The Complainant is SHFL entertainment, Inc., Las Vegas, Nevada, United States of America, represented by Glaser Weil Fink Jacobs Howard Avchen & Shapiro LLP, California, United States of America.
The Respondent is Registrant ID:13745CD513B, Star Domain, Netowl, Inc., Shimomaruya-cho sanjo-agaru, Kawaramachi-dori, Nakagyo-ku, Kyoto, Japan / Whois Privacy Protection Service by onamae.com, Shibuya-ku, Tokyo, Japan.
The disputed domain name <casinowar.org> is registered with GMO Internet, Inc. d/b/a Onamae.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 26, 2012.
On December 21, 2012, the Center sent an email communication in English and Japanese to the Parties regarding the language of the proceedings in this case. On December 26, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not reply directly to the email concerning the language of the proceedings.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2013. The Respondent communicated to the Center by email on January 16, 2013, alleging that the disputed domain name is registered with a different registrar. However, the Respondent did not submit any formal response to the Notification of Complaint. Accordingly, the Center notified the Parties on January 25, 2013 that it would proceed to appoint the Administrative Panel.
The Center appointed Haig Oghigian as the sole panelist in this matter on February 20, 2013. 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.
As there is no formal submission from the Respondent, the facts are taken from the Complaint’s reasonable allegations which are generally accepted as true.
The Complainant owns registered CASINO WAR trademarks in Australia, New Zealand, Canada, the European Community, the United Kingdom of Great Britain and Northern Ireland and the United States for use or in connection with casino gaming and entertainment services. The Complainant owns and operates the website at ”www.shufflemaster.com” where it offers online play-for-fun versions of casino games including Casino War. In the United States, the Complainant has been using the CASINO WAR marks in connection with its casino games since at least 1993. The Complainant has enjoyed earning and has built reputation and goodwill in its CASINO WAR marks in the United States and throughout the world.
The disputed domain name, <casinowar.org>, is registered to the Respondent through Whois Privacy Protection Service by onamae.com privacy proxy service. The Respondent is in no way authorized to use the Complainant's CASINO WAR marks or <casinowar.org>. As of the filing of the amended complaint, the Respondent still maintains its registration to <casinowar.org>
The Complainant requests that the disputed domain name <casinowar.org> be transferred from the Respondent to the Complainant.
With respect to paragraph 4(a)(i) of the Policy, the Complainant argues that under the disputed domain name <casinowar.org> is identical or confusingly similar to Complaint's registered CASINO WAR marks. The disputed domain name <casinowar.org> incorporates the CASINO WAR mark in its entirety. The use of a gTLD and the omission of space are irrelevant because the addition of the top-level domain names are forbidden to include spaces.
With respect to paragraph 4(a)(ii) of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of <casinowar.org>. The Respondent had notice that <casinowar.org> is identical and confusingly similar to Complaint's registered CASINO WAR marks. The Respondent's <casinowar.org> uses the Complainant's CASINO WAR mark without permission from the Complainant. The Respondent has not made any effort whatsoever to differentiate itself from the Complainant and has done nothing to prevent confusion.
Moreover, related to paragraph 4(c)(i) and 4(c)(iii) of the Policy, the Complainant adds that the Respondent has not made any use of, or any demonstrable preparations to use <casinowar.org> or name corresponding to <casinowar.org> in connection with a bona fide offering of goods or services and has not shown no legitimate noncommercial legitimate interest or fair use. The Respondent's website offers and advertises online gaming and casino products and services in direct competition with the Complainant, using a domain name that is identical to the Complainant's CASINO WAR trademarks. The Respondent is attempting to attract customers to its website using Complaint's CASINO WAR business carried on by the Respondent as the business of the Complainant. The Respondent has no license or permissions to use Complainant's marks in any fashion. Further, related to paragraph 4(c)(ii) of the Policy, the Complainant adds that the Respondent is not commonly known by the CASINO WAR marks or <casinowar.org>. The publicly available Whois information for <casinowar.org> lists the registrant as Whois Privacy Protection Service by onamae.com, a name which has no association with the <casinowar.org>. Star Domain appears to be a domain name registrar service that is not knownm by the name "Casino War". Nothing on the website associated with <CasinoWar.org> indicates that its proprietor is known by the name Casino War.
With respect to paragraph 4(a)(iii) and relevant 4(b)(iv), the Complainant asserts that the Respondent's bad faith registration and use of <casinowar.org> is demonstrated by its selection of the Complainant's well-known and distinctive CASINO WAR marks as its domain name in order to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's business. The Respondent's purposeful use of Complainant's identical CASINO WAR marks as <casinowar.org> creates a likelihood of confusion by giving the false impression that the Complainant provides, sponsors, or endorses the statements and services offered through the Respondent's website. The Respondent's <casinowar.org> resolves to the website that directly competes with the Complainant because it offers the same or similar online casino gaming and entertainment. The Respondent is taking advantage of the goodwill associated with Complaint's CASINO WAR marks in order to create confusion amongst consumers and drive traffic to its own website for profit. Further, with respect to paragraph 4(a)(iii) and relevant 4(b)(iii), the Complainant asserts that the fact that the Respondent is a competitor of the Complainant supports a finding that Respondent intentionally registered the Complainant's CASINO WAR marks as <casinowar.org> to interfere with the Complainant's business. In addition, with respect to paragraph 4(a)(iii) in general, the Complainant asserts that the following facts also will be evidence of the Complainant's bad faith. The Respondent did not make any effort whatsoever to avoid registering and using the Complainant's CASINO WAR marks as its domain name. The Respondent used the Whois Privacy Protection Service by onamae.com privacy proxy service to conceal its identity.
