UDRP Thinks 32x.com Is “Identical or Confusingly Similar” to TM For 32Red & Gives Away The Domain
Well another day another horrible decision
I have no idea of how 32x.com is “Identical or Confusingly Similar” to a trademark for 32Red but that is what the panel found. The panel also disregarded the fact that the complaints waited some six years before bringing the complaint.
John Berryhill represented the domain holder.
The complaint was brought by two Complainants.
The first complainant was 32Red Plc of Gibraltar, Overseas Territory of the United Kingdom and the Second Complainant is Trafalgar Media Limited of Gibraltar (together ‘the Complainant).
The Respondent was Baysound LLC of San Pablo, California
Here are the relevant facts and findings:
The Complainant carries on business as a provider of online gambling services and has done so since 2002 under the trade mark 32RED.
The Second Complainant is a wholly owned subsidiary of the First Complainant.
The Complainant advertises and promotes its “32 Red” brand extensively.
The Complainant contends that it is commonly known by its customers and the industry as “32”.
The Complainant owns the following registered trade marks:
32RED (word) under European Community trade mark number 2814424, registered on August 16, 2002;
32RED (figurative) under European Community trade mark number 2907426, registered on October 18, 2002;
32 (word) under United Kingdom trade mark number 2509861, registered on June 5, 2009
32 (word) under European Community trade mark number and 8398695, filed on July 1, 2009 and registered on January 21, 2010.
The Complainant has operated its main website at “www.32red.com” since 2002.
The Domain Name was first registered on June 4, 1996 by the company 32X Corporation in relation to web development services.
The Domain Name was acquired by Fred Hill on or about July 16, 2006. It was then transferred to the Respondent on or about August 1, 2006. Mr. Hill appears to own and manage the Respondent.
In 2006, the website connected to the Domain Name (‘the Website’) was an online gaming site branded “The Online Casino”. As of October 2007, the Website included links to the Complainant’s competitors such as 888.com and Party Poker.
“The Panel is satisfied that the Complainant has clearly established registered rights in the trade marks 32RED and 32.”
“The Panel is also satisfied that it has established unregistered rights in the trade mark 32 RED, however, the evidence submitted to establish unregistered rights in the mark 32, i.e. that it was commonly known by customers and the industry as “32” was rather thin.”
“The trade marks are not identical to the Domain Name. ”
“The question is whether the mark is confusingly similar to the Domain Name. ”
“The threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy the test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusingly similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trade mark with the alphanumeric string in the domain name. Whilst each case must be judged on its own merits, circumstances in which a trade mark may not be recognizable as such within a domain name may include where the relied upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name.”
“The WIPO Overview 2.0 also makes it clear that the applicable top-level suffix in the Domain Name, in this case “.com”, is generally to be disregarded under the confusingly similarity test. The content of the website should also be disregarded in the threshold assessment of risk of confusingly similarity under the first element of the UDRP.”
“The Panel considers that the addition of the letter “x” does not negate the confusing similarity encouraged by the Respondent’s complete appropriation of the 32 trademark in the Domain Name.” (although the only trademark the panel said it considered valid was 32Red above)
“”Applying the test under the UDRP, the Panel has to consider the likelihood of Internet user confusion when comparing 32 and 32RED with <32x.com> or 32 with “32x” and 32RED with “32x” as the .com suffix may be disregarded in the case.”
“The common elements in the two marks are “32”. “32” is the first and dominant feature of both the Complainant’s trade marks as well as the Domain Name.”
“The additional elements “red” in one of the trade marks and “x” in the Domain Name are common descriptive words and therefore insufficient to prevent threshold Internet user confusion.”
“The Panel finds that the Domain Name is confusingly similar to both the 32 and 32RED trade marks in which the Complainant has rights.”
“”The Respondent’s case is that it has “expectation interests in the use of the Domain Name for a bona fide purpose” prior to the notice of the dispute. From what the Panel understands, the “32x” name being one associated with the Sega gaming console has particular significance in the computer technology field and hence the reason for the Respondent’s acquisition of the name to use it for casino gaming services. The Panel finds the argument difficult to follow. Had the “32x” name been acquired and used for computer gaming use, then perhaps the argument has some persuasive force. However, casino gaming and computer games services are very different services. Further in the area of casino gaming services, there is a major player that also uses the mark 32. It seems too much of a coincidence. Such use would not be considered a bona fide offering of goods or services since the services offered are competitive with someone who has rights to a trade mark which is confusingly similar to the Domain Name.”
“The Respondent alleges that the Complainant has delayed bringing a complaint for some six years since the registration and use of the Domain Name by the Respondent. ”
As stated in paragraph 4.2 of the WIPO Overview 2.0, prior UDRP Panels have recognized that that the doctrine of the defence of laches does not generally apply under the UDRP and delay in bringing a complaint does not of itself prevent a complainant from being able to succeed under the UDRP.”
“It is not clear why the Complainant did not file the Complaint earlier.”
“In this particular case, the Panel does not think that the fact that the Respondent has been using the Domain Name for six years gives the Respondent rights or legitimate interests in the Domain Name since the use of the Domain Name was not used in connection with a bona fide offering of goods or services”
“The question of rights or legitimate interests therefore turns upon the Panel’s assessment of whether or not there has been registration and use in bad faith.”
“The date to consider for assessing whether registration was in bad faith under this requirement is the date on which the Domain Name registration was acquired by the Respondent. Paragraph 3.7 of the WIPO Overview 2.0 makes it clear that the transfer of a domain name to a third party does generally amount to a new registration under the Policy.”
“…when a domain name is registered by the respondent before the complainant’s relied upon trade mark right is shown to have been first registered (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”
“The Panel is therefore limited to the consideration of the Complainant’s 32RED trade mark under this limb of the test as the trade mark registrations for the 32 trade mark post dates the Domain Name and the Complainant has not here established that it has unregistered trade mark rights in 32 prior to the registration of the Domain Name.”
“The Panel accepts the Complainant’s contention that the Domain Name was registered in bad faith.”
“The Complainant’s evidence at Exhibit 12 shows that from 2003 to 2008 the Complaint’s website had a high profile in the industry and a strong reputation based on numerous awards. Accordingly, it is unlikely that the Respondent, being involved in the online gaming industry and with casino gaming affiliates, was not aware of “www.32red.com” as an online gaming website in 2006 and that the choice of “ 32x”’ was merely coincidental. ”
“The Panel’s view is that the Respondent intentionally acquired the Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark as to the source of the Respondent’s website and the gaming services provided therein. That being the case, the Panel does not need to decide whether the registration of the Domain Name was in bad faith under any other grounds.”
“The Panel also concludes that the actual use of the Domain Name was in bad faith as the website has links to the competitors of the Complainant.”