Domain name - Domain name dispute resolution policy - Australian Trademarks - Trademark application subsequent to dispute - Confusingly similar - Legitimate Interest - Bad faith registration - Bad faith use - Passive holding.

Complainant owned a number of trade marks in Australia and elsewhere, including trade marks consisting of the word "jupiters", the name under which it operates hotels and casinos in Queensland, Australia.  Complainant also was the registrant of a number of domain names inclusive of the name "jupiters", among them jupitersgaming.com and jupitersgaming.com.au.  Respondent registered the domain names jupiterscasino.com and jupiters-casino.com, and subsequently applied for U.S. trademark in the name.  No active use of the domain names was made by the Respondent. 

Held, Name Transferred to Complainant.

Complainant's trade marks comprise the word "Jupiters" and it is well known by the name "Jupiters Casino", hence the domain names are each confusingly similar to the trade marks of Complainant.  In so far as an assertion of legitimate right or interest may be implied by Respondent's US trade mark application, any use by Respondent in accordance with that application would, in Australia at least, be unlawful in the light of Complainant's rights and reputation; therefore Respondent has no rights or legitimate interests in the domain names.

On the matter of bad faith, Respondent's conduct does not fall within any of the circumstances specifically enumerated in paragraph 4(b) of the Rules.  However, these circumstances do not constitute a code and there are many other circumstances which may evidence bad faith.  The fact that Complainant's name and trade mark is so well and widely known, coupled with the fact that Respondent's mailing address is in the same district as Complainant's business, makes it inevitable that Respondent registered the domain names in full knowledge of Complainant's rights and interests.  Given also that no explanation as to the choice of domain names was either proffered or apparent, the inference may be drawn therefore that in some way Respondent hoped to capitalise on the reputation of Complainant. That conclusion is reinforced by Respondent's subsequent trade mark application in the United States for Complainant's name and trade mark in respect of services of the same description as those for which Complainant and its trade mark are well known.  Therefore each of the domain names was registered in bad faith.  Further, although no active use of these names has been made, the circumstances of the registration of the domain names and Respondent's US trade mark application are indicative of his intention to passively hold the trade mark and the domain names for some future active use in a way which would be competitive with or otherwise detrimental to Complainant.  Therefore each of the domain names is being used in bad faith. 

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy 
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Panel Decision referred to

Telstra Corporation Limited v. Nuclear Marshmellows, ICANN Case No. D2000-0003 (WIPO).

Ryan, Panelist: -

1. The Parties
The Complainants is: 
Jupiters Limited, of PO Box 1400, Broadbeach, Queensland 4218, Australia.
Represented by Eddie Scuderi of Corrs Chambers Westgarth, Lawyers of GPO Box 9925, Brisbane, Queensland 4001, Australia.
The Respondent is:
Aaron Hall, of PO Box 2156, Southport BC, Queensland 4215, Australia.

2. The Domain Name and Registrar
The domain names with which this dispute is concerned are: 
"jupiterscasino.com" and "jupiters-casino.com"
The Registrar with which the domain names are registered is:
Network Solutions Inc, of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.

