Showboat, Inc. v. International E Gaming
Developers
Claim Number: FA0206000114617
PARTIES
Complainant
is Showboat, Inc., Las Vegas, NV
(“Complainant”) represented by Andrew J.
Wilson, of Alston & Bird, LLP. Respondent is International E Gaming Developers, St. John's (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <theshowboatcasino.com>,
registered with Tucows, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 14, 2002; the Forum received a hard copy of the
Complaint on June 17, 2002.
On
June 18, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <theshowboatcasino.com>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
June 19, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 9,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@theshowboatcasino.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 18, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
The
<theshowboatcasino.com> domain name is confusingly similar to
Complainant's SHOWBOAT mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent failed to submit a Response.
FINDINGS
Complainant owns six registrations for
the SHOWBOAT mark with the United States Patent and Trademark Office, including
Reg. Nos. 1,078,615; 1,066,734; 1,336,013; 1,658,559; 2,123,404; and 2,266,994
on the Principal Register. Complainant
owns and operates a casino in Atlantic City, New Jersey, known as the
“Showboat-The Mardi Gras Casino.”
Complainant’s casino is one of the largest and most renowned casino
entertainment facilities in the United States.
It has been named “Best Casino” by the Atlantic City Courier-Post
eight years in a row. Complainant also
operates casinos in Australia, Las Vegas, and Chicago. Complainant engages in substantial
advertising to promote its facilities throughout the United States.
Respondent registered the <theshowboatcasino.com>
domain name on March 20, 2000.
Respondent is using the domain name to host a website that offers online
casino gambling and sports book services.
Internet users visiting the website are offered “20% Sign Up Bonus” and
“guaranteed winnings.”
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences as it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1)
the domain name registered by Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant has rights; and
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered and is being used in bad faith.
Complainant has established in this
proceeding that it has rights in the SHOWBOAT mark through trademark
registration and continuous use. The
domain name registered by Respondent, <theshowboatcasino.com>, is
confusingly similar to Complainant’s mark because it incorporates Complainant’s
entire mark and merely adds the descriptive word “casino” and “the” to
Complainant’s SHOWBOAT mark. The
addition of a general term, such as “the” and a word describing Complainant’s
business, such as “casino,” does not create a distinct mark capable of
overcoming a claim of confusing similarity.
See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines Complainant’s mark with
a generic term that has an obvious relationship to Complainant’s business); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of Complainant
combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent did not come forward with a
Response. Therefore, the Panel presumes that Respondent has no rights or
legitimate interests in the disputed domain name. See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that Respondents’ failure to respond can be construed as an admission that they
have no legitimate interest in the domain names).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Based on the fame of Complainant’s
SHOWBOAT mark and casino it can be inferred that Respondent registered <theshowboatcasino.com>
domain name in order to trade on Complainant’s goodwill and attract
Internet users looking for Complainant to Respondent’s website. This type of use is not considered to be a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using the Complainant’s
mark by redirecting Internet traffic to its own website).
Furthermore, no evidence on record shows
that Respondent is commonly known as THE SHOWBOAT CASINO or <theshowboatcasino.com>
and Respondent has not come forward with any such evidence. Respondent is known
to the Panel as International E Gaming Developers and has not established that
it has rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
Respondent is using a domain name that is
confusingly similar to Complainant’s SHOWBOAT mark in order to offer online
gambling services. Complainant’s
SHOWBOAT mark is used in relation to casinos and Respondent therefore is
attempting to benefit financially from Complainant’s goodwill by attracting
Internet users to its gambling website via Complainant’s well-known mark. This type of use is not considered to be a
legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding
no rights in the domain name where Respondent has an intention to divert
consumers of Complainant’s products to Respondent’s site by using Complainant’s
mark); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because the Respondent's sole purpose in selecting
the domain names was to cause confusion with the Complainant's website and
marks, it's use of the names was not in connection with the offering of goods
or services or any other fair use).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Based on the fame of Complainant’s mark
in the casino industry and Complainant’s numerous registrations on the
Principal Register of the United States Patent and Trademark Office, it can be
inferred that Respondent was on notice of Complainant’s rights in the SHOWBOAT
mark when it registered the disputed domain name. Therefore Respondent’s registration of <theshowboatcasino.com>
domain name despite this notice is evidence of bad faith registration pursuant
to Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given the world-wide prominence of the
mark and thus Respondent registered the domain name in bad faith); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse").
Furthermore, Respondent is using <theshowboatcasino.com>
domain name in order to create a likelihood of confusion as to the source,
sponsorship and affiliation of Respondent’s website for Respondent’s commercial
gain. This is evidence of bad faith use
pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the Respondent directed Internet users seeking the
Complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <theshowboatcasino.com> be transferred from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 1, 2002.
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page