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Generic Top Level Domain Name (gTLD) Decisions |
President Casinos, Inc. v. Holger
Aulenbach d/b/a DiamantClub Ltd.
Claim Number: FA0405000271202
PARTIES
Complainant
is President Casinos, Inc. (“Complainant”),
represented by Randy L. Canis, of Greensfelder, Hemker & Gale, P.C., 10 South Broadway, Suite 2000, St. Louis, MO 63102. Respondent
is Holger Aulenbach d/b/a DiamantClub Ltd. (“Respondent”), represented by Carlos Corrales-Azuola, of CORRALES & ASOCIADOS, Ave. 6, St. 17-19, #1753, San Jose,
Costa Rica.
The
domain names at issue are <presidentcasinos.com>, <president-casino.com>, <presidentpoker.com>, <president-poker.com>, <presidentsports.com>
and <presidentsportsbook.com>, registered with Key-Systems Gmbh.
PANEL
The
undersigned 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.
Fernando
Triana, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 12, 2004; the Forum received
a hard copy of the Complaint
on May 14, 2004.
On
May 13, 2004, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain
names <presidentcasinos.com>, <president-casino.com>, <presidentpoker.com>, <president-poker.com>, <presidentsports.com>
and <presidentsportsbook.com> are registered with Key-Systems
Gmbh and that Respondent is the current registrant of the names. Key-Systems Gmbh has verified that
Respondent is bound by the Key-Systems Gmbh 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
May 18, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 7,
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@presidentcasinos.com,
postmaster@president-casino.com, postmaster@presidentpoker.com,
postmaster@president-poker.com,
postmaster@presidentsports.com and
postmaster@presidentsportsbook.com by e-mail.
According
to Respondent, an extension of ten days was granted to file the Response (with
Complainant’s consent). The Response was
received on June 18, 2004. Admission
of the Response will be discussed below.
On June 29, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Fernando Triana,
Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
According
to the Complaint, Complainant President Casinos Inc. is a corporation which
owns and operates directly or by its subsidiaries
dockside gaming casinos. Its
business takes place mainly in Biloxi, Mississippi and St. Louis, Missouri.
Complainant asserts that
it undertakes business under its principal website at
the <presidentcasino.com> domain name. It is stated by Complainant that
through its subsidiaries it operates another website at the
<presidentbroadwater.com> domain name. It states that it spends
more than
US $5,000,000 in advertising and marketing its services. Evidence of such
publicity is attached to the Complaint.
Complainant
has registered before the United States Patent and Trademark Office
(hereinafter USPTO) the following service marks:
SERVICE
MARK REGISTERED
|
STATUS
|
|
PRESIDENT CASINO and Design |
Registration
No. 2,323,213, in Class 41 for entertainment services, namely, conducting
casino gambling games. Registered since
June 22, 1998. |
|
PRESIDENT RIVERBOAT CASINO |
Registration
No. 2,516,595 in Class 39. Entertainment services, namely, conducting boat
excursions for tourists. Also registered
in Class 41 for entertainment
services, namely, conducting casino gambling games and presenting live
musical and comedy shows.
Registered since March 23, 2000. |
|
PRESIDENT
CAPTAIN'S CLUB CASINO and Design |
Registration
No. 2,295,355 in Class 41. Entertainment services, namely, conducting casino
gambling and presenting musical and
comedy shows. Registered since April 30,
1998. |
|
PRESIDENT
CASINO CAPTAIN'S CLUB BY THE ARCH and Design |
Registration
No. 2295356 in Class 41. Entertainment services, namely, conducting casino
gambling and presenting musical and comedy
shows. Registered since April 30, 1998. |
Complainant
states that it has been using its service mark to identify and distinguish the
services offered prior to the registration
of the domain names in dispute by
Respondent, as Complainant registered its domain name
<presidentcasino.com> on April 2, 1996.
Complainant
attached to its Complaint evidence that proves the registration of the
abovementioned service marks by President Casinos
Inc., and the registration of
the domain names directly or by its subsidiaries.
It
is asserted by Complainant that Respondent registered on March 7, 2003 the
domain name <presidentpoker.com>. After that, Respondent proceeded
to register the following: <president-poker.com> on March 10,
2003; <presidentcasinos.com> on April 15, 2003; <president-casino.com>
on November 17, 2003; and <presidentsports.com> and <presidentsportsbook.com>
on January 9, 2004. Complainant alleges that the aforementioned domain names
have information and deep linking to Complainant’s webpages
and casinos.
On
March 11, 2004, Complainant sent a cease and desist letter to Respondent for
the infringement of the registered service marks owned
by Complainant and use
of the domain names. Complainant demanded the removal of any linking that
redirects users from Respondent’s
webpage to Complainant’s and that Respondent
refrain from using the image of the President Casino Broadwater Resort at the
<presidentcasinos.com> domain name. A copy of said letter and a
copy of the delivery certification by FEDEX are attached to the Complaint.
Due
to the fact that Respondent did not answer Complainant’s request a second
letter was sent to Respondent electronically and via
facsimile. Attached to the
Complaint there is evidence of the letter sent on April 6, 2004.
A
Response to said communications was given on April 12, 2004. Respondent stated
that the image of the President Casino Broadwater
Resort would be removed
immediately according to Complainant’s demands, and the linking to
Complainant’s webpage would also be removed.
Additionally, he informed Complainant
that the <presidentpoker.com> domain name was a registered
trademark in Classes 28, 41 and 42 by the German Trademark Office, property of
DiamantClub Ltd.
On
April 13, 2003, Respondent sent a new communication to Complainant, in which it
asked, in order to transfer the domain names <presidentcasinos.com>
and <president-casino.com>, for a: “reasonable financial offer
in order to take action on such transfer.”
Additionally,
on April 26, 2004, Respondent sent an e-mail that was originally directed to President
Casinos Inc., but was received,
as stated by Complainant, “inadvertently”
by Respondent.
On
the same day, Complainant received an e-mail in which it was informed by
Respondent that: “other casinos (virtual and landbased) do intend in
transferring our generic domain www.casinos.de where we also have a registered
trademark for. Some of them also are interested transferring (sp) the domains
presidentpoker.com, president-poker.com, presidentcasinos.com,
president-casinos.com,and other ‘president’ domains from us to them as well,
having international expansion in mind.” A copy of mentioned e-mail is
attached to the Complaint.
