Rolling Stone LLC v. Robbins Carnegie
Inc.
Claim Number: FA0408000318048
PARTIES
Complainant
is Rolling Stone LLC (“Complainant”),
represented by Benton J. Gaffney, of Davis Wright Tremaine LLP,
1501 Fourth Ave, Suite 2600, Seattle, WA 98101. Respondent is Robbins
Carnegie Inc. (“Respondent”), represented by Michael Williamson, of Polsinelli Shalton Welte Suelthaus, P.C., 700 West 47th Street, Suite 1000,
Kansas City, MO 64112.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <rollingstonecasino.com>
and <rscasino.com>, registered with Network Solutions, Inc. (“the disputed domain names”).
PANEL
The
undersigned, David H Tatham, certifies that he has acted independently and
impartially and to the best of his knowledge, has no known conflict in serving
as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 24, 2004; the Forum received a hard copy of the
Complaint on August 26, 2004.
On
August 27, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain names <rollingstonecasino.com>
and <rscasino.com> are registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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”) and Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”).
On
September 1, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 21, 2004 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@rollingstonecasino.com
and postmaster@rscasino.com by e-mail.
A
timely Response was received and determined to be complete on September 21,
2004.
On
September 24, 2004 Complainant filed an Additional Written Statement which was
deemed by the Forum to be timely and admissible under Supplemental Rule 7.
On
September 29, 2004 Respondent filed a Response to this Additional Written
Statement which was also deemed by the Forum to be timely and admissible under
Supplemental Rule 7.
On September 30, 2004 pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Mr. David H
Tatham as Panelist.
RELIEF SOUGHT
Complainant
requests that both of the domain names be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
Trade Marks
Complainant
supplied copies of its four US trademark registrations: ‘ROLLING STONE’ No. 1
574 947, for “entertainment magazine”; ‘RollingStone’ (stylized) No. 1 588 810,
for “entertainment magazine”; ‘RollingStone.com’ (stylized) No. 2 163 640, for
“providing an online magazine and providing information online in the fields of
popular culture, politics, and music via computer bulletin boards, databases
and interactive databases”; and ‘RollingStone’ (stylized) No. 2 726 171 for
“backpacks and carrying storage cases for CDs, cassette tapes, mini-discs and
CD players”. The first three of these were stated to be incontestable.
Complainant
also alleged that it had acquired common law rights in the United States in the
trademark ROLLINGSTONE based on its use of the mark in connection with
magazines, television and radio programming, hats, sunglasses, t-shirts and
other apparel, posters, books, distribution of information and music over the
Internet, calendars, beer, sweepstakes and producing concert events.
Complainant
further alleged that it had acquired common-law rights in the United States in
the mark RS based on its use of the mark in connection with magazines, and the
distribution of information and music over the Internet.
Complainant
also has forty-five trademark registrations for the trademark ROLLINGSTONE in
countries other than the USA registered either as one word or two, and either
typed or in a stylized format. Brief details of these marks were supplied.
Complainant
is the publisher of RollingStone
magazine, an internationally renowned publication that has chronicled the music
industry since the magazine’s launch in 1967, and which has won numerous awards
over the years. Generations of readers are said to have loved RollingStone magazine for its style, wit
and coverage of music, entertainment celebrities, pop culture, and politics. RollingStone magazine regularly
publishes works by many of the world's famous journalists and photographers, and
numerous celebrities, musicians, and politicians have apparently graced its
pages over the years.
Over
1,250,000 copies of RollingStone
magazine are distributed every two weeks in the United States and Canada. A
copy of an Audit Bureau of Circulations report for the period from June through
December 2003 was filed, which showed that RollingStone
had a monthly average of 1 128 731 individual subscribers and a monthly average
of 159 593 single copy sales. Approximately 18 000 copies are distributed every
two weeks internationally in over thirty-five other countries. Complainant also
publishes international editions of its magazine in Australia, New Zealand,
Germany, Austria, Switzerland, all of Spanish-speaking South America, Mexico
Spain, France, Belgium, Italy, and Russia so the magazine has enjoyed an
extremely broad geographic distribution for many years.
In
addition to its extensive use of the ROLLINGSTONE mark in connection with its
magazine, Complainant uses its trademark (directly and through carefully
selected licensees) on a wide variety of other goods and services such as:
hats, sport sunglasses, backpacks, t-shirts and other items of apparel.
Complainant has also provided various entertainment services, such as through
its sponsorship of numerous sweepstakes, concert events, and parties that
prominently featured the ROLLINGSTONE mark, as well as materials other than
magazines, including calendars and posters featuring famous covers from issues
of RollingStone magazine and various
books.
Complainant
has had a presence on the Internet since 1995, and in 1996 it launched the
official RollingStone website, located at <www.rollingstone.com>. The
website distributes content in the areas of music, entertainment, pop culture,
celebrities, and politics. Complainant also uses the website to sell music and
show videos. The RollingStone website is consistently ranked as the number one
music magazine site in the world and was the second overall music website after
<mtv.com>. In 2003, it had an
average monthly audience of 2 million visitors. Between 2000 and 2002
<www.rollingstone.com> had approximately 50 million discrete page views.
Complainant’s
close association with entertainment services has been further cemented through
various ROLLINGSTONE-branded television and radio programs. For example, there
have been ROLLINGSTONE television programs to celebrate the tenth,
twenty-fifth, and thirtieth anniversaries of RollingStone magazine, and (in collaboration with Viacom
International, Inc.) “Rolling Stone/MTV Top 100 Greatest Pop Songs” a special
program that aired in late 2000 to commemorate great pop songs (and which
coincided with the publication in RollingStone
magazine of a similar article). In the context of radio programming,
Complainant has collaborated with Sirius Satellite Radio to produce a weekly
radio show called “RollingStone on Sirius” that is hosted by RollingStone magazine editors Joe Levy
and Jenny Eliscu. This show features music news and information culled from RollingStone magazine.
Recently,
the ROLLINGSTONE trademark has been used in conjunction with the sale of beer
pursuant to a licensing arrangement with Miller Brewing Company. As part of
Miller’s "Summer of Music" advertising campaign to celebrate 50 years
of rock 'n' roll, covers of RollingStone
magazine will appear on commemorative beer cans. This use of RollingStone magazine covers to catalog
the history of rock 'n' roll reflects the importance of RollingStone magazine in the annals of pop music. To further
underscore the importance of the magazine in pop culture, in 1997 an exhibition
consisting of famous RollingStone
issues and other rock music memorabilia toured a number of major cities across
the United States. Complainant curated this show, which prominently featured
the ROLLINGSTONE trademark.
Apart
from the significant rights that Complainant has built up in the ROLLINGSTONE
trademark,
Complainant has also acquired trademark rights in the abbreviation “RS” which
it frequently uses in connection with RollingStone
magazine and other services. In particular, the mark RS has been extensively
used in connection with the following entertainment-related goods and services:
in referencing past issues of RollingStone
magazine, in the titles of recurring columns appearing in the magazine and on
its website, in online forums, and in connection with the distribution of
music. A number of Exhibits were filed as examples thereof.
