WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller

Case No. D2006-0536

1. The Parties

The Complainant is Bell Gardens Bicycle Club dba the Bicycle Casino (“TBC”), Bell Gardens, California, United States of America, represented by Albin H. Gess, of Snell & Wilmer, LLP, United States of America.

The Respondent is Craig Miller, Middlesbrough, Cleveland, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrars

The disputed domain name <wwwbicyclecasino.com> is registered with eNom, Inc..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2006. On April 28, 2006, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On April 28, 2006, eNom, Inc. 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 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2006.

The Center appointed Christopher J. Pibus, Lorelei Ritchie De Larena and David H. Tatham as panelists in this matter on August 3, 2006. 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.

4. Factual Background

The Complainant opened its first casino in California in 1984 under the name “The Bicycle Club” and has since that time grown into one of the world’s largest operating card casinos. The Complainant has been operating casinos for over 20 years and has achieved a significant international presence through the Internet and through televised tournaments. Since 1993, Complainant has used THE BICYCLE CASINO as a trademark and a business name.

The Complainant is the owner of a trademark registration for THE BICYCLE CASINO under No. 2,702,222, in the United States Patent and Trademark Office.

On June 14, 1999, the Complainant registered the domain name <thebicyclecasino.com> and began operating an on-line poker site with streamed live games. The Complainant’s website is also a resource for playing tips and upcoming tournaments. In October, 2004 the Complainant also began offering online casino card games to website visitors who wish to download games from the “wwwthebicyclecasino.com” website. The Complainant’s website has since its inception had over 15,000 customers register and download card games from the website. Complainant also owns more than 25 related domain names, which include the words “bicycle casino” and variations.

In association with THE BICYCLE CASINO mark, the Complainant is one of the ten casinos that host the World Poker Tour series aired on the Travel Channel. The series is the Travel Channel’s highest-rated show with approximately 5 million people watching each week. The Complainant’s tournaments and participation with the World Poker Tour have generated significant attention in the media, receiving television coverage from television networks such as Entertainment Tonight, Extra, CBS Action News, Fox Channel News, and press coverage in magazines such as Sports Illustrated and People. The Complainant has spent over $2.6 million to promote its business under THE BICYCLE CASINO mark, through television, radio, billboards, newspapers and magazines.

On February 9, 2005, the Respondent registered the domain name <wwwbicyclecasino.com>. At the date of the Complaint, the Respondent was operating a website providing links to competing online casinos and gaming services.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The domain name <wwwbicyclecasino.com> is virtually identical to the Complainant’s mark, THE BICYCLE CASINO, differing only by the deletion of the modifying word “the” and the addition of “www”. The deleted word “the” and the functional prefix “www” do not serve to distinguish it from the Complainant’s mark in any meaningful way.

(b) Rights or Legitimate Interests

The Respondent has no rights or legitimate interest in respect of the domain name <wwwbicyclecasino.com>. The Complainant owns a trademark registration for the mark THE BICYCLE CASINO and its use of the domain name <thebicyclecasino.com> predates the Respondent’s corresponding domain name by at least 6 years. The Complainant contends that the Respondent does not own any trademark or intellectual property rights in the mark THE BICYCLE CASINO, and that the Respondent has never used THE BICYCLE CASINO as a legal or business name. The Complainant has never authorized, licensed or permitted the Respondent to use its trademark THE BICYCLE CASINO. The Complainant further contends that the Respondent is engaging in typosquatting, relying on mistakes made by Internet users to direct Internet traffic intended for the Complainant’s website to the Respondent’s site.

(c) Registered and Used in Bad Faith

The Respondent’s domain name was registered and is being used in bad faith based on the following factors: (i) disrupting the business of a competitor by diverting traffic through confusion; (ii) diverting traffic through confusion for monetary gain by offering links to other competing gaming sites; (iii) Knowledge of the Complainant’s long and continuous use of the THE BICYCLE CASINO mark at the time of registration and that he had no right, title or interest, whatsoever, in the mark or domain name; and (iv) typosquatting.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has marks; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first issue in this matter is whether the domain name <wwwbicyclecasino.com> is confusingly similar to the Complainant’s mark. There are two elements that must be satisfied: (a) the Complainant has rights in the particular mark; and (b) the domain name in question is identical or confusingly similar to that mark.