Complainant
states that on April 28, 2004, it sent a new communication to Respondent. The
highlights of the mentioned communication
are, as stated by Complainant and
according to the reviewed evidence attached to the Complaint, the following:
(i) though the image
of the President Casinos Broadwater Resort image was
removed, Respondent uses an image of the St. Louis Arch, which is considered
by
Complainant to be: “disingenuous and totally unacceptable.” The
aforementioned is alleged by Complainant on the basis that it has a casino
located in the city of St. Louis, Missouri, two blocks
away from the St. Louis
Arch, and it believes that the use of such image: “seeks to demonstrate to
an internet user a relationship between your service and our clients goodwill.”
(ii) President Casinos Inc., offered to pay the sum of US $15.00 to
Respondent for the: ”out of pocket expenses directly related to the
registration of the infringing domain names.”
As
stated in the Complaint, on April 29, 2004, Respondent answered the
aforementioned communication and monetary offer, demanding
Complainant to
refrain from using the expression “president poker” and to transfer: “all
domain names regarding President Poker to DiamantClub Ltd.” Regarding the
economic offer Respondent stated that: “if you wish us to stop registering
or to purchase ‘President’ Domain names and companies we can talk about this
any time, but we
ask you to do that in a reasonable way. We do not take the
‘one time’ offer you made to us serious. Put another 6 zeros behind the
15 $
US, than it could be possible taking you offer amicable and serious.”
Complainant
alleges that the domain names registered by Respondent are confusingly similar
to the service mark registered by President
Casinos, Inc. These allegations are
based on the fact that the: “deletion of a generic or descriptive word from
an established trademark does not defeat the owner’s rights in its trademark.”
Additionally
it states that the: “addition of a generic word to an established trademark
does not defeat the owner’s rights in the mark.” Complainant based the
aforementioned affirmations on the grounds that Respondent has incorporated
into Complainant’s mark generic
words such as “sports” and “casinos.”
Furthermore
it states that the top-level domain extensions, spaces between words and
punctuation cannot be considered in order to
confer distinctiveness to the
domain names. Finally, Complainant alleges that the fact that Respondent uses
images of Complainant’s
casino, has deep linking to Complainant’s webpages, and
uses images of a historic landmark that references the location of
Complainant’s
casinos, all divert the web user’s attention gives the impression
that the webpages of Respondent are related to Complainant.
In
relation to the legitimate interest of Respondent, Complainant alleges that
though Respondent registered the trademark PRESIDENT
POKER with the German
Trademark Office in International Classes 28, 41 and 42 on July 15, 2003, these
registrations were made after
the registration of the service mark made by
President Casinos Inc.’s with the USPTO and Complainant’s first use of the mark
in commerce.
Additionally, it is alleged by Complainant that Respondent uses
images of President Casinos Inc.’s casinos and deep linking to Complainant’s
websites. Complainant considers that the fact that Respondent is demanding the
sum of US $15,000,000 for transfer of the domain names
demonstrates bad faith
according to the Policy.
Its
also alleged by Complainant that a: “reasonable internet user would assume
that the domain names are somehow affiliated with Complainant.” This
affirmation is structured on the basis that Complainant believes that all the
actions of Respondent were done with the intention
of: “usurping Complainant
goodwill by registration and use of the domain names, and obtain traffic
that was intended for Complainant.”
Pursuant
to its allegations, Complainant considers that the fact that Respondent is
making a profitable use of the domain names evidences
the fact that there is
no: “bona fide, non commercial or fair use” of the disputed domain
names.
Finally,
Complainant asserts that the fact that Respondent registered and uses domain
names that create a: “likelihood and confusion with the PRESIDENT marks,”
diverting the traffic originally directed to Complainant’s websites,
demonstrates that Respondent’s use of the mentioned domain names
is in bad
faith. Complainant lists the facts that evidence Respondent’s bad faith, i.e.,
the fact that both parties are in the same
field of business, the fact that
Complainant registered the service marks long before Respondent, the
unauthorized linking made by
Respondent to Complainant’s webpages, and the
unauthorized use by Respondent of an image of Complainant’s casino. Complainant
believes
that the aforementioned is sufficient evidence of Respondent’s bad
faith.
Therefore
the remedy sought by Complainant is that the disputed domain names registered
by Respondent be transferred to President
Casinos Inc.
B.
Respondent
According
to the case coordinator from the Forum, Respondent filed its Response to the
Complaint after the date established as the
deadline by the Forum—June 7, 2004.
Respondent stated that an extension to file its Response was granted with
Complainant’s consent,
and therefore it was received timely by the Forum on
June 18, 2004. Late Responses are not in compliance with Paragraph 5(a) of the
Rules.
The
Panel will address the admissibility of the Response further in this decision.
Respondent,
prior to contending with Complainant’s allegations, states that DiamantClub,
Ltd.: “acknowledges the trademark rights of President Casinos Inc., in the
United States of America to the ‘domain name’ ‘presidentcasino.com’.”
Pursuant to that recognition and as an act of good faith, Respondent’s accepts
transfer to Complainant of the following two disputed
domain names: <presidentcasinos.com>
and <president-casino.com>.
This
transfer, as stated by Respondent, is based on the grounds that it wishes to “respect
the goodwill of Complainant, taking as true their factual grounds on the
Complaint.”
Respondent alleges that the disputed
domain names <presidentpoker.com>, <president-poker.com>,
<presidentsports.com>, and <presidentsportsbook.com>
are not confusingly similar to Complainant’s trademarks.
Respondent
recognizes the fact that Complainant has registered service marks with the
USPTO, though it states that DiamantClub Ltd.
also registered before the German
Trademark Office the mark PRESIDENT POKER on October 13, 2003, in International
Classes 28, 41,
and 42.
Respondent
refutes Complainant’s allegations with regard to the similarity of the domain
names, alleging the marks are: “not similar in appearance.” Respondent
proceeds to make a study of the trademarks in dispute, as it considers that
this: “comparison must be made as a whole.”
