DECISION

Rolling Stone LLC v. Robbins Carnegie Inc.

Claim Number: FA0408000318048

PARTIES

Complainant is Rolling Stone LLC (“Complainant”), represented by Benton J. Gaffney, of Davis Wright Tremaine LLP, 1501 Fourth Ave, Suite 2600, Seattle, WA 98101.  Respondent is Robbins Carnegie Inc. (“Respondent”), represented by Michael Williamson, of Polsinelli Shalton Welte Suelthaus, P.C., 700 West 47th Street, Suite 1000, Kansas City, MO 64112.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <rollingstonecasino.com> and <rscasino.com>, registered with Network Solutions, Inc. (“the disputed domain names”).

PANEL

The undersigned, David H Tatham, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 24, 2004; the Forum received a hard copy of the Complaint on August 26, 2004.

On August 27, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <rollingstonecasino.com> and <rscasino.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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”) and Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).

On September 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 21, 2004 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@rollingstonecasino.com and postmaster@rscasino.com by e-mail.

A timely Response was received and determined to be complete on September 21, 2004.

On September 24, 2004 Complainant filed an Additional Written Statement which was deemed by the Forum to be timely and admissible under Supplemental Rule 7.

On September 29, 2004 Respondent filed a Response to this Additional Written Statement which was also deemed by the Forum to be timely and admissible under Supplemental Rule 7.

On September 30, 2004 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.

RELIEF SOUGHT

Complainant requests that both of the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Trade Marks

Complainant supplied copies of its four US trademark registrations: ‘ROLLING STONE’ No. 1 574 947, for “entertainment magazine”; ‘RollingStone’ (stylized) No. 1 588 810, for “entertainment magazine”; ‘RollingStone.com’ (stylized) No. 2 163 640, for “providing an online magazine and providing information online in the fields of popular culture, politics, and music via computer bulletin boards, databases and interactive databases”; and ‘RollingStone’ (stylized) No. 2 726 171 for “backpacks and carrying storage cases for CDs, cassette tapes, mini-discs and CD players”. The first three of these were stated to be incontestable.

Complainant also alleged that it had acquired common law rights in the United States in the trademark ROLLINGSTONE based on its use of the mark in connection with magazines, television and radio programming, hats, sunglasses, t-shirts and other apparel, posters, books, distribution of information and music over the Internet, calendars, beer, sweepstakes and producing concert events.

Complainant further alleged that it had acquired common-law rights in the United States in the mark RS based on its use of the mark in connection with magazines, and the distribution of information and music over the Internet.

Complainant also has forty-five trademark registrations for the trademark ROLLINGSTONE in countries other than the USA registered either as one word or two, and either typed or in a stylized format. Brief details of these marks were supplied.

Complainant is the publisher of RollingStone magazine, an internationally renowned publication that has chronicled the music industry since the magazine’s launch in 1967, and which has won numerous awards over the years. Generations of readers are said to have loved RollingStone magazine for its style, wit and coverage of music, entertainment celebrities, pop culture, and politics. RollingStone magazine regularly publishes works by many of the world's famous journalists and photographers, and numerous celebrities, musicians, and politicians have apparently graced its pages over the years.

Over 1,250,000 copies of RollingStone magazine are distributed every two weeks in the United States and Canada. A copy of an Audit Bureau of Circulations report for the period from June through December 2003 was filed, which showed that RollingStone had a monthly average of 1 128 731 individual subscribers and a monthly average of 159 593 single copy sales. Approximately 18 000 copies are distributed every two weeks internationally in over thirty-five other countries. Complainant also publishes international editions of its magazine in Australia, New Zealand, Germany, Austria, Switzerland, all of Spanish-speaking South America, Mexico Spain, France, Belgium, Italy, and Russia so the magazine has enjoyed an extremely broad geographic distribution for many years.

In addition to its extensive use of the ROLLINGSTONE mark in connection with its magazine, Complainant uses its trademark (directly and through carefully selected licensees) on a wide variety of other goods and services such as: hats, sport sunglasses, backpacks, t-shirts and other items of apparel. Complainant has also provided various entertainment services, such as through its sponsorship of numerous sweepstakes, concert events, and parties that prominently featured the ROLLINGSTONE mark, as well as materials other than magazines, including calendars and posters featuring famous covers from issues of RollingStone magazine and various books.

Complainant has had a presence on the Internet since 1995, and in 1996 it launched the official RollingStone website, located at <www.rollingstone.com>. The website distributes content in the areas of music, entertainment, pop culture, celebrities, and politics. Complainant also uses the website to sell music and show videos. The RollingStone website is consistently ranked as the number one music magazine site in the world and was the second overall music website after <mtv.com>. In  2003, it had an average monthly audience of 2 million visitors. Between 2000 and 2002 <www.rollingstone.com> had approximately 50 million discrete page views.

Complainant’s close association with entertainment services has been further cemented through various ROLLINGSTONE-branded television and radio programs. For example, there have been ROLLINGSTONE television programs to celebrate the tenth, twenty-fifth, and thirtieth anniversaries of RollingStone magazine, and (in collaboration with Viacom International, Inc.) “Rolling Stone/MTV Top 100 Greatest Pop Songs” a special program that aired in late 2000 to commemorate great pop songs (and which coincided with the publication in RollingStone magazine of a similar article). In the context of radio programming, Complainant has collaborated with Sirius Satellite Radio to produce a weekly radio show called “RollingStone on Sirius” that is hosted by RollingStone magazine editors Joe Levy and Jenny Eliscu. This show features music news and information culled from RollingStone magazine.

Recently, the ROLLINGSTONE trademark has been used in conjunction with the sale of beer pursuant to a licensing arrangement with Miller Brewing Company. As part of Miller’s "Summer of Music" advertising campaign to celebrate 50 years of rock 'n' roll, covers of RollingStone magazine will appear on commemorative beer cans. This use of RollingStone magazine covers to catalog the history of rock 'n' roll reflects the importance of RollingStone magazine in the annals of pop music. To further underscore the importance of the magazine in pop culture, in 1997 an exhibition consisting of famous RollingStone issues and other rock music memorabilia toured a number of major cities across the United States. Complainant curated this show, which prominently featured the ROLLINGSTONE trademark.

Apart from the significant rights that Complainant has built up in the ROLLINGSTONE

trademark, Complainant has also acquired trademark rights in the abbreviation “RS” which it frequently uses in connection with RollingStone magazine and other services. In particular, the mark RS has been extensively used in connection with the following entertainment-related goods and services: in referencing past issues of RollingStone magazine, in the titles of recurring columns appearing in the magazine and on its website, in online forums, and in connection with the distribution of music. A number of Exhibits were filed as examples thereof.

