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Stanworth Development Limited v. Kaneoka Senuchi [2005] GENDND 1422 (30 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stanworth Development Limited v. Kaneoka Senuchi

Case No. D2005-0703

1. The Parties

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

The Respondent is Kaneoka Senuchi, Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <riverbelleonlinecasino.net> is registered with Cydentity, Inc. dba Cypack.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2005. On July 5, 2005, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On July 6,2005, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On July 19, 2005, the Center notified the Complainant of a deficiency in the Complaint, namely that the language in which the Complaint was filed, the English language, was not the language of the registration agreement for the disputed domain name, which was the Korean language. After receiving representations from the Complainant on that issue, the Center notified the Complainant that it had decided to accept the Complaint in the English language and commence the proceedings, accept a response in either the Korean language or the English language, appoint a Panel familiar with both such languages if available and allow the Panel when appointed to make the decision as to the correct language of the proceedings, noting in addition that the Panel had discretion to write a decision in either language and that the Panel might request translation of either party’s submissions. This issue is dealt with in this decision under the heading ‘The language of the proceeding.’ The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2005.

The Center appointed The Honourable Neil Anthony Brown QC as the Sole Panelist in this matter on August 23, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Language of the proceeding

As mentioned above, an issue has arisen in this proceeding as to the language in which the proceeding should be conducted. That issue has arisen because the registration agreement is expressed in the Korean language. The preliminary question is thus whether the language of the proceeding should also be in Korean.

Paragraph 11(a) of the Rules provides as follows:

‘(a) Unless otherwise agreed by the Parties, or specified otherwise in the registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.’

It is clear from the history of the matter that the Parties have not agreed that the language of the proceeding should be anything other than the language of the agreement and it appears that there is no provision in the agreement to that effect. Accordingly, the starting point is that the language of the proceeding should be in the language of the agreement, namely Korean.

However, for very practical reasons, the Paragraph includes an important qualification to the effect that the Panel has a discretion to determine that the proceeding should be in a different language from the language of the registration agreement. Like all discretions, this discretion must be exercised judicially, having regard to the circumstances of the case. As the Paragraph itself expressly requires regard to be had to the circumstances, it must be inferred that those who drafted the Rules were particularly concerned that panels that had to consider this issue would pay particular attention to the circumstances of the case before them. The Panel as presently constituted has done that and, although it has weighed up all of the circumstances, it has given particular weight to ensuring that there is fairness done to both parties and that the efficacy of the scheme should be enhanced.

Having regard to the provisions of Paragraph 11(a) and having had regard to the circumstances of the administrative proceeding, the Panel exercises the authority conferred on it by the Paragraph and decides that the language of the administrative proceeding shall be English.

The circumstances to which the Panel has had regard and the reasons why it has come to this decision are as follows:

(a) the events that have given rise to the dispute have all been expressed in English. The contentious domain name is in English and consists of four English words run together, namely, river, belle, online and casino, together with the gTLD ‘.net.’ The domain name resolves to a website which is entirely in English and which adopts several colloquial English expressions and carries an advertisement in English. The links offering various blandishments on the site are themselves expressed in English as are the contents of those associated sites. Moreover, the link to the Complainant’s own site is in English as are the contents of that site. Indeed, there is nothing that has emerged in the material generated by this dispute that is expressed in the Korean language;

(b) it follows from the above that either the Respondent is proficient in English or he has the assistance of others who are, for his method of communicating with potential customers is by using the English language. Without prejudging any of the issues that arise for later determination, it is clear that the Respondent is targeting an English speaking audience and offering that audience the services that he clearly knew were being offered on the Complainant’s website in English. Accordingly, no hardship can be done to the Respondent if the dispute that he generated in English should now be resolved in English;

(c) no reason emerges from the material before the Panel to show why the proceeding should be conducted in Korean or in any language other than English;

(d) the Policy is available in English on the registrar’s own website;

(e) the Respondent appears to have a Japanese name and certainly has a Japanese address. There would therefore seem to be little if any point in conducting the proceeding in Korean;

(f) the Complainant has attempted to contact the Respondent who has not replied and it is therefore impossible to obtain his agreement on the language of the proceeding;

(g) it is fair and reasonable to both parties and will not prejudice either of them if the proceeding is conducted in English; and

(h) the scheme should be given a practicality that enhances its efficacy and promotes the prompt resolution of disputes; that notion is best served if this matter is conducted in English and now proceeds without delay.

