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Stanworth Development Limited v. 3748431 Canada Inc [2005] GENDND 1456 (12 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stanworth Development Limited v. 3748431 Canada Inc

Case No. D2005-0655

1. The Parties

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

The Respondent is 3748431 Canada Inc, Toronto, Ontario, Canada.

2. The Domain Names and Registrar

The disputed domain names <riverbellecasino.net> and <riverbell.net> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2005. On June 23, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On June 24, 2005, Network Solutions, LLC 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. 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 June 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2005.

The Center appointed The Honourable Neil Anthony Brown QC as the Sole Panelist in this matter on August 1, 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.

On July 14, 2005, the Complainant sought permission to add two domain names to the Complaint. On July 21, 2005, the Center informed the Complainant that as the Policy and Rules do not provide for the amendment of the Complaint after the commencement of the administrative proceeding, the Panel would have sole discretion to decide on the Complainant’s request by virtue of its powers under paragraph 10 of the Rules.

In exercising this discretion, the Panel has applied the established principles that additional submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material or facts when it made its primary submission. The Panel considers that in the present case the Complainant could have known of the registration by Respondent of the additional domain names before it submitted its original Complaint and therefore will not accept the addition of these domain names to the Complaint.

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,<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 registration have been made in the same name. The Complainant has also registered as trademarks in Australia, the United Kingdom, 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 two contentious domain names on June 12, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant’s case is that the two contentious domain names 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 both of the domain names <riverbellecasino.net> and <riverbell.net> are identical or confusingly similar to the Complainant’s trademarks RIVER BELLE and THE RIVER BELLE ONLINE CASINO. In particular, it is said that the domain name <riverbellecasino.net> is confusingly similar to the Complainant’s trademark THE RIVER BELLE ONLINE CASINO. The Complainant maintains that this is so as in each case 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 names and that all of the facts point to the opposite conclusion.

Finally, the Complainant contends that the domain names were registered and are 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. That conclusion is reinforced, the Complainant says, by the facts that the Respondent is masquerading under an unregistered company name, is not even attempting to use the domain names for a legitimate purpose and that whatever it did with the domain names would lead to confusion that the names were in some way associated with the Complainant and would constitute breaches of the trademarks, passing off and unlawful competition laws.

In support of its application, the Complainant has tendered an Evidence Bundle of 74 pages of documents relating to its trademark registrations and applications, its promotional material, the Respondent’s registration of the contentious domain names and other material.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and has therefore not contested the Complainant’s allegations. That, of course, is not conclusive of the proceeding and the Complainant must still prove its case, but by virtue of paragraph 14(b) of the Rules, the lack of such a reply leaves the Panel free to ‘draw such inferences therefrom as it considers appropriate.’

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; (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 question here is whether the contentious domain names are identical or confusingly similar to any of the Complainant’s trademarks.

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 true that the trademarks were registered after the registration of the contentious domain names on 12 June 2000. However, the Policy requires that a complainant need only show that it has rights to a trademark or service mark and not necessarily that it had those rights prior to the registration of the contentious domain name. Consistent with that provision, it has been held many times by UDRP Panels that, for example, ‘…a complainant may have rights in a trademark or service mark corresponding to the domain name even where those rights first arose after the registration of the domain name’. See Valve Corporation v. ValveNET, Inc. ValveNET, Inc., Charles Morrin (WIPO Case No. D2005-0038) and the cases there cited.

In any event, the evidence shows that well before the domain names were registered, the Complainant had acquired unregistered trademark rights to the names RIVER BELLE, THE RIVER BELLE Online Casino and <riverbelle.com>, all in the context of its online riverboat casino, and that it had maintained those rights continuously since 1997. In particular, it registered its popular domain name <riverbelle.com> in 1997 and since then has successfully operated its website under that name. Moreover, the Complainant’s current registered logos all assert that the business was established in 1997 and the evidence is that the business has been successfully operated since then. Moreover, such has been the internationally accepted nature of the Complainant’s concept since 1997 that it must be concluded that the Respondent chose its two domain names for the very reason that the Complainant had established such a reputation for the name and concept between 1997 and June 12, 2000 when the domain names were registered.

Accordingly, the Complainant has established its rights to the trademarks in question. It is now necessary to look at each of the domain names in order to see if they are identical or confusingly similar to any of the Complainant’s trademarks.

The Panel finds, first, that the domain name <riverbellecasino.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 all of the constituent words of the trademark with the exception of the word ‘online’. But as the casino referred to in the domain name is, by definition, an online casino, the word is surplusage. 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. The Respondent, in choosing the constituent words for its domain name, has described a casino with the same name as the Complainant’s 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 2000, it is inevitable that internet users would 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 <riverbellecasino.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. Again, in Caterpillar Inc v. Roam the Planet, (WIPO Case No. D2000-0275) where the Caterpillar company, which made machines, owned the trademark CAT, the addition of the word ‘machines’ to make the domain name <catmachines.com> was held not to have distinguished the domain name from the trademark, but to have made it confusingly similar to the trademark. 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 <riverbellecasino.net> similar to the trademark RIVER BELLE, but it is confusingly so. That is because the addition of the word ‘casino’ is an assertion that the domain name is concerned with a 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 <riverbellecasino.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 casino referred to in the domain name <riverbellecasino.net> would be assumed by any observer to be an online casino and hence the Complainant’s online casino.

