Carnival Corporation v. Crown solution gaming
Claim Number: FA0511000601111
PARTIES
Complainant is Carnival
Corporation (“Complainant”), represented by Jeffrey R. Cohen, of Millen, White, Zelano & Branigan, P.C., 2200 Clarendon Boulevard, Suite
1400, Arlington, VA 22201. Respondent
is Crown solution gaming (“Respondent”),
represented by John Berryhill,
4 West Front Street, Media, PA 19063.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carnivalcasino.com>,
registered with Dotster.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Barry Schreiber, Chair, Jonathan Hudis, and David Sorkin as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 22, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 23, 2005.
On November 28, 2005, Dotster confirmed by e-mail to the National
Arbitration Forum that the <carnivalcasino.com>
domain name is registered with Dotster and that the Respondent is the current
registrant of the name. Dotster has
verified that Respondent is bound by the Dotster 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 December 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 21, 2005 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@carnivalcasino.com by
e-mail.
A timely Response was received and determined to be complete on December
21, 2005.
A timely Additional Submission was received from Complainant on
December 27, 2005 and determined complete pursuant to The Forum’s Supplemental
Rule #7.
A timely Additional Submission was received from Respondent on January
3, 2006 and determined complete pursuant to The Forum’s Supplemental Rule #7.
On December 21, 2005 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Barry Schreiber, Chair, Jonathan Hudis, and David Sorkin as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <carnivalcasino.com> domain name is confusingly similar to Complainant’s CARNIVAL marks. In this regard, Complainant states that, “The Domain Name at issue incorporates Complainant’s distinctive mark in its entirety and thus creates sufficient similarity to render it confusingly similar. The addition of the generic word does not change the commercial impression of the mark, but, instead, creates a likelihood of confusion as to source, sponsorship or endorsement of Respondent’s website.” Complainant further relies on the fact that Complainant has trademark rights in the domain name, by virtue of the trademarks registered in the United States and presents in support thereof a list of the various trademark registrations owned by Complainant. Complainant also claims trademark rights in other countries, but its registrations in those other countries were not attached to the Complaint.
2. Respondent does not have any rights or legitimate interests in the <carnivalcasino.com> domain name. In support of this claim, Complainant states that, “Respondent has not used the domain name for any purpose other than to offer online gaming services and software in connection thereto.” Complainant further avers that, “…the only plausible explanation for Respondent’s registration and use of the domain name is that it constitutes a deliberate attempt to divert consumers of the Complainant’s products or services to Respondent’s site by using Complainant’s mark.”
3. Respondent registered and used the <carnivalcasino.com> domain name in bad faith. Here, Complainant suggests that since Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, that such circumstances constitute Respondent intentionally attempting to attract commercial gain and hence bad faith.
B. Respondent
Respondent takes issue with all of Complainant’s assertions, including
any trademark claims by Complainant.
Respondent puts great emphasis on the fact that Respondent is located in
Antigua and has been running an Antigua-licensed gaming operation since early
2003 using the domain name <carnivalcasino.com>. Aside from additional defenses to
Complainant’s claims, Respondent asserts that by virtue of Respondent being
based in Antigua and not operating in the US, that Respondent did not have
constructive knowledge, let alone knowledge, of Complainant’s registration of
trademarks and hence there can be no imputation of bad faith. Respondent further questions the validity of
Complainant’s U.S. trademark rights on which Complainant relies, asserting that
Complainant does not use its CARNIVAL marks in commerce regulated by the U.S.
Congress.
C. Additional Submissions
In Complainant’s Additional Submission of December 27, 2005,
Complainant attempts to refute specifically the defenses and allegations make
by Respondent in its Response, but in essence added nothing new to support its
claim.
In Respondent’s additional submission of January 3, 2006, Respondent
refutes some of the contentions made by Complainant in its Additional
Submission, but also added nothing to what Respondent basically stated in its
original Response.
FINDINGS
The Panel determines that:
(1) Complainant has failed to sustain its burden of proving that Respondent lacks rights or legitimate interests in the domain name; and
(2) Complainant has failed to sustain its burden of proving that the domain name was registered or is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 the burden of proof in demonstrating that each of these three elements are
present.
The Panel is in agreement that, if Complainant has enforceable
trademarks rights in CARNIVAL for casino/gambling services, the domain name
<carnivalcasino.com> is
confusingly similar to Complainant’s mark.