Complainant contends that, according to the renowned legal tome, McCarthy on Trademarks and Unfair Competition (“McCarthy”), “If the public has come to shorten a trademark into a nickname, then the nickname is entitled to independent legal protection as a mark.” Indeed, Complainant believes that Respondent's conduct recognizes that the public understands RS as Complainant’s trademark because it registered <rscasino.com> to use in connection with a website in which Respondent prominently uses the ROLLINGSTONE trademark.

To buttress the rights that Complainant has built up in its trademarks ROLLINGSTONE and RS through use and registration, Complainant has also undertaken promotional and public relations activities utilizing the Complainant’s trademarks ROLLINGSTONE and RS. Complainant extensively displays and promotes its Marks within RollingStone magazine and its website, and also through public relations placements in television programs, newspapers, and other magazines, websites, and print media.

Complainant protects the significant value in the Complainant’s trademarks ROLLINGSTONE and RS in at least two ways. First, it selects its licensees with great care and monitors the manner in which they use Complainant’s trademarks ROLLINGSTONE and RS to ensure that Complainant’s high standards are maintained. Second, it vigorously polices use of its Marks to protect their value and associated goodwill. For example Complainant has often had to send cease and desist letters to stop infringement of Complainant’s trademarks ROLLINGSTONE and RS and the content of the magazine, and Complainant exhibited several examples of letters which had been sent on behalf of itself or its predecessor-in-interest to enforce these rights.

When Complainant learned of Respondent's use of the confusingly similar domain names <rollingstonecasino.com> and <rscasino.com> it demanded, in a letter dated November 5, 1999, that Respondent cease use of the ROLLINGSTONE trademark and transfer the infringing domain names to Complainant' s predecessor-in-interest, Straight Arrow Publishers Company, L.P. Respondent refused to comply with Complainant’s demands. However Complainant did not pursue a UDRP proceeding at the time of its cease and desist letter because the UDRP process had barely been implemented and the reliability of the process had not been established. In any event, the fact that several years have passed since Complainant first demanded that Respondent transfer the domain names is irrelevant. UDRP Panels have consistently held that laches is not available as a defense in a UDRP proceeding and Complainant referred to E. W. Scripps Co. v. Sinologic Ind., D2003-0447 (WIPO July 1, 2003) where it was said that “If the requirements of a valid complaint under the Policy are established, the Policy does not provide any defense of laches”; and to U.S. Office of Personnel Mgm’t v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) where it was held that “Laches being an equitable remedy rather than a contractual remedy, is simply not available under the Policy. Once a complainant makes a prima facie showing of each of the elements set forth in the Policy, it is entitled to the relief requested in the Policy.”

Complainant contends that the refusal to accept a laches defense is particularly appropriate in the light of Respondent’s knowing infringement and bad faith in adopting its domain names. Complainant’s request for a transfer of the disputed domain names (rather than monetary relief), and the need to protect consumers from mistakenly believing that Respondent's websites accessible via the disputed domain names are associated with Complainant. As McCarthy has said: “The courts have been very reluctant to deny injunctive relief because of plaintiffs delay when it appears that defendant knowingly and deliberately adopted a mark charged as an infringement.”

In sum, given the extensive readership of RollingStone magazine, the wide array of goods and services on which the Complainant’s trademarks ROLLINGSTONE and RS are used, and Complainant’s numerous trademark registrations, millions of consumers are familiar with the Complainant’s trademarks ROLLINGSTONE and RS in connection with entertainment services and other goods and services. According to Complainant there can be no doubt that these Marks have become famous in the United States and throughout the world. As such, Complainant possesses significant and wide-reaching rights in them.

Confusing Similarity

Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks ROLLINGSTONE and RS (including those that have become incontestable) within the meaning of Policy ¶ 4(a)(i) and Rules 3(b)(viii) and (b)(ix)(1) of the Policy. As noted above, Complainant’s trademarks ROLLINGSTONE and RS are famous throughout the world and have been so for more than three decades. They are so famous that consumers would be likely to think that a website using them, or any variant of them, was owned and operated, or at the very least affiliated with, Complainant and RollingStone magazine and in this context Complainant referred to Trump v. VolkAmit, FA 99688 (Nat. Arb. Forum Oct. 15, 2001) in which it was said the “TRUMP and TRUMP PLAZA marks are so famous that an Internet user intending to access one of (Respondent's) sites would likely be confused and think that the <trumplazahotel.com> domain is  owned and operated by Complainant or someone associated with Complainant.”. Indeed, according to Complainant, the websites that Respondent has associated with the disputed domain names display Complainant’s trademarks ROLLINGSTONE and RS prominently throughout, which further - and improperly - suggests that Respondent's websites are endorsed or associated with Complainant. This improper attempt to associate Respondent's casino websites with Complainant is further evidenced by Respondent's obvious imitation of the script format of the Complainant’s trademarks ROLLINGSTONE and RS in displaying the casino’s name "Rolling Stone" on these websites.

Even the script used in the stylized form of the Complainant’s trademarks ROLLINGSTONE and RS has, according to Complainant, become a famous trademark of Complainant. The producers of the recent film "School of Rock" agreed to license the rights to use Complainant’s distinctive script to depict the title of the film in advertisements for the film, and the film's producers agreed to run a disclaimer stating that "The Rolling Stone® design is used under license from Rolling Stone LLC." Exhibited to the Complaint was a copy of the "School of Rock" DVD case which displayed this disclaimer.

The minor differences between Complainant’s trademarks ROLLINGSTONE and RS and the disputed domain names are of no legal consequence. Respondent has simply added the word "casino" after the wholesale adoption of Complainant’s ROLLINGSTONE and RS trademarks. UDRP Panels have repeatedly found that when, as here, a Respondent simply adds a descriptive word to a Complainant's mark , the Respondent's domain name is confusingly similar to the Complainant's mark. Complainant referred to four different UDRP Decisions in support of this contention – Viacom Int’l Inc. v. Erwin, D2001-1440 (WIPO Feb. 15, 2002); Viacom Int’l Inc. v. MTVMP3.com, D2001-0275 (WIPO Apr. 26, 2001); Trump v. VolkAmit, FA 99688 (Nat. Arb. Forum Oct. 15, 2001); and Wal-Mart Stores, Inc. v. Cann, D2000-0830 (WIPO Oct. 11, 2000).

Nor, according to Complainant, does the addition of the suffix ‘.com’ serve to distinguish the disputed domain names from Complainant’s trade marks and quoted several UDRP Decisions in support of this contention.