The first element is readily established and independently verified by reference to the applicable Trademarks Register. In this case, presentation of a certified copy of U.S. Trademark Registration No. 2,702,222 satisfies the threshold requirement of having rights in the mark THE BICYCLE CASINO (Imperial Collect of Science, Technology and Medicine v. Zahid Khan (for Imperial College Management School Alumni Association – ICMSAA), WIPO Case No. 2000-1079).

The domain name <wwwbicyclecasino.com> differs from the trademark THE BICYCLE CASINO merely by the deletion of the word “the” and the addition of the prefix “www”. The deleted word “the” does not distinguish the domain name from the mark in any meaningful way. Domain names that delete simple words or modifiers (such as the definite article “the”) from a registered mark are considered to be confusingly similar. (See Playboy Enterprises International, Inc. v. Hector Rodriguez, WIPO Case No. D2000-1016, <playboychannel.com> confusingly similar to the mark THE PLAYBOY CHANNEL; and see Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031). Similarly, the addition of the three letters “www” does not significantly distinguish the domain name from the mark as it is merely the functional prefix for the World Wide Web. (See Bayer Aktiengessellschaft v. Yongho Ko, WIPO Case No. D2001-0205). This sort of blatant manipulation of the elements of a trademark clearly constitutes typosquatting and is not sufficient to obviate or even reduce the likelihood of confusion.

The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence that the Respondent is commonly known by this domain name, or is affiliated with the Complainant, or received permission from the Complainant to use the trademark THE BICYCLE CASINO. It cannot be said that the Respondent is using the domain name in connection with a bona fide offering of goods or services. The Respondent is operating a website under the domain name <wwwbicyclecasino.com>, which provides links to competing on-line gaming sites (see Amazon.com, Inc. v. Victor Korotkov, WIPO Case No. D2002-0516).

The Respondent’s “typosquatting” does not constitute fair use and is the obverse of a legitimate noncommercial or fair use of a domain name (see Time Warner Entertainment Company, L.P., and Hanna Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol and the Cupcake Patroll, WIPO Case No. D2001-0184; Playboy Enterprises International, Inc. v. Hector Rodriguez, WIPO Case No. D2000-1016 and Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205).

The Panel concludes that the Complainant has satisfied the second requirement under paragraph 4(b) of the Policy.

C. Registered and Used in Bad Faith

Four factors lead the Panel to infer and conclude that Respondent had knowledge of Complainant’s trademark and has registered and used the Domain Name in bad faith.

Firstly, the Panel accepts that the Complainant’s trademark THE BICYCLE CASINO has been used since 1993 in connection with casinos and is well-known internationally for casinos, poker tournaments and on-line gaming, thereby supporting the conclusion that the mark has a sufficient reputation, so as to become known to the Respondent.

Secondly, the Panel views the Complainant’s trademark as inherently distinctive, since the component elements “bicycle” and “casino” together form an arbitrary and even fanciful combination, as applied to gambling services. There can be no logical reason for the Respondent to have adopted the Domain Name, except that he wishes to replicate and trade on the Complainant’s substantial goodwill in its mark.

Thirdly, the Panel finds that the Respondent has engaged in typosquatting, as discussed in section 6.A. above. Typosquatting may in certain circumstances constitute compelling evidence of bad faith itself (see Primedia Magazine Finance, Inc. v. John D. Zuccarini, WIPO Case No. D2000-1186). In the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed.

Finally, the Panel finds that the Respondent has chosen to register a confusingly similar domain name to divert Internet traffic away from Complainant’s website for the purpose of disrupting the business of the Complainant for monetary gain. Respondent’s website actually directs users to the range of gambling services, including on-line casinos, which directly compete with Complainant’s business. This conduct of diverting traffic for the purpose of disrupting the business of a competitor for monetary gain is clearly considered bad faith under the Policy (see Amazon.com, Inc. v. MCL International Ltd., WIPO Case No. D2000-1678 and American Institute of Floral Designers v. Palm Coast Floral, Inc., WIPO Case No. D2000-0335).

Accordingly, the Panel is prepared to find that the Complainant has satisfied the third element, under paragraph 4(c) of the Policy.

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 <wwwbicyclecasino.com> be transferred to the Complainant.

Christopher J. Pibus Presiding Panelist
Lorelei Ritchie De Larena Panelist	David H. Tatham Panelist

Dated: August 18, 2006