See, Victoria’s Secret v. Asdak,
FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (comparing the complainant’s mark
VICTORIA’S SECRET with the respondent’s domain name
<victoriasecretcasino.com>).
Where the Panel’s unanimity diverges is on the question of whether Complainant
has enforceable rights under U.S. law in the mark CARNIVAL for casino/gambling
services.
In its Complaint, Complainant relies principally on its CARNIVAL marks
registered for inter alia, casino
services under U.S. law. While
Complainant mentions other CARNIVAL mark registrations that it owns in other
jurisdictions, these registrations were not attached to its Complaint.
In its Response, Respondent challenges the validity of Complainant’s
U.S. registered CARNIVAL marks for casinos/gambling services, because
Complainant is not authorized to conduct casino/gambling operations in the
U.S. Complainant submits supplemental
papers noting its activities under the CARNIVAL marks that touch upon U.S.
commerce. Respondent also submits
supplemental papers stating that Complainant’s activities are insufficient to
show trademark rights under U.S. law.
The parties’ disagreement comes at the cross-roads of the Fourth Circuit
Court of Appeals’ decisions in Barcelona.com,
Inc. v. Excelentismo Ayuntamiento de Barcelona, 300 F.3d 617 (4th
Cir. 2003) and Int’l. Bancorp LLC v.
Societe des Bannes, 66 USPQ 1705 (4th Cir. 2003), cert. denied, 124 S. Ct. 1052 (2004),
and implicates the well-known marks doctrine under, for example, Grupo Gigante S.A. de C.V. v. Dallo &
Co., Inc., 73 USPQ2d 1258 (9th Cir. 2004).
A majority of the Panel takes the view that it is unnecessary to reach
a finding as to confusing similarity, because the Panel’s findings as to the
remaining two elements are determinative of the present matter. A minority of the Panel believes that, in
the context of this proceeding, Respondent placed Complainant’s trademark
rights (at least in the U.S.) in sufficient dispute. Complainant, on the other hand, provides evidence of the use of
its CARNIVAL marks in commerce that may be regulated by the U.S. Congress. However, the weight, credibility, and
sufficiency of Complainant’s evidence cannot be ruled upon in a summary UDRP
proceeding. These facts must be fleshed
out and tested by civil litigation in a court of competent jurisdiction. Therefore, it is a view of a minority of the
Panel that Complainant failed to prove for purposes of this proceeding that it
has unquestioned trademark rights in the CARNIVAL marks in the U.S. because
Complainant's trademark rights are in legitimate dispute.
The Panel therefore declines to reach a finding on this issue.
The Panel finds that the <carnivalcasino.com> domain name is comprised of common terms and determines that Complainant has not shown that Respondent has no rights or legitimate interests in the domain name. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that a respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Coming Attractions, Ltd. v. Comingattractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000) (finding a respondent had the right to register the subject domain name, <comingattractions.com>, based upon the generic use of the term "coming attractions"); see also Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that “seminar” and “success” are generic terms to which the complainant cannot maintain exclusive rights).
Furthermore, the Panel finds that Complainant has
not proven that Respondent did not make a bona fide offering of goods or services before notice to it of
this proceeding, pursuant to Policy ¶ 4(c)(i).
See Funskool (India)
Ltd. v. funschool.com Corp., D2000-0796 (WIPO Nov. 30, 2000) (finding a bona
fide use of the <funskool.com> domain name where the respondent
submitted an article that indicated that the respondent had been using the similar
<funschool.com> domain name to resolve to a popular gaming website for
school children prior to notice of the dispute); see also Verkaik v.
Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that the
respondent’s use of the <skyart.com> domain name to sell “digital and
photo images of Southwest scenes, especially the sky” bestowed rights and
legitimate interests in the domain name).
The Panel finds that Complainant has not demonstrated that Respondent registered or used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that a respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding a respondent has shown that it has a legitimate interest in the domain name because the 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).
Complainant’s mark is comprised of common terms, which Respondent appears genuinely to have adopted in good faith for its online gambling business. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of the respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”); see also Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where the respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith).
DECISION
Complainant, having not established all three elements required under
the ICANN Policy, the Panel concludes that relief sought by Complainant shall
be DENIED.
Accordingly, it is Ordered that the <carnivalcasino.com>, domain name remain as presently registered.
Barry Schreiber, Chair, Jonathan Hudis and David Sorkin as Panelists.
Dated: January 10, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum