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The Cyberbingo Corporation v. 207 Media Inc. [2005] GENDND 1814 (4 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Cyberbingo Corporation v. 207 Media Inc.

Case No. D2005-0714

1. The Parties

Complainant is The Cyberbingo Corporation, St. John’s Antigua, West Indies, Antigua and Barbuda, represented by Gowling Lafleur Henderson, LLP, Canada.

Respondent is 207 Media Inc., Oakville, Canada, represented by Law Office of Tapas K. Pain, Canada.

2. The Domain Name and Registrar

The disputed domain name <i-cyberbingo.com> is registered with Abacus America Inc. dba Names4Ever.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2005. On July 8, 2005, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain name at issue. On July 7, 2005, Abacus America Inc. dba Names4Ever 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 July 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response August 16, 2005. The Response was filed with the Center August 16, 2005.

The Center appointed Ross Carson, Jacques A. Léger, Q.C. and Daniel J. Gervais as panelists in this matter on September 22, 2005. The Panel finds that it was properly constituted. Each member of 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 August 16, 2005, Complainant requested leave to file a Reply addressing certain of the allegations raised by Respondent. The Center confirmed receipt of the request and advised Complainant that the request will be forwarded to the Panel. The Panel received the request to file a Reply to the Response together with the hard copy of the case. Pursuant to Paragraph 15(b) of the Rules: “In the absence of exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider within fourteen (14) days of its appointment pursuant to Paragraph 6.” The request by Complainant to file a Reply to the Response did not present any exceptional circumstances which would permit the Panel to delay its decision. Further, the Panel considered Paragraph 10(a) of the Rules and is of the view that there are no exceptional circumstances in this case to warrant the Panel extending the time for decision to permit Complainant to file a Reply to the Response.

4. Factual Background

Complainant is the registered owner of Canadian Trademark Registration No. TMA 592,434 for the trademark CYBERBINGO. This trademark is registered in Canada in association with the goods: “Computer software for use in playing bingo on a computer” and in association with the services: “operation of a website allowing a user to play bingo.” The application for the trademark is based on use in Canada since at least as early as November 1996 in relation to the goods and services applied for. The trademark CYBERBINGO was registered in Canada on October 16, 2003. (Exhibit 2 to the Complaint, Tab A).

Complainant is also the registered owner of Canadian Trademark Registration No. TMA 622,490 for the trademark CYBERBINGO NETWORK. This trademark is registered in Canada in association with the services: “member referral program services namely, providing access to central online bingo games through a common website; online bingo hall services.” The application for the trademark is based on use in Canada since at least as early as November 30, 1996, in relation to the services applied for. The trademark CYBERBINGO NETWORK was registered in Canada on October 14, 2004. (Exhibit 2 to the Complainant, Tab B).

Complainant is also the registered owner of United States Trademark Registration No. 2572839 for the trademark CYBERBINGO. The Registration is on the Principal Register. The trademark is registered in the United States in association with the goods: “downloadable computer software for use in playing the game of bingo on a computer and in association with the services: “entertainment services namely conducting online bingo games. The application in the United States is based on first use in the United States of 19961100 in relation to both goods and services. The trademark CYBERBINGO was registered in the United States on May 28, 2002. (Exhibit 2 to the Complaint, Tab C).

5. Parties’ Contentions

A. Complainant

Complainant submits that Mr. J. Fuller and Mr. R. Fitzgibbon are Directors of the Respondent Corporation 207 Media Inc. as shown in the report from Corporations Canada Electronic Filing Center. (Exhibit 4 to the Complaint). In an e-mail from Respondent to the Center dated August 5, 2005, Ryan Fitzgibbon describes himself as Chief Technical Officer of the Respondent. Complainant was a licensed user of software of Parlay Entertainment Inc. from June 2001 to February 2004. Mr. Fitzgibbon and Mr. Fuller were employed as web programmers/designers by Parlay and provided software support services to Complainant in connection with the licensing arrangement with Parlay. In February 2004, Complainant terminated its license arrangement with Parlay and they became involved in a dispute.

Mr. Fitzgibbon and Mr. Fuller left the employ of Parlay Entertainment Inc. before June 16, 2005. (Exhibit 6 to the Complaint). Respondent was registered on February 2, 2005. (Exhibit 4 to the Complaint). Mr. Fitzgibbon and Mr. Fuller are named as directors of Respondent. (Exhibit 4 to the Complaint).

On February 23, 2005, Respondent, without the permission of Complainant, registered the domain name in dispute <i-cyberbingo.com>. (Exhibit 7 to the Complaint). Complainant submits that the registration was effected by the Directors through Respondent with knowing disregard for Complainant’s rights to the CYBERBINGO registered trademarks.

