WIPO Domain Name Decision: D2007-0416

Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino

Complainant is Salt River Community Gaming Enterprises (d/b/a Casino Arizona), Scottsdale, Arizona, United States of America, represented by the law firm Osborn Maledon, P.A., Phoenix, Arizona, United States of America.

Respondent is Fort McDowell Casino, Fountain Hills, Arizona, United States of America, represented by the law firm Venable, Campillo, Logan and Meaney P.C., Phoenix, Arizona, United States of America.

The disputed domain name <casinoarizona.com> is registered with Network Solutions, LLC.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2007. On March 20, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name, and on March 20, 2007, 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 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 Respondent of the Complaint, and the proceedings commenced March 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2007. The Response was filed with the Center on that date.

Complainant requested a single-member panel. Exercising its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed David H. Bernstein, Dennis A. Foster, and Richard G. Lyon as panelists in this matter on May 23, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On April 24, 2007, Complainant sought leave to submit a supplemental pleading in reply to the Response, claiming that the Response included information that “Complainant did not have an opportunity to address in its Complaint.” Respondent opposed this application. On May 29, 2007, the Panel denied Complainant’s request.

Both parties are entities formed by Native American tribes to operate gaming establishments in the Scottsdale/Phoenix, Arizona, United States of America area.¹ Their competing casinos, Complainant’s Casino Arizona at Salt River and Respondent’s Fort McDowell Casino, are located approximately twenty miles from each other. Each party is the other’s nearest competitor geographically.

Respondent’s casino has been operating in this area since 1982; Complainant opened its casino nearby in June 1998, under the name Casino Arizona at Salt River. This opening was the subject of considerable advance advertising and media coverage, in local and trade publications, in the Phoenix area.² Advertising submitted by both parties illustrates that, from the start, the prominent feature of the name of Complainant’s casino is “Casino Arizona.”

Complainant owns the following trademarks registered with the United States Patent and Trademark Office (USPTO):

Mark	Applied for	Registered	Register	First Use in Commerce
CASINO ARIZONA AT SALT RIVER and design	August 1999	May 2001	Supplemental	January 1998
CASINO ARIZONA	October 2005	October 2006	Principal	June 1998
CASINO ARIZONA AT SALT RIVER	October 2005	October 2006	Principal	June 1998
CASINO ARIZONA AT SALT RIVER and design	October 2005	November 2006	Principal	January 1998

Respondent registered the disputed domain name in July 1998. At about the same time Respondent registered several other domain names, including <arizonacasino.com> and others that incorporate the words Fort McDowell. Since registering the disputed domain name Respondent has used it to advertise its Fort McDowell Casino. An Internet user who enters the disputed domain name in his or her browser reaches the same website as maintained at Respondent’s principal web address.

In early 1999 Complainant contacted Respondent, in connection with the parties’ discussion of other tribal issues, complaining of Respondent’s registration of the disputed domain name and requesting transfer to Complainant. These discussions continued intermittently through August 2005. Respondent has declined to transfer the disputed domain name.

Complainant’s registered trademarks that consist of or incorporate the phrase “Casino Arizona” provide rights sufficient to invoke the Policy. The disputed domain name is identical to some marks and confusingly similar to the others.

Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has never used the disputed domain name to advertise goods or services under that name; rather, Respondent incorporated the dominant phrase from Complainant’s marks to create initial interest confusion and drive Internet traffic to its own site by means of Complainant’s marks for commercial purposes. Respondent has never been commonly known by the disputed domain name and has never used the phrase “casino arizona” to market any of its goods or services.

Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business by intentionally registering a mark used by a close competitor. Respondent has caused Internet users looking for Complainant to be directed to Respondent’s website at which a direct competitor’s services are advertised. Bad faith is established by the facts that there is no affiliation between the parties, Respondent knew of Complainant’s mark prior to registration of the disputed domain name, and Respondent intentionally registered the domain name incorporating Complainant’s mark shortly after Complainant opened its casino to create a likelihood of confusion among Internet users that Complainant sponsors or endorses Respondent’s website, products, or services.

