The Complainants are Mansion (Gibraltar) Limited of Gibraltar, United Kingdom of Great Britain and Northern Ireland and Provent Holdings Ltd. of Tortola, Virgin Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland, represented by Quahe Woo & Palmer LLC, Singapore.
The Respondent is Ryan Dearlove of Bradford, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <m88mansion.com> is registered with GoDaddy.com, LLC. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2013. On March 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2013, the Registrar 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 April 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2013.
The Center appointed Adam Samuel as the sole panelist in this matter on May 22, 2013. 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 First Complainant is an international online casino, poker, sportsbook and sports exchange gaming entertainment company. It has carried on its business at a number of websites including <mansion.com> and <mansioncasino.com> since August 2004 and on a free online poker gaming website <mansionpoker.com> since November 2005. These domain names are registered in the name of the Second Complainant. The Second Complainant is also the legal owner of a number of trademarks around the world. These include Hong Kong trademark registration for MANSION, no. 300261215, which was registered on August 3, 2004. The Second Complainant has licensed the use of the domain names and trademarks mentioned in this paragraph to the First Complainant. The Second Complainant carries on its business as an international online casino sportsbook and sports exchange gaming Entertainment Company through the domain name <m88.com>. The Second Complainant has filed a number of applications for the registration of trademarks including MANSION88.COM and M88. The disputed domain name was registered on December 7, 2012.
This section contains the Complainants’ submissions with which the Panel may or may not agree.
The disputed domain name directs visitors to a website that is a blank page save for the words “Website Shut down”. The Complainants earliest registered trademarks pre-date the registration of the disputed domain name by a considerable length of time.
The only distinction between each of the Complainants’ MANSION and M88 trademarks and the disputed domain name is the Respondent’s combination of both the trademarks to form the disputed domain name. These marks are featured in their entirety in the disputed domain name. The presence of both trademarks will invariably cause confusion amongst consumers in the online gambling market as to whether the disputed doman name is linked either of the Complainants’ online gambling businesses. The incorporation of the totality of either one of the marks in the disputed domain name alone would suffice to create a real and strong likelihood of confusion and consequently to establish the criterion of similarity for the purposes of the Policy.
The Respondent has never used or appeared to have made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before the Respondent had any notice of the dispute. The Complainants have never license or authorized the Respondent to use the MANSION or M88 trademarks.
The Respondent only uses the disputed domain name to deceive users into thinking that the disputed domain name bears an affiliation of businesses operated under the Complainants’ trademarks. It is highly unlikely that the Respondent was aware of and did not associate the names MANSION.COM and M88 with the Complainants. The Respondent is intending to use or is using the disputed domain name to divert Internet users who are searching for information regarding the Complainants’ trademark to the website to which the disputed domain name resolves. The disputed domain name in itself has no specific meaning or correlation to the website to which it resolves. The disputed domain name was registered during the English Premiership football season during which time there was widespread televising of matches involving Manchester City FC at its stadium where the Complainants’ trademarks were clearly advertised on bill boards.
By an e-mail dated January 3, 2013, the Complainants’ solicitor wrote to the Respondent. In his response, the Respondent suggested that the Complainants purchase the disputed domain name from him for USD 13,500, a price in all probability far in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
The Respondent did not reply to the Complainant’s contentions. He did, though, present his case in an e-mail to the Complainant’s solicitor of January 18, 2013. In this he states that the Second Complainant owns the registered trademark within Europe of a number of names including “Mansion”. He indicates that visitors from Europe are banned from visiting “m88mansion.com”. The reference to MANSION referred to the niton of “residence”. The site was created with the intention of creating a gaming news site targeting the Asian market.
Under the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which they have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The disputed domain name consists of the Second Complainant’s trademark MANSION preceded by “m88”, a combination of a letter and two digits with no independent meaning except as the Second Complainant’s brand and the gTLD suffix “.com”. The addition of meaningless words, letters or digits and the gTLD suffix “.org” to a trademark does not prevent the resulting domain name from being confusingly similar to the trademark concerned.
The First Complainant appears to be a licensee of the second Complainant’s trademarks and as such has private law rights to use them. Such a licence under the established majority caselaw on the Policy constitutes sufficient entitlement to base a claim to have rights in a relevant trademark. See Telcel, C.A. v. jerm and Jhonattan Ramírez, WIPO Case No. D2002-0309, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796, Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc., WIPO Case No. D2003-1027. If those responsible for the Policy had wished Panelists to take the minority and contrary position, one would have expected the Policy to have been amended subsequently in this area. One must, therefore, assume that the correct interpretation of “a trade mark or service mark in which the Complainant has rights” covers those marks to which the Complainant only has a license to use.
For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainants each have rights.
The Respondent is not called “Mansion”, “M88” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By registering a domain name that is a combination of the Second Complainant’s trademark and its brand name, M88, the Complainant indicated that he was well aware of the First Complainant’s business and trademark rights. This is supported by the Respondent’s e-mail of January 18, 2013. There is no reason to register a domain name consisting of the two names together which away from the world of online gambling have no reason to be associated. The Respondent indicated in his e-mail that he intended to use the disputed domain name to create a gaming news site targeting the Asian market. The clear inference from the e-mail is that the Respondent proposes to use for this purpose the Second Complainant’s trademark of which he admits he is aware.
In this Panel’s view, it is impossible, at least without a full Response to the Complaint, to identify any other reason why the Respondent registered the disputed domain name except to benefit in some way from the Complainant’s trademark. The only explanation of what has happened seems to be that the Respondent’s motive in registering the disputed domain name was either to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith.
The Respondent has not put any content on the website to which the disputed domain name resolves. However, the act of retaining a domain name without any right or legitimate interest in doing so, knowing that it replicates some else’s trademark and thus prevents that other person from exploiting the name, is itself use in bad faith.
For all these reasons, the Panel concludes that the Respondent registered and is using the dispute domain name in bad faith.
For 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, <m88mansion.com> be transferred to the Complainants.
Adam Samuel
Sole Panelist
Date: May 23, 2013