Complainant further submits that the “www.i-cyberbingo.com” website resolves to the website of Bingo Hall, one of its competitors. (Exhibit 8 to the Complaint). The Bingo Hall website states that it is powered by Parlay Entertainment.

Complainant forwarded a cease and desist letter to Respondent on March 30, 2005. (Exhibit 9 to the Complaint), but received no response from Respondent.

Complainant forwarded a letter to the owner of the Bingo Hall website, objecting to the hyper linking of the <i-cyberbingo.com> domain name to the “bingohall.com” website. Exhibit 10 to the Complaint). No response was received.

Identical or Confusingly Similar

Complainant submits that the domain name in dispute incorporates the whole of Complainant’s registered trademark CYBERBINGO and that alone is sufficient to support a finding of confusion. It further submits that the addition of the generic or non-distinctive letter “i” and “.com” to its registered trademark for CYBERBINGO are immaterial to the confusion analysis.

Rights on Legitimate Interests

Respondent has never been known by or offered services in association with the trademark CYBERBINGO. Respondent has never been authorized by Complainant to use a domain name incorporating in full Complainant’s registered trademark for CYBERBINGO. The use of the domain name in dispute to redirect Internet users to websites of competing organizations does not constitute a legitimate use. The prior knowledge of Complainant’s registered trademark CYBERBINGO by the directors of Respondent, before the latter was incorporated, is evidence of constructive knowledge by Respondent of Complainant’s registered trademarks for CYBERBINGO. Actual or constructive knowledge of Complainant’s CYBERBINGO trademark registration, prior to registration of the confusingly similar domain name in dispute, undermines any claim to legitimacy.

Registration and Use in Bad Faith

Respondent was aware of Complainant’s trademark registration for CYBERBINGO prior to the registration by Respondent of the domain name <i-cyberbingo.com>.

The use of the domain name in dispute to resolve to the website of Bingo Hall, a competitor of Complainant, constitutes disruption of Complainant’s business, which is bad faith use of the domain name pursuant to paragraph 4(b)(iii) of the Policy. Respondent is clearly competing with Complainant for Internet users and directing Internet users to a competitor’s site.

Complainant further submits that Respondent is using the domain name in dispute to attract for commercial gain Internet users to Respondent’s website or to another on-line location, by creating a likelihood of confusion with Complainant’s registered trademark for CYBERBINGO as to source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Such activity is evidence of bad faith use under paragraph 4(b)(iv) of the Policy.

Complainant submits that the <i-cyberbingo.com> domain name contains the Complainant’s CYBERBINGO trademark, or the distinctive element of the CYBERBINGO trademark, and is therefore likely to be confused with the CYBERBINGO Trademark. Further, the Bingo Hall website is a commercial website that competes directly with the interests of Complainant, and certainly qualifies as another “online location” as per the Policy. Such use is prima facie evidence that <i-cyberbingo.com> is being used in an attempt to attract, for commercial gain, Internet users to Bingo Hall’s website by creating a likelihood of confusion with the CYBERBINGO trademark as to source or sponsorship.

B. Respondent

Respondent submits that Complainant does not have any trademark rights in the alleged trademark CYBERBINGO. The Respondent also submits that the term “cyberbingo” is readily understood by the relevant industry and consumers to be clearly descriptive of its associated services, namely, the provision of Bingo games on or through a computer or global computer network. Based on almost four years in the business of on-line games, Mr. Fitzgibbon states in paragraph 11 of his affidavit attached to the Response, that the term “cyberbingo” is understood by relevant members of the industry to be a term describing the provision of playing bingo primarily online, but at least, on a computer. Mr. Fitzgibbon further deposes that it is his belief that the relevant consuming public has come to understand the term “cyberbingo” means to play bingo primarily in cyberspace, typically over the internet.

Attached as Exhibit 1 to the affidavit of Ryan Fitzgibbon is a copy of a page from the Merriam-Webster Online Dictionary which states that “Bingo” as a noun is “a game of chance played with cards having numbered squares corresponding to numbered balls drawn at random and won by covering five such squares in a row; also: a social gathering at which bingo is played”. Also forming part of Exhibit 1 is a page from the Merriam-Webster Online Dictionary in which “-cyber” is defined as a combining form. The etymology is: “computer: computer network <cyberspace>”.