Turning to the domain name <riverbell.net>, the Panel finds that it is virtually identical and certainly similar to the Complainant’s registered trademark RIVER BELLE and also that it is confusingly so. That is because the two names are phonetically the same and the only difference in spelling is the omission from the domain name of the last ‘e’ of the trademark. No such omission or minor change in spelling can avoid the conclusion that there is a similarity between two names if such a similarity is otherwise present. Thus, in Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna (WIPO Case No. D2000-0869), the respondent had simply taken the complainant’s trademark and omitted the final ‘e’ from ‘Estee’ to create the domain name <estelauder.com>. The panel had no difficulty in concluding that such an omission did not prevent the domain name from being similar to the trademark, confusingly so and, in fact, intentionally so. There are many consistent URDP decisions, one of which, being a recent decision in the gambling industry, will suffice. That decision is Caesars World, Inc. v. Lester Bakator (WIPO Case No. D2005-0125) where it was held that the reversal of the ‘a’ and the ‘e’ of the trademark ‘CAESARS’ to create the ‘ceasars’ of the domain name did not prevent a finding that the two were confusingly similar. That is the conclusion that must clearly be reached in the present case, for the omission of the final ‘e’ of the trademark does not prevent the domain name from being confusingly similar to it.

The Panel also finds for similar reasons to those already given that the domain name <riverbell.net> is confusingly similar to the Complainant’s unregistered trademarks incorporating the logos specified above, for the logos all include the words ‘RIVER BELLE’ and the domain name is, visually, virtually the same and is pronounced exactly the same as those words are pronounced in the logo.

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

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. So the Panel is unable to conclude from evidence adduced by the Respondent that it is within any of the three cases just set out. Nor is there any other direct 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.

Accordingly, the Panel must decide whether the Respondent has any rights or interests in the domain name without there being any direct evidence on that issue at all.

But 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 are, first, that the Complainant has proved that on April 21, 2005, and May 6, 2005, it sent two ‘cease and desist’ letters to the Respondent, to neither of which the Respondent replied. Moreover the Complainant has proved to the satisfaction of the Panel that:

(i) the domain names themselves are in substance the names and embody the concept of the Complainant’s online casino that it has conducted and promoted internationally since 1997;

(ii) the Respondent is not using the domain names, which have never been associated with an active website and which simply resolve to an ‘error’ page;

(iii) the Respondent is not using or preparing to use the domain names in the course of conducting a legitimate business of any sort; and

(iv) the Complainant has not given the Respondent any licence or permission to use its trademarks in a domain name or anywhere else.

Bearing all of these matters in mind, 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.

The Complainant has therefore made out this second requirement.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are 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, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

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

(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.

The Respondent proceeded with the registration of two domain names <riverbellecasino.net> and <riverbell.net> that are confusingly similar to the Complainant’s well-known marks, RIVER BELLE, THE RIVER BELLE ONLINE CASINO and their similar logos. The domain names also bear an uncanny resemblance to the trademarks and the name, description, style and concept of the businesses conducted by the Complainant online under the same name since 1997.

One does not know why the Respondent chose the names it did for its domain names, so all that one can do is draw inferences from the known facts. Applying this test, the Panel is left with the conclusion that it is more probable than not that the Respondent registered the names because it knew of the Complainant’s renown and wanted to trade off it by one means or another, none of which could ever be legitimate. Indeed, it would be a remarkable coincidence if the Respondent chose those names for any other reason.

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

Although the examples in paragraph 4(a) serve as indication of both “registration and use of a domain name in bad faith”, and it is thus not necessary to look at registration and use separately , the Panel notes that the Telstra doctrine aplies in the present case. The Administrative Panel in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) noted and it is now well established by the jurisprudence in this field, that “it is possible in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.

In the present case, we have the circumstances, all of which are established by evidence and reasonable inferences from the evidence, that the Respondent:

(i) has, without permission, taken another company’s business name which is invested with several years of goodwill;

(ii) has created from that name two domain names which falsely imply an involvement in the same business as that of the Complainant and an association with it;

(iii) has done this three years after the Complainant started to use the name and set up its online gambling site under the domain name <riverbelle.com>;

(iv) is concealing its identity by operating under an unregistered company name, for there is no company of the name of the Respondent registered in Canada;

(v) must be presumed to have known of the Complainant’s trademarks; and

business activity both generally and in particular in Canada where the Respondent purports to be domiciled;

(vi) has failed to reply either to the Complainant’s ‘cease and desist’ letters or to the Complaint itself served by the Center and has refused on any occasion to give an explanation for why it is engaging in these activities if it is not for some improper and potentially illegal reason; and

(vii) whatever use it made of the domain names, it would be a breach of generally accepted trademark, passing off and unfair competition laws and would clearly be done for some sort of commercial gain.

It follows that the Complainant has made out its case on each of the three requirements and therefore succeeds.

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 names <riverbellecasino.net> and <riverbell.net> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: August 12, 2005