           

            No Rights or Legitimate Interest

Respondent registered the disputed domain names over thirty years after Complainant adopted, first used, and began promoting its trademarks ROLLINGSTONE and RS. However, Respondent has no rights or legitimate interests in these domain names. Respondent is not a licensee of Complainant; it has no relationship or association with Complainant, nor is it otherwise authorized to use the Complainant’s trademarks ROLLINGSTONE and RS in any way. Accordingly, Respondent's use of the trademarks ROLLINGSTONE and RS in its domain names directly violates Complainant’s exclusive rights in these trademarks.

Complainant’s trademarks ROLLINGSTONE and RS are so well known that Respondent must have been aware of the marks at the time it registered the domain names in late 1998. The fact that Respondent's casino has a rock 'n' roll music theme (demonstrated by the numerous depictions of a juke boxes, piano keys, or amplifier knobs on the websites associated with the domain names at issue), clearly shows that Respondent registered the domain names with knowledge of Complainant’s rights in the Complainant’s trademarks ROLLINGSTONE and RS and with the intention to trade off the goodwill associated with these Marks. Respondent's choice of a confusingly similar variation of the ROLLINGSTONE and RS names means that Respondent cannot have acquired any legitimate rights or interest in the disputed domain names.

The conclusion that Respondent lacks any legitimate interest in the disputed domain names is not changed by the fact that the websites offer gambling-related services and software falling into a slightly different segment of the entertainment industry than the goods and services Complainant currently offers under its trademarks ROLLINGSTONE and RS. Respondent's choice of such famous marks as the only unique aspect of its domain names evinces a complete lack of legitimate rights or interests in the domain names and Complainant referred to Nike, Inc. v. B.B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) which found that Respondent had no rights or legitimate interests in the domain name <nike-shoes.com> because, given the fame of the NIKE trademark, “one would be hard pressed to find a person who may show a right or legitimate interest in a domain name containing Complainant's trademark”; and to Chanel, Inc. v. Estco Tech. Group, D2000-0413 (WIPO Sept. 18, 2000), which held that “Respondent may not use Complainant's famous fashion trademark (CHANEL) as a domain name to entice Internet users to its database. This is not a fair use but instead infringing use.”

Complainant contends in conclusion that it is indisputable that Respondent is not making a fair use or noncommercial use of the domain names (referring to the exhibited copies of the screen shots of Respondent's websites) and that Respondent has no rights or legitimate interest in the disputed domain names.

            Bad Faith

According to Complainant, the evidence overwhelmingly shows that Respondent has registered its domain names and has used them in bad faith. Specifically, Respondent' s actions in registering and using the disputed domain names fall squarely within ¶ 4(b)(iv) of the Policy as evidencing bad faith: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant' s mark as to source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Complainant asserts that given the fame of its trademarks ROLLINGSTONE and RS, and extensive use, registration, and promotion of the marks over the past thirty years, Respondent was undoubtedly aware of them prior to registering the disputed domain names. The fact that Respondent's websites are rife with references to rock 'n' roll, proves that Respondent was aware of the Complainant’s trademarks ROLLINGSTONE and RS at the time it registered, and throughout its use of, the disputed domain names and intended to create an association between its domain names and Complainant. Respondent's use of script lettering for the words ROLLINGSTONE on its website which resembles the distinctive script that Complainant uses for the stylized version of its mark is further proof of Respondent's knowledge of Complainant s rights and trademarks. Accordingly, the very act of registering domain names so obviously connected with Complainant suggests, if not establishes, opportunistic bad faith on the part of Respondent, and Complainant refers to Chi-Chi's, Inc. v. Restauran Commentary (Restaurant Commentary), D2000-0321 (WIPO June 29, 2000), and PepsiCo, Inc. v. Zhavoronkov, D2002-0562 (WIPO July 30, 2002) where it was held that “(B)latant appropriation of a universally recognized trademark is, of itself sufficient to constitute bad faith registration.”

Moreover, even if Respondent could somehow plausibly argue that it did not have actual

knowledge of the Complainant’s trademarks ROLLINGSTONE and RS when it registered and began using its domain names (which Complainant contends it cannot), Respondent had constructive notice of Complainant s rights in the Marks due to Complainant s numerous trademark registrations. Respondent had only one purpose in registering its domain names: to trade off the goodwill that Complainant has built up in its trademarks ROLLINGSTONE and RS and to create confusion among consumers as to whether Respondent's domain names and associated web site are affiliated with Complainant. Respondent has “intentionally attempted to attract for commercial gain Internet users to (its) web site. . . by creating a likelihood of confusion with the complainant's mark,” in violation of Policy ¶ 4(b)(iv).

The fact that Complainant does not currently offer services under its trademarks ROLLINGSTONE and RS that are identical to the gambling services that Respondent offers through the website at the disputed domain names, does not negate the conclusion that Respondent has registered and used them even if gambling were not related to Complainant s entertainment services, Respondent's adoption of the famous trademarks ROLLINGSTONE and RS still evidences bad faith, and reference was made to Tata Sons Ltd. v. D & V Enters., D2000-0479 (WIPO Aug. 18, 2000), in which bad faith was found where the Respondent's use of Complainant's well-known mark in relation to totally dissimilar and improper services was bound to adversely affect the Complainant's goodwill.

Second, gambling is related to Complainant s entertainment services and is a natural area of expansion for it, thereby making Respondent's websites especially likely to engender confusion among consumers as to Complainant’s affiliation or sponsorship of Respondent's sites. Consumers have become accustomed to seeing the Complainant’s trademarks ROLLINGSTONE and RS used in connection with such diverse goods and services as sweepstakes, television specials, movies, t-shirts, posters, traveling rock memorabilia exhibitions, and recently even beer cans. It is only natural therefore that when a consumer sees Respondent's websites, which not only explicitly use the name ROLLINGSTONE but do so in connection with a rock 'n' roll theme, that these consumers will be confused and believe that Respondent' s websites have been sponsored or endorsed by Complainant. Third, Respondent's registration and use of the domain names limit Complainant’s ability to enter into a field of services related to its current services and therefore also have the effect of disrupting the business of a potential competitor, further evidence of Respondent's bad faith.

Given the foregoing, Complainant concludes that it is clear that Respondent has registered and used the disputed domain names in bad faith, and that Respondent has no legitimate rights to use these domain names because they are confusingly similar to Complainant's well-established trademark rights.

B. Respondent

Respondent contends at the outset that Complainant has adduced insufficient evidence to meet its burden of proof under Policy ¶ 4(a). The disputed domain names were registered and are being used in connection with Respondent’s Marks ROLLING STONE CASINO and RS CASINO. Respondent’s Marks, and the services provided, are outside the scope of Complainant’s trademarks and services, and the disputed domain names are therefore not confusingly similar. Respondent operates a legitimate business at the disputed domain names and Respondent’s registration and use of the disputed domain names are not in bad faith.