In his affidavit attached to the Response, Mr. Fitzgibbon deposes at paragraph 11 that there are websites in existence that equate the term “cyberbingo” to “online bingo”. Attached as Exhibit 2 to the Fitzgibbon affidavit is the content of a web page at <i-cyberbingo.biz> in which the header on the page reads, “ON-LINE BINGO. FREE BINGO GAME, CYBER BINGO” Exhibit 3 to the Fitzgibbon affidavit is a webpage at <i-cyberbingo.com> having the page heading “Cyberbingo – Play Online cyberbingo at Bingo Hall.com”. The webpage includes what appears to be a Bingo Hall advertisement, which includes a banner stating “sign up today to play online cyberbingo at bingohall.com”. However in paragraph 13 of the Fitzgibbon affidavit the deponent states that the content of the web page identified in Exhibit 3 was not available for public viewing prior to the commencement of this proceeding. The deponent states that the Bingo Hall advertisement (Exhibit 3) and its content were only accessible by search engine “spiders” only. “Spiders” are web crawling algorithms designed to search web pages and ultimately rank them for relevant search terms. The deponent states in the last line of paragraph 13 of his affidavit: “When one tried to access this web page directly (i.e. not through a spider) they would be directed to Bingo Hall TM’S website through a logic algorithm that otherwise prevented the normal viewing of this SEO (search engine optimization) – function page.

Respondent submits that other than Complainant referring to its trademark registrations in paragraph 16 of the Complaint, the latter has not proffered any evidence to actually establish trademark rights. Respondent submits that the statements in paragraph 18 to 23 of the complaint are self serving hearsay of Complainant’s counsel with no corroborating affidavit evidence to support.

Respondent submitted that the finding of a previous Panel in Precyse Corporation v. Punta Baragas S A, WIPO Case No. D2002-0753, a case in which the predecessor of Complainant relied on the registered trademarks in Canada and the United States for CYBERBINGO, should be disregarded, as the findings of the Panel were based on different parties and different facts and the Panel in the reported case did not consider whether Complainant had actually established its trademark rights.

Respondent distinguished other cases relied on by Complainant on the basis that they involved distinctive and coined trademarks and not trademarks which are clearly descriptive of their associated wares or services.

Respondent did not address the issue of identical or confusingly similar. Its position is that Complainant has no trademark rights in the clearly descriptive term “cyberbingo”.

Rights or Legitimate Interests of Respondent

Policy, paragraph 4(a)(ii)

Respondent submits that is legitimate to use the descriptive domain name <i-cyberbingo.com> and employ descriptive wording including CYBERBINGO for the purpose of providing search engine optimization (SEO) to Respondent’s clients. (See Exhibit 3 to the Affidavit of Mr. Fitzgibbon). Respondent does not operate a cyberbingo game and cyberparlour, but uses the domain name in dispute and the descriptive term cyberbingo for the purpose of improving Respondent’s clients search engine visibility in relation to the descriptive term “cyberbingo” to provide search engine optimization services to Respondent’s client Bingo Hall. The domain name is a variable used by the search engine in determining ranking of websites. (See Affidavit of Mr. Fitzgibbon, paragraphs 12 to 14 and Exhibit 3).

Registered and Used in Bad Faith

Policy, paragraph. 4(a)(iii)

Respondent submits that neither Mr. Fitzgibbon nor Mr. Fuller was disenchanted with Complainant. Both simply worked as employees of Parlay Entertainment Inc. prior to establishing 207 Media Inc. in 2005. Parlay Entertainment Inc. (at the time that Mr. Fitzgibbon was employed there) was a company that assisted various cyberbingo operations including the Complainant, Bingo Mania TM and Nickel Bingo TM.

Respondent denies that it registered the domain name primarily for the purpose of disrupting the business of a competitor. (Paragraph 4(b)(iii) of the Policy). Respondent submits that the parties are not competitors and Respondent legitimately registered the subject domain name to engage in search engine optimization activities using descriptive words in their ordinary context, for the benefit of Respondent’s clients. The work “primary” has been intentionally adopted in the Policy for a reason, namely, to limit its application to acts of cybersquatting. The Policy is clearly not meant to cover instances where there may be collateral or accidental disruption to an alleged competitor (which Respondent is not). The case law relied on by Complainant in the complaint is limited to situations where Respondent was a direct competitor of Complainant. On that basis alone, the cited case law can be distinguished since Respondent is not in direct or even indirect competition with Complainant.

Respondent submits that Complainant has not proven the elements of 4(b)(iv) of the Policy, given the alleged mark in issue is an ordinary word clearly descriptive of its associated services.