In
order to demonstrate the differences between Complainant’s mark and
Respondent’s mark, it is stated the differences between the
graphic elements
that accompany the mark when visualized, i.e. that the mark registered by
President Casinos, Inc.: “uses a star on top of the word ‘president’,(…) is
all in caps lock letters (sic) in white color and with a black background.”
Respondent
states that the mark registered before the German Trademark Office has
completely different visual elements, i.e.: “the font of the words is
different, more stylish font with a gray background, and the falcon with
opened wings in yellow color. It is the substantial distinctive element in the
trademark.”
Respondent
considers that though both marks include the word “president” this is
not: “a substantial element in the distinctive sign.”
Pursuant
to the evidence, Respondent states that the differences of the elements between
the registered marks have more: “distinguishable elements than similar
elements.” This affirmation is based on the ground of a visual comparison
of each registered mark.
Respondent
states that the word “president” is descriptive and commonly used.
According to its definition it: “gives the understanding that whatever
product or service is, it will have a higher status.”
It
is asserted by Respondent that the fact that the registered trademarks by
either party are accompanied by another word, i.e., casino
or poker with visual
graphics, evidence the weakness of the word “president” in order to
distinguish each other. Respondent recognizes that Complainant has legal rights
in regard to its registered service mark,
though it states that it: “does
not hold exclusive rights to use every form of its mark PRESIDENT CASINO.”
In
reference to the domain names <presidentsports.com> and <presidentsportsbook.com>,
Respondent considers that though these are not registered marks, they are not
confusingly similar to Complainant’s marks. In
that sense, Respondent states
that: “registered and operational with webpages exist using the commonly
words mentioned of ‘president’, ‘poker’, ‘sports’ and ‘sport books’,
”
attaching to the Response evidence of webpages that include in some way either
of the above referred words.
In
reference to the legitimate right and interest of Respondent, it states that
DiamantClub Ltd. is a limited company according to
the laws of Antigua and
Barbuda, which was: “constituted to do all business activities, betting or
book making, marketing, promotion, advertising, among others.”
Pursuant
to its business objective, Respondent alleges that it incurred different
expenses to widen and strengthen its business, such
as “hiring” computer
software: “in order to proceed with gambling online.” Respondent asserts
that it subscribed to a License Agreement with a Canadian company named “World
Poker Central,” and with a Swedish
company named “Boss Media.”
In
relation to the registration of its mark, Respondent asserts that this was made
with the German Trademark Office because Respondent’s
nationality is German,
and Respondent was ignorant of Complainant’s business, contending that he was
first aware of the existence
of President Casinos Inc., by its communication
dated March 11, 2004.
Respondent
alleges that it has made a considerable investment in Respondent’s business,
i.e.: “screen designs, purchasing domains, creation of webpages, translation
of German and English languages to become the first multilingual
poker website
in the world, trademark registration, technicians, software providers,”
among others. Respondent believes that these expenses are sufficient to
evidence the legitimate interest in the use of the disputed
domain names, in
contention with Complainant allegations.
Finally,
in regard to the alleged bad faith of Respondent in registering the disputed
domain names, it is contended in the Response
that the fact that Respondent was
ignorant of the existence of Complainant’s business and that the domain names
were available at
the moment of registration is evidence that there is no proof
of bad faith in Respondent’s actions.
Contending
the allegations made by Complainant in relation with the sum of money demanded
by Respondent in order to transfer the disputed
domain names, Respondent
alleges that the sum of US$15,000,000 was intentionally, “exaggerated”
as it did not intend to sell and/or negotiate for the domain names.
According
to all the aforementioned statements and contentions, Respondent alleges that
the fact that it has agreed to transfer the
domain names <presidentcasinos.com>
and <president-casino.com> evidences its lack of bad faith.
For all
the foregoing reasons Respondent requests that the relief sought by Complainant
be denied.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Likewise,
Paragraph 10(d) of the Rules for Uniform Domain Name Dispute Resolution Policy,
provides that: “[t]he Panel shall determine the admissibility, relevance,
materiality and weight of the evidence.”
In the
present case, the Panel wants to place emphasis in the importance of the
evidence filed by the parties to prove their assertions,
which has been studied
to determine its relevance and weight in arriving at a decision. The Panel
wishes to clarify that the statements
that have been accompanied by evidence
have been given more importance than the mere statements made by the parties
without further
demonstration of their existence.
The
Case Coordinator at the Forum informed the Panel by communication dated June
21, 2004, that the Response was not received in the
time frame established for
submitting the Response, according to Paragraph 5(d) of the Rules and Paragraph
6 of the Supplemental
Rules. As a consequence the Panel is not obligated to
accept this late Response, in accordance to Paragraph 10 of the Policy.
According
to the Rules Paragraph 14, the Panel can draw inferences that it
considers appropriate, if it finds either party to be in default.
The
fact that Respondent submitted the Response after the deadline, according to
Paragraph 14(b) of the Rules, constitutes a technical
default, which allows the
Panel to take such fact as evidence against the party in default, i.e.,
Respondent. The aforementioned
is based on the grounds that the Forum never
acknowledged receipt of the request for an extension by Respondent to
Complainant, nor
is it stated by Complainant that it consented to the mentioned
extension, as seen by the Panel in the documentation included in the
case file.
Notwithstanding
the aforementioned, the Panel wants to underline that in order to have an
adequate vision of the facts that gave ground
to the present proceeding, it has
determined to take into consideration certain contentions and evidence filed by
Respondent, in
regard to the allegations filed by Complainant.
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;
(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.
The
Panel will proceed to make a thorough study in order to make its decision in
regard to the present matter. The Panel has decided
to arrange in pairs the
disputed domain names, to make methodical study. In that order of ideas, these
have been divided as follows:
a.
<presidentcasinos.com>
and <president-casino.com>
b.
<presidentpoker.com>
and <president-poker.com>
c.
<presidentsportsbook.com>
and <presidentsports.com>
a.
<presidentcasinos.com> and <president-casino.com>
Respondent
has declared in its Response its intention to transfer the domain names <presidentcasinos.com>
and <president-casino.com> to Complainant. This statement is based
on the grounds that Respondent acknowledges Complainant’s rights over the
mentioned domain
names, based on Complainant’s trademark, and recognizes
Complainant’s goodwill in the industry of gambling.