3. Procedural History
3.1 The Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Centre (the "WIPO Centre") on June 9 and June 13, 2000 respectively.
3.2 On June 25, 2000 the Registrar verified that the current registrant of the domain names is the Respondent, that the Registrar's 4.0 Service Agreement is in effect, that the domain names are in "Active" status, that Respondent's administrative and billing contact is:
 Hall, Aaron (AH 4651) [email protected]
PO Box 2156
Southport BC, Qld 4215
+ 61 7 552 9120
and the Technical Contact is:
Hostmaster, Account (AH830) [email protected]
42712 Lawrence Place
Fremont, CA 94538
3.3 On June 25, 2000 all formal requirements for the establishment of the complaint were checked by the WIPO Centre and found to be in compliance with the applicable ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Centre's finding of proper compliance with the Rules and establishment of the complaint. 
3.4 On June 26 , 2000 the WIPO Center sent Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by post and by fax to Respondent and to the Technical Contact;
(ii) by e-mail to Respondent and to the Technical Contact;
(iii) by e-mail to [email protected] and [email protected]
3.4.1 In addition the Notification of Complaint and Commencement of Administrative proceeding was sent by post and by fax and by e-mail to the address provided by Complainant pursuant to Rule 3(b)(v) of the Rules, namely:
Tien Nguyen ("Miss Nguyen")
Ledger & Nguyen Lawyers
PO Box 184,
Surfers Paradise, Qld 4217
Australia
Fax:  + 61 7 5570 4455
e-mail:  [email protected]
3.4.2 From the record it appears that:
(i) the post, fax and e-mail transmissions to Respondent were undelivered;
(ii) the e-mails to the Postmaster at the domain names were undelivered;
(iii) the e-mail to the Technical Contact was delivered;
(iv) the post and fax transmissions to Miss Nguyen were delivered;
(v) the e-mail to Miss Nguyen was undelivered.
3.4.3 On June 30, 2000 the Technical Contact advised that Respondent was not its client and that it did not have the domain names on its server.
3.4.4 From the facts set out above it cannot be ascertained whether Respondent has actual Notice of the Complaint and the Commencement of the Administrative Proceeding.
3.4.5 Rule 2(a) of the Rules provides that it is the Provider's (WIPO Center's) responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. The said Rule further provides that this responsibility is discharged by: 
(i) sending the lodgement to all postal mail and facsimile addresses:
(A) shown in the Registrar's Whois data base for the domain name holder, the Technical Contact and the Administrative contact; and
(B) the Billing Contact supplied by the Registrar for the registration; and
(ii) sending the Complaint by e-mail to:
the e-mail addresses for the Technical, Administrative and Billing Contacts;
(A) the Postmaster at the domain name;
(B) if the domain name resolves to an active web page, any e-mail address or e-mail link shown on that web page.
(iii) sending the Complaint to any preferred address notified by Respondent and all other addresses provided by Complainant under Rule 3(b)(v).
3.4.6 The record shows that:
(i) the Center has satisfied the provisions of each of paragraphs (i)(A), (i)(B), (ii)(A), (ii)(B) and (iii) of Rule 2(a);
(ii) the domain names do not resolve to an active web-site;
(iii) Respondent has not notified any preferred address to WIPO Center.
3.4.7 The Panel therefore finds that the obligation imposed on the Center with respect to Notification of the Complaint and the Commencement of the Administrative Proceeding have been satisfied.
3.5 The Administrative Proceeding commenced on June 26 2000.
3.6 The last day for filing a Response by Respondent was July 15, 2000. No response was filed and Notification of Respondent's Default was sent to Respondent, to Miss Nguyen and to Complainant by e-mail on July 18, 2000.
3.7 The Panel was appointed on July 25, 2000.
3.8 The Panel proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint.

4. Factual Background
4.1 Complainant is Jupiters Limited, an Australian public listed company which operates hotels and casinos in Queensland, Australia.
4.2 Complainant is the registered proprietor of a number of trade marks in Australia and elsewhere, including trade marks consisting of the word "jupiters". These registrations include the following:
No. 505396 and No. 505397 "Jupiters" in classes 41 and 42 in respect of, inter alia, casinos and casino services, dated February 22, 1989.
4.3 Complainant is the registrant of the domain names "jupiters.com", "jupiters.com.au", "jupitersgaming.com", "jupitersgaming.com.au" and "juptech.com".
4.4 Pursuant to Respondent's service agreement with Registrar, Respondent is bound to abide by Registrar's current dispute resolution policy. That policy is currently the Policy.
4.5 Complainant asserts, and supports by evidence, that it is a substantial public listed company with hotel, casino and other entertaining and gaming interests in Australia and that it is well known in Australia and elsewhere by reference to its name and trade mark "Jupiters" and as "Jupiters Casino". It has been operating in Queensland since 1985 and has assets in excess of A$800,000,000.
4.6 Complainant's "Jupiters Casino" is located on the "Gold Coast" of Queensland, a well known tourist and entertainment locality which embraces Southport, which is Respondent's postal address, and Surfers Paradise, where Ledger & Nguyen Lawyers are located.
4.7 The domain names "jupiterscasino.com" and "jupiters-casino.com" were registered to Respondent on June 12, 1998 and January 25 1999 respectively.
4.7.1 On December 15, 1998 Complainant's solicitors wrote to Respondent demanding, inter alia, transfer of the "jupiterscasino" name to it and undertakings not to use the name Jupiters Casino in any way in the course of business or trade.
4.7.2 Respondent replied on December 22, 1998 through his solicitor Miss Nyugen denying any unlawful act in reserving the domain name and stating that Respondent "may be interested in assigning the reservation of the domain name "jupiterscasino.com" to your client for an appropriate consideration".
4.7.3 On March 29, 1999 Respondent filed US trade mark application No. 75/669854 for "Jupiters Casino" in international class 41 in respect of "entertainment services, namely, providing interactive games of skill on a global computer network".
4.7.4 Complainant's solicitors again wrote to Respondent's solicitors on October 12, 2000 repeating Complainant's previous demands and also demanding withdrawal of the US trade mark application. Complainants filed Notice of Opposition to that application on May 2, 2000.
4.8 Complainant asserts that by virtue of its substantial reputation in the name "Jupiters Casino" any use by Respondent of the domain names would inevitably lead to confusion with Complainant and its trade marks and that it is inconceivable that Respondent was unaware of that reputation. Complainant points out that Respondent's address is some three kilometres from Complainant's Jupiters Casino.
4.9 Complainant further asserts that it has not licensed or otherwise permitted Respondent to use any of its trade marks and that any such use would constitute trade mark infringement, passing off and breach of Australian consumer protective laws. It further asserts that Respondent's absence of active use of the domain name and the indication that he may be prepared to assign the "jupiterscasino" domain name for an appropriate consideration is evidence that the domain name was registered and is being used in bad faith.
4.10 Respondent has not replied to the Complainant and no Response has been filed.