For all the reasons stated above, Respondent respectfully submits Complainant has failed to establish any necessary element to warrant the remedy it has requested. Complainant has not put forth any evidence to establish trademark rights; Respondent has always maintained a legitimate interest in the subject domain name and its contents; and there was never any element of bad faith in respect of the registration of the subject domain name, or its use. As such, Respondent requests this proceeding be dismissed.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, Complainant must prove cumulatively that each of the three following elements is satisfied:

1. The domain name is 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 respect of the domain name; and

3. The domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.

A. Identical or Confusingly Similar to a Trademark in which Complainant has Rights

Paragraph 4(a)(i) of the Policy

Complainant is the owner of Canadian Trademark Registration No. TMA 592,434 for the trademark CYBERBINGO registered in relation to the goods: “Computer software for use in playing bingo on a computer”. And in association with the services: “operation of a website allowing a user to play bingo”.

Complainant is also the owner of United States Trademark Registration No. 2572839 for the trademark CYBERBINGO registered on the principal register in the United States in association with the goods: “downloadable computer software for use in playing the game of bingo on a computer” and in association with the services: “entertainment services namely conducting online bingo games”.

Respondent does not deny that Complainant owns the above noted registrations for CYBERBINGO but submits that Complainant does not have trademark rights in the term “cyberbingo” as the term, especially when broken into its component words “cyber” and “bingo”, is readily understood by both the relevant industry and consumers to be clearly descriptive of its associated services, namely, the provision of bingo (or similar parlour) games on or through a computer or global computer network.

Respondent filed pages from the Merriam-Webster Online Dictionary. One entry is for the word “cyber” which is stated to be a combining form for: “computer: computer network <cyberspace>.” A second entry is for the word “bingo” which is a noun for: “a game of chance played with cards having numbered squares corresponding to numbered balls drawn at random and won by covering five such squares in a row; also: a social gathering at which bingo is played.

In support of the submission that the term “cyberbingo” is understood by the relevant industry to be clearly descriptive of the provision of Bingo games on or through a computer or global computer network, the affiant of Respondent states that he had been in the business for over four years prior to forming the Respondent company and that he and other members of the industry providing online bingo games understood the term “cyberbingo” to be a term describing the provision of playing bingo primarily online, but at least on a computer. However, Respondent has not filed any evidence of independent third parties of their understanding of the meaning of the term “cyberbingo”.

The only evidence of use of the term “cyberbingo” in a descriptive manner is use by Respondent in pages prepared by Respondent which are attached as Exhibits 2 and 3 to the affidavit of Mr. Fitzgibbon. Exhibit 2 is a webpage associated with the website “www.i-cyberbingo.biz”. The webpages of Exhibit 2 show the logos of ten companies which are competitors of Complainant. The trademarks and descriptive material associated with the logos do not include the term “cyberbingo”. The webpage which is shown in Exhibit 3 is associated with Respondent’s website “www.i-cyberbingo.com”. As stated in paragraph 13 of the affidavit of Mr. Fitzgibbon, the page shown as Exhibit 3 was not available to the public prior to the commencement of this case. The page and its contents were accessible by search engine “spiders” only. “Spiders” are web crawling algorithms designed to search webpages and ultimately rank them for relevant search terms. When one tried to access this webpage directly (i.e. not through a spider,) they would be directed to Bingo Hall (a competitor of Complainant) website through a logic algorithm that otherwise prevented the normal viewing of this search engine optimization (SEO) page.

The Canadian Trademarks Office examines trademark applications and refuses trademark applications which are clearly descriptive of the goods or services. Further, the Canadian Trademarks Act provides an opposition proceeding in which any interested person may oppose a trademark application for a word which is clearly descriptive of the goods or services for which the trademark is applied for. The United States Trademark law includes similar provisions for examination and opposition. In Canada, a party may also obtain that any entry into the Trade-marks Register be struck, including because the mark was not registrable at the time of registration or is not distinctive. However, under ss. 18 and 57 and 58 of the Canadian Trade-marks Act, The Federal Court has exclusive jurisdiction to hear a motion to that effect. As the record stands, Complainant is justified in relying on his registration to benefit, inter alia, from the exclusive rights provided under ss. 19, 20 and 22 and the Canadian Act.

Many panels have held that a panel lacks authority to ignore valid trademark registrations which have been subject to examination and opposition. Christie v. Porcaro, WIPO Case No. D2001-0653; Hola S.A. v. Idealab,WIPO Case No. D2002-0089.

Other panels have held that the propriety and wisdom of considering lack of distinctiveness of a registered trademark is better suited to Courts pursuant to cancellation or invalidity proceedings which provide a fuller procedure with respect to documentation, viva voce evidence and cross-examination. (The Amazing Kreskin v. Gerry McCambridge, WIPO Case No.D2000–1730).

