WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Cyberbingo Corporation v. Global Gaming Entertainment N.V.
Case No. D2006-0973
1. The Parties
The Complainant is The Cyberbingo Corporation, St. John's Antigua, West Indies, Antigua and Barbuda, represented by Gowling Lafleur Henderson, LLP.
The Respondent is Global Gaming Entertainment N.V., Curaçao, Netherlands Antilles.
2. The Domain Name and Registrar
The disputed domain name <thecyberbingo.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2006. On August 4 and August 10, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On August 11, 2006, OnlineNic, Inc. d/b/a China-Channel.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. 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 August 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2006.
On September 12, 2006, the Complainant requested that the proceedings be suspended for a period of 30 days. According to the Complainant, the Respondent had agreed to transfer the domain name. On September 14, 2006, the Center suspended the proceedings until October 14, 2006. On October 14, 2006, the Complainant requested that the proceedings be suspended for a second time. Accordingly, on October 17, 2006, the Centre suspended the proceedings until November 14, 2006.
On October 25, 2006, the Center re-instituted the administrative proceedings. The Complainant in the Complaint had elected to have the dispute decided by a three-member Panel, and nominated three panelists, including Mr. J. Nelson Landry. On October 27, 2006, the Center notified the Parties of the appointment of Mr. J. Nelson Landry and Mr. Willem J. H. Leppink as panelists in this matter, and circulated a Presiding Panelist Selection List for the ranking by the Parties of candidates for the presiding panelist. On November 14, 2006, the Center notified the Parties of the appointment of David J.A. Cairns as presiding panelist. 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 is The Cyberbingo Corporation, a company based in St. John’s, Antigua and Barbuda dedicated to the online gambling business. The Complainant is the current owner of the Canadian trademark registrations TMA 592,434 and TMA 622,490 for the trademarks CYBERBINGO and CYBERBINGO NETWORK filed in 1998 and 2002 respectively. The Complainant is also the owner in the United States Patent and Trademark Office registration number 2,572,839 for the word mark CYBERBINGO, filed in 2002 and based on a first use in commerce of November 1996.
The Complainant operates an online bingo website located at “www.cyberbingo.com” offering multi-player bingo games, instant bingo, slots, video poker and free games. The Complainant also owns the domain name <icyberbingo.com>. This domain name was registered by the Respondent on February 6, 2004, and later sold to the Complainant on March 2, 2006, for US$1000.00.
The Respondent is Global Gaming Entertainment N.V. The Respondent is a direct competitor of the Complainant in the online gambling business. It owns the domain name <bingos.com>, which hosts a website through which it provides services similar to those of the Complainant.
On February 6, 2004, the Respondent registered the disputed domain name <thecyberbingo.com>. The Respondent is currently using the disputed domain name as a hyperlink to its “www.bingos.com” website. On June 7, 2006, the Complainant demanded from the Respondent the transfer of the disputed domain name. The Respondent replied on June 12, 2006 requesting the payment of US$1000.00 for the transfer of the disputed domain name.
5. Parties’ Contentions
A. Complainant
The Complainant is an international leader in the online bingo industry. It states that it has been engaged in the online provision of bingo services since 1996 and that it operates the Internet’s largest and longest running on-line bingo business at “www.cyberbingo.com” in association with its registered trademark CYBERBINGO. The Complainant states that its “www.cyberbingo.com” website has received over USD140million in wagers since late 2002, and in 2004 alone attracted over 250,000 unique visitors. The Complainant has invested heavily in the promotion of the CYBERBINGO trademarks.
The Complainant states that the Respondent is a direct competitor, operating an online bingo business located at “www.bingos.com”.
The Complainant states that it is the registered owner of the CYBERBINGO trademarks and that by virtue of these registrations it has and continues to have rights in those trademarks. It states that a finding that a domain name incorporates the whole of a complainant’s mark supports a finding of confusion, and that it is a well established principle that the addition of the article ‘the’ in a domain name does nothing to remove confusion.
The Complainant alleges that the disputed domain name incorporates the whole of the CYBERBINGO trademarks and that despite the addition of the word ‘the’ the disputed domain name “remains nearly identical to the trademark CYBERBINGO in appearance, sound and in the ideas suggested by the mark”. It contends that the disputed domain name was registered with the deliberate intention of misleading and confusing potential consumers, favoring a finding of confusion.
The Complainant states that it has never licensed or authorized the Respondent to register or use the CYBERBINGO trademarks, and that there is no evidence that the Respondent has been commonly known by the disputed domain name. There is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use the domain name in connection with a bona fide offering of goods and services or that it is making or intends to make a legitimate non-commercial or fair use of it. To the contrary, the fact that it is used to point to the “www.bingos.com” website, a direct competitor of the Complainant’s website, constitutes prima facie evidence of no rights on the domain names and undermines any claim of legitimacy.
The Complainant states that a number of factors support an absence of rights in respect of the domain name. First, the Respondent’s actual or constructive knowledge of the Complainant’s rights in the disputed domain name at the time of registration. The Complainant maintains that the Respondent is a direct competitor, and that given its prior misappropriation of the CYBERBINGO trademark with the registration of the domain name <icyberbingo.com>, the only conclusion is that the Respondent had actual knowledge of the CYBERBINGO trademarks. Second, the Respondent offered to sell the disputed domain name for US$1000.00 to the Complainant, a price in excess of its registration expenses. It is a well established principle that a respondent offering to sell a domain name can undermine a claim of legitimate interest. Third, the Respondent has incorporated the trademark CYBERBINGO in its entirety in the disputed domain name.
