DECISION

 

CryptoLogic, Inc. v. Internet Billions Domains Inc.

Claim Number: FA0408000318925

 

PARTIES

 

Complainant is CryptoLogic Inc. (“Complainant”), represented by Antonio Turco, of Blake, Cassesl & Graydon LLP, 199 Bay Street, Suite 2800, Toronto, ON, M5L 1A9, Canada.  Respondent is Internet Billions Domains Inc. (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

 

The domain names at issue are <cryptologic.net>, <cryptologicsucks.com>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net> and

<e-cryptologic.net>, registered with Domainbank.com.

PANEL

 

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

P. Jay Hines, Bruce Meyerson, and Henry H. Perritt, Jr. as Panelists.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 27, 2004; the Forum received a hard copy of the Complaint on August 30, 2004.

 

On September 1, 2004, Domainbank.com confirmed by e-mail to the Forum that the domain names <cryptologic.net>, <cryptologicsucks.com>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net> and <e-cryptologic.net> are registered with Domainbank.com and that the Respondent is the current registrant of the name.  Domainbank.com has verified that Respondent is bound by the Domainbank.com

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 September 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 22, 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@cryptologic.net, postmaster@cryptologicsucks.com, postmaster@ecryptologic.com, postmaster@e-cryptologic.com, postmaster@ecryptologic.net, and postmaster@e-cryptologic.net by e-mail.

 

A timely Response was received and determined to be complete on October 5, 2004.

 

Complainant submitted a timely Additional Submission on October 12, 2004, and Respondent submitted a timely Additional Submission on October 18, 2004.

 

On October 20, 2004 pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed P. Jay Hines, Bruce Meyerson and Henry H. Perritt, Jr. as Panelists.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS (Including Their Additional Submissions)

 

A. Complainant

 

Complainant is a software development company serving the Internet gaming market.  Complainant contends that it offers software to licensed casinos for use in the operation of online gaming systems.  As a part of these arrangements, Complainant earns a license fee based in large part on the revenues generated by the licensee through the use of the software.   Complainant is the owner of the trademark CRYPTOLOGIC, which is registered in the United States, Canada, and European countries.  Complainant contends it has used the mark in connection with its computer software and Internet business since 1996.  Complainant contends that the disputed domain names are confusingly similar to its mark.

 

Complainant contends that Respondent has no right or legitimate interest in the use of the domain names.  Complainant contends that Respondent is not using any of the domain names in connection with a bona fide offering of goods and services, and that Respondent is not commonly known by any of the domain names.  Moreover, Complainant contends that Respondent is using the domain names to “tarnish” Complainant’s mark.

 

Complainant contends that Respondent registered all of the names in bad faith and that Respondent is not making any legitimate use of the sites.  Furthermore, Complainant contends that Respondent registered the domain names to interfere with Complaint’s ability to use its mark, and that Respondent engages in a pattern of such conduct.  Complainant also contends that Respondent had prior knowledge of Complainant’s rights in its trademark.

 

In its Additional Submission, Complainant argues that to the extent Respondent’s use of the domain names contain defamatory information regarding Complainant, such use is not protected by the First Amendment.

 

B. Respondent

 

Respondent is in the business of operating online casinos.  Respondent claims to have paid Complainant $100,000 in 1999 to license Complainant’s software and related services.  As a result, Respondent claims to have suffered financial losses.  Respondent contends that it has a “legitimate and serious gripe” with Complainant.  “To vent its anger with Complainant and to warn others of Complainant’s activities, Respondent registered various domain names incorporating Complainant’s corporate name . . . to use for a protest site to expose Complainant’s fraud.”

 

Respondent acknowledges that <cryptologic.net> is confusingly similar to Complainant’s mark, but contends that the remaining domain names in dispute are sufficiently different as to not cause confusion.  Respondent contends that its use of the disputed domain names for the purpose of criticizing Complainant constitutes a legitimate interest within the meaning of Paragraph 4(c)(iii) of the Policy.  Moreover, Respondent contends that such use—the criticism of Complainant—further demonstrates that the domain names were not registered in bad faith.  Respondent disagrees with Complainant with respect to the constitutional protection afforded its criticism of Complainant, contending that the law of defamation is beyond the scope of a UDRP proceeding.

 

FINDINGS

 

Complainant is a software development company serving the Internet gaming market.  Complainant offers software to licensed casinos for use in the operation of online gaming systems.  Complainant has established rights in the CRYPTOLOGIC mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,824,149, issued Mar. 16, 2004), in Canada (Trademark No. 537,677, issued Nov. 24, 2000) and with the European Community (Reg. No. 001368141).   Respondent is in the business of operating online casinos.  Respondent was involved in a dispute with Complainant and claims to have lost money as a result of doing business with Complainant.

 

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 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.

 

Identical and/or Confusingly Similar

 

The record reflects that Complainant has established rights in the CRYPTOLOGIC mark through registration with the United States Patent and Trademark Office (Reg. No. 2,824,149, issued Mar. 16, 2004), in Canada (Trademark No. 537,677, issued Nov. 24, 2000) and with the European Community (Reg. No. 001368141).