This Panel believes that the Registered Trademarks for CYBERBINGO are prima facie evidence of validity and the proper forum for considering if the trademark CYBERBINGO lacks distinctiveness is cancellation or invalidity proceedings.

Respondent further submits that Complainant has not filed evidence that the trademark CYBERBINGO has been in use in Canada or the United States. The Panel finds that Complainant has stated in the Complaint that the trademark CYBERBINGO is one of the most widely used and known trademarks in association with the goods or services for which it registered. Respondent submits that the statements of use are not supported by affidavit evidence of Complainant. The Panel finds that the Complaint includes a Certification signed by counsel described as Complainant’s Authorized Representative certifying that the information contained in the Complaint is to the best of Complainant’s knowledge complete and accurate.

Respondent’s attack on lack of evidence of use of the CYBERBINGO trademark by Complainant is not accepted by the Panel. Further, the Panel notes that the affiant for Respondent, who had been in programming in the online bingo business for a number of years, did not depose that Complainant’s trademark for CYBERBINGO was not widely known or used by the latter. Evidence that Complainant’s trademark was widely used and known in relation to the goods and services for which it was registered is relevant also to the issue of lack of distinctiveness.

Complainant must also prove that the domain name <i-cyberbingo.com> is identical to or likely to cause confusion with its registered trademark CYBERBINGO. The domain name in dispute incorporates the whole of Complainant’s trademark. The letter “i” is a known abbreviation for Internet. The use of the letter “i”, the “-” and “.com” in association with CYBERBINGO in the domain name do not avoid a finding of confusing similarity.

With respect to Paragraph 3(a)(i), the Panel finds that Complainant has rights in the trademark CYBERBINGO and further finds that the domain name in dispute is confusingly similar to Complainant’s registered trademark CYBERBINGO.

B. Rights or Legitimate Interests

Policy Paragraph 4(a)(ii) of the Policy

Respondent is not known by a name associated with the domain name in dispute or the registered trademark.

Respondent was aware of the registered trademark of Complainant before registering the domain name in dispute. At Paragraph 5 of the affidavit of Mr. Fitzgibbon, he states that he provided programming assistance to Complainant for a number of years.

The Panel does not accept Respondent’s position that it is making a legitimate non-commercial use of the domain name in dispute, without intent for commercial gain, to misleadingly divert consumers as provided in Paragraph 4(a)(iii) of the Policy.

Respondent states that it is an advertising and media company, helping website owners to improve their search engine ranking, and among other things, specifically provides search engine optimization (SEO) services. (Paragraph 9 of the affidavit of Mr. Fitzgibbon attached to the Response). An increase in search engine ranking results in an increase in the number of hits on the website of Respondent’s client. The Panel finds that the use of the trademark CYBERBINGO on the website in dispute is for the purpose of improving the search engine visibility of Complainant’s competitor Bingo Hall.

The Panel finds that Respondent is making a commercial use of the domain name in dispute to improve the “search engine” optimization value of Complainant’s competitors.

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name in dispute.

C. Registered and Used in Bad Faith

Paragraph 4. (a)(iii) of the Policy

The domain name in dispute has been linked to online bingo games of a competitor of the Complainant. The use of the domain name in dispute by Respondent in preparing search engine optimization material for a competitor of Complainant attracts internet users familiar with the latter’s well known trademark to a competitor’s website. Respondent makes a commercial gain for the services provided to Complainant’s competitors. Such use and commercial gain is addressed by the Policy, Paragraph 4(b)(iv). (See Société des Bains de Mer et du Cercle des Étrangers à Monaco v. Netsymmetrics, WIPO Case No. D2005-0339).

The Panel’s understanding of the Policy is that, although the initial burden to prove Respondent’s bad faith in the registration and the use of the disputed domain name lies squarely on the shoulders of Complainant, once a case of bad faith has been made by the latter, it is up to the Respondent to either justify its conduct, explain it, or demonstrate satisfactorily the contrary. See to this effect The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No.: D2002-0823; AT&T Corp. v. Linux Security Systems, WIPO Case No. DRO2002-0002. Since Respondent has made no effort to explain its domain name or rebut Complainant’s contentions, in the circumstances of this case, the Panel finds Complainant has satisfactorily met the burden required by Paragraph 4(a) of the Policy as to bad faith registration and use and hence finds in favour of Complainant on that criterion.

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 <i-cyberbingo.com> be transferred to Complainant.

Dated: October 4, 2005