Showboat, Inc. v. International E Gaming Developers
Claim Number: FA0206000114617
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.”
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.
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.
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