Background

Respondent operates a bona fide business, which offers online gambling services in connection with the disputed domain names. This online casino offers a variety of typical casino games, such as blackjack, slot machines, poker, craps, baccarat and red dog. A customer can choose between ‘playing for free’ where he is not required to place a bet and merely plays for the fun of the game, or ‘playing for real’ where bets are placed and he can win or lose actual money.

Respondent’s first use of their marks ROLLING STONE and RS CASINO was when the disputed domain names were registered on August 25, and November 24, 1998 respectively. Use commenced shortly thereafter. During the interim between registration and actual use, Respondent participated in the development of the websites. Since inception (6+ years), Respondent has continuously used the marks ROLLING STONE and RS CASINO and the disputed domain names in connection with on-line casino services. Thus they have never been abandoned.

Identical or Confusingly Similar

Respondent’s marks ROLLING STONE CASINO and RS CASINO, and the disputed domain names, are not identical to Complainant’s marks. They contain the additional word ‘casino’ which distinguishes them from Complainant’s marks. The combination of generic terms in a new order produces new and distinct marks that, when incorporated into the disputed domain names, are not identical to Complainant’s marks.

Similarly, a correlation does not exist between Complainant’s goods and services and the services of Respondent, which further distinguishes the disputed domain names. Complainant’s goods and services are associated with the music industry and magazines, and Complainant’s federally registered trademarks are limited to the magazine and music industries. At no time has Complainant registered or used the word ‘casino’ in conjunction with its marks; it does not operate or market online casinos, nor has it offered any proof of any involvement in the online gambling industry. Respondent’s online casino services and Complainant’s association with music and magazine goods and services are in distinct industries, which therefore would not cause consumers to be confused.

Respondent notes that Complainant asserts that Panels have repeatedly found that when a Respondent simply adds a descriptive word to a Complainant’s mark the Respondent’s name is confusingly similar and Respondent quotes several cases in support thereof. However according to the Respondent, the UDRP Panels in the quoted cases only found confusion when the term added to the Complainant’s mark was either a word that the Complainant had rights to, or was a word that did not distinguish the domain name from the Complainants. Respondent contends that the present dispute is distinguished  from these Decisions because Complainant does not have rights to the word ‘casino’ or any activities associated with an online casino, and the word ‘casino’ distinguishes the disputed domain names from  the Complainant’s marks. Respondent refers to Grand Bay Mgm’t Co. v. Allegory Inv., D2001-0874 (WIPO Sept. 21, 2000) in which it was held that ‘casino’ is a term that directs the mind to a specific activity and will therefore not cause confusion. Also, in Digital city, Inc. v. Small Domain, D2000-1283 (WIPO Nov. 6, 2000) it was said that, where the suffix or the domain name as a whole does not relate specifically to the business of the Complainant, no confusion occurs.

Respondent also notes Complainant’s assertion that it protects the significant value of its marks and actively pursues any uses, which it deems will infringe its marks or will cause consumer confusion. However, although copies of the exchange of correspondence between Complainant and Respondent in 1999/2000 were exhibited, Respondent has received no further communications from Complainant requesting Respondent to cease from using the disputed domain names until receipt of the present Complaint. In that earlier exchange, Respondent denied causing potential consumer confusion or a misleading impression basing its assertion on the dissimilar characteristics of the marks and the distinct goods and services which the marks represented. Subsequent to this denial, Respondent heard no more from Complainant. This four year gap is, according to Respondent, evidence that Complainant did not view the disputed domain names as a threat to consumer confusion, since according to the Complaint, it “vigorously polices use of its marks.”

In view of the differences between Complainant’s marks and the disputed domain names and the distinct goods and services which the parties market and sell, Respondent denies that they are confusingly similar.

Rights and Legitimate Interests

Respondent commenced use of its marks ROLLING STONE CASINO and RS CASINO in January 1999, and since then, has continuously used the marks throughout the world. Respondent’s continued operation of an online casino, a legitimate business, is sufficient to establish Respondent’s legitimate rights and interest in the disputed domain names.

Respondent maintains that it only received constructive notice of a potential dispute when the cease and desist letter sent from the Complainant was received in November 1999. Registration of the disputed domain names was prior to the constructive notice whereby proving legitimate interests under ¶ 4(c)(ii) of the Policy. In response to the cease and desist letter Respondent asserted its belief that the disputed domain names were not confusingly similar because of the distinguishing characteristics of the marks, the addition of the word ‘casino’ and the distinct goods and services which each mark represents. This further asserts Respondent’s belief that it possessed a legitimate interest in registering and using the disputed domain names in a bona fide business endeavor.

Good Faith

The bad faith requirement is a two-prong test which requires a Complainant to prove that a Respondent had bad faith when it registered the disputed domain name AND that the Respondent operates the disputed domain name in bad faith. Respondent asserts that in this case, Complainant has not provided any evidence to prove either requirement. In this context, Respondent refers to two UDRP Decisions – Dow Jones & Co. Inc. v. Hepzibah Intro-Net Project Ltd., D2000-0704 (WIPO Sept. 4, 2000) and Chancellor, Masters and Scholars of the Univ. of Oxford v. DR Seagle, D2000-0308 (WIPO May 30, 2000).

In the event that the Panel finds that a Respondent has a legitimate rights or interests in the domain name in dispute, the Panel typically will acknowledge that a bad faith analysis is unnecessary because the Complainant’s claim must already be denied.  See Homer TLC, Inc. v. YapimasYapimarket Dis Tic.ve Damismanlik A.S., D2001-0254 (WIPO June 8, 2001); see also Fitter Int’l Inc. v. Hausthor, D2001-0979 (WIPO Oct. 12, 2001).

Similarly a bad faith analysis in this proceeding is unnecessary because Complainant is unable to meet its burden of proof with respect to the first two elements of the claim. Nevertheless, even if the Panel elects to examine Respondent’s actions for any evidence of bad faith, it will find that none exists. Based on the facts set forth above, it is evident that Respondent’s long standing use of the disputed domain names with a bona fide offering of services precludes any finding of bad faith.

The evidence in this proceeding shows that Respondent registered the disputed domain names for the purpose of a bona fide offering of services and has continued to offer the services of an on-line casino, and not primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to Complainant or a competitor for profit. Moreover there is no evidence that Respondent has engaged in a pattern of registering domain names to prevent their legitimate registration. Also, Respondent has continued to use the disputed domain names for over five years. This is overwhelming proof that Respondent acted in good faith when registering the disputed domain names.

Respondent registered and began offering services through the disputed domain names before any notice of any dispute.