Therefore
Complainant’s assertion in regard to the fact that the disputed domain names
<presidentcasinos.com> and <president-casino.com> are
confusingly similar to President Casinos Inc.’s registered trademarks has been
evidenced, and therefore Complainant has succeeded
according to Paragraph
4(a)(i) of the Policy.
b. <presidentpoker.com> and
<president-poker.com>
It
has been evidenced by both parties that they have a registered trademark,
before competent Trademark Offices, and evidence of such
registrations has been
attached to both the Complaint and the Response. Complainant had a registered
trademark and had registered
its domain name by 1996, and has been making
public use of both since that time, according to the evidence attached.
Respondent
registered its trademark before the German Trademark Office, though it has no
domicile and/or current business in the Republic
of Germany.
It
is noteworthy that the fact that both parties have a registered trademark gives
both of them right to register domain names incorporating
their marks.
Therefore, the Panel has given special weight to the evidence attached to each
of the briefs filed by the parties.
The
examination of similarity that has to be made in order to establish confusing
similarity between domain names and registered marks
has a special ingredient:
to valuate what the ordinary web surfer is looking for when he enters the
Internet, in order to be able
to establish whether or not a domain name is
confusingly similar to Complainant’s trademarks.
Complainant
has evidenced that it is a company that operates directly or through its subsidiaries
dockside casinos, and has gained
a recognition in the gambling industry.
Respondent has recognized Complainant’s goodwill in this industry.
For
this Panel, the word “President” is the predominant expression in the mark
context, the one that will identify and differentiate
it from other companies
in the same industry.
An
ordinary web surfer, if looking for special services regarding this industry,
will relate to the word President, and not to the
words that follow.
Therefore,
the fact that Complainant has recognized goodwill in the gambling sector,
though its service mark is PRESIDENT CASINOS,
it is likely that confusion might
arise from the fact that when searching the web, a consumer of those services
when finding <president-poker.com> and/or <presidentpoker.com>
is led to believe that these are subsidiaries or affiliates of Complainant.
It
is very important to note that when the consumer public is searching the
Internet, it does not have the opportunity to make a visual
comparison of the
graphic features that accompany the
trademark, i.e., letter font and colors. In regard to domain names, the
predominant valuation is the orthographical
similarity, as it is on these
grounds that the user will be diverted from its original search, misbelieving
that there is a connection
between one and other. There is no use for the
general criteria of comparison in the similarities of marks, and therefore this
Panel
considers that the analysis made by Respondent in this regard is not
appropriate..
Moreover,
the fact that a domain name includes well known marks adding generic words,
i.e. poker[1],
cannot divert the fact that the predominant, well known, recognized word will
be that the web surfers will be searching. In the
present case, due to
Complainant’s goodwill, the predominant word will be “President” when searching
for gambling services.
In the case of Telstra Corporation
Limited v. Peter Lombardo, Marino Sussich and Ray Landers[2],
the Panel stated that:
It is clear that
the Domain Names incorporate, as their first part, the word TELSTRA. Given the
finding above the question arises
whether the addition of a descriptive or
generic element to the trade mark is sufficient to render it distinguishable.
Complainant
refers to the previous WIPO decision Quixstart Investments Inc. v
Dennis Hoffman, WIPO D2000-0253 where the panel found that the
addition of
generic words to Complainant’s mark was not sufficient to escape the finding of
similarity. Likewise, Complainant referred
to the WIPO decision Cherno
Communications Inc. v Jonathan Dennis Kimball, WIPO D2000-0119, that the
placement of hyphens is also
irrelevant in determining confusing similarity.
According
to this indisputable fact, when evaluating the similarity and confundability of
the disputed domain names <presidentpoker.com> and <president-poker.com>
to the registered trademark of Complainant, the Panel considers that it has
been evidenced that there are grounds to affirm that
these are sufficiently
similar to Complainant’s marks, as the predominant and identifier word of the
services offered by Complainant
is the word “President,” included in both
disputed domain names. The addition of generic words is not enough, especially
when the
generic word is closely related to the business undertaken by
Complainant through its registered marks. The Panel considers that
any web
surfer would be confused into thinking that the disputed domain names are
associated with Complainant somehow.
Based
on the foregoing, the Panel considers that Complainant’s domain names and trademarks
are confusingly similar to those domain
names registered by Respondent and
examined hereto, and therefore Complainant has succeeded in meeting the
requirements of Paragraph
4(a)(i) of the Policy.
c. <presidentsportsbook.com>
and <presidentsports.com>
In regard with the disputed domain names
<presidentsportsbook.com> and <presidentsports.com>,
the word “president” is accompanied by a generic word, i.e., sports [3]and
sportsbook.
The determination of confundability
between trademarks and registered domain names implies that the words that
compose them have to
be considered as a whole, unveiling the registrant’s
intention when filing its registration in order to enable the web user to
easily identify its services when
searching a certain domain name.
The Panel considers that both the words “sports”
and “sportsbook” are generic terms which identify services and/or
activities in the gambling industry. The addition of said words to a recognized
mark for services of gambling, i.e. “president”, whose goodwill has been
recognized by Respondent, does not give enough distinctiveness
to the
registered domain names <presidentsportsbook.com> and <presidentsports.com>
by Respondent, in order to avoid any kind of association by a consumer to
webpages that offer Complainant’s services.
It is noteworthy to the Panel that the
trademark of Complainant is the prefix
in both domain names, i.e. the word “president” plus a generic word such
as sport. It is considered by the Panel that these domain
names are confusingly
similar to Complainant’s trademarks.
When making the study of confusing
similarity between trademarks and domain names there are several criteria that
have to be considered.
Some of these criteria are, for example, likelihood in
the orthography or typing of the registered mark and the disputed domain name.
The fact that only minor written differences exist between a mark and a domain
name, i.e., spelling mistakes that any ordinary consumer
can incur when
searching the web, evidence a domain name that is confusing to the registered
trademark. Also, the fact that there
is a visual similarity between the mark
and the registered domain name can create likelihood of confusion between the
mark and the
domain name. Finally, the fact that the disputed domain names offers
services in the same industry as the registered mark leads the
web surfer to
believe that he is accessing a webpage of the owner of the trademark, i.e.,
domain names bearing the trademark “president”,
such as <presidentsportsbook.com>
and <presidentsports.com> can lead a consumer to believe he is
accessing a webpage of President Casinos Inc., if searching for gambling
services, when
he is not. Plus, the addition of generic words for the business
of gambling, such as “sports” and “sportsbook”, generate strong
ideological similarity between the signs that are being compared, as the
Internet user can easily make an association
in his mind between the domain
name and the trademark.