The Complainant relies on subparagraphs 4(b)(i), (iii) and (iv) of the Policy to support a finding of bad faith on the part of the Respondent; alleging that: (i) the Respondent demanded US$1000.00 in exchange for the transfer of the disputed domain name, demonstrating that the disputed domain name was acquired by the Respondent for the purpose of selling it to the Complainant for an amount exceeding its registration expenses associated with the domain name; (ii) the Respondent is a competitor of the Complainant, and that it linked the disputed domain name to its own “www.bingos.com” website to ‘piggyback’ on Complainant’s goodwill and exploit Internet traffic destined for the Complainant’s “www.cyberbingo.com” website. The Complainant concludes that the Respondent is disrupting its business deliberately and that in light of the foregoing there is prima facie evidence of bad faith according to subparagraph 4(b)(iii) and (iii) the disputed domain name is likely to be confused with the CYBERBINGO trademark and that the “www.bingos.com” website is a commercial website that competes directly with Complainant’s “www.cyberbingo.com” website, which establishes that the disputed domain name is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the CYBERBINGO marks as to source or sponsorship.
Furthermore, the Complainant contends that a finding of bad faith on the part of the Respondent is reinforced by the fact that the Respondent, a direct competitor that had previously misappropriated the Complainant’s CYBERBINGO mark in a domain name, had actual or constructive knowledge of Complainant’s rights at the time of registering the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to 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 appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the Canadian and United States registrations of the CYBERBINGO trademark, and the Canadian registration of the CYBERBINGO NETWORK trademark.
The disputed domain name is not identical with the CYBERBINGO word mark, but does incorporate this trademark entirely. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).
The trademark element of the disputed domain name is a compound of a descriptive prefix (‘cyber’) and the name of a game of chance (‘bingo’). The resulting trademark is largely descriptive, although an invented word (cf. The Cyberbingo Corporation v. 207 Media Inc., WIPO Case No. D2005-0714).
The non-trademark element of the disputed domain name is the definite article ‘the’ which has no independent distinctiveness. The definite article serves the grammatical function of identifying or making definite one particular member of a generic class, and so serves to emphasise the noun that follows, which is the Complainant’s CYBERBINGO trademark. The addition of the definite article can also suggest an element of being established and even of exclusiveness (in the sense of ‘the one and only’). Given the goodwill associated with the CYBERBINGO trademarks as evidenced by use, promotion, Internet traffic and revenue, these are characteristics that Internet users are likely to associate with the Complainant’s CYBERBINGO trademarks and its on-line services.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the CYBERBINGO trademark, and the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark consisting of or containing the term “thecyberbingo” or “cyberbingo”; (ii) the Respondent is not authorized or licensed by the Complainant to use the CYBERBINGO trademarks or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) there is no evidence of use, or demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services; and there is no evidence of legitimate non-commercial or fair use of the disputed domain name. The Respondent is not using the domain name in connection with “a bona fide offering of goods or services” because it is a direct competitor of the Complainant using a domain name confusingly similar to the Complainant’s CYBERBINGO trademarks to attract Internet users to its own “www.bingos.com” website.
The Panel has also considered under this heading the fact that the word “cyberbingo” is descriptive of the on-line provision of bingo services, and for that reason the Respondent may have a legitimate interest in using the word to describe its own on-line bingo services. However, “cyberbingo” is not a generic term, and is less descriptive than, for example, ‘Internet bingo’ or ‘on-line bingo’. Further, the Respondent uses “cyberbingo” in a trademark sense in the disputed domain name, which is hyperlinked to a website that does not use the term “cyberbingo” as descriptive of its services. As the Respondent does not use “cyberbingo” in a descriptive or trademark sense it cannot in the circumstances acquire rights or legitimate interests on this basis. Furthermore the Trademark Offices in Canada and in the United States are familiar with such nuances and yet both have permitted the trademark CYBERBINGO to be registered, thereby acknowledging its distinctive character.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, Paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website, it should be taken as evidence of the registration and use of the domain name in bad faith.
The Panel finds that the evidence submitted by the Complainant is sufficient to support a finding of bad faith under Paragraph 4(b)(iv). The Respondent uses the disputed domain name with the intention to attract Internet users for commercial gain, which it does by hyperlinking the disputed domain name to its own website offering on-line bingo services. The likelihood of confusion is as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the CYBERBINGO trademarks and the Complainant’s own domain name. The fact that the Complainant and the Respondent are direct competitors aggravates the likelihood of confusion.
The fact that the Respondent offered to sell the disputed domain name to the Complainant in excess of its out-of-pocket expenses, and there is a prior example of a similar registration of a domain name including the word ‘cyberbingo’ by the Respondent, are corroborative evidence of bad faith.
As a result, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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, <thecyberbingo.com> be transferred to the Complainant.
David J.A. Cairns | |
J.
Nelson Landry |
Willem J. H. Leppink Panelist |
Dated: November 23, 2006