As noted above, Respondent responded to Complainant’s cease and desist letter asserting that use of the disputed domain names would not cause confusion which provides insight into Respondent’s thought process when the disputed domain names were registered and their future use, and which defeats the claims by Complainant under Policy ¶ 4(a)(iii) that bad faith was present when the disputed domain names were registered.

Subsequent to Respondent’s response to Complainant, and during the over four year time period before Complainant filed the current Complaint, Respondent has continued to operate its online casino in the good faith belief that because of the distinct goods and products offered, and the distinguishing characteristics of the marks, no confusion would occur. Respondent has not attempted to attract, for commercial gain, internet users by creating a likelihood of confusion and it is Respondent’s belief that confusion will not occur.

Accordingly Respondent concludes that this Complaint should be denied. 

C.  Complainant’s Additional Submission

In reply to Respondent’s response, Complainant filed a lengthy Additional Written Statement in which it alleged, firstly, that that Respondent had failed to present any argument, much less evidence, to dispute six critical facts set forth in the Complaint:

            Disputed Domain Names not distinguished from Complainant’s trademarks

Complainant asserts that Respondent's primary defense is an attempt to distinguish its domain names from Complainant's famous ROLLINGSTONE Marks on the grounds that Respondent has added to these marks the generic word ‘casino.’

First, the phrase "Rolling Stone" (even when abbreviated as "RS") is arbitrary and fanciful when used in connection with almost any goods or services. For the past thirty years this fanciful term has been used exclusively in association with Complainant's products and services and the Complainant’s trademarks ROLLINGSTONE and RS have become indelibly associated with such marks and services. Thus, Respondent' s argument that consumers will distinguish Respondent's domain names because it has combined the exact terms comprising the highly distinctive Complainant’s trademarks ROLLINGSTONE and RS with a completely generic word ignores the import of famous marks like ROLLINGSTONE.

It is irrelevant whether the word "casino" will "direct the mind to a specific activity." The fundamental problem is that Respondent's use of the highly distinctive and famous terms ROLLINGSTONE and RS means consumers are being misled into believing that Complainant has endorsed or is the source of this specific activity.

Second, the two WIPO decisions cited by Respondent for the proposition that merely adding a descriptive word could sufficiently differentiate Respondent's domain names from Complainant' s trademarks are readily distinguishable. Both Panels found that the complainants' marks GRAND BAY and DIGITAL CITY were not distinctive to begin with – unlike the arbitrary and fanciful nature of the trademarks ROLLINGSTONE and RS. Thus, in those cases the addition of yet another descriptive word to two already descriptive words was found to sufficiently alter the domain names to avoid confusion. Such confusion is not avoided where, as here, Respondent has added a generic word to highly distinctive trademarks.

Third, the fact that Respondent's services fall within the niche of online gambling cannot

distinguish Respondent's confusingly similar domain names when Complainant's marks are both famous and used in connection with a variety of entertainment and Internet services closely related to online gambling. Respondent's argument that similar marks may be used on different goods and services might carry some weight if the marks at issue were relatively unknown or merely descriptive. But that is not case here. When a Complainant' s marks are famous and highly distinctive, as Respondent does not dispute Complainant' s trademarks ROLLINGSTONE and RS are, the law is clear that using similar marks even on completely different goods and services is still likely to cause confusion.

Furthermore, Respondent's limited examination of the goods and services of Complainant's federally registered Marks ignores the much broader common law trademark rights that Complainant possesses in connection with entertainment and online services. It cannot be disputed that these services, for which Complainant possesses common law trademark rights, are closely related to Respondent' s online gambling services or a natural area of expansion for Complainant' services. Thus, Respondent has no basis for arguing that the specific nature of its services can distinguish its confusingly similar domain names from Complainant’s trademarks ROLLINGSTONE and RS.

            Legitimate Rights

Respondent provides no basis or explanation for why it incorporated Complainant’s trademarks ROLLINGSTONE and RS into its domain names. ROLLINGSTONE has no obvious, or even subtle, connection to gambling. Indeed, the only reason to adopt the domain name <rollingstonecasino.com> is to deliberately trade on and exploit Complainant's famous ROLLINGSTONE mark. Should this be in doubt, the websites' use of rock ‘n’ roll themes makes the intentional association evident.

The ways in which Respondent has incorporated a rock 'n' roll theme into its websites abound. For example Respondent has prominently placed a stylized jukebox on every page of its websites, the links along the top of each page of Respondent's <rscasino.com> website have an amplifier knob next to them, and the ‘Help Desk’ page possesses piano keys that the page instructs users to “PLAY KEYS TO NAVIGATE.”

Nonetheless, Respondent attempts to argue that, regardless of whether its domain names have blatantly infringed Complainant's trademark rights since their inception, somehow by operating these websites for several years its infringement disappeared and Respondent's rights to the domain names have become legitimate. Respondent cites no authority for this baseless argument and Complainant contends that the law is directly to the contrary, citing Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000), in which it was held that “bad faith use of a domain name does not establish rights or legitimate interests in respect of such name in the sense of ¶ 4(a)(ii) of the Policy.”

There is no requirement under the Policy that a Complainant file a UDRP Complaint within any set time period of when a Respondent registers its domain names. Most UDRP proceedings involve Respondents who have been operating their website at the disputed domain name for at least some period of time prior to the filing of the Complaint. In fact, Policy ¶ 4(c)(i), which refers to use of the domain name “in connection with a bona fide offering of goods and services.” is a factor for evaluating whether a  Respondent has legitimate rights to the domain name, primarily goes toward evaluating whether the Respondent is a cybersquatter, not whether the domain name infringes another’s trademark rights.

Panels evaluating cases similar to this one, where at issue are Respondents who operate websites that trade off the goodwill of a Complainant’s trademarks, have repeatedly

found that Respondents cannot establish legitimate rights to a domain name if it is confusingly similar to the Complainant' s trademarks, regardless of how long the Respondents have been operating their websites. In E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003), the Respondent had been operating its website for four years prior to the filing of the Complaint and this was held not to be a bona fide offering of goods and services, but rather an attempt to exploit the reputation of the Complainant's newspaper. Also, in U.S. Office of Personnel Mgm’t v. Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003), the Respondent's operation of an infringing website for four years prior to the filing of the Complaint could not establish legitimate rights to domain name.

In the opinion of the Complainant, there can be no question that Respondent registered its domain names with the deliberate intention of exploiting the substantial goodwill associated with Complainant’s trademarks ROLLINGSTONE and RS. Respondent does not deny that it had actual knowledge of Complainant's famous marks prior to registering its domain names. Respondent also does not deny that it lacks authorization from Complainant to use the trademarks ROLLINGSTONE and RS in its domain names. Other than Complainant's famous Complainant’s trademarks ROLLINGSTONE and RS, there is no immediate connection between this fanciful phrase and either music generally or online gambling specifically. Therefore, the only explanation for Respondent's actions is that it has been wrongfully seeking to capitalize on Complainant' s trademark rights. The fact that Respondent has been exploiting Complainant's rights for several years cannot make legitimate what has all along been improper.