Respondent does not dispute that the disputed domain name is identical or confusingly similar to the words “Casino Arizona”, but asserts that it had rights and a legitimate interest in the disputed domain name when it was registered. Both words in the phrase “Casino Arizona” and the phrase itself are “highly descriptive” of Respondent’s services, giving Respondent a right to it when it registered the disputed domain name as one part of a marketing plan.

Complainant did not have enforceable trademark rights under United States law at the time Respondent registered the disputed domain name in June 1998, as Complainant did not achieve registration on the principal register of the USPTO until 2006. Complainant has not demonstrated that its mark had acquired secondary meaning⁴ in 1998. In particular, Complainant has not shown that its mark was first used in commerce “as early as January 1998;” Complainant’s pre-opening advertising predated Respondent’s registration of the disputed domain name “by only one to two months” and hence does not show secondary meaning; the media reports cited by Complainant in June 1998 do not establish secondary meaning; and Complainant never used any of the evidence it advances in this proceeding in support of its trademark applications.

Numerous other competitors of both parties incorporate one or both of the words “Casino Arizona” in their names and in domain names used to advertise their competing casinos. Complainant has shown no actual confusion among consumers caused by Respondent’s registration of the disputed domain name.

The reasons set forth in the preceding two paragraphs also demonstrate that Respondent did not register the disputed domain name in bad faith. In fact, Respondent registered the disputed domain name, along with several others, to “use the words ‘Casino’ and ‘Arizona’ in their descriptive/generic non-trademark sense to lure traffic to its website”⁵ to improve its competitive position among casinos not only in the Phoenix area but throughout Arizona. Respondent submits declarations, made on penalty of perjury, of its then-director of marketing and then-director of information technology attesting to the multi-faceted advertising and marketing campaign undertaken by Respondent in 1998. Both declarants deny (on their own behalf and on behalf of their respective staffs) any knowledge of Complainant’s marks or Complainant’s use of the phrase “Casino Arizona” in its trade name, at least at the time the marketing campaign began, and deny any intent to register the disputed domain name for disruption of Complainant’s business or to sell it to Complainant.

Complainant has established its right to invoke the Policy and satisfies paragraph 4(a)(i) by virtue of its federally-registered trademarks that consist of or incorporate the phrase CASINO ARIZONA. The vitality of a complainant’s marks in a Policy proceeding is determined as of the date the complaint is filed, not the date the respondent registered the disputed domain name. Overview, paragraph 1.4, Consensus View; Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038. As the disputed domain name is identical to some of Complainant’s marks, Complainant need not provide evidence of confusing similarity, as the Policy is satisfied by identity.

Respondent’s defenses under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy depend upon two of its assertions: first, that Complainant lacked enforceable trademark rights in July 1998 when Respondent registered the disputed domain name; and, second, that Respondent did not make this registration with knowledge of Complainant’s marks or otherwise in bad faith. The second assertion is belied by the evidence in the record and, since knowledge of Complainant’s marks has been established, the first does not excuse Respondent’s intentional copying of the mark into its own domain name.

The evidence in the record demonstrates that Respondent knew or should have known of the trade name of its newly-opened competitor when the disputed domain name was registered. Complainant has provided overwhelming evidence that Respondent was well aware of Complainant and the name of its casino. Respondent placed advertisements in the same edition of The Card Player, a gaming trade publication, in which Complainant placed ads using the CASINO ARIZONA mark. This overlap occurred in four issues of the publication – dated April 3, April 17, June 12, and June 26, 1998 – all prior to Respondent’s registration of the disputed domain name. Complainant similarly placed ads including the CASINO ARIZONA mark in the June 7, 11, and 21, 1998 – again, prior to Respondent’s registration of the disputed domain name – issues of the Arizona Republic, a Phoenix newspaper of general circulation. Respondent acknowledges that Complainant opened its casino in June 1998.