Complainant
contends that, according to the renowned legal tome, McCarthy on Trademarks and
Unfair Competition (“McCarthy”), “If the
public has come to shorten a trademark into a nickname, then the nickname is
entitled to independent legal protection as a mark.” Indeed, Complainant
believes that Respondent's conduct recognizes that the public understands RS as
Complainant’s trademark because it registered <rscasino.com>
to use in connection with a website in which Respondent prominently uses the
ROLLINGSTONE trademark.
To
buttress the rights that Complainant has built up in its trademarks
ROLLINGSTONE and RS through use and registration, Complainant has also
undertaken promotional and public relations activities utilizing the
Complainant’s trademarks ROLLINGSTONE and RS. Complainant extensively displays
and promotes its Marks within RollingStone
magazine and its website, and also through public relations placements in
television programs, newspapers, and other magazines, websites, and print
media.
Complainant
protects the significant value in the Complainant’s trademarks ROLLINGSTONE and
RS in at least two ways. First, it selects its licensees with great care and
monitors the manner in which they use Complainant’s trademarks ROLLINGSTONE and
RS to ensure that Complainant’s high standards are maintained. Second, it vigorously
polices use of its Marks to protect their value and associated goodwill. For
example Complainant has often had to send cease and desist letters to stop
infringement of Complainant’s trademarks ROLLINGSTONE and RS and the content of
the magazine, and Complainant exhibited several examples of letters which had
been sent on behalf of itself or its predecessor-in-interest to enforce these
rights.
When
Complainant learned of Respondent's use of the confusingly similar domain names
<rollingstonecasino.com> and <rscasino.com> it
demanded, in a letter dated November 5, 1999, that Respondent cease use of the
ROLLINGSTONE trademark and transfer the infringing domain names to Complainant'
s predecessor-in-interest, Straight Arrow Publishers Company, L.P. Respondent
refused to comply with Complainant’s demands. However Complainant did not
pursue a UDRP proceeding at the time of its cease and desist letter because the
UDRP process had barely been implemented and the reliability of the process had
not been established. In any event, the fact that several years have passed
since Complainant first demanded that Respondent transfer the domain names is
irrelevant. UDRP Panels have consistently held that laches is not available as
a defense in a UDRP proceeding and Complainant referred to E. W. Scripps Co.
v. Sinologic Ind., D2003-0447 (WIPO July 1, 2003) where it was said that “If the requirements of a valid complaint
under the Policy are established, the Policy does not provide any defense of
laches”; and to U.S. Office of Personnel Mgm’t v. MS Tech. Inc., FA
198898 (Nat. Arb. Forum Dec. 9, 2003) where it was held that “Laches being an equitable remedy rather
than a contractual remedy, is simply not available under the Policy. Once a
complainant makes a prima facie showing of each of the elements set forth in
the Policy, it is entitled to the relief requested in the Policy.”
Complainant
contends that the refusal to accept a laches defense is particularly
appropriate in the light of Respondent’s knowing infringement and bad faith in
adopting its domain names. Complainant’s request for a transfer of the disputed
domain names (rather than monetary relief), and the need to protect consumers
from mistakenly believing that Respondent's websites accessible via the
disputed domain names are associated with Complainant. As McCarthy has said: “The courts have been very reluctant to deny
injunctive relief because of plaintiffs delay when it appears that defendant
knowingly and deliberately adopted a mark charged as an infringement.”
In
sum, given the extensive readership of RollingStone
magazine, the wide array of goods and services on which the Complainant’s
trademarks ROLLINGSTONE and RS are used, and Complainant’s numerous trademark
registrations, millions of consumers are familiar with the Complainant’s
trademarks ROLLINGSTONE and RS in connection with entertainment services and
other goods and services. According to Complainant there can be no doubt that
these Marks have become famous in the United States and throughout the world. As
such, Complainant possesses significant and wide-reaching rights in them.
Confusing Similarity
Complainant
contends that the disputed domain names are identical or confusingly similar to
the Complainant’s trademarks ROLLINGSTONE and RS (including those that have
become incontestable) within the meaning of Policy ¶ 4(a)(i) and Rules
3(b)(viii) and (b)(ix)(1) of the Policy. As noted above, Complainant’s
trademarks ROLLINGSTONE and RS are famous throughout the world and have been so
for more than three decades. They are so famous that consumers would be likely
to think that a website using them, or any variant of them, was owned and
operated, or at the very least affiliated with, Complainant and RollingStone magazine and in this
context Complainant referred to Trump v. VolkAmit, FA 99688 (Nat. Arb.
Forum Oct. 15, 2001) in which it was said the “TRUMP and TRUMP PLAZA marks are so famous that an Internet user
intending to access one of (Respondent's) sites would likely be confused and
think that the <trumplazahotel.com> domain is owned and operated by Complainant or someone associated with
Complainant.”. Indeed, according to Complainant, the websites that
Respondent has associated with the disputed domain names display Complainant’s
trademarks ROLLINGSTONE and RS prominently throughout, which further - and
improperly - suggests that Respondent's websites are endorsed or associated
with Complainant. This improper attempt to associate Respondent's casino
websites with Complainant is further evidenced by Respondent's obvious
imitation of the script format of the Complainant’s trademarks ROLLINGSTONE and
RS in displaying the casino’s name "Rolling Stone" on these websites.
Even
the script used in the stylized form of the Complainant’s trademarks
ROLLINGSTONE and RS has, according to Complainant, become a famous trademark of
Complainant. The producers of the recent film "School of Rock" agreed
to license the rights to use Complainant’s distinctive script to depict the
title of the film in advertisements for the film, and the film's producers
agreed to run a disclaimer stating that "The Rolling Stone® design is used
under license from Rolling Stone LLC." Exhibited to the Complaint was a
copy of the "School of Rock" DVD case which displayed this disclaimer.
The
minor differences between Complainant’s trademarks ROLLINGSTONE and RS and the
disputed domain names are of no legal consequence. Respondent has simply added
the word "casino" after the wholesale adoption of Complainant’s
ROLLINGSTONE and RS trademarks. UDRP Panels have repeatedly found that when, as
here, a Respondent simply adds a descriptive word to a Complainant's mark , the
Respondent's domain name is confusingly similar to the Complainant's mark.
Complainant referred to four different UDRP Decisions in support of this
contention – Viacom Int’l Inc. v. Erwin, D2001-1440 (WIPO Feb. 15,
2002); Viacom Int’l Inc. v. MTVMP3.com, D2001-0275 (WIPO Apr. 26, 2001);
Trump v. VolkAmit, FA 99688 (Nat. Arb. Forum Oct. 15, 2001); and Wal-Mart
Stores, Inc. v. Cann, D2000-0830 (WIPO Oct. 11, 2000).
Nor,
according to Complainant, does the addition of the suffix ‘.com’ serve to
distinguish the disputed domain names from Complainant’s trade marks and quoted
several UDRP Decisions in support of this contention.
No Rights or Legitimate Interest
Respondent
registered the disputed domain names over thirty years after Complainant
adopted, first used, and began promoting its trademarks ROLLINGSTONE and RS.
