WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stanworth Development Limited v. Dr. Ricardo Vasquez , Domain Name Services Organization
Case No. D2008-0943
1. The Parties
The Complainant is Stanworth Development Limited, Douglas, Isle of Man of United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Dr. Ricardo Vasquez, Domain Name Services Organization, Panama City, of Panama.
2. The Domain Name and Registrar
The disputed domain name <riverbellepocker.com> is registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2008. In the Complaint, the Respondent named by the Complainant was “Domain Name Services Organization”. On June 24, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On June 24, 2008, eNom Inc. transmitted by email to the Center its verification response stating that the Respondent listed as the registrant of the disputed domain name is “Dr. Ricardo Vasquez, Domain Name Services Organization” and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 26, 2008. The Center verified that the Complaint together with the amendment to 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 July 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 31, 2008.
The Center appointed Torsten Bettinger as the sole panelist in this matter on August 6, 2008. 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.
4. Factual Background
The Complainant is Stanworth Development Limited, an online entertainment company.
The Complainant is the registered owner of numerous trade marks including the words RIVER BELLE in various jurisdictions, inter alia Australia, Canada, the European Union, the United Kingdom of Great Britain and Northern Ireland and the United States of America. The trade marks mainly cover online entertainment services.
The Complainant uses its trade marks through a licensee which operates the online gaming site at “www.riverbelle.com”, which was conceptualized in August 1997 and officially launched in December 1997. The website receives about 250,000 visitors and facilitates over 25,000 software downloads each month. The Complainant spends more than US$ 50,000 on advertising per month.
The Complainant is registered owner of 127 domain names consisting of the words River Belle and descriptive terms, such as <riverbelle.com>, <riverbellepoker.com>, <riverbellecasinos.com>, <riverbellecraps.com> and <riverbellejackpots.com>.
The disputed domain name was first created on January 6, 2006 and is currently not used in connection with an active website.
5. Parties' Contentions
A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to the Complainant's trade marks as it fully includes its trade marks RIVER BELLE.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion the Complainant states that
- the Respondent's non-use of the domain name does not constitute a fair use of the disputed domain name;
- the Respondent is neither an agent nor a licensee of the Complainant and therefore has no right in the use of the Complainant's trade marks;
- the Respondent has no connection or affiliation with the Complainant or the Complainant's licensee, and has not received any license or consent to use the Complainant's trade marks in a domain name or in any other manner;
- there is no evidence that the Respondent has been commonly known by the disputed domain name and the Respondent has not acquired any trade mark or service mark rights in the disputed domain name.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that
- the Complainant has a long established reputation in many jurisdictions in the use of its RIVER BELLE trade marks in relation to gaming and casino services;
- it is most likely that the Respondent was fully aware of the Complainant's RIVER BELLE trade marks when registering the disputed domain name;
- the Respondent's passive holding of the disputed domain name equals active use because there exists no relationship between the Complainant and the Respondent, the disputed domain name was registered many years after the Complainant's first use of the RIVER BELLE mark in commerce, the Complainant has not acquiesced to the use of its trade mark, the Respondent has not responded to the Complainant's cease-and-desist letter and thus adopted by silence the material allegations made by the Complainant regarding the Respondent's bad faith registration and use of the domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions within the set deadlines. In an e-mail dated August 18, 2008, the Respondent stated that the disputed domain name was registered in error and that it was willing to transfer the domain name to the Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trade mark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trade mark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No.D2001-0505).
The disputed domain name wholly incorporates the Complainant's distinctive trade marks RIVER BELLE, used in connection with online gaming services. The fact that the word “pocker” (a misspelling of the word “poker”) is added to the Complainant's trade marks does not eliminate the similarity between these trade marks and the disputed domain name, as “pocker” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated the distinctive part of a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words.
It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel thus finds that the domain name <riverbellepocker.com> is confusingly similar to the trade marks in which the Complainant has rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among panelists that if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.
The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant's trade marks. The Respondent has not denied these assertions. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The Panel is also convinced that the Respondent registered the domain name in bad faith.
The Complainant's trade mark has been used internationally in connection with online gaming services for many years. The Respondent has registered a domain name which consists of the Complainant's highly distinctive trade marks RIVER BELLE and the word “pocker”, which is obviously a misspelling of the word “poker” and therefore describes one of the games offered online by the Complainant. As the name “river belle” as such has no inherent connection to gambling or gaming services it is inconceivable that the Respondent registered a combination of the Complainant's trade marks RIVER BELLE and the word “pocker” without being aware of the Complainant's rights in its RIVER BELLE marks.
However, the Respondent did not yet actively use the disputed domain name. Although it is well established that passive holding of a domain name may equal active use (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131), such finding requires the Panel to examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. According to the Telstra-Case, circumstances allowing a finding of bad faith use are
(i) the strong reputation of the Complainant's trade mark;
(ii) the fact that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the fact that the Respondent has taken active steps to conceal its true identity;
(iv) the fact that the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement;
(v) the fact that it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trade mark law.
The Panel has considered whether, in the circumstances of this particular case, the passive holding of the domain name by the Respondent would amount to the Respondent acting in bad faith. The Panel concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) The Complainant's trade mark is used in commerce for many years and has a strong reputation. It therefore appears that the Respondent has registered the domain name <riverbellepocker.com>, which is a misspelling of the Complainant's domain name <riverbellepoker.com>, in order to create an association with the mark as a means of attracting users to his future website.
(i) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. The registration of a widely known trade mark by a party with no connection to the owner of the trade mark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
(iii) Furthermore, the Respondent has neither responded to the Complainant's letters nor to the Complaint and has not denied the Complainant's contentions in any way. This and the fact that the disputed domain name is a misspelling of the Complainant's domain name is further evidence of bad faith (See Do The Hustle, LLC v. Donald Wilson, WIPO Case No. D2000-0627).
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate and constitute an infringement of the Complainant's rights. In light of these particular circumstances, the Panel concludes that the Respondent's passive holding of the domain name, in this particular case, satisfies the requirements of paragraph 4(a)(iii) of the Policy and that the domain name is being used in bad faith by the Respondent.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met.
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 <riverbellepocker.com> be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Dated: August 20, 2008