            Bad Faith

Of the various ways that a respondent' s bad faith can be demonstrated under the Policy it is Policy ¶ 4(b )(iv) that specifically applies to Respondent' s bad faith use of the disputed domain names. Notably, Respondent fails to argue how its appropriation of the highly distinctive ROLLINGSTONE name does not fall squarely within the ambit of ¶ 4(b )(iv): "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant' s mark as to source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location." Respondent states its belief that confusion will not occur, but this cannot alter the plain fact that Respondent is seeking to attract Internet users to its site by associating itself with the rock ‘n’ roll themes that have been a critical component of the Complainant’s trademarks ROLLINGSTONE and RS owned by Complainant for over thirty years.

Respondent's weak attempt at overcoming the compelling evidence of its bad faith not

only fails to support its position, it instead makes clear the effectiveness Respondent has had in usurping Complainant' s goodwill for its own commercial gain. For instance, Respondent argues that because "Respondent has continued to use the Disputed Domain Names for a period of over five years" and this "is overwhelming proof that Respondent acted in ' good faith' when the Disputed Domain Names where (sic) registered." Respondent’s use of its domain names over this period says nothing about Respondent's intent five years ago and instead demonstrates that Respondent has had some measure of success in attracting consumers by trading off the rock ‘n’ roll themes associated with Complainant's trademarks.

Similarly, there is no logic in Respondent's argument that because it refused to comply

with Complainant' s cease and desist letter in 1999, this somehow makes its continued willful infringement proper. Regardless of when Respondent made its assertion that it believes confusion is unlikely, this does not alter the fact that Respondent has deliberately gone about designing its websites to capitalize on exactly the type of rock ‘n’ roll themes associated with the Complainant’s trademarks ROLLINGSTONE and RS. Online gambling with a music theme is not the kind of service so distinct from the entertainment and online services provided by Complainant under the Complainant’s trademarks ROLLINGSTONE and RS that consumers will not be attracted, for commercial gain, to Respondent' s websites because of this perceived connection.

D. Respondent’s Additional Submission

In reply to this Additional Written Statement, Respondent filed an Additional Response

in which it repeated many of its previous arguments but, in fairness, its allegations are summarized below:

1. Complainant has asserted that according to previous Panel decisions (all of which were cited) the addition of a ‘generic’ term will not distinguish the domain name from a Complainant’s mark. However it failed to mention that the ‘generic’ term added in the referenced cases were terms in which the complainant had already established rights.

The cases listed are readily distinguishable from the present case because in them the Panels found confusion when the ‘generic’ term added to Complainants marks was either a word in which the complainant had rights or was a word that does not distinguish the domain name from that of the complainant. Such is not the case with the present disputed domain names. The addition of the word ‘casino’ directs the mind to a specific activity, namely gambling. The Complainant has failed to provide any evidence that this term or these activities have ever been associated with its Marks. The fact that Respondent operates its website offering goods and services that are wholly distinctive from the goods or services of Complainant completely distinguishes the disputed domain names from the Complainant’s trademarks. Therefore the disputed domain names are not confusingly similar to Complainant’s Marks.

2. Complainant asserts that mere registration of its marks places Respondent on notice of the dispute. Registration and use by the Respondent of the disputed domain names which are not identical or confusingly similar to Complainant’s marks, and which represent goods and services which are not identical, and in fact are wholly distinct, from the goods or services offered under Complainant’s marks cannot and does not demonstrate notice of a dispute. The earliest evidence Complainant can offer of a dispute was when the cease and desist letter was sent by Complainant in November 1999. Respondent had, by January 1999, i.e. 10 months earlier, already established a legitimate business endeavour and had offered bona fide goods and services in connection with the disputed domain names.

3. Complainant asserts that the Policy outlines acceptable use of a domain name “in connection with the bona fide offering of goods and services” as a “factor for evaluating whether the respondent is a cybersquatter, not whether the domain name infringes another’s trademark rights” and cites two cases to support this argument that legitimate rights cannot be established for a domain name if it is confusingly similar. However both cases can be distinguished from the present case because (1) the respondent in the Scripps case allowed its websites to become inactive for an extended period after registration, and (2) both respondents were attempting to sell competing goods which were identical to goods and services offered by the Complainant. Neither factor is present in this case. Respondent registered the disputed domain names for the purpose of providing bona fide goods and services to consumers. Its website has been in operation since January 1999 offering goods and services, namely an online casino and associated goods, which are goods and services that are completely distinct from any goods or services ever associated with Complainants marks. The Policy is clear that a bona fide offering of goods and services is clear evidence that a legitimate right exists. Therefore Respondent’s use of its website establishes a legitimate right in the disputed domain names.

4. Finally, Respondent reiterates that the current proceeding and the policy itself are not the place to determine whether a domain name infringes another’s trademark rights. Complainant even states that ¶ 4 (c) (i) of the Policy is not for evaluating “whether the domain name infringes another’s trade mark”. Panels have consistently found that “the Panel lacks jurisdiction to decide claims of trademark infringement, dilution, un fair competition, or other statutory or common law cause of action.”  See Bridgestone Firestone, Inc. v. Meyers, D2000-0190 (WIPO July 6, 2000) (“[T]he existence of a legitimate dispute concerning the likelihood of confusion can make a case inappropriate for resolution under the policy.”); see also Adaptive Molecular Tech., Inc. v. Woodward, D2000-0006 (WIPO Feb. 28, 2000).

DISCUSSION AND FINDINGS

 

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.”

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

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

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

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

Identical or Confusingly Similar.

Complainant has established, to the satisfaction of the Panel, that it has substantial rights in the trademark ROLLINGSTONE. The fact that sometimes this mark is depicted in two words and sometimes in script form is immaterial.

Complainant also claims to have common law rights in the trademark RS, but the evidence for this is very weak. Nine separate documents were filed in support of this claim, but a close examination of these does not bear out Complainant’s assertion as they merely show the letters RS being used either subsidiary to, or as an abbreviation for, the name RollingStone, or both. The cover of the magazine clearly identifies it as RollingStone not RS (unlike, say, the magazine GQ which is now the title of the journal previously known as ‘Gentleman’s Quarterly’).

