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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Stanworth Development Limited v. Vikas Tailor

Case No. D2008-0080

 

1. The Parties

Complainant is Stanworth Development Limited (“Complainant”), a company duly incorporated in accordance with the laws of the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.

Respondent is Vikas Tailor (“Respondent”), British Columbia, Canada.

 

2. The Domain Name and Registrar

The domain name at issue is <officialriverbelle.com> (the “Domain Name”). The registrar is the GoDaddy.com, Inc. (the “Registrar”) located in Scottsdale, State of Arizona, United States of America.

 

3. Procedural History

On January 23, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On January 21, 2008, the Center received the hardcopy of the Complaint.

On January 22, 2008, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

On January 25, 2008, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

The Center verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On January 25, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On February 15, 2008, the Center advised Respondent that he was in default for failing to file his Response. No Response has been received.

On February 21, 2008, after receiving a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member Panel.

 

4. Factual Background

Complainant is the owner and proprietor of a number of pending and registered trademarks (the “RIVER BELLE Marks”) consisting of or incorporating the words RIVER BELLE in various jurisdictions including, Australia, Canada, the European Union, the United Kingdom and the United States of America. The RIVER BELLE Marks cover in general, entertainment services, namely, providing online games of chance, games of skill and casino-style gaming services.

Complainant is also the owner and proprietor of a number of domain names consisting of or incorporating the words River Belle. One of the ways in which Complainant uses its RIVER BELLE Marks is through its licensee Carmen Media Group Limited (the “Licensee”). The Licensee is authorized to operate using the RIVER BELLE Marks for an online gaming site which can be found at “www.riverbelle.com” (the “riverbelle.com gaming site”). In terms of the license agreement, all benefits arising out of the use of the RIVER BELLE Marks by either Licensee or Complainant inures to the benefit of Complainant. The license agreement further contains quality control provisions regulating how the Licensee may use the RIVER BELLE Marks.

Complainant’s “riverbelle.com” gaming site was conceptualized in August 1997 and officially launched in December 1997. The theme of the brand is one that would identify strongly with gambling on a worldwide basis, and is based visually and thematically on a riverboat casino. The “riverbelle.com” gaming site has established itself as one of the most highly recognized online gaming brands currently available.

The “riverbelle.com” gaming site receives approximately 250,000 visitors and facilitates over 25,000 software downloads each month. In addition, many thousands of registered players regularly make use of the “riverbelle.com” gaming site with a substantial portion being active on the site at any given time. An amount in excess of US$50,000 per month is spent on various advertising, marketing and other promotional activities including banner listings on portal sites and search engines, direct mailing campaigns, affiliate programs, print ads, TV commercials and infomercials.

As a result of extensive use, the RIVER BELLE Marks are very well-known in relation to the provision of online games of chance and casino-style gaming services. The words RIVER BELLE serve as a unique and distinctive element, which element is a determinative and well-known designation of source for Complainant’s online casino and gaming related services.

Complainant, together with Licensee, has implemented strict quality control measures in order to prevent and/or minimize any dilution of its RIVER BELLE Marks worldwide. In this regard Complainant is (1) continually identifying any infringing use of its RIVER BELLE Marks as corresponding domain names; (2) developing enforcement strategies to combat any infringing use, including negotiation with infringing parties for the safe transfer of the domain names to Complainant; or alternatively (3) instituting legal measures, such as Nominet ADR, UDRP or litigation proceedings, against the infringing party in order to recover the domain names.

On February 22, 2007, Complainant through legal counsel dispatched a “cease and desist” letter to Respondent by email, fax and registered mail, informing Respondent of Complainant’s extensive use of the RIVER BELLE Marks, alleging that Respondent had no legitimate rights or interest in and to the Domain Name, and demanding that the Domain Name immediately be transferred to Complainant.