Pursuant to the aforementioned, there is
no dispute in the fact that Complainant has been well recognized in the
industry of gambling.
Though Respondent has registered the domain names <presidentsportsbook.com>
and <presidentsports.com>, these domain names include generic
words, i.e., sports and sportsbook. Furthermore, the expression “sportsbook”
is associated with the activity of gambling, once again directly related with
the activity and industry of Complainant.
For this Panel, Respondent failed to
present sufficient proof of a distinctive element of the disputed domain names,
whilst Complainant
attached evidence that demonstrated its well recognized
activity, industry, and notoriety of its service marks. For the Panel, the
word
“president” has by itself sufficient notoriety, distinctiveness, and it
has the enough phonetical strength to lead a consumer of services in
the
industry of gambling and casinos, only by the use of said word. The Panel
disagrees with Respondent’s assertion that the word
“president” is: “merely
descriptive and commonly used.” In fact, applying trademark principles as
the ones invoked by Respondent, there is nothing descriptive in the term
“president” with
regard to any of the
products and/or services of the International Trademark Classification.
In
a very similar case held between Donald J. Trump and Trump Hotels & Casino
Resorts Inc. v. Sports Management[4],
the Panel stated:
Complainant, through registration and use
has established that it has rights in the TRUMP PLAZA mark. Furthermore, Respondent's <trumpplazasportsbook.com>
domain name is confusingly
similar to Complainant's mark because it incorporates the entirety of
Complainant's mark and merely adds the descriptive
term
"sportsbook." The use of a
descriptive term with a famous mark does not create a mark capable of
overcoming a claim of confusing similarity (Emphasis added).
The Panel considers that Respondent used generic and/or
descriptive words when registering the disputed domain names. The similarity
to
Complainant’s trademark, and furthermore the goodwill recognized by Respondent
of the services in the industry of gambling of
President Casinos Inc.,
evidences there is confusing similarity with Complainant’s trademarks.
Therefore the Panel considers that these
disputed domain names are not sufficiently distinctive to avoid confusion. The
Panel concludes
that Complainant has met the requirements of Paragraph 4(a)(i)
of the Policy.
a. <presidentcasinos.com>
and <president-casino.com>
Considering that Respondent has agreed to
transfer the domain names <presidentcasinos.com> and <president-casino.com>,
the Panel considers that no further study has to be made on Respondent rights
or legitimate interest in regard to said domain
names, since it has expressly
recognized that it lacks of such rights and interest.
Therefore the Panel considers that
Complainant has met the requirements of Paragraph 4(a)(ii) of the Policy.
b.
<presidentpoker.com>
and <president-poker.com>
Respondent
contends in its Response that it registered the trademark PRESIDENT POKER
before the German Trademark Office. The Panel assumes that the
registered trademark by Respondent was made according to the requisites of the
German Trademark Law.
The
Panel is convinced that the German Trademark Office did the correspondent
analysis of similarity with other registered trademarks
before that Office, and
proceeded with its registration on the grounds that the interest of the
registrant was to make use of said
trademark in good faith. The fact that is
noteworthy for this Panel, amongst the others that will be addressed further
on, is that
the registration was made before the German Trademark Office, when
this trademark was not going to be used to offer current services
in the German
market. In light of the aforementioned, it is relevant to emphasize that domain
names when registered do not necessarily
imply that they are going to be used
in a certain market, as the scope and advantage of Internet services and domain
names is to
create possibilities to commercialize, offer services and
information worldwide just by accessing the webpage. What is highly suspicious
to the Panel is that there is no evidence filed by Respondent explaining the
reason for registering the trademark before the German
Trademark Office other
than the fact that it is the Respondent’s birthplace.
A
thorough study of the evidence attached by the parties has been made by this
Panel, and of the facts that have surrounded and gave
basis to the present
proceeding, in order to establish the absence of rights and legitimate interest
by Respondent to own and use
the domain names <presidentpoker.com>
and <president-poker.com>, as alleged by Complainant.
The
Panel considers that Respondent failed to contradict any of Complainant’s
allegations and claims. In addition to the fact that
it agreed to transfer two
of the six disputed domain names, acknowledging Complainant’s rights and
goodwill, was considered by this
Panel sufficient proof to demonstrate
Respondent has no right or legitimate interest in regard to the <presidentcasinos.com>
and <president-casino.com> domain names. The aforementioned is an
indicium to the Panel that Respondent has no legitimate interest in the
disputed domain
names, as there is no evidence of its bona fide offering
of services, but rather a clear intention to divert Complainant’s customers by
registering those domain names.
This
has been addressed by other Panels, as in the case Colgate-Palmolive Company v.
Domains For Sale[5], in which it
was stated that:
Respondent’s willingness to transfer the domain name to
Complainant as reflected in its Response is evidence that it has no rights
or
legitimate interests in the domain name. In addition, there is no evidence
presented by Respondent that would indicate that it is commonly known by the
domain name or that
the domain name is being used in connection with any bona
fide offering of goods or services (Emphasis
added).
The Panel considers that it has been thoroughly proved
by Complainant that it has been making public use of its trademarks and
services
in the industry of gambling, for which it has gained public
recognition and goodwill. This fact has been recognized by Respondent.
Although Respondent submitted evidence of the
existence of a corporation also engaged in the industry of gambling, it has not
filed
any evidence that proves that it is recognized by its domain name and/or
registered trademark. Moreover, though it is contended by
Respondent that it
had no knowledge of Complainant’s business, this was not properly evidenced,
but on the contrary, Respondent recognized
Complainant’s goodwill in the
gambling industry. Additionally, the fact that one of the disputed domain names
used an image of one
of Complainant’s casinos leads this Panel to believe that
these assertions made by Respondent are not credible.