However, Respondent has no rights or legitimate interests in these domain names.
Respondent is not a licensee of Complainant; it has no relationship or
association with Complainant, nor is it otherwise authorized to use the
Complainant’s trademarks ROLLINGSTONE and RS in any way. Accordingly,
Respondent's use of the trademarks ROLLINGSTONE and RS in its domain names
directly violates Complainant’s exclusive rights in these trademarks.
Complainant’s
trademarks ROLLINGSTONE and RS are so well known that Respondent must have been
aware of the marks at the time it registered the domain names in late 1998. The
fact that Respondent's casino has a rock 'n' roll music theme (demonstrated by
the numerous depictions of a juke boxes, piano keys, or amplifier knobs on the
websites associated with the domain names at issue), clearly shows that
Respondent registered the domain names with knowledge of Complainant’s rights
in the Complainant’s trademarks ROLLINGSTONE and RS and with the intention to
trade off the goodwill associated with these Marks. Respondent's choice of a
confusingly similar variation of the ROLLINGSTONE and RS names means that
Respondent cannot have acquired any legitimate rights or interest in the
disputed domain names.
The
conclusion that Respondent lacks any legitimate interest in the disputed domain
names is not changed by the fact that the websites offer gambling-related
services and software falling into a slightly different segment of the
entertainment industry than the goods and services Complainant currently offers
under its trademarks ROLLINGSTONE and RS. Respondent's choice of such famous
marks as the only unique aspect of its domain names evinces a complete lack of
legitimate rights or interests in the domain names and Complainant referred to Nike,
Inc. v. B.B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) which found that
Respondent had no rights or legitimate interests in the domain name
<nike-shoes.com> because, given the fame of the NIKE trademark, “one would be hard pressed to find a person
who may show a right or legitimate interest in a domain name containing Complainant's
trademark”; and to Chanel, Inc. v. Estco Tech. Group, D2000-0413
(WIPO Sept. 18, 2000), which held that
“Respondent may not use Complainant's famous fashion trademark (CHANEL) as a
domain name to entice Internet users to its database. This is not a fair use
but instead infringing use.”
Complainant
contends in conclusion that it is indisputable that Respondent is not making a
fair use or noncommercial use of the domain names (referring to the exhibited
copies of the screen shots of Respondent's websites) and that Respondent has no
rights or legitimate interest in the disputed domain names.
Bad Faith
According
to Complainant, the evidence overwhelmingly shows that Respondent has
registered its domain names and has used them in bad faith. Specifically,
Respondent' s actions in registering and using the disputed domain names fall
squarely within ¶ 4(b)(iv) of the Policy as evidencing bad faith: “by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
web site or other on-line location, by creating a likelihood of confusion with
the complainant' s mark as to source, sponsorship, affiliation, or endorsement
of your web site or location or of a product or service on your web site or
location.”
Complainant
asserts that given the fame of its trademarks ROLLINGSTONE and RS, and
extensive use, registration, and promotion of the marks over the past thirty
years, Respondent was undoubtedly aware of them prior to registering the
disputed domain names. The fact that Respondent's websites are rife with
references to rock 'n' roll, proves that Respondent was aware of the
Complainant’s trademarks ROLLINGSTONE and RS at the time it registered, and
throughout its use of, the disputed domain names and intended to create an
association between its domain names and Complainant. Respondent's use of
script lettering for the words ROLLINGSTONE on its website which resembles the
distinctive script that Complainant uses for the stylized version of its mark
is further proof of Respondent's knowledge of Complainant s rights and
trademarks. Accordingly, the very act of registering domain names so obviously
connected with Complainant suggests, if not establishes, opportunistic bad
faith on the part of Respondent, and Complainant refers to Chi-Chi's, Inc.
v. Restauran Commentary (Restaurant Commentary), D2000-0321 (WIPO June 29,
2000), and PepsiCo, Inc. v. Zhavoronkov, D2002-0562 (WIPO July 30, 2002)
where it was held that “(B)latant
appropriation of a universally recognized trademark is, of itself sufficient to
constitute bad faith registration.”
Moreover,
even if Respondent could somehow plausibly argue that it did not have actual
knowledge
of the Complainant’s trademarks ROLLINGSTONE and RS when it registered and
began using its domain names (which Complainant contends it cannot), Respondent
had constructive notice of Complainant s rights in the Marks due to Complainant
s numerous trademark registrations. Respondent had only one purpose in
registering its domain names: to trade off the goodwill that Complainant has
built up in its trademarks ROLLINGSTONE and RS and to create confusion among
consumers as to whether Respondent's domain names and associated web site are
affiliated with Complainant. Respondent has “intentionally
attempted to attract for commercial gain Internet users to (its) web site. . .
by creating a likelihood of confusion with the complainant's mark,” in violation of Policy ¶ 4(b)(iv).
The
fact that Complainant does not currently offer services under its trademarks
ROLLINGSTONE and RS that are identical to the gambling services that Respondent
offers through the website at the disputed domain names, does not negate the
conclusion that Respondent has registered and used them even if gambling were
not related to Complainant s entertainment services, Respondent's adoption of
the famous trademarks ROLLINGSTONE and RS still evidences bad faith, and
reference was made to Tata Sons Ltd. v. D & V Enters., D2000-0479
(WIPO Aug. 18, 2000), in which bad faith was found where the Respondent's use
of Complainant's well-known mark in relation to totally dissimilar and improper
services was bound to adversely affect the Complainant's goodwill.
Second,
gambling is related to Complainant s entertainment services and is a natural
area of expansion for it, thereby making Respondent's websites especially
likely to engender confusion among consumers as to Complainant’s affiliation or
sponsorship of Respondent's sites. Consumers have become accustomed to seeing
the Complainant’s trademarks ROLLINGSTONE and RS used in connection with such
diverse goods and services as sweepstakes, television specials, movies,
t-shirts, posters, traveling rock memorabilia exhibitions, and recently even
beer cans. It is only natural therefore that when a consumer sees Respondent's
websites, which not only explicitly use the name ROLLINGSTONE but do so in
connection with a rock 'n' roll theme, that these consumers will be confused
and believe that Respondent' s websites have been sponsored or endorsed by
Complainant. Third, Respondent's registration and use of the domain names limit
Complainant’s ability to enter into a field of services related to its current
services and therefore also have the effect of disrupting the business of a
potential competitor, further evidence of Respondent's bad faith.
Given
the foregoing, Complainant concludes that it is clear that Respondent has
registered and used the disputed domain names in bad faith, and that Respondent
has no legitimate rights to use these domain names because they are confusingly
similar to Complainant's well-established trademark rights.
B.
Respondent
Respondent contends at the outset that
Complainant has adduced insufficient evidence to meet its burden of proof under
Policy ¶ 4(a). The disputed domain names were registered and are being used in
connection with Respondent’s Marks ROLLING STONE CASINO and RS CASINO.
Respondent’s Marks, and the services provided, are outside the scope of
Complainant’s trademarks and services, and the disputed domain names are
therefore not confusingly similar. Respondent operates a legitimate business at
the disputed domain names and Respondent’s registration and use of the disputed
domain names are not in bad faith.