5. Applicable Dispute
5.1 To succeed in their complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar Marks
5.2 Complainant asserts that the domain names are identical with or confusingly similar to the trade marks set out in paragraph 4.2.
5.2.1 The identifying parts of the domain names are respectively "jupiterscasino" and "jupiters-casino".
5.2.2 Complainant's trade marks comprise the word "Jupiters" and it is well known by the name "Jupiters Casino". The domain names are each formed by running together the words Jupiters and Casino.
5.2.3 The Panel finds that the domain names are each confusingly similar to the trade marks of Complainant.
Respondent's Rights or Legitimate Interests
5.3 Complainant asserts that Respondent has no right or legitimate interest in the domain name.
5.3.1 Respondents have not asserted any legitimate right or interest in the domain name and the file does not suggest that any such right or interest exists. Miss Nguyen's letter of December 22, 1998 contains no such assertion and in so far as such assertion may be implied by Respondent's US trade mark application any use by Respondent in accordance with that application would, in Australia at least, be unlawful in the light of Complainant's rights and reputation.
5.3.2  The Panel therefore concludes that Respondent has no rights or legitimate interests in the domain names.

6. Registration and Use in Bad Faith
6.1 Complainant asserts that Respondent has registered and used the domain names in bad faith.
6.1.1 Paragraph 4(b) of the Rules sets out, without limitation, four circumstances which, if present, will be evidence of, but not proof of, registration and use of a domain name in bad faith.
6.1.2 The record does not establish that the Respondent's conduct falls within any of the first three of these categories. There is no evidence indicating that Respondent registered either of the domain names with the intention of selling renting or otherwise transferring the domain names to Complainant. Respondent made no approach to Complainant for this purpose and the indication in Miss Nguyen's letter of December 22, 1998 that Respondent may be interested in assigning the domain name for an appropriate consideration falls short of establishing such intention.
6.1.3 Equally there is no evidence that Respondent registered the domain names in order to prevent Complainant from reflecting its mark in a corresponding domain name, let alone that he engaged in a pattern of such conduct.
6.1.4 There is also no evidence that Respondent registered the domain names primarily for the purpose of disrupting the business of Complainant.
6.1.5 The fourth circumstances enumerated in paragraph 4(b) is that by using the domain name Respondent has intentionally attempted to attract, for commercial gain, users to the web site by creating a likelihood of confusion. Unlike the proceeding three circumstances paragraph 4(b)(iv) seems to require active use of the domain name rather than encompassing mere passive use of the kind referred to in Case D2000-0003 - Telstra v. Nuclear Marshmellows cited by Complainant.
6.1.6 Thus, in the opinion of the Panel Respondent's conduct does not fall within any of the circumstances specifically enumerated in paragraph 4(b) of the Rules. But that is not the end of the matter. These circumstances do not constitute a code and there are many other circumstances which may evidence bad faith.
6.1.7 In the present case the fact that Complainant's name and trade mark is so well and widely known, coupled with the fact that Respondent's mailing address is in the same district as Complainant's business, makes it inevitable that Respondent registered the domain names in full knowledge of Complainant's rights and interests. Certainly there could be no doubt as to Respondent's knowledge at the time of registration of the second domain name. Respondent has offered no explanation as to why the domain names were chosen and no legitimate reason is apparent. The inference may be drawn therefore that in some way Respondent hoped to capitalise on the reputation of Complainant. That conclusion is reinforced by Respondent's subsequent trade mark application in the United States for Complainant's name and trade mark in respect of services of the same description as those for which Complainant and its trade mark are well known.
6.1.8 The Panel therefore finds that each of the domain names was registered in bad faith.
6.1.9 There remains the question of whether the domain names are being used in bad faith. There is no active use of the domain names in the sense that they resolve to an active web site. Nevertheless the circumstances of the registration of the domain names and Respondent's US trade mark application are indicative of his intention to hold the trade mark and the domain names for some future active use in a way which would be competitive with or otherwise detrimental to Complainant.
6.1.10 There are several cases, of which Telstra supra is an example, where so called "passive holding" of a domain name has been held to constitute use within the meaning of paragraph 4(a)(iii) of the Policy. That such passive holding may fall within paragraph 4(a)(iii) finds support from the fact that the circumstances enumerated in sub-paragraphs (i), (ii) and (iii) of paragraph 4(b) do not appear to require active use. Indeed, most cases falling within sub-paragraph (i) would be cases in which no such active use takes place.
6.1.11 The Panel is therefore of the opinion that each of the domain names is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision
The Panel therefore concludes and decides that:
(i) the domain names of Respondents are each confusingly similar to trade marks in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the domain names;
(iii) the domain names have been registered and are being used in bad faith;
(iv) the domain names should each be transferred to Complainant.