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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Trump Entertainment Resorts, Inc. v. Taj Mahal Services and Tajmahalpalace

Case No. D2007-0276

 

1. The Parties

The Complainant is Trump Entertainment Resorts, Inc., of Atlantic City, New Jersey, United States of America, represented by Sughrue Mion, PLLC, United States of America.

The Respondents are Taj Mahal Services, with a listed address in Valletta, Republic of Malta, and Tajmahalpalace, with a listed address in London, United Kingdom of Great Britain and Northern Ireland (collectively, the “Respondent”).

2. The Domain Names and Registrars

The disputed domain name <casinotajmahalpalace.com> is registered with Register.com.

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2007. On February 26, 2007, the Center transmitted by email to Register.com and Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On February 27, 2007, Network Solutions, LLC transmitted by email to the Center its verification response identifying the registrant of <tajmahalpalacecasino.com> as Taj Mahal Services and providing the contact details including an address in Valetta, Malta, and an administrative contact, John Anthony, including an address in, Sydney, Australia. On February 28, 2007, Register.com transmitted by email to the Center its verification response identifying the registrant of <casinotajmahalpalace.com> as Tajmahalpalace and providing the contact details including an address in London, United Kingdom of Great Britain and Northern Ireland, and an administrative contact, John Anthony, with an address in Sydney, Australia.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on March 9, 2007. The Center verified that the Complaint together with the Amended 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 March 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2007. As no Response was received, the Center subsequently issued a notification of respondent default.

On April 13, 2007, in reply to the Center’s respondent default notification, an email communication and attached a two-page document from John Anthony was received by the Center. On April 16, 2007 the Center acknowledged receipt of the email communication and attached document indicating that as the due date for submission of a Response was April 1, 2007, any consideration of the said communication and document would be at the sole discretion of a Panel (when appointed).

The Center appointed Christopher J. Pibus as the sole panelist in this matter on April 24, 2007. 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.

Although the Policy does not provide for the late filing of a Response, and no exceptional circumstance or explanation was provided, the Panel is prepared to consider the Response, in the interest of fairness and a more complete evidentiary record.

 

4. Factual Background

The Complainant is the owner of the widely-known casino called Trump Taj Mahal, which has been in operation in Atlantic City, New Jersey since 1990. The casino has received numerous awards including Best Casino by Casino Player Magazine. The Complainant’s casino is one of the largest in the world and offers a wide variety of gaming operations, including slots, table games such as craps and poker, keno and simulcast horseracing. The Complainant has had many famous entertainers perform at the Taj Mahal casino, and it is clearly a major attraction in the Atlantic City area.

The Complainant owns four U.S. trademark registrations for the mark TAJ MAHAL, TRUMP TAJ MAHAL CASINO RESORT, TRUMP TAJ MAHAL CASINO RESORT & Design, and TRUMP TAJ MAHAL CASINO – RESORT for hotel and casino services (the “TAJ MAHAL Trademarks”). The Complainant has spent millions of dollars promoting and advertising the TAJ MAHAL Trademarks and casino services.

The Complainant’s websites <trumptaj.com> and <trumptajmahal.com> display the TAJ MAHAL Trademarks in a variety of ways, to promote the casino.

In terms of other legal proceedings, Complainant has filed a complaint in U.S. District Court in respect of the single domain name <tajmahalpalacecasino.com>. The Complainant states that his Complaint has not been served on the Respondent because of difficulties identifying an actual address for service, and the fact that a change of address was recorded after the commencement of proceedings. Having commenced this Complaint under the Policy, the Complainant has undertaken not to effect service of the U.S. District Court proceedings.

The Respondent registered the domain names <tajmahalpalacecasino.com> on July 29, 2006, and <casinotajmahalpalace.com> on July 22, 2006. At the date of the Complaint, the Respondent was operating a website under these domain names that provide on-line gaming, such as black jack, video slots, carribean stud, tri-card poker, roulette and mini baccarat.

 

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant contends that the domain names <tajmahalpalacecasino.com> and <casinotajmahalpalace.com> are confusingly similar to the Complainant’s registered trademark TAJ MAHAL. The Complainant contends that the addition of the generic term “palace” does not distinguish in any meaningful way the domain names from the Complainant’s trademark. The Complainant further contends that the use of a descriptive term, such as “CASINO” does not serve to distinguish the domain names from the Complainant’s TAJ MAHAL Trademarks, but rather reinforces the connection to the Complainant’s business.

(b) Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interest in respect of the domain names <tajmahalpalacecasino.com> and <casinotajmahalpalace.com>. The Complainant’s rights in the TAJ MAHAL Trademarks were established long before the Respondent’s registration of the domain names in question, namely July 22, and July 29, 2006. The Complainant further contends that the Respondent’s use of the domain names in connection with an on-line gaming site, which is in direct competition with the Complainant, does not establish a legitimate right or interest in the domain names. The Complainant has not authorized or licensed the Respondent to use the Complainant’s TAJ MAHAL Trademarks.