Background
Respondent operates a bona fide business,
which offers online gambling services in connection with the disputed domain
names. This online casino offers a variety of typical casino games, such as
blackjack, slot machines, poker, craps, baccarat and red dog. A customer can
choose between ‘playing for free’ where he is not required to place a bet and
merely plays for the fun of the game, or ‘playing for real’ where bets are
placed and he can win or lose actual money.
Respondent’s first use of their marks
ROLLING STONE and RS CASINO was when the disputed domain names were registered
on August 25, and November 24, 1998 respectively. Use commenced shortly
thereafter. During the interim between registration and actual use, Respondent
participated in the development of the websites. Since inception (6+ years),
Respondent has continuously used the marks ROLLING STONE and RS CASINO and the
disputed domain names in connection with on-line casino services. Thus they
have never been abandoned.
Identical or Confusingly Similar
Respondent’s marks ROLLING STONE CASINO
and RS CASINO, and the disputed domain names, are not identical to
Complainant’s marks. They contain the additional word ‘casino’ which
distinguishes them from Complainant’s marks. The combination of generic terms
in a new order produces new and distinct marks that, when incorporated into the
disputed domain names, are not identical to Complainant’s marks.
Similarly, a correlation does not exist
between Complainant’s goods and services and the services of Respondent, which
further distinguishes the disputed domain names. Complainant’s goods and
services are associated with the music industry and magazines, and
Complainant’s federally registered trademarks are limited to the magazine and
music industries. At no time has Complainant registered or used the word
‘casino’ in conjunction with its marks; it does not operate or market online
casinos, nor has it offered any proof of any involvement in the online gambling
industry. Respondent’s online casino services and Complainant’s association
with music and magazine goods and services are in distinct industries, which
therefore would not cause consumers to be confused.
Respondent notes that Complainant asserts
that Panels have repeatedly found that when a Respondent simply adds a
descriptive word to a Complainant’s mark the Respondent’s name is confusingly
similar and Respondent quotes several cases in support thereof. However
according to the Respondent, the UDRP Panels in the quoted cases only found
confusion when the term added to the Complainant’s mark was either a word that
the Complainant had rights to, or was a word that did not distinguish the
domain name from the Complainants. Respondent contends that the present dispute
is distinguished from these Decisions
because Complainant does not have rights to the word ‘casino’ or any activities
associated with an online casino, and the word ‘casino’ distinguishes the
disputed domain names from the
Complainant’s marks. Respondent refers to Grand Bay Mgm’t Co. v. Allegory
Inv., D2001-0874 (WIPO Sept. 21, 2000) in which it was held that ‘casino’
is a term that directs the mind to a specific activity and will therefore not
cause confusion. Also, in Digital city, Inc. v. Small Domain, D2000-1283
(WIPO Nov. 6, 2000) it was said that, where the suffix or the domain name as a
whole does not relate specifically to the business of the Complainant, no
confusion occurs.
Respondent also notes Complainant’s
assertion that it protects the significant value of its marks and actively
pursues any uses, which it deems will infringe its marks or will cause consumer
confusion. However, although copies of the exchange of correspondence between
Complainant and Respondent in 1999/2000 were exhibited, Respondent has received
no further communications from Complainant requesting Respondent to cease from
using the disputed domain names until receipt of the present Complaint. In that
earlier exchange, Respondent denied causing potential consumer confusion or a
misleading impression basing its assertion on the dissimilar characteristics of
the marks and the distinct goods and services which the marks represented.
Subsequent to this denial, Respondent heard no more from Complainant. This four
year gap is, according to Respondent, evidence that Complainant did not view
the disputed domain names as a threat to consumer confusion, since according to
the Complaint, it “vigorously polices use
of its marks.”
In view of the differences between
Complainant’s marks and the disputed domain names and the distinct goods and
services which the parties market and sell, Respondent denies that they are
confusingly similar.
Rights and Legitimate Interests
Respondent commenced use of its marks
ROLLING STONE CASINO and RS CASINO in January 1999, and since then, has
continuously used the marks throughout the world. Respondent’s continued
operation of an online casino, a legitimate business, is sufficient to
establish Respondent’s legitimate rights and interest in the disputed domain
names.
Respondent maintains that it only
received constructive notice of a potential dispute when the cease and desist
letter sent from the Complainant was received in November 1999. Registration of
the disputed domain names was prior to the constructive notice whereby proving
legitimate interests under ¶ 4(c)(ii) of the Policy. In response to the cease
and desist letter Respondent asserted its belief that the disputed domain names
were not confusingly similar because of the distinguishing characteristics of
the marks, the addition of the word ‘casino’ and the distinct goods and
services which each mark represents. This further asserts Respondent’s belief
that it possessed a legitimate interest in registering and using the disputed
domain names in a bona fide business endeavor.
Good Faith
The bad faith requirement is a two-prong
test which requires a Complainant to prove that a Respondent had bad faith when
it registered the disputed domain name AND
that the Respondent operates the disputed domain name in bad faith. Respondent
asserts that in this case, Complainant has not provided any evidence to prove
either requirement. In this context, Respondent refers to two UDRP Decisions – Dow
Jones & Co. Inc. v. Hepzibah Intro-Net Project Ltd., D2000-0704 (WIPO
Sept. 4, 2000) and Chancellor, Masters and Scholars of the Univ. of Oxford v.
DR Seagle, D2000-0308 (WIPO May 30, 2000).
In the event that the Panel finds that a
Respondent has a legitimate rights or interests in the domain name in dispute,
the Panel typically will acknowledge that a bad faith analysis is unnecessary
because the Complainant’s claim must already be denied. See Homer TLC, Inc. v. YapimasYapimarket
Dis Tic.ve Damismanlik A.S., D2001-0254 (WIPO June 8, 2001); see also
Fitter Int’l Inc. v. Hausthor, D2001-0979 (WIPO Oct. 12, 2001).
Similarly a bad faith analysis in this
proceeding is unnecessary because Complainant is unable to meet its burden of
proof with respect to the first two elements of the claim. Nevertheless, even
if the Panel elects to examine Respondent’s actions for any evidence of bad
faith, it will find that none exists. Based on the facts set forth above, it is
evident that Respondent’s long standing use of the disputed domain names with a
bona fide offering of services precludes any finding of bad faith.
The evidence in this proceeding shows
that Respondent registered the disputed domain names for the purpose of a bona
fide offering of services and has continued to offer the services of an on-line
casino, and not primarily for the purpose of selling, renting, or otherwise
transferring the disputed domain names to Complainant or a competitor for
profit. Moreover there is no evidence that Respondent has engaged in a pattern
of registering domain names to prevent their legitimate registration. Also,
Respondent has continued to use the disputed domain names for over five years.
This is overwhelming proof that Respondent acted in good faith when registering
the disputed domain names.
Respondent registered and began offering
services through the disputed domain names before any notice of any dispute.
