Universal Spheres, Inc. d/b/a
GoldenPalace.com v BusinessService Ltd., Escrow Domain Department, Temporary
Domain transfer Manager
Claim Number: FA0607000746952
PARTIES
Complainant is Universal Spheres, Inc. d/b/a GoldenPalace.com (“Complainant”), represented by Marc J. Randazza, 781 Douglas Avenue, Altamonte Springs, FL 32714. Respondent is BusinessService Ltd., Escrow Domain Department, Temporary Domain transfer Manager (“Respondent”), Expresspost, p.o. box 169, St. Petersburg 193015, RU.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <golden-palace-online-casino.com>,
registered with Nicco Ltd.
PANEL
The undersigned 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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 11, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 12, 2006.
On July 17, 2006, Nicco Ltd. confirmed by e-mail to the National
Arbitration Forum that the <golden-palace-online-casino.com>
domain name is registered with Nicco Ltd. and that the Respondent is the
current registrant of the name. Nicco
Ltd. has verified that Respondent is bound by the Nicco Ltd. 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 July 24, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 14, 2006 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@golden-palace-online-casino.com by e-mail.
A timely Response was received and determined to be complete on August
14, 2006.
On August 18, 2004, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dennis A. Foster as Panelist.
Extension
of Due Date: The original due date of this Decision was September 1, 2006. However, by Procedural Order No. 1 dated
August 21, 2006, the Panel extended the due date to September 8, 2006
(paragraph 10(c) of the Rules).
Language
of this Decision: While the Panel recognizes that the language of the registration
agreement—in this case Russian-- normally determines the language of the
proceeding (per paragraph 11(a) of the Rules), the Panel finds it most
equitable to give its Decision in English.
The Panel is Russian-capable and has had due regard to the Russian
language filings. But the disputed domain name,
<golden-palace-online-casino.com>, is a complex English phrase that leads
a reader to think this web site provides online gaming. That the Respondent selected this phrase as
a domain name is ample evidence of English sufficiency, the language of the
Complainant. Moreover, the timeliness
and craft of the Respondent’s approach in English to sell the disputed domain
to the Complainant corroborates the Panel’s belief that the Respondent is at
ease in English, and that this should be the language of this Decision. Finally, all the exhibited documentation is
in English. Therefore, using its authority from paragraph 11(a) of the Rules,
the Panel is giving this Decision in English.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ SUMMARIZED
CONTENTIONS
A. Complainant
-The Complainant has registered the following United States trademark
in International Class 41 for gambling services:
GOLDEN PALACE ONLINE CASINO, no. 2591351, dated July 9, 2002
-The Complainant also owns many other GOLDEN PALACE CASINO and GOLDEN
PALACE CASINO ONLINE service mark registrations in the U.S.A., the U.K., Australia
and in other countries.
-The Complainant has used the disputed domain name in connection with
its online gaming web site since 1998.
-GOLDEN PALACE and GOLDENPALACE.COM are famous marks, especially within
the online gaming sector. The Complainant
has spent considerable economic resources in order to market this trademark to
millions of people, and has created a genuine commodity in the moniker “Golden
Palace”.
-Internet users who navigate their browsers to the disputed domain name
web site would likely be misled to believe that the domain name is in some way
connected with the Complainant. This is
known as “initial interest confusion”. See
Covance, Inc. and Covance Laboratories,
Ltd. v. The Covance Campaign, D2004-0206 (WIPO April 30, 2004); CBS Broadcasting, Inc., f/k/a CBS Inc. v.
Nabil Z. Aghloul, D2004-0988 (WIPO February 5, 2005).
-The Respondent has no rights in the disputed domain name
<golden-palace-online-casino.com>.
-The Respondent only recently acquired the disputed domain name from
the previous registrant, Eurobox, Ltd., a repeat cybersquatter. See Kesko Oy v. Eurobox, Ltd., D2003-0975
(WIPO March 29, 2004).
-Complainant presumes that its original demand, made to Eurobox, Ltd.
on June 20, 2006, was the impetus for the transfer to the Respondent, and the
behavior of Eurobox, Ltd. in WIPO Case No. D2003-0975 tends to support this
presumption.
-The Respondent has not developed an original web site using the
disputed domain name, nor has the Respondent made any other good faith or legitimate
use of the domain name.
-The Respondent demonstrated bad faith by using the disputed domain
name to mis-direct Internet traffic intended to be directed toward
Complainant’s on-line casino.
Registration of this URL, which contains the Complainant’s trademark as
well as a description of the services provided under that mark, demonstrates
that the Respondent had knowledge of the Complainant as an online casino,
knowledge of the value of the trademark, and knowledge that there would be
Internet users who would confuse the two.
The implication is that the Respondent intended to gain profit from the
mark GOLDEN PALACE.
-The Respondent’s June 30, 2006 offer to sell the domain name to the
Complainant for U.S. $450 was for an amount well in excess of any out-of-pocket
costs.
-The Respondent had no other rights or legitimate interests in the
disputed domain name for any other purpose than to divert customers from the
Complainant in violation of the Complainant’s legitimate trademark rights.