The Respondent did not formally reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that:
"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 noted that the language of the registration agreement in this case is Japanese and the default language of the proceedings should be Japanese. The Complainant asserts that English should be the language of the proceedings and the Respondent would not be prejudiced if the English be the language of the proceedings.
While the website subject to this dispute is in Japanese, the fact that the Respondent has responded to the Center by email on January 16, 2013, in English, shows likelihood that the Respondent is conversant and proficient in the English language. On December 21, 2012, the Center notified the parties in English and Japanese that the Complaint was submitted in English, that the language of the registration agreement for the disputed domain name was Japanese, and provided the parties with detailed information concerning the language of proceedings. The Respondent was therefore aware of the language matters in the case and had an opportunity to make any comments or submissions if it so wished. However, the Respondent has not objected to the language of the proceedings at all by the due date. See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004. Paragraph 11(a) of the Rules reserves the Panel the authority to determine the proper language of the proceeding. In view of all the above circumstances and the Complainant's request, the Panel finds that there is no prejudice caused to the Respondent if the proceedings are conducted in English. The selection of the Japanese language as the language of the proceedings in the present case would be a burden to the Complainant, and would also cause undue delay to the proceedings.
The Panel is therefore satisfied that English should be selected as the language of the administrative proceedings of this case, and shall therefore render the decision in English in accordance with paragraph 11 of the Rules.
Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to the trademark.
It is established the use of gTLD and the omission of spaces are irrelevant for a paragraph of 4(a)(i) of the Policy. See Rachel Aldana v. net tech, NAF Claim No.FA0806001202934.
It is clear on the given evidence that the Complainant owns trademark rights in CASINO WAR mark in Australia, New Zealand, Canada, the European Community, the United Kingdom and the United States and that the disputed domain name <casinowar.org> incorporates the CASINO WAR mark in its entirety.
Therefore, the Panel finds that the disputed domain name, <casinowar.org>, is identical or confusingly similar to the Complainant’s name and mark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Moreover, paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute, Paragraph 4(c)(i);
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights, Paragraph 4(c)(ii); or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark, Paragraph 4(c)(iii).
In this case, the Complainant presented a prima facie case. It is clear on the given evidence that the Complainant has enjoyed earning and has built reputation and goodwill in its CASINO WAR marks in the United States and throughout the world since 1993, that the Respondent must have known of the Complainant’s registered CASINO WAR marks prior to registering <casinowar.org> on September 11, 2007 and had notice that <casinowar.org> is identical and confusingly similar to Complaint's registered CASINO WAR marks. See N.C.P. Mktg. Group, Inc. v. Entredomains, WIPO Case No. D2000-0387. In addition, there is no evidence suggesting that the Respondent's <casinowar.org> uses the Complainant's CASINO WAR trademark with any permission or license from Complainant or that the Respondent has made any effort whatsoever to differentiate itself from the Complainant and has done anything to prevent confusion. See Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211.
Thus the burden of production is on the Respondent to establish its right or legitimate interest in <casinowar.org>. See PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cyberson, WIPO Case No. D2003-0174. However, there is no evidence produced from the Respondent and any other evidence does not support the Respondent's demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute, an indication that the Respondent has been commonly known by <casinowar.org> even if it has acquired no trademark rights, or legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark of the Complainant.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in <casinowar.org>.
Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that shall be evidence of the registration and use for domain name in bad faith. Such circumstances include:
- registration of the domain name primarily for the purpose of disrupting the business of a competitor, Paragraph 4(b)(iii); or
- intentional attempt to attract, for commercial gain, Internet users to web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, product or service on web site or location, Paragraph 4(b)(iv)
In this case, although there is no evidence sufficiently supporting that the Respondent has registered the domain name primarily for the purpose of disrupting the Complainant's business, it is found on the given evidence that the Respondent's purposeful use of Complainant's identical CASINO WAR marks as <casinowar.org> creates a likelihood of confusion by giving the false impression that the Complainant provides, sponsors, or endorses the statements and services offered through the Respondent's website. See DatingDirect.com Ltd. v. Atson, NAF Claim No. FA593977. It is also inferred on the given evidence that the Respondent is taking advantage of the goodwill associated with Complaint's CASINO WAR marks in order to create confusion amongst consumers and drive traffic to its own website for profit. See Luck's Music Library v. Stellar Artist Mgmt., NAF Claim No. FA95650. Evidence submitted as Annex No.I suggests that the Respondent added links on its own website, directing to other on-line casino websites for gaining profit.
Therefore, the Panel is satisfied that the Complainant has established bad faith as required by paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <casinowar.org> be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Date: March 13, 2013