As noted above, Respondent responded to
Complainant’s cease and desist letter asserting that use of the disputed domain
names would not cause confusion which provides insight into Respondent’s
thought process when the disputed domain names were registered and their future
use, and which defeats the claims by Complainant under Policy ¶ 4(a)(iii) that
bad faith was present when the disputed domain names were registered.
Subsequent to Respondent’s response to
Complainant, and during the over four year time period before Complainant filed
the current Complaint, Respondent has continued to operate its online casino in
the good faith belief that because of the distinct goods and products offered,
and the distinguishing characteristics of the marks, no confusion would occur.
Respondent has not attempted to attract, for commercial gain, internet users by
creating a likelihood of confusion and it is Respondent’s belief that confusion
will not occur.
Accordingly Respondent concludes that
this Complaint should be denied.
C.
Complainant’s Additional Submission
In reply to Respondent’s response,
Complainant filed a lengthy Additional Written Statement in which it alleged,
firstly, that that Respondent had failed to present any argument, much less
evidence, to dispute six critical facts set forth in the Complaint:
Disputed Domain Names not
distinguished from Complainant’s trademarks
Complainant
asserts that Respondent's primary defense is an attempt to distinguish its
domain names from Complainant's famous ROLLINGSTONE Marks on the grounds that
Respondent has added to these marks the generic word ‘casino.’
First,
the phrase "Rolling Stone" (even when abbreviated as "RS")
is arbitrary and fanciful when used in connection with almost any goods or
services. For the past thirty years this fanciful term has been used
exclusively in association with Complainant's products and services and the
Complainant’s trademarks ROLLINGSTONE and RS have become indelibly associated
with such marks and services. Thus, Respondent' s argument that consumers will
distinguish Respondent's domain names because it has combined the exact terms
comprising the highly distinctive Complainant’s trademarks ROLLINGSTONE and RS
with a completely generic word ignores the import of famous marks like ROLLINGSTONE.
It
is irrelevant whether the word "casino" will "direct the mind to
a specific activity." The fundamental problem is that Respondent's use of
the highly distinctive and famous terms ROLLINGSTONE and RS means consumers are
being misled into believing that Complainant has endorsed or is the source of
this specific activity.
Second,
the two WIPO decisions cited by Respondent for the proposition that merely
adding a descriptive word could sufficiently differentiate Respondent's domain
names from Complainant' s trademarks are readily distinguishable. Both Panels
found that the complainants' marks GRAND BAY and DIGITAL CITY were not
distinctive to begin with – unlike the arbitrary and fanciful nature of the
trademarks ROLLINGSTONE and RS. Thus, in those cases the addition of yet
another descriptive word to two already descriptive words was found to
sufficiently alter the domain names to avoid confusion. Such confusion is not
avoided where, as here, Respondent has added a generic word to highly distinctive
trademarks.
Third,
the fact that Respondent's services fall within the niche of online gambling
cannot
distinguish
Respondent's confusingly similar domain names when Complainant's marks are both
famous and used in connection with a variety of entertainment and Internet
services closely related to online gambling. Respondent's argument that similar
marks may be used on different goods and services might carry some weight if
the marks at issue were relatively unknown or merely descriptive. But that is not
case here. When a Complainant' s marks are famous and highly distinctive, as
Respondent does not dispute Complainant' s trademarks ROLLINGSTONE and RS are,
the law is clear that using similar marks even on completely different goods
and services is still likely to cause confusion.
Furthermore,
Respondent's limited examination of the goods and services of Complainant's
federally registered Marks ignores the much broader common law trademark rights
that Complainant possesses in connection with entertainment and online
services. It cannot be disputed that these services, for which Complainant
possesses common law trademark rights, are closely related to Respondent' s
online gambling services or a natural area of expansion for Complainant'
services. Thus, Respondent has no basis for arguing that the specific nature of
its services can distinguish its confusingly similar domain names from
Complainant’s trademarks ROLLINGSTONE and RS.
Legitimate Rights
Respondent
provides no basis or explanation for why it incorporated Complainant’s
trademarks ROLLINGSTONE and RS into its domain names. ROLLINGSTONE has no
obvious, or even subtle, connection to gambling. Indeed, the only reason to
adopt the domain name <rollingstonecasino.com> is to deliberately
trade on and exploit Complainant's famous ROLLINGSTONE mark. Should this be in
doubt, the websites' use of rock ‘n’ roll themes makes the intentional
association evident.
The
ways in which Respondent has incorporated a rock 'n' roll theme into its
websites abound. For example Respondent has prominently placed a stylized
jukebox on every page of its websites, the links along the top of each page of
Respondent's <rscasino.com> website have an amplifier knob next to them, and
the ‘Help Desk’ page possesses piano keys that the page instructs users to
“PLAY KEYS TO NAVIGATE.”
Nonetheless,
Respondent attempts to argue that, regardless of whether its domain names have
blatantly infringed Complainant's trademark rights since their inception,
somehow by operating these websites for several years its infringement
disappeared and Respondent's rights to the domain names have become legitimate.
Respondent cites no authority for this baseless argument and Complainant
contends that the law is directly to the contrary, citing Busy Body, Inc. v.
Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000), in which it was held
that “bad faith use of a domain name does not establish rights or legitimate
interests in respect of such name in the sense of ¶ 4(a)(ii) of the Policy.”
There
is no requirement under the Policy that a Complainant file a UDRP Complaint
within any set time period of when a Respondent registers its domain names.
Most UDRP proceedings involve Respondents who have been operating their website
at the disputed domain name for at least some period of time prior to the
filing of the Complaint. In fact, Policy ¶ 4(c)(i), which refers to use of the
domain name “in connection with a bona
fide offering of goods and services.”
is a factor for evaluating whether a
Respondent has legitimate rights to the domain name, primarily goes
toward evaluating whether the Respondent is a cybersquatter, not whether the
domain name infringes another’s trademark rights.
Panels
evaluating cases similar to this one, where at issue are Respondents who operate
websites that trade off the goodwill of a Complainant’s trademarks, have
repeatedly
found
that Respondents cannot establish legitimate rights to a domain name if it is
confusingly similar to the Complainant' s trademarks, regardless of how long
the Respondents have been operating their websites. In E.W. Scripps Co. v.
Sinologic Indus., D2003-0447 (WIPO July 1, 2003), the Respondent had been
operating its website for four years prior to the filing of the Complaint and
this was held not to be a bona fide offering of goods and services, but rather
an attempt to exploit the reputation of the Complainant's newspaper. Also, in U.S.
Office of Personnel Mgm’t v. Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9,
2003), the Respondent's operation of an infringing website for four years prior
to the filing of the Complaint could not establish legitimate rights to domain
name.
In
the opinion of the Complainant, there can be no question that Respondent
registered its domain names with the deliberate intention of exploiting the
substantial goodwill associated with Complainant’s trademarks ROLLINGSTONE and
RS. Respondent does not deny that it had actual knowledge of Complainant's
famous marks prior to registering its domain names. Respondent also does not
deny that it lacks authorization from Complainant to use the trademarks
ROLLINGSTONE and RS in its domain names. Other than Complainant's famous
Complainant’s trademarks ROLLINGSTONE and RS, there is no immediate connection
between this fanciful phrase and either music generally or online gambling
specifically. Therefore, the only explanation for Respondent's actions is that
it has been wrongfully seeking to capitalize on Complainant' s trademark
rights. The fact that Respondent has been exploiting Complainant's rights for
several years cannot make legitimate what has all along been improper.