On February 24, 2007, Respondent responded to Complainant’s legal counsel advising counsel that he is a REFERBACK affiliate (discussed further below) and that he would be redirecting the Domain Name to the “riverbelle.com” gaming site. When on February 26, 2007, Complainant’s counsel requested that Respondent transfer the Domain Name to Complainant, Respondent replied and advised counsel that he had “spoken to the folks at Riverbelle” who advised him that he can keep the Domain Name provided that he point the Domain Name exclusively to “the rieverbelle.com” gaming site. To date, Respondent has failed to respond to counsel’s request to provide them with the identity of the person at Riverbelle to whom Respondent claims to have spoken. Respondent has failed to point the Domain Name to Complainant’s “riverbelle.com” gaming site.

For purposes of this proceeding, Complainant assumes that Respondent is a member of the Complainant’s affiliates program. Complainant’s Licensee has implemented an affiliates program, in which contractual relationships are established with individuals who, for a referral fee, direct online traffic to the “riverbelle.com” gaming site. The affiliates program is administered through a third party service provider, namely REFERBACK.COM. REFERBACK.COM is compelled by its arrangement with the Licensee, to conclude an agreement with all new affiliates. This “affiliate” agreement regulates, amongst others, the application and use of the Complainant’s RIVER BELLE Marks, as well as the registration and use of derivative URLs, which are defined as URLs that incorporate Complainant’s distinctive element RIVER BELLE either in part or in whole.

The registration, administration and use of derivative URLs, is specifically regulated by the affiliate agreement, particularly clause 4.9 which states: “You may, in respect of any merchant, establish one or more derivative URL’s that incorporate any one of the merchant’s marks or the merchant’s primary URL, or any variation thereof. You will, at your own cost, register any such mentioned derivative URLs in the name of REFERBACK.COM and immediately notify REFERBACK.COM of each derivative URL established and maintained by you.”

It is a non-negotiable term of the affiliate agreement that all derivative URLs be registered in the name of REFERBACK.COM. This arrangement is meant to place the derivative URL into friendly care so that it can be transferred or assigned to the Complainant or its designated representative in due course. The intention is to allow the affiliate “controlled” use of a particular domain name whilst at the same time retaining effective ownership of the name for the benefit of Complainant.

The disputed domain name is currently being used to post an “Index” of content, which apparently requires a name and password to access (which the Panel does not have).

 

5. Parties’ Contentions

A. Complainant’s contentions

Complainant contends that it has registrations and applications for the RIVER BELLE Marks in several jurisdictions worldwide and that these registrations and applications serve as prima facie evidence of Complainant’s ownership and the validity of the RIVER BELLE Marks.

Complainant argues that the Domain Name is confusingly similar to the RIVER BELLE Marks, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the RIVER BELLE Marks with the addition of the non-distinctive terms “official” and “.com”.

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that Respondent has either made no use of the Domain Name or has made use of the Domain Name in derogation of Respondent’s duties under the affiliates program which cannot be a bona fide use.

Complainant further contends that there is no evidence whatsoever that Respondent has been commonly known by the Domain Name.

Complainant asserts that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. As noted above, to the best of Complainant’s knowledge and prior to the above notice from counsel being sent to Respondent, the Domain Name did not point to any website. Complainant submits that such passive use does not rise to a level under paragraph 4(c) of the Policy, to constitute a legitimate non-commercial or fair use without any intent to misleadingly divert consumer or to tarnish the RIVER BELLE Marks at issue.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant alleges that it has a long established reputation in many jurisdictions in the use of its RIVER BELLE Marks in relation to gaming and casino services, especially if one considers that the Complainant’s “riverbelle.com” gaming site has been in operation since at least late 1997. Complainant further alleges that Respondent intentionally selected Complainant’s distinctive RIVER BELLE Marks and incorporated them into his Domain Name.

Complainant further alleges that the registration of the Domain Name occurred nearly eight years subsequent to the Complainant commencing operation of its “riverbelle.com” gaming site and subsequent to the success of the Complainant’s RIVER BELLE Marks on goods and services.