The fact that Respondent has a registered trademark and has
registered the domain names initially indicates that DiamantClub Ltd.
has
rights and legitimate interest in said disputed domain names. However,
exceptions can be made when the evidence leads to the
conclusion that the
trademark registrations were not made in good faith.
In the case of Madonna Ciccone p/k/a/ Madonna v. Dan
Parisi and “Madonna.com”[6],
the Panel stated that:
Respondent
contends that it has rights in the domain name because it registered MADONNA as
a trademark in Tunisia prior to notice
of this dispute. Certainly, it is
possible for a Respondent to rely on a valid trademark registration to show
prior rights under
the Policy. However, it would be a mistake to conclude that
mere registration of a trademark creates a legitimate interest under
the
Policy. If an American-based Respondent could establish "rights" vis
a vis an American Complainant through the expedient
of securing a trademark
registration in Tunisia, then the ICANN procedure would be rendered virtually
useless. To establish cognizable
rights, the overall circumstances should
demonstrate that the registration was obtained in good faith for the purpose of
making bona
fide use of the mark in the jurisdiction where the mark is
registered, and not obtained merely to circumvent the application of the
Policy.
This Panel agrees with the fact that although the
owner’s rights derived from a trademark registration are not under dispute, the
domain name registration must be accompanied by evidence that demonstrates that
it has been made in good faith, for a bona fide offering
of its services, and
not to profit from another’s goodwill and public recognition.
Additionally, there is no evidence that proves
Respondent is making a bona fide offering of goods and services for a
legitimate fair
use. Acknowledging Complainant’s rights, claims and goodwill,
plus the fact that one of Respondent’s webpages had deep linking to
one of
Complainant’s webpages shows the intention to divert and confuse the public for
commercial gain.
Finally, the Panel considers that it has not been
evidenced that Respondent is authorized to advertise its webpages using images
of
Complainant’s casinos, or that it is an authorized distributor or operator
of President Casinos Inc., nor that its activity is non-commercial.
Respondent
contends not only that it has invested over US $ 600,000, but in his
requirements for selling its domain names Respondent
demanded the sum of US $
15,000,000 from Complainant in order to transfer the disputed domain names.
This Panel considers that, along with the facts
evidenced and presented by both parties, and though Respondent has a registered
trademark
along with the domain names, the fact that Respondent has recognized
Complainant’s goodwill and has failed to prove any of the circumstances
in
regard to Paragraph 4(c) of the Policy, it is the Panel’s conclusion that there
was an intentional infringement by Respondent,
with a clear intent to divert
consumers to its webpages and services.
The Panel considers that Complainant has met the
requirements of paragraph 4(a)(ii) of the Policy, as there is sufficient
evidence
that Respondent has neither rights nor legitimate interests in the
domain names<president-poker.com> and <presidentpoker.com>.
c. <presidentsportsbook.com>
and <presidentsports.com>
In
regard to the disputed domain names <presidentsportsbook.com> and
<presidentsports.com>, this Panel relies upon the aforementioned
observations. Though it wants to make emphasis in regard to the fact that
adding a
generic word to a registered, well known trademark does not give
rights or evidence legitimate interests in the use of the disputed
domain
names.
As
addressed before, Respondent has recognized Complainant’s goodwill. This is an
irrefutable fact for the Panel. Pursuant to the
aforementioned facts, it has
been evidenced that Complainant’s services are identified solely as “President,”
and therefore an ordinary web surfer when navigating the Internet will search
for the “president” webpages, when searching services related to the
gambling industry. This can lead a web user to make an association with
Complainant’s
services when using the webpages associated with the <presidentsportsbook.com>
and <presidentsports.com> domain names, registered by Respondent.
Furthermore,
Respondent has failed in evidencing his legitimate interest in the use of
mentioned domain names, as no proof has been
attached that demonstrates that
Respondent, prior to having any notice or contact with Complainant or this
proceeding, has made a
bona fide offering of goods and services or a non
commercial use of the disputed domain names. To the contrary, the Panel finds
enough
evidence that demonstrates that Respondent was fully aware of the
existence of Complainant prior to registering the disputed domain
names. In
fact, the Panel is led to believe that this awareness was the main reason for
which Respondent chose such domains, to the
detriment of Complainant.
In
the case Dixons
Group Plc v Mr. Abu Abdullaah[7], the Panel
considered that:
The use must not be such as "to misleadingly divert
consumers or to tarnish the trademark or service mark at issue." On
the
evidence before the Panel, it is reasonable to conclude that the first of these
things will occur, even if briefly. Thus, Respondent's
website (Tab 8,
Complaint) requires the viewer to read to the end of the page before
Respondent's disclaimer appears. Prior to this,
however, the headings
"Dixons-Online.com, Dixons-Online.co.uk" and the sub-heading
"Dedicated to YOU the customers
of Dixons PLC" give rise to the clear
impression that the site is operated by Complainant and not by an altruistic
consumer
Complaints service.
The fact that web surfers can easily be
diverted, confused and misled, believing that they are using Complainant’s
services, is a
fact that was not properly contended by Respondent. Evidence was
attached in the Complaint that proved that this diversion could
happen, as
there is no distinctiveness in Respondent’s registered domain names that can
differentiate them from the well recognized
marks of President Casinos Inc.
The Panel that studied the case Ansell
Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd[8],
considered that:
Nor is there any evidence that Respondent
is commonly known by the domain name or is making a legitimate noncommercial or
fair use
of the domain name within the meaning of paragraph 4 (c)(ii) or (iii)
of the Policy. As discussed below, Complainant's evidence suggests
that
Respondent has attempted to use the domain name for commercial gain.
The
Panel considers appropriate to make the following comments with respect to this
element of the Policy.
According
to Paragraph 4(b) 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 a domain name in bad faith:
(i)
Circumstances
indicating that Respondent has registered or has acquired the domain name
primarily for the purpose of selling, renting,
or otherwise transferring the
domain name registration to Complainant who is the owner of the trademark or
service mark or to a competitor
of that Complainant, for valuable consideration
in excess of Respondent’s documented out-of-pocket costs directly related to
the
domain name; or
(ii)
Circumstances
indicating that Respondent 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 Respondent has engaged in a pattern of
such conduct;
or
(iii)
Circumstances
indicated that Respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor;
or
(iv)
Circumstances
indicating that, by using the domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet
users to his website or
other on-line location, by creating a likelihood of confusion with
Complainant's mark as to the source, sponsorship,
affiliation, or endorsement
of his website or location or of a product or service on his website or
location.