4. Factual Background

The Complainant is incorporated under the laws of the Isle of Man and operates online casino and gaming sites. One such site, “www.riverbelle.com” has been operated since 1997, and receives about 250,000 hits per month. Its theme, which is used internationally, is a riverboat casino, with dice and playing cards.

To promote its business, the Complainant has registered a series of trademarks in the name RIVER BELLE in Australia, the United States of America, Canada and the European Community. Applications for other trademark registrations have been made in the same name. The Complainant has also registered as trademarks in Australia, the United Kingdom, and the United States of America and South Africa THE RIVER BELLE ONLINE CASINO logo and has also applied for the registration of that logo in South Africa. It has also registered as a trademark in Australia THE RIVER BELLE ONLINE CASINO and has applied to register the same trademark in the United States of America, the European Community and Canada. It also has separate applications on foot in Canada and Australia for THE RIVER BELLE LOGO and for THE RIVER BELLE WITH DICE DEVICE in the United States of America, the European Community, Canada and Australia.

The Complainant is, in each case, the proprietor of the registered trademark or the applicant for registration respectively.

Since 1997, the Complainant has also proceeded to register 127 domain names, most of which are generic Top Level Domains, others of which are from a wide distribution of country code Top Level Domains and virtually all of which are variations on the RIVER BELLE name and theme.

The Respondent registered the contentious domain name <riverbelleonlinecasino.net> on December 27, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant’s case is that the contentious domain name should be transferred to it because it can make out each of the three criteria prescribed under paragraph 4(a) (i-iii) of the Policy. It maintains, first, that the domain name <riverbelleonlinecasino.net> is identical or confusingly similar to the Complainant’s trademarks RIVER BELLE and THE RIVER BELLE ONLINE CASINO. In particular, it is said that it is confusingly similar to the Complainant’s trademark THE RIVER BELLE ONLINE CASINO because the substance of the domain name consists of the Complainant’s trademark.

The Complainant then contends that there are no facts tending to suggest that the Respondent has any rights or legitimate interests in respect of the domain name and that all of the facts point to the opposite conclusion.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith, for its trademarks and activities are so well known and its reputation so good that it must be assumed that the Respondent’s intention was to use them and trade on them improperly by registering the domain name. That conclusion is reinforced, the Complainant says, by the facts that the Respondent’s domain name resolves to the Respondent’s website which contains hyperlinks to other sites, the overwhelming majority of which relate to sites in direct competition with the Complainant’s online casino and gaming sites. The Complainant further contends that the Respondent’s conduct is in breach of trademarks and passing off laws.

In support of its application, the Complainant has tendered an Evidence Bundle of 70 pages of documents relating to its trademark registrations and applications, its promotional material, the Respondent’s registration of the contentious domain name and other material.

B. Respondent

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

6. Discussion and Findings

The Policy specifies three elements that a complainant must prove in order to succeed in having a domain name cancelled or transferred from the respondent to the Complainant. They are: (1) The respondent’s domain name must be identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (2) the respondent has no rights or legitimate interests in the domain name; and (3) the domain name has been registered and is being used in bad faith. These requirements are set out in paragraph 4(a) of the Policy. The Panel will deal with each of them in turn.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark registrations and applications referred to above and verified by the material contained in its Evidence Bundle, which includes copies of the registrations and applications. The registrations are for the mark RIVER BELLE and for the mark THE RIVER BELLE ONLINE CASINO. The trademark applications are for further registrations of THE RIVER BELLE ONLINE CASINO, THE RIVER BELLE logo, THE RIVER BELLE ONLINE CASINO logo and THE RIVER BELLE WITH DICE DEVICE. Accordingly, the Panel finds that the Complainant has rights in all of those trademarks and applications.

It is now necessary to see if the domain name is identical or confusingly similar to any of the Complainant’s trademarks.

The Panel finds, first, that the domain name <riverbelleonlinecasino.net> is confusingly similar to the Complainant’s trademark THE RIVER BELLE ONLINE CASINO. That is so for the following reasons. First, the domain name includes virtually all of the constituent words of the trademark. The domain name is thus virtually identical to the trademark and must inevitably be regarded as similar to it.

