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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Genting Berhad v. Genting Casino, Inc.
Case No. D2001-1192
1. The Parties
The Complainant in this administrative proceeding is Genting Berhad, a company limited by shares incorporated in Malaysia on July 30, 1968 with a registered address at 24 Floor, Wisma Genting, Jalan Sultan Ismail, Kuala Lumpur, Malaysia.
The Respondent in this administrative proceeding is Genting Casino, Inc. of 168 Lucky Street, Singapore.
2. The Domain Name and Registrar
The domain name at issue is <genting-online-casino.com>. The registrar with which the domain name is registered is Namesecure, PO Box 27096, Concord, CA, USA.
3. Procedural History
The Center received the Complaint of the Complainant on October 2 and 3, 2001, by email and in hard copy respectively.
On October 2, 2001, the Center sent to the Complainant the acknowledgement of receipt of the Complaint.
The Center sent to the Registrar a request for verification of registration on October 3, 2001. On October 4, 2001, the Registrar confirmed that the domain name in dispute is registered with Namesecure and the Respondent is the current registrant of the domain name.
On October 8, 2001, the Center completed the formal Requirements Compliance Checklist.
On October 8, 2001, the Center sent to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding. The notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is October 8, 2001. The Notification sent by email and FedEx were returned with reasons described as "addresses had permanent fatal errors" and "wrong address" respectively.
On October 29, 2001, the Center sent to the Respondent the Notification of Respondent Default.
On November 15, 2001, after receiving a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center notified the parties of the appointment of a single-member panel consisting of Mr. Li Yong and the projected decision date. The decision date shall be November 29, 2001.
4. Factual Background
The Complainant and the Complainant’s wholly owned subsidiary have made several trademark applications and have procured registrations for the word genting in Malaysia, Singapore, Brunei, Hong Kong and Australia.
5. Parties’ Contentions
The Complainant’s contentions are as follows:
1) The Complaint is based on "the organization and all activities related thereto; the trade mark and all rights residing therein; the goodwill and reputation as a result thereof". The Genting Group’s history began 35 years ago, when its Founder developed a cool hilltop hotel surrounded by primeval forest and mountainous terrain. That hilltop has since grown to become Genting Highlands Resort, the "City of Entertainment" and one of the most popular tourist destination in Malaysia. The Complainant was the primary vehicle that was used to spur the growth of the Genting Group into what it has become today. From its initial leisure and hospitality activities, the Complainant has since expanded and diversified into other activities including plantations, properties, paper and packaging, power generation, oil and gas, e-commerce and the development of information technology. As at December 31, 2000, the Genting Group had a total of approximately 15,000 employees. In the year 2000, the Complainant was voted the No.1 leading company in Malaysia for the seventh consecutive year, in the Far Eastern Economic Review’s "Review 200 – Asia’s Leading Companies". It was also recognized as the top Malaysian company in Asian Business’ "Asia’s Most Admired Companies 2000".
2) The Getting Highlands Resort which is owned by an invested company of the Complainant holds "Casino de Genting", the only licensed casino in Malaysia, which offers exciting international games and entertainment. "Casino de Genting" is the only licensed casino in Malaysia. It first commenced operations on May 8 , 1971 with the view to help accelerate the development of this remote area. Indeed, the casino operations can be said to have formed a substantial part of the Genting Group’s rapid development. To this very day, casino operations in Malaysia are closely associated with and distinctive of the Complainant and likewise the name ‘genting’, is to a certain extent, synonymous to some members of the public with inter alia casino operations. When the name ‘genting’ and ‘casino’ are combined, it becomes exceptionally distinctive of the Complainant and no other.
3) The Complainant’s Trademark appears on or in all or most of its advertisements, promotional materials, buildings, sponsored premises, websites, sponsored events, properties, offices, signages, billboards, pamphlets, packaging material, gaming chips and stationery, among others. The Complainant’s Trademark is used in a manner so as to maximize exposure of the same to the public at large. Considerable amounts of monies have been expended to promote and to create the appropriate awareness in the Complainant’s Trademark both locally and internationally. For example, for the period 1998 to 2001, approximately RM49.2million (equivalent to approximately USD$13million) was incurred as marketing expenses for the Genting Highlands Resort.
4) The domain name <genting-online-casino.com>, registered in the name of the Respondent, uses the distinctive word ‘genting’ and is identical or confusingly similar to the Complainant’s Trademark in which the Complainant has rights. The domain name uses the Complainant’s distinctive name ‘genting’ and combines it with the descriptive words ‘online’ and ‘casino’. The Respondent’s domain name is identical and/or confusingly similar to the distinctive name of the casino owned by the Complainant, namely "Casino de Genting". It is a straightforward case of colorable imitation. It uses the Complainant’s Trademark and matches it with the words ‘online’ and ‘casino’ thus misrepresenting casino and gambling operations in an online environment carried out by an entity which owns the trademark or service mark ‘genting’. The name ‘genting’ when used with the word ‘casino’ refers to the Complainant and no other. The use of the domain name <genting-online-casino.com> therefore makes direct reference to the Complainant as operating casino or gambling activities in an online environment.
5) The Respondent has no rights or legitimate interests in the domain name at issue. The Complainant does not know of any other casino or gambling operator in other parts of the world which uses the name or word ‘genting’, whether as part of its trade mark, service mark, trade name or otherwise. The name is unique to casino and gambling operations and services and is distinctive of the Complainant as a whole. The Respondent’s name bears the word ‘genting’, appropriate searches with the Singapore Registry of Companies and Businesses and the Singapore Trade Development Board reveal that no such business entity or representative office as reflected by the Respondent’s recorded name exists.