Bad Faith
Of
the various ways that a respondent' s bad faith can be demonstrated under the
Policy it is Policy ¶ 4(b )(iv) that specifically applies to Respondent' s bad
faith use of the disputed domain names. Notably, Respondent fails to argue how
its appropriation of the highly distinctive ROLLINGSTONE name does not fall
squarely within the ambit of ¶ 4(b )(iv): "by
using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with the complainant' s mark as to source,
sponsorship, affiliation, or endorsement of your web site or location or of a
product or service on your web site or location." Respondent states
its belief that confusion will not occur, but this cannot alter the plain fact
that Respondent is seeking to attract Internet users to its site by associating
itself with the rock ‘n’ roll themes that have been a critical component of the
Complainant’s trademarks ROLLINGSTONE and RS owned by Complainant for over
thirty years.
Respondent's
weak attempt at overcoming the compelling evidence of its bad faith not
only
fails to support its position, it instead makes clear the effectiveness
Respondent has had in usurping Complainant' s goodwill for its own commercial
gain. For instance, Respondent argues that because "Respondent has continued to use the Disputed Domain Names for a
period of over five years" and this
"is overwhelming proof that Respondent acted in ' good faith' when the
Disputed Domain Names where (sic) registered." Respondent’s use of its
domain names over this period says nothing about Respondent's intent five years
ago and instead demonstrates that Respondent has had some measure of success in
attracting consumers by trading off the rock ‘n’ roll themes associated with
Complainant's trademarks.
Similarly,
there is no logic in Respondent's argument that because it refused to comply
with
Complainant' s cease and desist letter in 1999, this somehow makes its
continued willful infringement proper. Regardless of when Respondent made its
assertion that it believes confusion is unlikely, this does not alter the fact
that Respondent has deliberately gone about designing its websites to
capitalize on exactly the type of rock ‘n’ roll themes associated with the
Complainant’s trademarks ROLLINGSTONE and RS. Online gambling with a music
theme is not the kind of service so distinct from the entertainment and online
services provided by Complainant under the Complainant’s trademarks
ROLLINGSTONE and RS that consumers will not be attracted, for commercial gain,
to Respondent' s websites because of this perceived connection.
D. Respondent’s Additional
Submission
In
reply to this Additional Written Statement, Respondent filed an Additional
Response
in
which it repeated many of its previous arguments but, in fairness, its
allegations are summarized below:
1. Complainant has asserted that according
to previous Panel decisions (all of which were cited) the addition of a
‘generic’ term will not distinguish the domain name from a Complainant’s mark.
However it failed to mention that the ‘generic’ term added in the referenced
cases were terms in which the complainant had already established rights.
The
cases listed are readily distinguishable from the present case because in them
the Panels found confusion when the ‘generic’ term added to Complainants marks
was either a word in which the complainant had rights or was a word that does
not distinguish the domain name from that of the complainant. Such is not the
case with the present disputed domain names. The addition of the word ‘casino’
directs the mind to a specific activity, namely gambling. The Complainant has failed
to provide any evidence that this term or these activities have ever been
associated with its Marks. The fact that Respondent operates its website
offering goods and services that are wholly distinctive from the goods or
services of Complainant completely distinguishes the disputed domain names from
the Complainant’s trademarks. Therefore the disputed domain names are not
confusingly similar to Complainant’s Marks.
2. Complainant asserts that mere
registration of its marks places Respondent on notice of the dispute.
Registration and use by the Respondent of the disputed domain names which are
not identical or confusingly similar to Complainant’s marks, and which
represent goods and services which are not identical, and in fact are wholly
distinct, from the goods or services offered under Complainant’s marks cannot
and does not demonstrate notice of a dispute. The earliest evidence Complainant
can offer of a dispute was when the cease and desist letter was sent by
Complainant in November 1999. Respondent had, by January 1999, i.e. 10 months
earlier, already established a legitimate business endeavour and had offered
bona fide goods and services in connection with the disputed domain names.
3. Complainant asserts that the Policy
outlines acceptable use of a domain name “in
connection with the bona fide offering of goods and services” as a “factor for evaluating whether the
respondent is a cybersquatter, not whether the domain name infringes another’s
trademark rights” and cites two cases to support this argument that
legitimate rights cannot be established for a domain name if it is confusingly
similar. However both cases can be distinguished from the present case because
(1) the respondent in the Scripps case allowed its websites to become inactive
for an extended period after registration, and (2) both respondents were
attempting to sell competing goods which were identical to goods and services
offered by the Complainant. Neither factor is present in this case. Respondent
registered the disputed domain names for the purpose of providing bona fide
goods and services to consumers. Its website has been in operation since
January 1999 offering goods and services, namely an online casino and
associated goods, which are goods and services that are completely distinct from
any goods or services ever associated with Complainants marks. The Policy is
clear that a bona fide offering of goods and services is clear evidence that a
legitimate right exists. Therefore Respondent’s use of its website establishes
a legitimate right in the disputed domain names.
4. Finally, Respondent reiterates that the
current proceeding and the policy itself are not the place to determine whether
a domain name infringes another’s trademark rights. Complainant even states
that ¶ 4 (c) (i) of the Policy is not for evaluating “whether the domain name infringes another’s trade mark”. Panels
have consistently found that “the Panel
lacks jurisdiction to decide claims of trademark infringement, dilution, un
fair competition, or other statutory or common law cause of action.” See Bridgestone Firestone, Inc. v. Meyers,
D2000-0190 (WIPO July 6, 2000) (“[T]he existence of a legitimate dispute
concerning the likelihood of confusion can make a case inappropriate for
resolution under the policy.”); see also Adaptive Molecular Tech., Inc. v.
Woodward, D2000-0006 (WIPO Feb. 28, 2000).
DISCUSSION AND FINDINGS
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.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
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
(2)
that the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
that the
domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar.
Complainant
has established, to the satisfaction of the Panel, that it has substantial
rights in the trademark ROLLINGSTONE. The fact that sometimes this mark is
depicted in two words and sometimes in script form is immaterial.
Complainant
also claims to have common law rights in the trademark RS, but the evidence for
this is very weak. Nine separate documents were filed in support of this claim,
but a close examination of these does not bear out Complainant’s assertion as
they merely show the letters RS being used either subsidiary to, or as an
abbreviation for, the name RollingStone,
or both. The cover of the magazine clearly identifies it as RollingStone not RS (unlike, say, the
magazine GQ which is now the title of the journal previously known as
‘Gentleman’s Quarterly’).
Complainant
quotes McCarthy as proof that a shortened ‘nickname’ can be protected as a
trademark. However to qualify as a trade mark, the said nickname should be seen
to be being used in respect of specific goods or services and that does not
seem to be the case here. The evidence does not sufficiently show that the
alleged common law use has been continuous and ongoing and that secondary
meaning has been established as was held in Tuxedo By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000). RS is not in the same league as, say,
abbreviations such as COKE or FedEx which were first used by the general public
and only subsequently became trademarks.