Respondent’s explanation that it registered a group of domain names coincidentally including the name used by its nearest competitor as part of an aggressive (to use Respondent’s word, “savvy”) marketing campaign, is internally inconsistent and defies common sense. According to Respondent it undertook that campaign in the face of increased competition in the Phoenix and broader areas. A “savvy” marketer faced with a new competitor surely knew that competitor’s trade name, and its denying such knowledge appears disingenuous. Respondent proffers declarations made more than eight years after the events in question and expressly for this proceeding that confidently and generally attest to “knowledge” of others. Each declarant makes the same statement: “I can personally also attest that no person in my department had any knowledge of . . . [Complainant’s] intent to name its casino CASINO ARIZONA when we developed our marketing strategy.” These statements are either evasive (Respondent developed its marketing campaign before the publicity) in which case they miss the point – when Respondent knew of Complainant’s trade name – or incredible.⁶ Either way they are at best self-serving statements of desired factual conclusions that cannot overcome the hard evidence submitted by Complainant.

As many Panels have held, once it has been established by admission or inference from the evidence that Respondent was aware of Complainant’s use of a word or phrase to ply its wares or services before acquiring a domain name incorporating that mark, Complainant need not prove that at that time the mark was registered or had acquired “secondary meaning” under either the applicable trademark law or the Policy. See, e.g., InMed Diagnostic Services, LLC, InMed Diagnostic Services of S.C., LLC, InMed Diagnostic Services of MA, LLC and InMed Diagnostic Services of IL, LLC v. James Harrison, WIPO Case No. D2006-1230; The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., WIPO Case No. D2005-1318; Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073; Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653. Indeed it matters not if the mark, unlike Complainant’s marks in this proceeding, never matures to registered status. See, e.g., Memorydealers.com, Inc. v. Dave Talebi, WIPO Case No. D2004-0409 (“Any intentional use of a competitor’s mark, even a ‘weak’ mark, to attract, divert, or mislead the competitor’s customers is not legitimate use.”); James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391. In this proceeding, as in the Mackinac Island case,

“Respondent does not use a name corresponding to the Domain Names, is not commonly known by the Domain Names, and is not making a legitimate noncommercial or fair use of the Domain Names. The evidence shows that the Respondent is a competitor of the Complainant and well aware of the Complainant’s use of the mark in question, and, as discussed below, gives rise to a conclusion that the Respondent’s use of the mark was not fair use but in bad faith.”

The Policy condemns cybersquatting – intentionally selecting and using another’s mark to ride free on the goodwill of another’s mark, to hold the domain name for ransom, or to thwart the mark owner’s use of its mark as a domain name. Respondent, like the respondents in the cases cited in the preceding paragraph, seeks to elide the consequences of its decision by challenging the strength or effectiveness of the competitor’s mark. Respondent’s arguments are more suited to an opposition in the USPTO or a defense in civil action for infringement; they provide no defense here.

The evidence establishes that Respondent lacks rights or legitimate interests in the disputed domain name, and that it registered and used the disputed domain name in bad faith.

For all 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, <casinoarizona.com>, be transferred to Complainant.

Richard G. Lyon
Presiding Panelist

David H. Bernstein

Panelist

Dennis A. Foster

Panelist

¹ Many casinos and other gaming activities in the United States of America are operated by Native American tribes. Because of their semi-sovereign status the tribes can avoid restrictions on gambling imposed by many States of the United States provided that their operations take place on the tribes’ reservations. Both parties’ casinos are very substantial operations whose advertising is pitched to widespread audiences.

² Publicity surrounding the opening of Casino Arizona at Salt River is described in more detail in Section 6, infra.

³ “AZ” is the United States Postal Service’s official abbreviation for the State of Arizona.

⁶ Each declarant also denies seeing Complainant’s advertisements contained in the same trade publication as Respondent’s ads.