6) The domain name at issue was registered and used in bad faith. The Respondent completely neglected and failed and refused to reply to the Complainant’s letter of demand dated April 4, 2001. As a result thereof the Complainant’s demands and allegations were left unrebutted by the Respondent. To the best of the Complainant’s knowledge, the domain name was registered by a fictitious entity supposedly based in Singapore which does not trade or carry on any other business, apart from its online casino or gambling operations, using the name ‘genting’ whether in Singapore or elsewhere. Prior to receipt of the letter of demand, there was no website located at <genting-online-casino.com>. The user was instead re-directed to unlawful webpages located at <genting.com/mystic>. A perusal of the webpages located at <genting.com/mystic> indicated that the Respondent represented itself as an affiliate member of the "Casino Affiliate Network". Presumably therefore, it was and is knowledgeable of the casino or gambling trade. In this regard, the Complainant avers that the Respondent had or should have had the requisite knowledge of the Genting Group’s and/or the Complainant’s internationally renowned "Casino de Genting" when it registered and used the domain name.
7) The acts and conduct of the Respondent are calculated to deceive and mislead or are likely to deceive and mislead the trade and public into an erroneous belief that the domain name <genting-online-casino.com> registered by the Respondent is that of the Complainant or is otherwise howsoever associated, affiliated or connected with the Complainant. The actions and conduct of the Respondent have deprived the Complainant of the right and opportunity to have a domain name comprising its own name that is international in character. This amounts to a loss of competitive advantage and loss of identity in the information superhighway. The actions and conduct of the Respondent leaves with it an instrument of deception that may be used to perpetrate a wrong at law. If the Respondent is allowed to continue to activate, use or deal with the domain name <genting-online-casino.com>, this would result in a false association of the domain name <genting-online-casino.com> with the Complainant. Further and in any event the actions and conduct of the Respondent will cause a dilution of the Complainant’s Trademark and hence lead to a devaluation of the goodwill and reputation residing therein.
The Respondent has not submitted its contentions.
6. Discussion and Findings
In accordance with the Policy, the Complainant asking for transfer of the domain name must prove the following three elements: 1) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) Respondent has no rights or legitimate interests in the domain name; and 3) Respondent has registered the domain name and is using it in bad faith. (ICANN Policy, 4 (a)).
Identical or Confusingly Similar
The Complainant owns trademark rights for the word ‘genting’ in several countries including Singapore, the country the Respondent resides in. The word ‘genting’ is directly incorporated into the domain name at issue. Apart from using the word ‘genting’, the domain name at issue also combines two descriptive words ‘online’ and ‘casino’. The Panel finds that the domain name at issue is confusingly similar to the trademark owned by the Complainant based on the following reasons: 1) When the word ‘online’ is used together with a mark or a term representing an activity to form a domain name, the most likely implication is that the domain name merely demonstrates the mark or the activity in internet environment. 2) The Complainant has established that the Complainant is a famous company with long history and numerous business sectors and it has gained due recognition in some countries especially in Malaysia. As casino operations have formed a substantial part of the Complainant’s development and are closely associated with the Complainant, when ‘genting’ and ‘casino’ are combined, it is very likely to refer to the Complainant from perspective of the public, especially in Malaysia and its neighbor country Singapore. Therefore, the Panel holds that the first element of ICANN Policy, 4 (a) is met.
Respondent’s Rights or Legitimate Interests in the Domain Name
The Respondent has not provided evidence of circumstances of the type specified in the ICANN Policy, 4(c). Furthermore, the Respondent has not provided evidence of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. As such, the Panel believes that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
Domain Name Registered and Used in Bad Faith
Paragraph 4(b) of the ICANN Policy specifies four types of circumstances that could be evidence of the registration and use of a domain name in bad faith. According to the ICANN Policy, circumstances of bad faith are not limited to the listed ones.
The Panel finds that the domain name has been registered and used in bad faith based upon the following reasons: 1) The Complainant has established that the Complainant is a famous company with long history and numerous business sectors and it has gained due recognition in some countries especially in Malaysia. It can be reasonably inferred that the Respondent knew the Complainant and its trademark at the time when the disputed domain name was registered. In addition, the Respondent represented itself as an affiliate member of the "Casino Affiliate Network". Presumably therefore, it was knowledgeable of the casino or gambling trade. Therefore, the Respondent had or should have had the knowledge of the Complainant’s renowned "Casino de Genting" when it registered and used the domain name. 2) The Complainant’s searches with the Singapore Registry of Companies and Businesses and the Singapore Trade Development Board reveal that no business entity or representative office as reflected by the Respondent’s recorded name exists. Providing fictitious entity information to the registrar demonstrates bad faith. 3) The Respondent completely neglected and failed and refused to reply to the Complainant’s letter of demand dated April 4, 2001. Also, the Respondent has failed to respond to the Complainant in this proceeding, which makes specific allegations. These support the contention that bad faith exists.
For the reasons above, the Panel finds that the registration and use of the domain name at issue is in bad faith.
The Panel concludes (a) that the domain name <genting-online-casino.com> is confusingly similar to the trademark owned by the Complainant, (b) that the Respondent has no rights or legitimate interest in the domain name and (c) that the domain name at issue has been registered and used in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <genting-online-casino.com> be transferred to the Complainant.
Dated: November 29, 2001