Taking
the above into consideration, and according to the study of the present case,
this Panel wants to make the following observations
in regard to the disputed
domain names at issue.
a. <presidentcasinos.com>
and <president-casino.com>
In regard to bad faith by Respondent, the
fact that it agreed to transfer the disputed domain names <presidentcasinos.com>
and <president-casino.com>, leads this Panel to avoid addressing
this issue in regard to said domain names, taking into account that Respondent
has expressly
stated its intention to transfer said domain names as an act of
good faith, accepting the claims alleged by Complainant.
The Panel considers on this matter that
the fact that Respondent has accepted Complainant’s allegations as a whole
concerning the
domain names <presidentcasinos.com> and <president-casino.com>
it is an irrefutable indicium of Respondent’s bad faith in registration and use
of said domain names.
Therefore the Panel considers that
Complainant has met the requirements of Paragraph 4(a)(iii) of the Policy.
b. <presidentpoker.com> and
<president-poker.com>
Notwithstanding
the fact that Respondent has registered the trademark PRESIDENT POKER and the
domain names <presidentpoker.com> and <president-poker.com>,
as it has been studied and stated by this Panel, the fact is that no evidence
has been attached in regard to the rights and
legitimacy of use of the domain
names, demonstrating that Respondent’s actions related with the registration of
the disputed domain
names and use have been made in bad faith.
The
Policy establishes some facts that can evidence bad faith by Respondent. First,
the fact that Respondent has made an offer to
sell the domain names, at a value
above the costs of registration, is prima facie evidence of bad faith.
The Panel considers that domain names, as trademarks can be commercialized, and
for that matters the owner,
in this case DiamantClub Ltd., can state its
initial price. This price must reflect the real value of the trading commodity,
in order
to be purchasable.
It has
to be considered that when a party is interested in acquiring a domain name on
a legitimate basis that the domain name has
not been registered for different
purposes than to rightfully commercialize its services on the Internet. If it
can be inferred that
a domain name has been registered in order to bring forth
an excess of out of pocket costs, from a party that is being directly affected
by the registration, there is evidence of bad faith.
In this case, the Panel has considered
and studied thoroughly the evidence submitted by each party. For the Panel the
following facts
are highly suspicious:
1. The fact that Respondent alleges to have
its domicile in Antigua and Barbuda, while its server is in Costa Rica, and
chose to register
the trademark in Germany, this being neither its domicile for
business nor the principal language for the domain names registered,
solely on
the grounds that Germany is Respondent’s birth place. The aforementioned facts
lead the Panel to believe that Respondent
made this registration before the
German Trademark Office, as a way to have a registered trademark confusingly
similar to Complainant’s
and therefore to enable him to allege legitimate
rights over the domain names.
2. That Respondent offered to sell the
domain names to Complainant for the sum of US $15,000,000.
3. That Respondent insinuated that if there
was no commercial offer to buy the domain names by Complainant, these could be
offered and
sold to third parties, namely, competitors of Complainant.
4. That Respondent’s webpages have links to
Complainant’s webpages.
5. That Respondent’s webpages use images of
Complainant’s casinos, and used images of historic places i.e., the Arch of St.
Louis, when
it does not have physical establishments operating in mentioned
city, while Complainant does.
6. That Respondent has recognized
Complainant’s goodwill in the industry of gambling, though alleging it did not
have any previous knowledge
of its existence.
The fact
that in order to transfer the domain names Respondent has requested the sum of
US $15,000,000, without giving credible or
supported evidence of the commercial
cost of the domain names, is for the Panel evidence of its bad faith. Moreover
the Panel considers
that the lack of consistency in Respondent’s domicile, work
area and registration activities, is a veil for its illegitimate interests
in
diverting and using the goodwill of a third party for its own commercial
benefit.
Additionally,
both the trademark and domain names bear the well recognized mark PRESIDENT.
This is indicative of Respondent’s intentions
to the Panel, as Respondent knew
of the services and goodwill of Complainant. Complainant has submitted
sufficient evidence that
shows Respondent’s intention to sell the domain names
at an excessive price, a fact that was not contended with credible allegations
by Respondent.
In the case of General Electric
Company v. Normina Anstalt a/k/a Igor Fyodorov[9]
the Panel stated the following:
In this case, Respondent
offered to sell the disputed domain names to Complainant in Response to an
inquiry from Complainant that indicated a desire
to acquire the names.
Standing alone, an offer to sell domain names in Response to a query from
another party does not constitute bad faith within the
meaning of the Policy.
There is nothing inherently wrongful in the offer or sale of domain names,
without more, such as to justify
a finding of bad faith under the Policy.
However, the fact that domain name registrants may legitimately and in
good faith sell domain names does not imply a right in such
registrants to sell
domain names that are identical or confusingly similar to trademarks or service
marks of others without their
consent.
“Respondent in this case has offered to sell to Complainant, at a
substantial price, domain names corresponding to marks in which Complainant
has
rights. Absent some exceptional justification from Respondent, it is
reasonable to infer that it registered the names with the primary intention
of
selling them to Complainant (or to a competitor) for valuable consideration in
excess of its out-of-pocket expenses directly related
to the names. This
constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy” (Emphasis added).
As in the case cited above, the Panel concludes that the circumstances
of the present dispute indicate that Respondent registered
the domain names at
issue primarily with the intention to sell them to Complainant or its
competitors, as expressly proposed by Respondent
to Complainant in the e-mail
of April 26, 2004. Hence, it was Respondent’s purpose to obtain economic profit
from the unlawful sale
of the domain names, which is a clear case of bad faith.
Furthermore, Complainant has attached evidence that demonstrates that
the consumer public is being confused by the existence of domain
names
confusingly similar to the service marks registered by Complainant. This
allegation has not been contended by Respondent. Additionally,
the Panel
considers that because Respondent recognized Complainant’s goodwill in the
Response, it is likely (as it has already been
addressed) that there is the
intention by Respondent to divert the web surfers, and make believe that by
someway the disputed domain
names are somehow endorsed, authorized distributors,
or operators of the services offered by Complainant.