B. Respondent
-The Complainant is not really the owner of the service marks GOLDEN
PALACE and GOLDEN PALACE ONLINE CASINO.
That would be Golden Palace Limited Corporation, Antigua and Barbuda
Milburn House, Box W1 716, Old Parham Road, St. John’s, Antigua and Barbuda,
while the Complainant is Universal Spheres Inc. d/b/a Goldenpalace.com, W1094,
11 Old Parham Road, St. Johns, Antigua.
-Before this proceeding, the Respondent did not know about the
Complainant, and did not contact the Complainant about the disputed domain
name. The Respondent acquired the
domain name for non-commercial purposes.
-Respondent has not yet had the time to develop a web site at the
disputed domain name. Respondent plans
to set up an information site about casino games at the disputed domain
name. The Respondent does not plan to
offer on-line gaming. The Respondent
thus has non-commercial legitimate rights and interests in the disputed domain
name per paragraph 4(c)(iii) of the Policy.
-In the letter Respondent wrote to Complainant on June 30, 2006,
Respondent only asked for reimbursement of expenses: the letter does not speak
of a sale of the disputed domain name.
The U.S. $450 is a reasonable sum for expenses: it is no more than the
cost of 3 to 4 hours of the time of a good lawyer.
-Respondent has not used the disputed domain name in bad faith because
it has not had time to use it at all.
FINDINGS
The Complainant is not the same as the
registrant of the GOLDEN PALACE trademarks exhibited in this Complaint. However, the Complainant does derive common
law trademarks from using <goldenpalace.com> for online casino gaming.
While the Respondent acquired the disputed
domain name recently, i.e., no earlier than March 30, 2006, the intentions of
the Respondent to sell the domain name for $450 are nonetheless clear to the
Panel.
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.
The Complainant has exhibited any number of
GOLDEN PALACE CASINO trademarks registered in the United States of America and
various other countries throughout the world.
But as the Respondent contends, the Complainant is not the registrant of
the exhibited trademarks, and no relationship is apparent between the
Complainant and the trademark registrant, Golden Palace Limited Corporation
Antigua & Barbuda, Milburne House, Box W1716 Old Parham, St. John’s, Antigua & Barbuda; the Complainant is
Universal Spheres, Inc.
Yet the Panel can also see that the
Complainant has been using the service marks GOLDEN PALACE CASINO to offer its
online gaming services (e.g. at <goldenpalace.com>. This means that, at a
minimum, the Complainant has common law trademark rights in the service mark
GOLDEN PALACE CASINO. The disputed
domain name, <golden-palace-casino-online.com>, is confusingly similar to
the Complainant’s GOLDEN PALACE CASINO marks since the words “golden palace”
are the only distinctive part of the Complainant’s marks.
Under these premises, the Panel finds the
Complainant has demonstrated that the disputed domain name,
<golden-palace-casino-online.com>, is confusingly similar to the
Complainant’s GOLDEN PALACE service marks per paragraph 4(a)(i) of the
Policy. See Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO
Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the
complainant to demonstrate ‘exclusive rights,’ but only that the complainant
has a bona fide basis for making the complaint in the first place).
The Complainant contends it has not given the
Respondent the right to use its GOLDEN PALACE service marks. For its part, the Respondent contends that
it plans to set up a noncommercial web site offering free information to the
public about on-line gaming---allowable under paragraph 4(c)(iii) of the
Policy. There is not a scintilla of
evidence to support the Respondent’s contention. Even if there were, the Panel still would not be able to fathom
why the Respondent needed to single out the Complainant’s widely known service
mark GOLDEN PALACE for this purpose. As
it is, the Panel totally disbelieves the Respondent’s stated intentions to set
up a public information web site about on-line gaming. The Panel thus finds the Complainant has
carried its burden of proof under paragraph 4(a)(ii) of the Policy to show that
the Respondent has no rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (holding that once the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide “concrete evidence that it has
rights to or legitimate interests in the domain name at issue”); see also Meijer, Inc. v. Porksandwich Web Servs
FA 97186 (Nat. Arb. Forum July 6,
2001) (finding that it is reasonable to shift the burden of proof to the
respondent to show why no reasonable alternatives exist to use of that
particular domain name that includes the mark or name of the complainant for a
criticism site aimed at the complainant).
The Panel agrees with the Complainant’s
contention that the Respondent has violated the bad faith registration and use
provision of the Policy at paragraph 4(b)(i).
The Respondent’s June 30, 2006 letter to the Complainant promising a
transfer in exchange for U.S. $450 is ample proof in this regard. This sum is a multiple of the cost of
registering a domain name. The Panel
finds the Complainant has carried its burden of proof under paragraph 4(a)(iii)
of the Policy to show that the Respondent registered and is using the disputed
domain name in bad faith. See CBS Broad. Inc. v. Worldwide Webs, Inc.,
D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the
offer or sale of domain names, without more, such as to justify a finding of
bad faith under the Policy. However, the fact that domain name registrants may
legitimately and in good faith sell domain names does not imply a right in such
registrants to sell domain names that are identical or confusingly similar to
trademarks or service marks of others without their consent”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <golden-palace-online-casino.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: September 11, 2006
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