Complainant quotes McCarthy as proof that a shortened ‘nickname’ can be protected as a trademark. However to qualify as a trade mark, the said nickname should be seen to be being used in respect of specific goods or services and that does not seem to be the case here. The evidence does not sufficiently show that the alleged common law use has been continuous and ongoing and that secondary meaning has been established as was held in Tuxedo By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000). RS is not in the same league as, say, abbreviations such as COKE or FedEx which were first used by the general public and only subsequently became trademarks.

In an online Dictionary of Abbreviations, RS meaning RollingStone was only one out of 120 meanings for these initials, which include such more familiar terms as ‘Rupees’, ‘Rallye Sport’ (for cars), ‘Religious Studies’, Republika Srpska’, and ‘Richter Scale’.

In the Complaint and its Additional Written Statement, Complainant attempts to pre-judge the situation by using the abbreviation “the ROLLINGSTONE Marks” throughout to lump together both its federally registered trademark ROLLINGSTONE and its alleged common law trademark RS. After this, there are very few references to RS as being a trademark.

Respondent does not raise this as an issue but, having examined the ‘evidence,’ the Panel has decided that Complainant does not have any common law rights in RS as a trademark. Consequently, having come to this conclusion, and since, in the opinion of the Panel, the trademark ROLLINGSTONE is not confusingly similar to the domain name <rscasino.com>, this latter name will not be included in the following discussion.

The trademark ROLLINGSTONE is not identical to the disputed domain name <rollingstonecasino.com> and, as for confusing similarity, both parties have put forward extensive argumentation both for and against this proposition.

On behalf of Complainant it is argued, firstly, that its name and trademark ROLLINGSTONE is so famous that it is inconceivable that anyone seeing either of the disputed domain names will not immediately associate them with Complainant; and secondly that there is undoubted similarity when a trademark is combined with a generic or descriptive term such as, in this case, the word ‘casino.’

Dealing with the first of the above arguments, in the experience of the Panel some trademarks are actually less famous or well known in the world outside than their owners believe them to be. For example, the name ‘Rolling Stone’ is not unique to Complainant. Complainant has produced some substantial circulation figures for its magazine, but to many more millions of people throughout the world, the name ROLLING STONES is probably much more closely associated with the pop group of that name led by Sir Mick Jagger. Complainants have alleged that Respondent copied its domain names from them, but the Rolling Stones group was formed in 1962 and became well known shortly thereafter. Complainant’s magazine was not launched until five years later in 1967, (which is borne out by the fact that its earliest trademark registration claims first use from that year).  Who was actually copying from whom? Even prior to the 1960s, the proverb “a rolling stone gathers no moss” was widely known and used. According to the Oxford Dictionary this proverb dates from 1546, while Brewer’s Dictionary of Phrase and Fable has it that the couplet: “The stone that is rolling can gather no moss/For master and servant oft changing is loss” appeared in ‘Five Hundred Points of Good Husbandrie,’ which was published in 1573.

Thus, although there is no doubt that in UDRP cases Complainant’s assertion that when a disputed domain name contains a famous trademark that is, prima facie, evidence of confusing similarity, the Panel is not convinced that this is the position in this case because there must be some doubt about whether a casual observer will connect the domain name <rollingstonecasino.com> with Complainant or, alternatively, either with the Rolling Stones pop group, or with the common proverb. 

 

The Panel will now deal with the second of Complainant’s arguments, namely that there is undoubted similarity when a trademark is combined with a generic or descriptive term such as, in this case, the word ‘casino.’ Respondent has forcefully argued that for this to be the case, the generic term must bear some relation to the goods or services for which a Complainant has registered or used his trademark. There is certainly something in this argument, but it is not an absolute necessity and the majority of UDRP Decisions support Complainant’s case. See, for example, not only the cases referred to by Complainant, but also Sony K K v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that neither the addition of an ordinary descriptive word nor the suffix .com detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY); see also Diageo plc v. Zuccarini, D2000-0996 (WIPO Oct. 22, 2000) (finding confusing similarity where Respondent’s series of 11 domain names consisted of Complainant’s trademark GUINNESS followed by between two and five generic terms); see also UGG Holdings, Inc. v. Barclay, FA 217320 (Nat. Arb. Forum Feb. 4, 2004) (holding that 23 domain names all of which included a generic term as well as Complainant’s trademark UGG. were all confusingly similar to it); see also Westfield Corp. Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding that <westfieldshopping.com> was confusingly similar to WESTFIELD); see also Pfizer Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that <viagrabomb.com> was confusingly similar to VIAGRA); see also Novell, Inc. v. Kim, FA 1676961 (Nat. Arb. Forum Oct. 24, 2003) (finding that <novellsolutions.com> was confusingly similar to NOVELL); see also Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec.15, 2003) (finding that <aigassurance.com> was confusingly similar to AIG).

Against this impressive array of precedents, Respondent refers to only two cases including Grand Bay Mgm’t Co. v. Allegory Inv., D2001-0874 (WIPO Sept. 21, 2000), in which Respondent claims it was held that ‘casino’ is a term that directs the mind to a specific activity and will therefore not cause confusion, but in fact this was merely an allegation by one of the parties. The actual finding of the majority of a 3-person Panel was that “While the Complainant is associated with hotels that have casinos, this connection is not sufficient to deprive others, especially those whose main business is casinos, of the right to use the word. Linking the word with others which are descriptive does not lead to confusion with the use by others of the descriptive words.” Both in this case, and in the other cited by Respondent, Digital City, Inc. v. Small Domain, D2000-1283 (WIPO), the trademarks GRAND BAY and DIGITAL CITY were in themselves held to be highly descriptive. That is not the position here.

Precedents are of course not binding on a Panel, but in this case there is a very strong body of opinion that the addition of a generic word to a distinctive trademark in a domain name does make the mark and the name confusingly similar, and that the generic term does not necessarily have to imply a connection with the goods or services for which the trademark is registered or used.

In the present case, although the trademark ROLLINGSTONE may not be quite as famous as Complainant alleges, it is the subject of three incontestable US registrations, and it has also become, through extensive use, distinctive of the Complainant’s particular goods and services.

Consequently, in the opinion of the Panel, the disputed domain name <rollingstonecasino.com> is confusingly similar to Complainant’s trademark ROLLINGSTONE because it appropriates Complainant’s distinctive and incontestable trademark and adds a generic or descriptive term to it.

Rights or Legitimate Interests

Complainant puts forward several arguments under this heading – that Respondent is not licensed or authorized to use its trademarks, that Respondent is not related to or associated with it, that its trademarks are so well-known that Respondent must have been aware of them when it registered the disputed domain names in 1998, that the websites at the disputed domain names have a rock ‘n’ roll theme which immediately associates it with Complainant, and that Respondent is not making a fair or non-commercial use of the domain names.

