The Complainant is Violet Media Corp., of Poughkeepsie, New York, United States of America, represented by McCarter & English, LLP, United States of America.
The Respondent is Charon Communications Ltd., of Tortola, British Virgin Islands (an Overseas Territory of the United Kingdom of Great Britain and Northern Ireland), represented by Rödl & Partner GbR, Czech Republic.
The disputed domain names <swankgold.com> and <swankpoker.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2009. On January 26, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On January 26, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2009. The Response was filed with the Center on February 18, 2009.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 26, 2009. 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.
The Complainant is a publisher of online and printed magazines. The Complainant has continuously sold magazines bearing the trademark SWANK since 1955 and has provided online magazine services since 1997. The Complainant owns a U.S. trademark registration for SWANK for entertainment magazines under Registration No. 1,121,416, registered on July 3, 1979. The Complainant also owns U.S. Trademark Registration No. 2,520,148 for the mark SWANK in connection with on-line adult entertainment magazines, registered December 18, 2001. The Complainant also owns trademark registrations for SWANK in Canada, the United Kingdom and Germany.
The Complainant owns and operates various websites containing the trademark SWANK, namely <swankmag.com>; <swankmagazine.com>; <swankdigital.com>; <swankdollars.com>; <swanklive.com>; <swankonline.com>; <swankpass.com>; <swankpersonals.com>; <swanksupport.com>; <swanktoys.com>; <buyswank.com> and <iswank.com>.
The Respondent operates an on-line gaming (poker) platform through the “www.swankpoker.com” website. At the time the Complaint was filed, the Respondent's website also provided explicit adult entertainment content to Internet users, through various means.
The Respondent registered the domain name <swankpoker.com> on January 5, 2007 and the <swankgold.com> domain name on September 16, 2008.
After the Complaint was filed, the “www.swankpoker.com” website was modified to remove the adult entertainment content, and the “www.swankgold.com” website now reverts to a website offering jewelry.
The Complainant contends that the domain names <swankpoker.com> and <swankgold.com> are confusingly similar to the Complainant's trademark SWANK.
The Complainant submits that it is the owner of the trademark SWANK by virtue of its two U.S. trademark Registrations Nos. 1,121,416 and 2,520,148. The Complainant also submits that it owns related trademark registrations in Canada, the United Kingdom and Germany.
The Complainant contends that the domain names <swankpoker.com> and <swankgold.com> both contain as a first element the Complainant's trademark SWANK. Furthermore, that the addition of a descriptive work “poker” and “gold” do not serve to distinguish the domain names from the Complainant's trademark. [Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662].
The Complainant contends that the Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain names. The Complainant submits that its rights in the SWANK trademark are so well-known it is not possible that the Respondent was unaware of the Complainant's rights. The Complainant submits that there is no relationship between the Complainant and the Respondent giving rise to any license, permission or other right by which Respondent could own or use any domain names incorporating the Complainant's SWANK Trademark. The Complainant further submits that the Respondent is not known or identified by the disputed domain names. The Complainant also submits that the Respondent is not using the domain names in a manner which offers bona fide goods and/or services. The Complainant notes that the Respondent is operating websites that provide on-line gaming services, together with adult-oriented materials, which is in direct competition with the Complainant's adult entertainment services.
The Complainant contends that the domain names <swankpoker.com> and <swankgold.com> were registered and are being used in bad faith based on the following factors: (i) Respondent must have known about the SWANK trademark at the time of registration of the dispute domain names; (ii) Respondent's registration of confusingly similar domain names; and (iii) Respondent's use of confusingly similar domain names to operate websites that provide adult-entertainment services similar to and in direct competition with the Complainant's services.
The Respondent submits that the Complainant's trademark rights are limited to printed materials, except for its German Registration No. 39727267,7 and Canadian Registration No. TMA 575,200. The Respondent argues that its online services are sufficiently different to avoid confusion, because online poker services are different from printed materials, i.e. magazines.
The Respondent further contends that the Complainant's trademark SWANK is not well-known and distinctive of the Complainant's services, and that the Respondent was not aware of the Complainant's rights in the subject trademark. The Respondent points to the on-line ranking site “www.alexa.com”, which assigns to the Complainant's website “www.swankmag.com” a traffic rank of 38,506, over a 3-month period. The Respondent submits that this ranking is insignificant compared with other adult entertainment websites.
The Respondent submits that the word “swank” is not a coined word, but rather a word existing in the English language, which means “fashionably elegant”. As such, the word “swank” is not distinctive of the Complainant.