Secondly, the similarity between the two names is confusing and the confusion comes about in the following way. The Respondent, in choosing the constituent words of the domain name, has described an online casino with the same name as the Complainant’s online casino. As the Complainant’s online casino has been operating since 1997, and was operating at the time the Respondent registered the domain name in 2004, it is inevitable that internet users will assume that the casino referred to in the domain name is the Complainant’s casino, which of course it is not.

The fact that the domain name has the suffix ‘. net’ does not detract from this conclusion, for it has been held many times by UDRP panels that such additions must be disregarded for the purpose of determining similarity or otherwise; for example, see Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723 and Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043.

The Panel also finds that the domain name <riverbelleonlinecasino.net> is confusingly similar to the Complainant’s trademark RIVER BELLE. That is so for the following reasons. First, the domain name incorporates the substance of the trademark, namely the words RIVER BELLE, they are spelt the same way as in the trademark and they are phonetically the same. Accordingly, the names are substantially the same.

Secondly, it has been held that it does not absolve a domain name registrant on this issue if, as in the present case, it takes the entirety of a trademark and then adds a descriptive or generic word that simply describes the business or trade of the trademark owner. Thus, in Rada Mfg.Co. v. J.Mark Press a/k/a/ J. Mark Cutlery, WIPO Case No. D2004-1060, the evidence showed that the respondent had taken the trademark RADA, a trademark owned by the complainant which made cutlery and had simply made up a series of domain names such as <radacutlerysales.com> and <radaknives.com>. It was held that such additions did not sufficiently distinguish the domain names from the trademark and that the words that were added exacerbated the similarity, for it was widely known that Rada made cutlery and knives. Likewise, in the present case, the addition of the word ‘casino’ to the trademark ‘RIVER BELLE’ does not distinguish the domain name from the trademark, for operating a casino is exactly what the trademark owner does.

Not only is the domain name <riverbelleonlinecasino.net> similar to the trademark RIVER BELLE, but it is confusingly so. That is because the addition of the word ‘onlinecasino’ is an assertion that the domain name is concerned with an online casino named Riverbelle and, by implication, one that is owned by the Complainant. The cases cited above were similarly decided, for to add the word ‘cutlery’ to the RADA trademark in the Rada Case, for example, simply exacerbated the confusion already there and reinforced the erroneous notion that the cutlery promoted by the domain name was the cutlery of the trademark owner.

For the reasons already given, the Panel also finds that the domain name <riverbelleonlinecasino.net> is confusingly similar to the Complainant’s unregistered trademarks and those incorporating the logos specified above, for the logos all include the words ‘RIVER BELLE’ and ‘Online Casino’ and the online casino referred to in the domain name <riverbelleonlinecasino.net> would be assumed by any observer to be the Complainant’s online casino.

Accordingly, the Panel finds that there are numerous points where the contentious domain name is confusingly similar to all of the Complainant’s trademarks and that the criterion under paragraph 4(a)(i) of the Policy is therefore established.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain names.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.

But in this case the Respondent has not availed itself of this opportunity, for it did not file a Response to the Complaint. The Respondent is therefore unable to prove that it is within any of the three cases just set out. Nor is there any evidence suggesting that the Respondent could bring itself within any of the above criteria, either on the basis that it was using the domain name in the manner prescribed, was known by that name or was making a noncommercial or fair use of the name.

Moreover, the Panel is empowered by paragraph 14(b) of the Rules to draw whatever inferences it considers appropriate from the failure of the Respondent to reply to the Complaint. The Panel proposes to draw some inferences from this silence which are appropriate in all the circumstances of the case. Those circumstances, which have been established by evidence submitted by the Complainant, are:

(i) that on April 26, 2005, and May 6, 2005, the Complainant sent ‘cease and desist’ letters to the Respondent, to neither of which the Respondent replied;

(ii) the disputed domain name is in substance the name and embodies the concept of the Complainant’s online casino that it has conducted and promoted internationally since 1997;

(iii) the disputed domain name resolves to a website entitled ‘riverbelleonlinecasino.net.’ That website contains hyperlinks to a wide range of services in travel, finance and personal services and also to a series of gambling sites, the vast majority of which are in direct competition with the Complainant’s site “riverbelle.com”;

(iv) the Respondent is not the agent, licensee or affiliate of the Complainant and the Complainant has not given the Respondent any licence or permission to use its trademarks or any mark or any mark confusingly similar to it in a domain name or anywhere else;

(v) as the result of the Complainant’s ‘RIVER BELLE’ trademarks being so well known in relation to casino and gambling services and having been so widely advertised, the Respondent must have known or should reasonably have known of the Complainant’s prior rights when it took the Complainant’s trademark and registered the domain name.