(c) Registered and Use in Bad Faith

The Complainant contends that the domain names <tajmahalpalacecasino.com> and <casinotajmahalpalace.com> were registered and are being used in bad faith based on the following factors: (i) the Respondent’s knowledge of the Complainant’s long and continuous use of the TAJ MAHAL Trademarks at the time of the registration of the domain names; (ii) the Respondent never properly registered its on-line casino services with the authorities in Malta; (iii) the Respondent provided inaccurate mailing address information in the registration of the domain names in order to conceal the Respondent’s identity and location; (iv) the Respondent changed the name and address on the WHOIS information when it was put on notice of litigation; (v) Evidence of consumer complaints regarding the Respondent’s policies and activities; (vi) the Respondent used a false return address (for promotional purposes) that was virtually identical to Complainant’s Taj Mahal Casino in Atlantic City; and (vi) Respondent acquired the confusingly similar domain names for the purpose of monetary gain by providing gaming services in direct competition of Complainant’s services.

B. Respondent

As noted above, the Respondent filed a Response, which raised certain issues about the source and history of the TAJ MAHAL name. Essentially, the Respondent submits that the Taj Mahal palace is a famous historical landmark in India, and suggests that the Complainant is not entitled to enforce trademark rights derived from a public landmark.

 

6. Discussion and Findings

As a preliminary issue, the Panel notes that the Complainant must establish that there is a substantial identity between the two named Respondents Tajmahal Services and Tajmahalpalace. Four factors are cited in the evidence: (i) the websites for the two domain names in question are identical; (ii) the servers for the two websites are the same; (iii) the administrative contacts for the two domain names are virtually identical, both referring to an address in Sydney, Australia; and (iv) the domain names were created within 7 days of each other. In addition, the Panel notes that “John Anthony” filed a response to the Notice of Default on behalf of both Respondents, and did not dispute the allegation that the two named entities were the same. Accordingly, the Panel is prepared to accept Complainant’s submissions to the effect that the two Respondents are in fact a single entity, and are therefore properly subject to a single proceeding.

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 marks; and

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established its rights in the TAJ MAHAL Trademarks in connection with casino and gaming services, by virtue of the U.S. trademark registrations.

The Panel also recognizes, based on the evidence, that the TAJ MAHAL Trademarks are widely-known in the field of casinos and gaming services. Although the Taj Mahal palace in India is an historic landmark, Complainant has succeeded in acquiring trademark significance for the name, by creating and sustaining for more than 16 years a unique connection between the historic name and a new unrelated use: the operation of a casino. It is this combination that makes the Complainant’s trademarks distinctive of its services.

In these circumstances, the Panel finds that the domain names <casinotajmahalpalace.com> and <tajmahalpalacecasino.com> are confusingly similar with the Complainant’s registered trademark TAJ MAHAL. The Respondent has chosen to adopt the distinctive element TAJ MAHAL in both domain names, and the addition of the descriptive words “casino” and “palace” do not serve to distinguish the domain names from the Complainant’s mark. In fact, the use of “casino” serves to increase the likelihood of confusion as the word CASINO is found in three of the four TAJ MAHAL Trademarks, and it provides a tangible connection to the Complainant’s business. (See Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v. Casino Domains, FA0110000101508, Nintendo of Am., Inc. v. Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976, Harrods Ltd. v. Vineet Singh, WIPO Case No. D2001-1162).

The Panel, therefore, finds that Complainant has satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds no evidence that the Respondent ever had any legitimate right or interest in the domain names <tajmahalpalacecasino.com> or <casiontajmahalpalace.com>. There is no evidence that Respondent is commonly known by the disputed domain names. The Panel finds that the Respondent is not using the domain names in connection with a bona fide offering of goods and services, in that the Respondent is using confusingly similar domain names in connection with on-line gaming sites which are in direct competition to the Complainant’s casino and gaming services.

The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use its TAJ MAHAL Trademarks.

The Panel is therefore, satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. Once a complainant has made this prima facie showing, the respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).

The only Response in these proceedings relate to the origins of the words Taj Mahal, and does not establish any right or legitimate interest on the part of the Respondent. Accordingly, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The uncontested evidence shows that the Complainant’s TAJ MAHAL Trademarks are distinctive and have been widely used for more than 15 years. In light of the fact that Respondent uses its domain names to operate virtual on-line casinos, providing via the Internet identical services to those of the Complainant, the Panel is prepared to infer that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the <tajmahalpalacecasino.com> and <casinotajmahalpalace.com> domain names (America Online, Inc. v. David, NAF No. 0202000104980).

The Panel is also prepared to find that the Respondent registered the confusingly similar domain names and is operating its websites for the purpose of monetary gain by providing on-line gaming services identical to the casino and gaming services of the Complainant. The Respondent, by trading on the goodwill and reputation of the Complainant’s TAJ MAHAL Trademarks, has deliberately diverted internet traffic intended for the Complainant’s website to the Respondent’s website. Panelists have consistently recognized that the registration and use of confusingly similar domain names to operate websites for competing businesses is evidence of bad faith (Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller, WIPO Case No. D2006-0536 and Gordon Gaming Corp. v. IMC, WIPO Case No. D2001-1047).

Finally, the Panel notes that the Respondent adopted a false address on its promotional CD which was virtually identical to the address of the Complainant’s Taj Mahal Casino and Resort in Atlantic City. This sort of misconduct constitutes a deliberate misleading business practice which in the circumstances further supports a finding of bad faith.

For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.

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 names, <tajmahalpalacecasino.com> and <casinotajmahalpalace.com> be transferred to the Complainant.


Christopher J. Pibus
Sole Panelist

Dated: May 8, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0276.html

 

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