 

The Panel agrees with Complainant’s assertion that the <cryptologic.net> domain name is confusingly similar to Complainant’s CRYTPOLOGIC mark because the domain name differs from Complainant’s mark only by the addition of the generic top-level domain “.net.”  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel also agrees with Complainant that the <ecryptologic.com> and <ecryptologic.net> domain names are confusingly similar to Complainant’s CRYTPTOLOGIC mark because the domain names differ from Complainant’s mark only by the addition of the letter “e” and the generic top-level domains “.com,” or “.net.”  See Int’l Data Group, Inc. v. Maruyama & Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain name <ecomputerworld.com> is confusingly similar to complainant’s mark, COMPUTERWORLD). 

 

Lastly, the Panel agrees with Complainant that the <e-cryptologic.com> and <e-cryptologic.net> domain names are confusingly similar to Complainant’s CRYPTOLOGIC mark because the domain names differ from Complainant’s CRYPTOLOGIC mark by the mere addition of the letter “e” followed by a hyphen and the generic top-level domains “.com,” or “.net.” See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks).  

 

On the other hand, the Panel agrees with Respondent that the <cryptologicsucks.com> domain name is not confusingly similar to Complainant’s CRYTPOLOGIC mark because the addition of the term “sucks” clearly indicates to Internet users that Complainant does not support the website. Indeed, “[u]nless one has been living under a rock for decades, one is not likely to confuse a ‘sucks.com’ Web site with the trademark in question.”  R. Badgley, Domain Name Disputes 6-55 (2002).  Accordingly, Respondent’s domain name <cryptologicsucks.com> is not confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See, e.g., Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (domain name containing character string “sucks” cannot be confusingly similar to trade-mark to which “sucks” is appended, as a matter of law); Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (noting that using a negative domain name for the purposes of criticism, such as <walmartcanadasucks.com>, does not create confusion with the service mark of complainant);  Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (finding that common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or other language clearly indicates that the domain name is not affiliated with the trademark owner).   

 

Because Complainant has not demonstrated that the domain name <cryptologicsucks.com> is confusingly similar to a protected mark, Complainant cannot prevail in its complaint to transfer this mark.  Accordingly, we will not address the remaining issues under the Policy as to this domain name.

 

Rights or Legitimate Interests

 

The Panel agrees with Complainant that Respondent does not have rights or legitimate interests in the <cryptologic.net>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net> and <e-cryptologic.net> domain names because Respondent is not using the domain names in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the domain names without intent for commercial gain or to tarnish the trademark.  Respondent is using the domain names as a rather vicious “protest site,” where Respondent makes criticizing and highly inflammatory statements about Complainant.  Such use is not a use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or a fair use of the domain name pursuant to Policy ¶ (4)(c)(i) or ¶ 4(c)(iii).[1] Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark). 

 

Respondent contends its use of these sites to criticize Complainant amounts to fair use and free speech, citing Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000).  In that decision, in upholding the respondent’s use of the site bridgestone-firestone.net, the Panel took care to observe that the site was limited to the criticism of the complainant, and it did “not appear that his actions are intended to tarnish, or have tarnished, the Complainants’ marks.”  Tarnishment occurs when a mark is improperly associated with an inferior or offensive product or service.  See Panavision Int’l. L. P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).

 

In this case, Respondent’s <cryptologic.net>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net> and <e-cryptologic.net> sites do far more than merely criticize Complainant.  The sites accuse Complainant of being the “biggest crooks in the industry,” and being controlled by “gangsters,” the “Mafia” and “heroin traffickers.”  Under the circumstances, the Panel finds that the Bridgestone decision and those that follow it are not controlling in this case.

 

Finally, Complainant argues that Respondent is not commonly known by any of the <cryptologic.net>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net> and <e-cryptologic.net> domain names. For this further reason, the Panel concludes that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ (4)(c)(ii).  See, e.g., RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail");  Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that respondent does not have rights in a domain name when respondent is not known by the mark).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent registered the <ecryptologic.com>,

 <e-cryptologic.com>, <ecryptologic.net> and <e-cryptologic.net> domain names for the primary purpose of selling the domain names for valuable consideration in excess of Respondent’s documented out-of pocket costs.   The record indicates that Respondent is offering to sell the domain names for $10,000, $10,000, $2,500, and $2,500 respectively.  Respondent’s registration of the domain names for the primary purpose of selling the domain name registrations for valuable consideration in excess of documented out-of-pocket costs directly related to the domain names evidences bad faith registration and use of the domain names pursuant to Policy ¶ 4(b)(i).  See, e.g., Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where respondent offered domain names for sale); World Wrestling Fed. Entertainment,  Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). 

 

Respondent’s registration and use of the <cryptologic.net>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net> and <e-cryptologic.net> domain names also constitute bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent is using the domain names for a complaint site.   See, e.g., Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where respondent published negative comments regarding complainant’s organization on the confusingly similar website); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where respondent knowingly chose a domain name, identical to complainant’s mark, to voice its concerns, opinions, and criticism about complainant).

 

DECISION

 

Having failed to establish all three elements required under the ICANN Policy regarding the domain name <cryptologicsucks.com>, the Panel Concludes that relief shall be DENIED with respect to this domain name.

 

Having established all three elements required under the ICANN Policy regarding the domain names <cryptologic.net>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net>, and <e-cryptologic.net>, the Panel concludes that relief shall be GRANTED with respect to these domain names.

 

Accordingly, it is Ordered that the <cryptologic.net>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net>, and <e-cryptologic.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Bruce Meyerson, Panel Chair

P. Jay Hines and Henry H. Perritt, Jr. as Panelists
Dated: November 5, 2004

 

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