The fact that a graphic of Complainant’s casino is included on one of
the webpages of Respondent, and that there is linking to Complainant’s
webpages, imply some kind of relationship between the parties, as they are in
the same industry. This can affect the economical interest
of Complainant, as
the traffic that was intended for President Casinos Inc.’s webpages has been
diverted to Respondent’s webpages.
The Panel that studied the case of Ticketmaster Corporation v. Woofer Smith[10],
considered that:
Respondent's
diversion of traffic to "www.ticketvault.com", a website offering
goods and services competing with those of
Ticketmaster, is also indicative of
bad faith pursuant to Sections 4(b)(iii) and (iv) of the Policy. Ticketmaster
Corporation v.
netAfrik,(…) finding bad faith where the domain names and the
services offered were similar such that there was "no doubt Respondent
deliberately chose the disputed domain names"; EBAY, Inc. v. MEOdesigns and
Matt Oettinger, (…), finding that Respondent registered
and used the domain
name <eebay.com> in bad faith to promote competing auction sites. One
administrative panel has even explained
that "although not specifically
mentioned in the non-exhaustive Policy bad faith provisions, the very fact of
registering such
a famous mark to use in the same business as Complainant reeks
of bad faith." Christie's Inc. v. Tiffany's Jewelry Auction,
Inc.
The
Panel considers that there is sufficient evidence that demonstrates that
Respondent has registered the disputed domain names in
bad faith, and is making
use of them with the intention to create a likelihood of confusion with
Complainant’s trademarks. This is
based on the grounds that Respondent has
revealed its intentions to sell the domain names to Complainant or to a third
party, evidencing
its lack of interest in keeping the registered domain names.
Furthermore,
the fact that Complainant’s business has been disrupted, as Respondent’s domain
names have diverted traffic that was
originally directed to Complainant’s
webpages, because of the great similarity in the registered domain names by
Respondent with
the marks of Complainant, demonstrate Respondent’s bad faith.
Additionally
Respondent has failed to place any sort of disclaimers on its webpages which
evidence that Respondent is not endorsed
by, sponsored or affiliated with
Complainant’s business, evidencing that Respondent’s intention was to create
this kind of confusion
with the consumer, in order to have commercial gain by
using the domain names.
Pursuant
to all the aforementioned, the Panel considers that Respondent’s failure to
dispute Complainant’s allegations allows the
Panel to infer that the claims
filed by Complainant are true, and therefore evidences Respondent’s
registration and use of the domain
names in bad faith.
This
conclusion is made by the Panel after evidencing that Respondent failed to
address with or without purpose the following facts
alleged by Complainant:
1. The fact that Respondent did not make any reference or alleged
unawareness of Complainant’s business in their responses to the cease
and
desist letters sent by Complainant.
2. The
fact that Respondent did not contend the statement that in its webpages there
was linking to Complainant’s webpages. Neither did
it contend the fact that it
used images of Complainant’s casinos.
3. The fact that after the first cease and desist letter sent by
Complainant, Respondent changed the image of Complainant’s casino in
St. Louis,
for the St. Louis Arch. This change was made even though Respondent did not
file any evidence of having or operating a
casino in the city of St. Louis,
Missouri, or contending Complainant’s allegations on this regard.
In the case Reuters Limited v
Global Net 2000, Inc[11],
the Panel stated:
The Panel draws two inferences where Respondent has failed
to submit a Response: (a)"Respondent does not deny the facts which
Complainant asserts" and (b) "Respondent does not deny the
conclusions which Complainant asserts can be drawn from those
facts.
According
to the aforementioned, this Panel concludes that Complainant has met its burden
to evidence Respondent’s bad faith in registering
and using the domain names
<presidentpoker.com> and <president-poker.com>, as
stated in Paragraph 4(a)(iii) of the Policy.
c. <presidentsportsbook.com>
and <presidentsports.com>
The
Panel is consistent with its aforementioned observations in relation with
Respondent’s registration and use in bad faith of these
domain names.
Regardless of all the aforesaid, considering the disputed domain names <presidentsportsbook.com>
and <presidentsports.com>, the Panel wants to make the following
observations.
It is clear that Respondent’s business activity is in
the same industry as Complainant. The disputed domain names are directly
connected
to Complainant’s business as they all bear the trademark PRESIDENT.
Moreover, it has been well evidenced that they both have gambling websites,
hence it has been acknowledged that Complainant has a
recognized goodwill in
the gambling industry. For the Panel the fact that generic words have been
added to Complainant’s trade mark,
i.e., sports and sportsbook, is sufficient
evidence of Respondent’s intention to attract business and traffic to its
websites. Respondent
has created a likelihood of confusion for the web surfer.
In the case Beemak
Plastics, Inc. v. WestRep Group[12],
the Panel stated that:
It is also clear
from the annexes that the domain name at issue had resolved to Complainant's
competitor's website at which products were offered for sale that directly
competed with Complainant's trademarked products and at which Complainant's
trademark was used in metatags in order to attract search
engines when a user
entered Complainant's trademark in the search request. Complaint, Annexes K
and M. The Panel believes that such conduct constitutes the registration of a
domain name primarily for the
purpose of disrupting the business of a
competitor. Such conduct constitutes bad faith registration and use under
paragraph 4(b)(iii)
of the policy. (Emphasis
added).
The considerations made by the Panel
concerning Respondent’s offer to sell the domain names to Complainant or its
competitors for
an excessive price, made in the prior section, are also found
applicable to the <presidentsports.com> and <presidentsportsbook.com>domain
names. As a consequence, the Panel finds clear evidence of bad faith on the
part of Respondent.
According to the observations and study
made by this Panel, it is considered that Complainant has met the requirements
of Paragraph
4(a)(iii) of the Policy, in demonstrating Respondent’s bad faith
in registration and use of the domain names <presidentsportsbook.com>
and <presidentsports.com>.
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 <presidentcasinos.com>, <president-casino.com>, <presidentpoker.com>, <president-poker.com>, <presidentsports.com>
and <presidentsportsbook.com> domain names be TRANSFERRED
from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: July 13, 2004
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