Greektown Casino, LLC v. oded keinan / 3 nutley terrace
Claim Number: FA1311001528849
Complainant is Greektown Casino, LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is oded keinan / 3 nutley terrace (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greektowncasinos.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2013; the National Arbitration Forum received payment on November 7, 2013.
On November 7, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <greektowncasinos.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 November 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2013 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@greektowncasinos.com. Also on November 11, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Greektown Casino, LLC, uses the GREEKTOWN CASINO mark in connection with its casino hotel located in Detroit and online gambling products and services. Complainant owns rights in the GREEKTOWN CASINO mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,333,918 filed June 16, 1997, registered March 21, 2000).
Respondent, oded keinan / 3 nutley terrace, registered the disputed domain name on December 15, 1997. The <greektowncasinos.com> domain name previously resolved to a pay-per-click website that promoted links to Complainant’s competitors in the online gambling industry. The website was taken offline after the dispute arose.
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(e), 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 (Nat. Arb. 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 has rights in the GREEKTOWN CASINO mark under Policy ¶ 4(a)(i) through its registrations of the mark with the USPTO (e.g., Reg. No. 2,333,918 filed June 16, 1997, registered March 21, 2000). See, e.g., Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). A complainant does not need to register its mark in the respondent’s country of residence in order to establish rights in the mark under the Policy. See, e.g., Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). A complainant’s rights in a mark through USPTO registration date back to the filing date of the trademark application. See, e.g., Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel finds that Complainant’s registration of the GREEKTOWN CASINO mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). Complainant’s registration of the GREEKTOWN CASINO mark with an application filing date of June 16, 1997 predates Respondent’s December 15, 1997 registration of the <greektowncasinos.com> domain name.
Complainant next alleges that the <greektowncasinos.com> domain name is confusingly similar to Complainant’s GREEKTOWN CASINO mark because the disputed domain name fully appropriates the mark and merely adds a gTLD and the single letter “s.” The disputed domain name also eliminates the space found between words in the GREEKTOWN CASINO mark. The elimination of spaces and the addition of a gTLD are not changes that sufficiently distinguish a disputed domain name from a complainant’s mark. See, e.g., U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). A domain name is confusingly similar to a complainant’s mark where the domain name fully incorporates the mark and merely adds the letter “s.” See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the <greektowncasinos.com> domain name is confusingly similar to Complainant’s GREEKTOWN CASINO mark pursuant to Policy ¶ 4(a)(i).
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), and 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 (Nat. Arb. 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).
Complainant asserts that Respondent is not commonly known as <greektowncasinos.com> pursuant to Policy ¶ 4(c)(ii). A respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to indicate otherwise. See, e.g., Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The WHOIS information in the instant case identifies the registrant of the <greektowncasinos.com> domain name as “oded keinan / 3 nutley terrace.” As nothing else in the record suggests that Respondent is commonly known as <greektowncasinos.com>, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s previous use of the <greektowncasinos.com> domain name did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain name previously resolved to a pay-per-click website that promoted links to Complainant’s competitors in the online gambling industry. The use of a confusingly similar domain name to promote links to the complainant’s competitors is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Accordingly, the Panel finds that Respondent’s previous use of the <greektowncasinos.com> domain name was not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant alleges that the disputed domain name currently resolves to an inactive website. A respondent’s inactive use of an infringing domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant further alleges that Respondent offered to sell the disputed domain name to Complainant. Specifically, in an e-mail dated August 13, 2013, Respondent stated that it “would agree to transfer this domain for a reasonable fee.” See Complainant’s Exhibit L. Complainant contends that Respondent’s willingness to sell the disputed domain name is further evidence that Respondent lacks rights or legitimate interests in the <greektowncasinos.com> domain name pursuant to Policy ¶ 4(a)(ii). A respondent’s willingness to sell a disputed domain name can serve as additional evidence that the respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). The Panel finds that Respondent’s willingness to sell the disputed domain name shows that Respondent lacks rights or legitimate interests in the <greektowncasinos.com> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s willingness to sell the disputed domain name to Complainant is also evidence of Respondent’s bad faith registration and use of the <greektowncasinos.com> domain name pursuant to Policy ¶ 4(b)(i). The Panel finds that Respondent registered the <greektowncasinos.com> domain name with the intent to sell the domain name to Complainant, which shows Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i). See, e.g., Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant further alleges that Respondent has engaged in a pattern of bad faith domain registrations, which tends to show Respondent’s bad faith registration and use of the <greektowncasinos.com> domain name pursuant to Policy ¶ 4(b)(ii). Specifically, Complainant cites La Societe des Bains de Mer et du Cercle des Etrangers a Monaco v. Oded Keinan, Traffic Label Limited, D2008-1388 (WIPO Nov. 12, 2008), and Microgaming Software Systems Limited v. Oded Keinan, Traffic Label Limited, 2009-0261 (WIPO April 29, 2009), two cases that ordered that a disputed domain name be transferred from Respondent “Oded Keinan” to a third-party complainant. A respondent engages in a pattern of bad faith domain registrations where there are multiple prior UDRP cases that grant relief against the respondent. See, e.g., Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Accordingly, the Panel finds that Respondent has engaged in a pattern of bad faith domain registrations, which is evidence of Respondent’s bad faith registration and use of the <greektowncasinos.com> domain name pursuant to Policy ¶ 4(b)(ii).
Complainant next asserts that Respondent’s registration and use of the disputed domain name has disrupted Complainant’s business pursuant to Policy ¶ 4(b)(iii), because the <greektowncasinos.com> domain name previously resolved to a pay-per-click website that promoted links to Complainant’s competitors in the online gambling industry. A respondent demonstrates bad faith under Policy ¶ 4(b)(iii) where the disputed domain name is used to advertise the goods or services of the complainant’s competitors. See, e.g., David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel finds that Respondent used the disputed domain name to promote links to Complainant’s competitors in the online gambling industry. Therefore, Respondent’s registration and use of the <greektowncasinos.com> domain name disrupted Complainant’s online gambling business, which constitutes bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because the disputed domain name is likely to cause confusion with Complainant’s GREEKTOWN CASINO mark and Respondent has commercially profited from this confusion in the form of click-through fees. A respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) where the domain name is misleading to Internet users and is used to promote links to the complainant’s competitors in exchange for click-through fees. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant alleges that the disputed domain name currently resolves to an inactive website, which demonstrates Respondent’s bad faith under Policy ¶ 4(a)(iii). Respondent began inactive use of the disputed domain name after receiving notice of this dispute. A respondent demonstrates bad faith under Policy ¶ 4(a)(iii) where the disputed domain name resolves to an inactive website and there is no evidence that the respondent could have registered and used the disputed domain name for a non-infringing purpose. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel finds that Respondent’s inactive use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greektowncasinos.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 20, 2013
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