In an
online Dictionary of Abbreviations, RS meaning RollingStone was only one out of 120 meanings for these initials,
which include such more familiar terms as ‘Rupees’, ‘Rallye Sport’ (for cars),
‘Religious Studies’, Republika Srpska’, and ‘Richter Scale’.
In the
Complaint and its Additional Written Statement, Complainant attempts to
pre-judge the situation by using the abbreviation “the ROLLINGSTONE Marks”
throughout to lump together both its federally registered trademark ROLLINGSTONE
and its alleged common law trademark RS. After this, there are very few
references to RS as being a trademark.
Respondent
does not raise this as an issue but, having examined the ‘evidence,’ the Panel
has decided that Complainant does not have any common law rights in RS as a
trademark. Consequently, having come to this conclusion, and since, in the
opinion of the Panel, the trademark ROLLINGSTONE is not confusingly similar to
the domain name <rscasino.com>, this latter name will not be
included in the following discussion.
The
trademark ROLLINGSTONE is not identical to the disputed domain name <rollingstonecasino.com>
and, as for confusing similarity, both parties have put forward extensive
argumentation both for and against this proposition.
On
behalf of Complainant it is argued, firstly, that its name and trademark
ROLLINGSTONE is so famous that it is inconceivable that anyone seeing either of
the disputed domain names will not immediately associate them with Complainant;
and secondly that there is undoubted similarity when a trademark is combined
with a generic or descriptive term such as, in this case, the word ‘casino.’
Dealing
with the first of the above arguments, in the experience of the Panel some
trademarks are actually less famous or well known in the world outside than
their owners believe them to be. For example, the name ‘Rolling Stone’ is not
unique to Complainant. Complainant has produced some substantial circulation
figures for its magazine, but to many more millions of people throughout the
world, the name ROLLING STONES is probably much more closely associated with
the pop group of that name led by Sir Mick Jagger. Complainants have alleged
that Respondent copied its domain names from them, but the Rolling Stones group
was formed in 1962 and became well known shortly thereafter. Complainant’s
magazine was not launched until five years later in 1967, (which is borne out
by the fact that its earliest trademark registration claims first use from that
year). Who was actually copying from
whom? Even prior to the 1960s, the proverb “a rolling stone gathers no moss”
was widely known and used. According to the Oxford Dictionary this proverb
dates from 1546, while Brewer’s Dictionary of Phrase and Fable has it that the
couplet: “The stone that is rolling can
gather no moss/For master and servant oft changing is loss” appeared in ‘Five Hundred Points of Good Husbandrie,’
which was published in 1573.
Thus,
although there is no doubt that in UDRP cases Complainant’s assertion that when
a disputed domain name contains a famous trademark that is, prima facie, evidence of confusing
similarity, the Panel is not convinced that this is the position in this case
because there must be some doubt about whether a casual observer will connect
the domain name <rollingstonecasino.com> with Complainant or,
alternatively, either with the Rolling Stones pop group, or with the common
proverb.
The Panel will
now deal with the second of Complainant’s arguments, namely that there is
undoubted similarity when a trademark is combined with a generic or descriptive
term such as, in this case, the word ‘casino.’ Respondent has forcefully argued
that for this to be the case, the generic term must bear some relation to the
goods or services for which a Complainant has registered or used his trademark.
There is certainly something in this argument, but it is not an absolute
necessity and the majority of UDRP Decisions support Complainant’s case. See,
for example, not only the cases referred to by Complainant, but also Sony
K K v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that neither the
addition of an ordinary descriptive word nor the suffix .com detract from the
overall impression of the dominant part of the name in each case, namely the
trademark SONY); see also Diageo plc v. Zuccarini, D2000-0996 (WIPO Oct.
22, 2000) (finding confusing similarity where Respondent’s series of 11 domain
names consisted of Complainant’s trademark GUINNESS followed by between two and
five generic terms); see also UGG Holdings, Inc. v. Barclay, FA 217320
(Nat. Arb. Forum Feb. 4, 2004) (holding that 23 domain names all of which
included a generic term as well as Complainant’s trademark UGG. were all
confusingly similar to it); see also Westfield Corp. Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding that <westfieldshopping.com> was
confusingly similar to WESTFIELD); see also Pfizer Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that <viagrabomb.com> was
confusingly similar to VIAGRA); see also Novell, Inc. v. Kim, FA 1676961
(Nat. Arb. Forum Oct. 24, 2003) (finding that <novellsolutions.com> was
confusingly similar to NOVELL); see also Am. Int’l Group, Inc. v. Shing,
FA 206399 (Nat. Arb. Forum Dec.15, 2003) (finding that <aigassurance.com>
was confusingly similar to AIG).
Against
this impressive array of precedents, Respondent refers to only two cases
including Grand
Bay Mgm’t Co. v. Allegory Inv., D2001-0874 (WIPO Sept. 21, 2000), in which
Respondent claims it was held that ‘casino’ is a term that directs the mind to
a specific activity and will therefore not cause confusion, but in fact this
was merely an allegation by one of the parties. The actual finding of the
majority of a 3-person Panel was that “While
the Complainant is associated with hotels that have casinos, this connection is
not sufficient to deprive others, especially those whose main business is
casinos, of the right to use the word. Linking the word with others which are
descriptive does not lead to confusion with the use by others of the descriptive
words.” Both in this case, and in the other cited by Respondent, Digital
City, Inc. v. Small Domain, D2000-1283 (WIPO), the trademarks GRAND BAY and DIGITAL CITY were in
themselves held to be highly descriptive. That is not the position here.
Precedents
are of course not binding on a Panel, but in this case there is a very strong
body of opinion that the addition of a generic word to a distinctive trademark
in a domain name does make the mark and the name confusingly similar, and that
the generic term does not necessarily have to imply a connection with the goods
or services for which the trademark is registered or used.
In the
present case, although the trademark ROLLINGSTONE may not be quite as famous as
Complainant alleges, it is the subject of three incontestable US registrations,
and it has also become, through extensive use, distinctive of the Complainant’s
particular goods and services.
Consequently,
in the opinion of the Panel, the disputed domain name <rollingstonecasino.com>
is confusingly similar to
Complainant’s trademark ROLLINGSTONE because it appropriates Complainant’s
distinctive and incontestable trademark and adds a generic or descriptive term
to it.
Complainant puts forward several
arguments under this heading – that Respondent is not licensed or authorized to
use its trademarks, that Respondent is not related to or associated with it,
that its trademarks are so well-known that Respondent must have been aware of
them when it registered the disputed domain names in 1998, that the websites at
the disputed domain names have a rock ‘n’ roll theme which immediately
associates it with Complainant, and that Respondent is not making a fair or
non-commercial use of the domain names.
