Shakopee Mdewakanton Sioux Community v. Anil Kumar / Asbestos Colony
Claim Number: FA1803001775070
Complainant is Shakopee Mdewakanton Sioux Community (“Complainant”), represented by Jodi A. DeSchane of Faegre Baker Daniels, LLP, Minnesota, USA. Respondent is Anil Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mystic-lake-casino.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 8, 2018; the Forum received payment on March 8, 2018.
On March 9, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mystic-lake-casino.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mystic-lake-casino.com. Also on March 12, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Shakopee Mdewakanton Sioux Community, has operated Mystic Lake Casino, one of the largest tribal casinos in the nation, since 1992. Complainant has rights in the MYSTIC LAKE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,787,487, registered Aug. 10, 1993). Respondent’s <mystic-lake-casino.com> domain name is confusingly similar to Complainant’s MYSTIC LAKE mark, as the domain name entirely incorporates the mark, followed by the generic and descriptive term “casino,” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <mystic-lake-casino.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the MYSTIC LAKE mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to siphon Internet traffic from Complainant to its own website about online casinos and links to third-party casinos in competition with Complainant.
Respondent registered and is using the <mystic-lake-casino.com> domain name in bad faith. Respondent’s use of the domain name to compete with Complainant’s business demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv). Further, Respondent provided false or misleading contact information when it registered the domain name. Finally, due to the fame of the MYSTIC LAKE mark, Respondent had knowledge of Complainant’s rights in the mark at the time it registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, an individual purporting to be Respondent, or Respondent’s agent, contacted the Forum via email, stating he was unaware of Complainant’s trademark and has taken the resolving website down.
Complainant is Shakopee Mdewakanton Sioux Community of Prior Lake, Minnesota, USA. Complainant is the owner of numerous domestic registrations for the mark MYSTIC LAKE, which it has used continuously since at least as early as 1992, in connection with its provision of a wide variety of gaming and casino related goods and services.
Respondent is Anil Kumar, Hyderabad, India. Respondent’s registrar’s address is listed as Scottsdale, Arizona, USA. The Panel notes that the domain name was initially registered on or about January 14, 2012.
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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the MYSTIC LAKE mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,787,487, registered Aug. 10, 1993). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complainant’s registration of the MYSTIC LAKE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <mystic-lake-casino.com> domain name is confusingly similar to the MYSTIC LAKE mark, as the name incorporates the mark in its entirety, adding the generic and/or descriptive term “casino” and the “.com” gTLD. Addition of a gTLD and a term descriptive of a complainant’s business to a mark is not a change sufficient to distinguish the resultant domain name from the mark in a Policy ¶ 4(a)(i) analysis. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Complainant claims that since it operates a casino, the added word “casino” is descriptive and increases potential confusing similarity. The Panel further notes that that Respondent omitted the spacing in the mark and added hyphens between the terms in the domain name when creating the name. Such changes are also not sufficient to distinguish a domain name from an incorporated mark per Policy ¶ 4(a)(i). See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”) see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). The Panel here finds that the <mystic-lake-casino.com> domain name is confusingly similar to the MYSTIC LAKE mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant here has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <mystic-lake-casino.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MYSTIC LAKE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Anil Kumar,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel here finds that under Policy ¶ 4(c)(ii), Respondent has not been commonly known by the <mystic-lake-casino.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <mystic-lake-casino.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the domain name and resolving website to siphon Internet traffic from Complainant to its own gambling-related website which in turn links to competitive online gambling services. Use of a domain name to divert Internet users to competitors of a complainant may not amount to a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant contends, and provides evidence, that the disputed domain name resolves to a website featuring information about online casinos, and includes links to various third parties providing casino services. Complainant presumes Respondent receives commissions or click-through fees from this diversion. The Panel here finds that Respondent’s use of the <mystic-lake-casino.com> domain name is not a use indicative of rights or legitimate interests therein per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims that Respondent’s bad faith is indicated by its use of the <mystic-lake-casino.com> domain name to create a likelihood of confusion with Complainant’s MYSTIC LAKE mark and link to competitive third-party websites. Use of a domain name to create confusion and divert Internet users to competitive websites can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel again notes Complainant’s contention that Respondent uses the domain name to provide information about, and links to, competitive online gambling websites. Complainant presumes Respondent gains commercially from this misdirection. The Panel finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant contends Respondent has provided false contact information in connection with the registration of the <mystic-lake-casino.com> domain name. Use of false contact information in registering a domain name can be evidence of bad faith registration per Policy ¶ 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Complainant claims Respondent did not provide a valid physical address in the public WHOIS database with its registrar, as evidenced by the inability to deliver hard copy correspondence to Respondent. The Panel finds that Respondent’s registration of the domain name with false contact information is evidence of its bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <mystic-lake-casino.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 18, 2018
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