In the light of these circumstances, the Panel draws from the silence of the Respondent the inference that it has no rights or legitimate interests in the domain names and that if it had any, it would have been a simple matter to say what they were.

In addition to this inference, the Panel has no hesitation in making a positive finding from the Complainant’s evidence that the Respondent has no rights or legitimate interests in the domain name. This is so because the Respondent’s website, as well as carrying hyperlinks to the Complainant’s competitors, is also linked to the Complainant’s own website. This shows that the Respondent has at all material times known of the existence of the Complainant’s business, its name and website and more importantly its fame and renown in the field that have been embodied in its trademarks. Accordingly, the Respondent cannot conceivably have any rights or legitimate interests in a domain name that is virtually the same as the trademark of another party which it has, without any permission, taken and traded on in its own business.

The Complainant has therefore established the second requirement.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on. One of those circumstances, set out in paragraph 4(b)(iv), is:

‘(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

The Panel finds that the Respondent’s actions constitute bad faith in both respects within the meaning of paragraph 4(b)(iv) of the Policy. That being so, one element of paragraph 4(b) is made out, which is sufficient to meet the requirement of bad faith. The reasons why that element has been made out are as follows.

First, the Respondent registered the domain name <riverbelleonlinecasino.net> which is virtually the same as and is certainly confusingly similar to the Complainant’s mark THE RIVER BELLE ONLINE CASINO and its other trademarks. The domain name also bears an uncanny resemblance to the trademark and the name, description, style and concept of the businesses conducted by the Complainant online under the same name since 1997. The fact that the Respondent has done this shows that his intention was to create confusion with the Complainant’s trademarks. Secondly, the fact that the Respondent chose this name and not another name shows that his intention was to create confusion about the legitimacy of the products being offered on the Respondent’s site and the site itself. The Respondent clearly wanted people to believe that his domain name led to the Complainant’s website and its gambling products, which was false, for it led to the Respondent’s own site which mainly promoted the Complainant’s competitors. Thirdly, the whole modus operandi of the process and the essentially commercial nature of everything associated with it, shows that the Respondent was engaging in this conduct for commercial gain. Fourthly, there is no rational explanation for the Respondent’s conduct in registering the domain name and setting up the website other than the wholly improper purpose and intention already outlined, which falls squarely within paragraph 4(b)(iv) of the Policy. Indeed, as the panel observed in Deutsche Post AG v, MailMij LLC, WIPO Case No. D2003-0128, the conclusion must be reached that the Respondent ‘… will have known that, as the Complainant contends, there would be a very real likelihood that Internet users would assume the Respondent’s service under the Domain Name to be in some way associated with the Complainant and that he would derive a substantial commercial advantage from that misapprehension.’ All of this was a sustained falsehood which is the essence of bad faith.

The Panel also accepts the further arguments of the Complainant that the Respondent’s registration of the domain name and its use on his website to offer goods and services have both been in bad faith within the meaning of paragraph 4(b)(iv), for the Respondent had no permission to use the name, he registered the domain name seven years after the first use of the Complainant’s trademark and four years after its registration, the Respondent could have chosen any name other than the Complainant’s trading name but did not do so and, finally, has been trading on the goodwill and reputation of the Complainant and its RIVER BELLE mark to mislead internet users by setting up a ‘mousetrap’ to lure them into sourcing the goods and services of business rivals of the Complainant. Such conduct has long been regarded as evidence of bad faith as is illustrated by the URDP decisions cited by the Complainant: Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; and IHC, Inc. and Nordstrom, Inc. v. John Zuccarini, WIPO Case No. D2001-1260.

Accordingly, the Panel finds that the Respondent registered and has used the domain name in bad faith.

The Complainant has therefore made out all three of the requirements.

7. Decision

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

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: August 30, 2005