Seminole Tribe of Florida Loses UDRP On SeminoleCasino.com & SeminoleGaming.com
The Seminole Tribe of Florida which operates in conjunction with Hard Rock, the Hard Rock Seminole Casino’s in Hollywood Florida and in Tampa, Florida just lost a UDRP on three domain names, seminolecasino.com, seminolegaming.com and casinoseminole.com.
The domain holder is M.M.Commerce of Florida which seems to be the original registrants of the domain going back to 2004.
The domain names in question go to a blank page; they do resolve but nothing comes up.
Screenshots.com is not showing any history for any of the domains.
Here are the relevant facts and findings by the three member panel
“The Complainant states that it has operated gambling casinos in the State of Florida since 1979. ”
“The record indicates, however, that this activity was briefly commenced at that time and then suspended for a protracted period due to legal, regulatory, and legislative proceedings. It appears that trading in this market recommenced at some time in the mid-1990s, although the record does not establish when this was first done using a SEMINOLE CASINO brand. Indeed, materials submitted by the Complainant suggest that the business was initially referred to as ”Seminole Indian Bingo & Poker Casino”.”
“The Complainant owns United States Trademark Registration No. 3501804 for a design mark featuring the words “Seminole Casino” (the “SEMINOLE CASINO Mark”). This mark, which disclaims rights to the word “casino” apart from the specific design mark, was registered on September 16, 2008.”
“In correspondence with the Respondent, the Complainant referred to its SEMINOLE CASINO and SEMINOLE GAMING “names”, but the latter is not claimed or supported as a mark in the Complainant’s filings in this proceeding. The Complainant expressly asserts common law trademark rights in SEMINOLE CASINO, which it claims to have used since 1980.”
“The Complainant, either directly or through licensees, controls several domain names incorporating the words “Seminole casino”, which are used in connection with websites advertising the Complainant’s casinos. These include “www.theseminolecasino.com”, “www.theseminolecasinobrighton.com”’, “www.theseminolecasinococonutcreek.com”, “www.theseminolecasinohollywood.com”, “www.theseminolecasinoimmokalee.com”, “www.theseminolecasinos.com” and “www.seminolecasinobrighton.com”.”
“The Domain Name <seminolegaming.com> was first registered on October 2, 1997.
The Domain Names <casinoseminole.com> and <seminolecasino.com> were registered on July 30, 1998.
“It is undisputed that the Domain Names have been “parked” and used in connection with pay-per-click (PPC) advertising landing pages. The Domain Names do not currently resolve to active websites of any kind.”
“All of the Domain Names are currently registered in the name of the Respondent, which is, according to the business entity database operated by the Florida Department of State, an inactive business corporation initially registered in Florida in January 2002.”
“After receiving notice of the Complaint in this proceeding, a Mr. Tanney responded to the Center and identified himself and two others as persons with an interest in the Domain Names, saying, “[w]e registered these domains in October 1997 and July 1998.”
“The Respondent claims that its parent World Net Companies entered into a joint venture agreement with the Complainant some two months after commencing negotiations in April 1997, to develop gaming software and establish an online casino. No written agreement was submitted with the Response in this proceeding, but the account of the joint venture in the Response is supported by affidavits from Mr. Benami, former network engineer for World Net Companies, Mr. Nolter, former managing director of World Net Companies, Ms. Gambrill, former president of World Net Companies, and Ms. Castro, a former administrative assistant to Mr. Nolter with “WorldNetGaming” in Costa Rica. ”
“According to the Response, the parties agreed that the Respondent would establish offices in Costa Rica and register the Domain Names for use in the online gambling joint venture, but a representative of the Complainant visited the Respondent’s office in Florida in May 1998, and informed the Respondent that the agreement was terminated.”
“The Respondent refers to the equitable doctrine of laches in arguing that the Complainant’s claims are undermined by its failure to raise them for more than a decade. The parties in the current proceeding are both located in the United States, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims.”
“However, in the United States, the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace. ”
“The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. ”
“The Panel in this proceeding similarly declines to dismiss the Complaint on the ground of laches but observes that the Complainant’s burden to establish bad faith is made more difficult, as an evidentiary matter, by the passage of time since the events surrounding the registration of the Domain Names.”
“Here, the Complainant relies on the fact that there is no evidence that the Respondent used the Domain Name for anything but a PPC landing page, advertising a range of commercial products and services, without evidence that the Respondent or its products were known by any corresponding names. ”
“The Complainant also shows that the Respondent and its “parent” company were not recognized as state-registered companies or federally-recognized employers at the time the Domain Names were registered. This effectively shifts the burden to the Respondent to demonstrate rights or legitimate interests in the Domain Names.”
“The Respondent has attempted to meet this burden by presenting affidavits of a proposed business joint venture in 1997. These are not supported by any written agreement with the Complainant or an explanation of the principals and legal entities involved, since it does not appear from public records that either the Complainant or its “parent” company legally existed at the time. ”
“On the present record, then, the Panel does not find that the Respondent has presented sufficient evidence of rights or legitimate interests in the Domain Names to rebut the Complainant’s prima facie case to the contrary. The Panel concludes that the second element of the Complaint has been established.”
“The Complainant argues that CASINO SEMINOLE was a well-known mark that the Respondent, which admittedly was aware of the Complainant’s business, sought to exploit. The Complainant also suggests that the Respondent’s activities were part of a scheme to defraud the Complainant, “which luckily did not come to fruition.”
“The latter assertion is simply not supported by any evidence in this proceeding. ”
“The fact that a court found that the Respondent committed fraud several years later in another matter, or that the Respondent registered other domain names in bad faith, does not establish that the registration of the Domain Names in this instance was part of a fraud scheme.”
“The Complainant does not describe the supposed fraud scheme, and the only affidavits submitted in this proceeding indicate that the Respondent expended substantial sums to establish the proposed joint venture. Indeed, the record suggests that there are unresolved business disputes between the parties that lie outside the scope of a UDRP proceeding – if they are not statutorily time-barred.”
“In any event, the principal weakness of the Complainant’s case is that it had no registered trademark at the time the Domain Names were registered and, even with the additional material submitted with the Complainant’s supplemental filing, there is very little evidence in the record that the Complainant had protectable common law rights in SEMINOLE CASINO as a word mark in 1997 or 1998. ”
“None of the dated, pre-1998, materials submitted by the Complainant display the name SEMINOLE CASINO or the design mark that was registered in 2008.”
“In sum, despite the Complainant’s assertions that SEMINOLE CASINO was a “famous” brand by 1997, the Panel finds that the record in these proceedings does not establish that SEMINOLE CASINO was a distinctive identifier in the marketplace at that time, or that the Complainant was engaged in plans or activities to make it one, much less that the Respondent was aware of those plans. In these circumstances, the Panel cannot conclude that the Complainant has met its burden of establishing the probability that the Respondent registered and used the Domain Names in contemplation of a SEMINOLE CASINO trademark associated with the Complainant.”