In response, Respondent says that it
adopted the disputed domain names in 1998 and has used them ever since in
respect of a bona fide and perfectly
legitimate business which is completely distinct and different from
Complainant’s business. Therefore the defense under Policy ¶ 4(c)(i) is
available to it (“before any notice to
you 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”). Complainant relies on two UDRP
Decisions to argue that this is not the case (E. W. Scripps Co. v. Sinologic Ind. and U.S.
Office of Personnel Mgm’t v. MS Tech. Inc.) as well as to the fact that it
did direct a cease and desist letter to Respondent about a year after the
websites opened. Respondent replied to this letter denying any possible
confusion because of the distinct goods and services offered and the
distinguishing characteristics of the marks. It also says that in both of the
cases referred to by Complainant the goods and services of the domains and the
trademark were identical which they are not in this case.
However in the
Scripps case, the Panel was not presented with any evidence of an alleged
objection four years previous, and it also concluded that there had not been
any bona fide use. In the other case, Respondent’s use was held to be nothing
other than an opportunistic attempt by Respondent to exploit confusion by
diverting internet users away from Complainant’s site to Respondent’s. Neither
of these cases is remotely similar to the present case, where there is
insufficient evidence that Respondent derived its domain names from the name or
trademark of Complainant, where no attempt at diversion has taken place, and
where there is no evidence that Respondent’s use has not been legitimate.
In response to
the anticipated charge that it failed to follow up its 1999 cease and desist
demand, Complainant offers the rather lame excuse that the UDRP was in its
infancy at the time and unproved when it made its complaint. It is true that
the first UDRP Decision was subsequent to this exchange of letters, being dated
January 14, 2000, but by mid to late 2000 the UDRP was well established as a
highly effective method of dealing with cybersquatters and with the
misappropriation of trademarks into domain names, so this hardly excuses a
delay of four and a half years.
Laches
is not normally available to a Respondent under the Policy, once a prima facie case has been made out, and
it cannot be denied that Complainant did put Respondent on notice that it
disapproved of the disputed domain names about a year after they became active.
However, the fact that Complainant took no further action at that time is
perhaps an indication of the fact that Complainant did not seriously believe
that Respondent’s operation of the casino website was intended to attract
internet users away from Complainant and towards Respondent’s website. See
Bosco Prod., Inc. v. Bosco email Servs., FA 94828 (Nat. Arb. Forum June 29,
2000) (“Without determining if the
passage of considerable time would alone bar Complainant from relief in this
proceeding, the Panel notes that Complainant does not explain why it has waited
nearly four years to try and resolve [the domain name dispute].”); see
also New Piper Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum May
2, 2000) (stating that Complainant’s failure to initiate a suit in over two
years indicated that Complainant did not believe that Respondent intended to
attract customers through confusion).
Complainant’s charges that Respondent is
not licensed or authorized to use its trademarks and that Respondent is not
related to or associated with it, have not been denied but they are patently
true.
As discussed above, there could be other
explanations for the derivation of the disputed domain names so the charge that
it was as a direct result of the fame of Complainant’s trademarks, although not
denied by Respondent, carries little weight.
Complainant makes much play of the fact
that Respondent’s website has a distinct rock ‘n’ roll theme which, it says, is
similar to the musical themes associated with its Rolling Stone magazine. It is true that there are some musical
references on the website, but they are not ‘rife’ nor they do ‘abound’ as
Complainant alleges, and they are not nearly as frequent or as prominent as the
many gambling graphics that appear on the site. Complainant refers to images of
jukeboxes, but this is not true for these are in fact slot machines. It is true
that there are what could be some amplifier knobs at the top of each page and a
piano keyboard on one page, but neither of these images is necessarily linked
exclusively with rock and roll music. It is also arguable that any musical
theme (if there is one, which the Panel doubts) could just as well be derived
from a desire to associate the site with the Rolling Stones pop group.
Overall therefore, the Panel concludes
that Respondent did start to use the disputed domain name <rollingstonecasino.com> in good faith before
it knew anything about Complainant’s objection and that Complainant has failed
to prove its case that Respondent has no rights or legitimate interest in it.
As Respondent has pointed out, once a
Panel has found in favor of a Respondent on either of the first two
requirements of the Policy, there should be no need to consider the third.
However for the sake of completeness, the Panel will rehearse why it considers
that there is no bad faith either.
Under the heading of ‘Bad Faith,’
Complainant levels a number of charges namely – that Respondent has created a
likelihood of confusion by attracting internet users to its websites for
commercial gain in violation of Policy ¶ 4(b)(iv); that Respondent must have
been aware of Complainant’s trademarks when the disputed domain names were
registered; that Respondent has deliberately used a script form for the word
ROLLINGSTONE on its website that is identical or similar to Complainant’s own
distinctive script for the title of its magazine and in several of its
trademark registrations; and that Respondent is guilty of opportunistic bad
faith.
Respondent
argues that it lacks the specific ‘intent’ under Policy ¶ 4(b)(iv) for a
finding of bad faith. It states that it registered the disputed domain names “for the purpose of a bona fide offering of
services and has continued to offer the services of an online casino”. It
goes on to argue that its continued use of the domain names for a period of
over four years is overwhelming proof that it acted in good faith when
registering the names. See Mule Lightning, Inc. v. CPA, FA 95558 (Nat.
Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active
website that has been in use for two years and where there was no intent to
cause confusion with Complainant’s website and business); see also
Matchmaker Int’l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb.
Forum May 9, 2003) (where a majority of a 3-person Panel found that
Respondent’s reasonable belief in its legitimate rights to register the disputed
domain name precluded a finding of bad faith registration); see also DJF
Assoc., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000)
(finding that Respondent has shown that it has a legitimate interest in the
domain name because Respondent selected the name in good faith for its website
and was offering services under the domain name prior to the initiation of the
dispute).
There is no clear evidence that
Respondent must have been aware of Complainant’s trademarks when the disputed
domain names were registered and the Panel is not convinced that a U.S.
registered trademark puts constructive notice on a company with an address in
Antigua. As has already been said, the name could just as easily have been
derived from the famous pop group. Furthermore, Complainant produced no
evidence that its name and trademark were famous or well known in 1998 when the
disputed domain names were registered.
The adoption of a script form for the
words ROLLING STONE on the site could be significant and, if true, could
perhaps go some way to bearing out the allegation that Respondent must at least
have seen Complainant’s magazine when the site was being designed, whether
consciously or subconsciously. However the typeface of the actual script is
quite different from that used by Complainant, and furthermore on the website
the words ‘Rolling’ and ‘Stone’ are on separate lines. The Panel has therefore
concluded that on this point Complainant’s allegations are not proved.
The charge of opportunistic bad faith is unconvincing,
and the Panel dismisses it.
Thus, since none of Complainant’s charges
have been proved conclusively, the Panel concludes that bad faith has not been
established and the third requirement of the Policy is not satisfied in
relation to the disputed domain name <rollingstonecasino.com>.
DECISION
Having examined all three elements
required under the ICANN Policy, and found only one of them to have been proved
in respect of only one of the disputed domain names, the Panel concludes that
relief shall be DENIED in
relation to both of the domain names <rollingstonecasino.com> and <rscasino.com>.
DAVID H TATHAM Panelist
Dated: October 14, 2004
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