The Respondent contends that it does not operate in a similar field of business as the Complainant, claiming that the Respondent's services and websites operated under the disputed domain names do not offer adult entertainment, but rather are gaming (poker) sites that have an adult entertainment setting/background. Respondent claims that it operates in a “totally different” field of business.
The Respondent submits that it has a legitimate interest and right in the domain names <swankpoker.com> and <swankgold.com>. The domain names have been used in connection with a well-known gaming site, that has attracted over 8,000 on-line poker players.
The Respondent also contends that it has not acted in bad faith, because it was not aware of the Complainant's rights in the SWANK trademark when it registered and used the domain names in question. The Respondent submits that it never drew any connection to the Complainant or communicated to its players that there was a relationship to the on-line magazine of the Complainant.
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 the trademark or service mark in which the Complainant has rights;
(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.
The Panel finds that the Complainant has established rights in the SWANK trademark, by virtue of the two U.S. Trademark Registrations Nos. 1,121,416 and 2,520,148 and the other international registrations listed in the Complaint.
The Panel finds that the domain names <swankpoker.com> and <swankgold.com> are confusingly similar to the Complainant's trademark SWANK, because each of the domain names in question contains as the first and dominant element the SWANK trademark in its entirety. The Panel accepts that the addition of the descriptive and common words “poker” and “gold” do not serve to distinguish the domain names from the trademark.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
The Panel finds no evidence that the Respondent was ever known by the disputed domain names and the Panel accepts the Complainant's assertion that it never licensed or authorized the Respondent to use the SWANK Trademark. The Panel concludes that the Respondent is not affiliated or related to the Complainant in any manner.
Having decided that the Respondent was not commonly known by the disputed domain names and that there is no license or authorization from the Complainant to the Respondent to use the disputed domain names, the Panel must now address whether the Respondent is using the domain names in connection with a bona fide offering of goods and services. As a preliminary matter, the Panel does not agree with the Respondent assertions that because the Complainant does not own a European or CTM Registration, the trademark rights of the Complainant are limited geographically. The Complainant owns trademark rights in the U.S., Canada, United Kingdom and Germany. The Panel considers trademark registrations in these jurisdictions sufficient to establish that the Complainant's rights have an international reach, which extends to at least some jurisdictions in Europe.
Respondent claims that it was not aware of Complainant's trademarks or associated business, when it registered the domain names and created the content for the associated websites. The Panel does not find this assertion to be credible. There is no inherent connection between the word SWANK and adult entertainment services. In fact, as Respondent points out, the meaning of “swank” is “fashionably elegant”. Yet Respondent's websites prominently feature adult entertainment content. The Panel's view is that this is not a matter of coincidence but rather reflects an awareness of Complainant's trademarks on the part of the Respondent.
In reaching this conclusion, the Panel notes the content of Complainant's Exhibits 13, 14, 15 and 16, which are print-outs from the Complainant's websites, including “www.swankmag.com”, and the Respondent's websites “www.swankpoker.com” and “www.swankgold.com”. The Panel notes significant points of similarity in format and content. The print-outs from the Respondent's websites include an obvious focus on adult entertainment features, beginning on the home page and on the following pages. The Respondent's websites combine on-line poker services with explicit adult entertainment content, promoting “the best poker and sexual experiences”. This combination, in association with the use of the SWANK trademark, trades on the Complainant's reputation in the adult entertainment field.
Accordingly, the Panel finds that the Respondent is not using the domain names in connection with a bona fide offering of goods and services.
The Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
The evidence shows that the Complainant's trademark SWANK is distinctive and that it is well known in the U.S. and to some extent internationally in connection with adult entertainment magazines, through printed publications and on-line services.
In reviewing the evidence, in particular the print-outs from the websites attached as Annex 13, 14, 15, and 16, the Panel is prepared to infer that the Respondent had knowledge of the Complainant's trademark rights when it registered the domain names <swankpoker.com> and <swankgold.com>. The Panel does not accept the Respondent's arguments that it was unaware of the Complainant's rights, when in fact the Respondent's websites displayed content that was very similar to Complainant's core business. See the Panel's findings in the section on Rights or Legitimate Interests above for further explanation. Therefore, the Panel is prepared to infer that the Respondent intended to trade on the reputation and goodwill of the Complainant's rights in the SWANK trademark, when it adopted and used the <swankpoker.com> and <swankgold.com> domain names.
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
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 names <swankpoker.com> and <swankgold.com> be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: March 12, 2009