Complainant adds each of the following as indications of Respondent’s bad faith: First, Respondent has exceeded the bounds of his relationship with the Complainant in that he has not registered the Domain Name in accordance with the affiliate agreement and he has failed to point the Domain Name to Complainant’s “riverbelle.com” gaming site. Second, Respondent registered the Domain Name of July 15, 2005, which is approximately ten (10) years after Complainant’s <riverbell.com> domain name was registered (August 1997), nearly ten (10) years after Complainant first used the RIVER BELLE CASINO Mark in commerce (December 1997) and six (6) years after Complainant registered certain of the RIVER BELLE Marks in several countries including the United States of America and Australia. Third, Complainant has not acquiesced to the use of its RIVER BELLE Marks nor tacitly acquiesced, through the passage of time, to the use of its RIVER BELLE Marks, but has instead diligently sought to enforce its trademark rights against Respondent. Fourth, members of the Complainant’s affiliates program are expected to drive significant amounts of traffic to Complainant’s “riverbelle.com” gaming site, while Respondent accounts for approximately only one visit per month for the past year, thus supporting the inference that Respondent is using his affiliate status as a means to try and legitimate his cybersquatting practices and thus abuse the letter and the spirit of Complainant’s affiliates program.

B. Respondent’s contentions

Respondent has chosen not to file a Response and therefore has not contested any of Complainant’s assertions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

A. Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel must review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

B. Enforceable Trademark Rights

Complainant contends that it has registrations and applications for the RIVER BELLE Marks in several jurisdictions worldwide and that these registrations and applications serve as prima facie evidence of Complainant’s ownership and the validity of the RIVER BELLE Marks.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not opposed this contention. It is the Panel’s belief that Respondent has not met his burden.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the RIVER BELLE Marks.

C. Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the RIVER BELLE Marks pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the RIVER BELLE Marks with the addition of the non-distinctive terms “official” and “.com”.

Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the RIVER BELLE Marks.

As numerous courts and prior panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp.2d 772 (E.D. Mich., 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to complainant’s registered trademark.

The Panel notes that the entirety of the distinctive RIVER BELLE marks is included in the Domain Name.

Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998). The Panel hereby finds that the addition of the phrase “official” to the RIVER BELLE element is not distinctive. Furthermore, the addition of the phrase “.com” is non-distinctive because it is a gTLD required for registration of a domain name.

Therefore, the Panel finds that the Domain Name is confusingly similar to the RIVER BELLE Marks pursuant to the Policy paragraph 4(a)(i).

D. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii) and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000).

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant has alleged that Respondent has not made use of the Domain Name in connection with the bona fide offering of goods or services, is not commonly known by the Domain Name, and is not making a legitimate noncommercial or fair use of the Domain Name. Complainant has thus sustained its burden of coming forward with proof that the Respondent lacks rights or legitimate interests in the Domain Name.

Respondent has not come forward with any proof to the contrary of Complainant’s assertions. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

E. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant alleges that Respondent has knowingly and willfully registered and used the Domain Name to trade off the long-established reputation of Complainant. In addition, Complainant alleges that Respondent has breached the affiliates agreement by not transferring the Domain Name and by not pointing the Domain Name to the <riverbell.com> domain name.

The nature of the gaming industry is inherently commercial. Therefore, the Panel finds that the parties are engaged in Internet activities for commercial gain.

In addition, the Panel finds that Respondent is in all likelihood attracting Internet users through his Domain Name by creating a likelihood of confusion with Complainant’s RIVER BELLE Marks as to the source, sponsorship, affiliation or endorsement of the Domain Name. Nor does the Panel exclude the possibility of commercial gain, although the lack in particular of any Response makes this issue difficult to assess. Therefore, the Panel finds on balance that Respondent has registered and is using the Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

 

7. Decision

The Panel concludes (a) that the Domain Name <officialriverbelle.com> is confusingly similar to Complainant’s registered RIVER BELLE Marks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

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Richard W. Page
Sole Panelist

Dated: March 6, 2008