In response, Respondent says that it adopted the disputed domain names in 1998 and has used them ever since in respect of a bona fide and perfectly legitimate business which is completely distinct and different from Complainant’s business. Therefore the defense under Policy ¶ 4(c)(i) is available to it (“before any notice to you of the dispute, your use of, or 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”). Complainant relies on two UDRP Decisions to argue that this is not the case (E. W. Scripps Co. v. Sinologic Ind. and U.S. Office of Personnel Mgm’t v. MS Tech. Inc.) as well as to the fact that it did direct a cease and desist letter to Respondent about a year after the websites opened. Respondent replied to this letter denying any possible confusion because of the distinct goods and services offered and the distinguishing characteristics of the marks. It also says that in both of the cases referred to by Complainant the goods and services of the domains and the trademark were identical which they are not in this case.

However in the Scripps case, the Panel was not presented with any evidence of an alleged objection four years previous, and it also concluded that there had not been any bona fide use. In the other case, Respondent’s use was held to be nothing other than an opportunistic attempt by Respondent to exploit confusion by diverting internet users away from Complainant’s site to Respondent’s. Neither of these cases is remotely similar to the present case, where there is insufficient evidence that Respondent derived its domain names from the name or trademark of Complainant, where no attempt at diversion has taken place, and where there is no evidence that Respondent’s use has not been legitimate. 

In response to the anticipated charge that it failed to follow up its 1999 cease and desist demand, Complainant offers the rather lame excuse that the UDRP was in its infancy at the time and unproved when it made its complaint. It is true that the first UDRP Decision was subsequent to this exchange of letters, being dated January 14, 2000, but by mid to late 2000 the UDRP was well established as a highly effective method of dealing with cybersquatters and with the misappropriation of trademarks into domain names, so this hardly excuses a delay of four and a half years.

 

Laches is not normally available to a Respondent under the Policy, once a prima facie case has been made out, and it cannot be denied that Complainant did put Respondent on notice that it disapproved of the disputed domain names about a year after they became active. However, the fact that Complainant took no further action at that time is perhaps an indication of the fact that Complainant did not seriously believe that Respondent’s operation of the casino website was intended to attract internet users away from Complainant and towards Respondent’s website. See Bosco Prod., Inc. v. Bosco email Servs., FA 94828 (Nat. Arb. Forum June 29, 2000) (“Without determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve [the domain name dispute].”); see also New Piper Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum May 2, 2000) (stating that Complainant’s failure to initiate a suit in over two years indicated that Complainant did not believe that Respondent intended to attract customers through confusion).

Complainant’s charges that Respondent is not licensed or authorized to use its trademarks and that Respondent is not related to or associated with it, have not been denied but they are patently true.

As discussed above, there could be other explanations for the derivation of the disputed domain names so the charge that it was as a direct result of the fame of Complainant’s trademarks, although not denied by Respondent, carries little weight.

Complainant makes much play of the fact that Respondent’s website has a distinct rock ‘n’ roll theme which, it says, is similar to the musical themes associated with its Rolling Stone magazine. It is true that there are some musical references on the website, but they are not ‘rife’ nor they do ‘abound’ as Complainant alleges, and they are not nearly as frequent or as prominent as the many gambling graphics that appear on the site. Complainant refers to images of jukeboxes, but this is not true for these are in fact slot machines. It is true that there are what could be some amplifier knobs at the top of each page and a piano keyboard on one page, but neither of these images is necessarily linked exclusively with rock and roll music. It is also arguable that any musical theme (if there is one, which the Panel doubts) could just as well be derived from a desire to associate the site with the Rolling Stones pop group.

Overall therefore, the Panel concludes that Respondent did start to use the disputed domain name <rollingstonecasino.com> in good faith before it knew anything about Complainant’s objection and that Complainant has failed to prove its case that Respondent has no rights or legitimate interest in it.

Registration and Use in Bad Faith

As Respondent has pointed out, once a Panel has found in favor of a Respondent on either of the first two requirements of the Policy, there should be no need to consider the third. However for the sake of completeness, the Panel will rehearse why it considers that there is no bad faith either.

Under the heading of ‘Bad Faith,’ Complainant levels a number of charges namely – that Respondent has created a likelihood of confusion by attracting internet users to its websites for commercial gain in violation of Policy ¶ 4(b)(iv); that Respondent must have been aware of Complainant’s trademarks when the disputed domain names were registered; that Respondent has deliberately used a script form for the word ROLLINGSTONE on its website that is identical or similar to Complainant’s own distinctive script for the title of its magazine and in several of its trademark registrations; and that Respondent is guilty of opportunistic bad faith.

Respondent argues that it lacks the specific ‘intent’ under Policy ¶ 4(b)(iv) for a finding of bad faith. It states that it registered the disputed domain names “for the purpose of a bona fide offering of services and has continued to offer the services of an online casino”. It goes on to argue that its continued use of the domain names for a period of over four years is overwhelming proof that it acted in good faith when registering the names. See Mule Lightning, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business); see also Matchmaker Int’l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (where a majority of a 3-person Panel found that Respondent’s reasonable belief in its legitimate rights to register the disputed domain name precluded a finding of bad faith registration); see also DJF Assoc., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding that Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website and was offering services under the domain name prior to the initiation of the dispute).

There is no clear evidence that Respondent must have been aware of Complainant’s trademarks when the disputed domain names were registered and the Panel is not convinced that a U.S. registered trademark puts constructive notice on a company with an address in Antigua. As has already been said, the name could just as easily have been derived from the famous pop group. Furthermore, Complainant produced no evidence that its name and trademark were famous or well known in 1998 when the disputed domain names were registered.

The adoption of a script form for the words ROLLING STONE on the site could be significant and, if true, could perhaps go some way to bearing out the allegation that Respondent must at least have seen Complainant’s magazine when the site was being designed, whether consciously or subconsciously. However the typeface of the actual script is quite different from that used by Complainant, and furthermore on the website the words ‘Rolling’ and ‘Stone’ are on separate lines. The Panel has therefore concluded that on this point Complainant’s allegations are not proved.

The charge of opportunistic bad faith is unconvincing, and the Panel dismisses it.

Thus, since none of Complainant’s charges have been proved conclusively, the Panel concludes that bad faith has not been established and the third requirement of the Policy is not satisfied in relation to the disputed domain name <rollingstonecasino.com>.

DECISION

Having examined all three elements required under the ICANN Policy, and found only one of them to have been proved in respect of only one of the disputed domain names, the Panel concludes that relief shall be DENIED in relation to both of the domain names <rollingstonecasino.com> and <rscasino.com>.

DAVID H TATHAM Panelist
Dated: October 14, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1276.html