent had actual knowledge of Complainant’s mark when it registered the <eviancasino.com> domain name.  Given the amount of Complainant’s foreign trademark and service mark registrations, the Panel can infer that a foreign Respondent would be aware of Complainant’s rights in the mark.   See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).  Registration of a domain name confusingly similar to Complainant’s mark, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <eviancasino.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  November 6, 2003

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