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Genting Berhad v. Genting Casino, Inc.

WIPO Case No. D2001-1192

Outcome
Transfer
Domain names
genting-online-casino.com
Complainant
Genting Berhad
Respondent
Genting Casino, Inc.
Panelist
Li Yong
Decided
03 Dec 2001
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-1192.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Genting Berhad v. Genting Casino, Inc.

Case No. D2001-1192

1. The Parties

The Complainant in this

administrative proceeding is Genting Berhad, a company limited by shares incorporated

in Malaysia on July 30, 1968 with a registered address at 24 Floor, Wisma Genting,

Jalan Sultan Ismail, Kuala Lumpur, Malaysia.

The Respondent in this

administrative proceeding is Genting Casino, Inc. of 168 Lucky Street, Singapore.

2. The Domain Name and

Registrar

The domain name at issue

is <genting-online-casino.com>. The registrar with which the domain name

is registered is Namesecure, PO Box 27096, Concord, CA, USA.

3. Procedural History

The Center received the Complaint of the Complainant on October 2 and 3, 2001,

by email and in hard copy respectively.

On October 2, 2001, the

Center sent to the Complainant the acknowledgement of receipt of the Complaint.

The Center sent to the

Registrar a request for verification of registration on October 3, 2001.

On October 4, 2001, the Registrar confirmed that the domain name in dispute

is registered with Namesecure and the Respondent is the current registrant of

the domain name.

On October 8, 2001, the

Center completed the formal Requirements Compliance Checklist.

On October 8, 2001, the

Center sent to the Respondent the Notification of Complaint and Commencement

of the Administrative Proceeding. The notification was sent by the methods required

under paragraph 2(a) of the Rules. The formal date of the commencement of this

administrative proceeding is October 8, 2001. The Notification sent by email

and FedEx were returned with reasons described as "addresses had permanent

fatal errors" and "wrong address" respectively.

On October 29, 2001, the

Center sent to the Respondent the Notification of Respondent Default.

On November 15, 2001, after

receiving a completed and signed Statement of Acceptance and Declaration of

Impartiality and Independence, the Center notified the parties of the appointment

of a single-member panel consisting of Mr. Li Yong and the projected decision

date. The decision date shall be November 29, 2001.

4. Factual Background

The Complainant and the

Complainant’s wholly owned subsidiary have made several trademark applications

and have procured registrations for the word genting in Malaysia, Singapore,

Brunei, Hong Kong and Australia.

5. Parties’ Contentions

The Complainant’s contentions

are as follows:

1) The Complaint is

based on "the organization and all activities related thereto; the trade

mark and all rights residing therein; the goodwill and reputation as a result

thereof". The Genting Group’s history began 35 years ago, when its Founder

developed a cool hilltop hotel surrounded by primeval forest and mountainous

terrain. That hilltop has since grown to become Genting Highlands Resort, the

"City of Entertainment" and one of the most popular tourist destination

in Malaysia. The Complainant was the primary vehicle that was used to spur the

growth of the Genting Group into what it has become today. From its initial

leisure and hospitality activities, the Complainant has since expanded and diversified

into other activities including plantations, properties, paper and packaging,

power generation, oil and gas, e-commerce and the development of information

technology. As at December 31, 2000, the Genting Group had a total of approximately

15,000 employees. In the year 2000, the Complainant was voted the No.1 leading

company in Malaysia for the seventh consecutive year, in the Far Eastern Economic

Review’s "Review 200 – Asia’s Leading Companies". It was also recognized

as the top Malaysian company in Asian Business’ "Asia’s Most Admired Companies

2000".

2) The Getting Highlands

Resort which is owned by an invested company of the Complainant holds "Casino

de Genting", the only licensed casino in Malaysia, which offers exciting

international games and entertainment. "Casino de Genting" is the

only licensed casino in Malaysia. It first commenced operations on May 8 , 1971

with the view to help accelerate the development of this remote area. Indeed,

the casino operations can be said to have formed a substantial part of the Genting

Group’s rapid development. To this very day, casino operations in Malaysia are

closely associated with and distinctive of the Complainant and likewise the

name ‘genting’, is to a certain extent, synonymous to some members of the public

with inter alia casino operations. When the name ‘genting’ and ‘casino’

are combined, it becomes exceptionally distinctive of the Complainant and no

other.

3) The Complainant’s

Trademark appears on or in all or most of its advertisements, promotional materials,

buildings, sponsored premises, websites, sponsored events, properties, offices,

signages, billboards, pamphlets, packaging material, gaming chips and stationery,

among others. The Complainant’s Trademark is used in a manner so as to maximize

exposure of the same to the public at large. Considerable amounts of monies

have been expended to promote and to create the appropriate awareness in the

Complainant’s Trademark both locally and internationally. For example, for the

period 1998 to 2001, approximately RM49.2million (equivalent to approximately

USD$13million) was incurred as marketing expenses for the Genting Highlands

Resort.

4) The domain name <genting-online-casino.com>,

registered in the name of the Respondent, uses the distinctive word ‘genting’

and is identical or confusingly similar to the Complainant’s Trademark in which

the Complainant has rights. The domain name uses the Complainant’s distinctive

name ‘genting’ and combines it with the descriptive words ‘online’ and ‘casino’.

The Respondent’s domain name is identical and/or confusingly similar to the

distinctive name of the casino owned by the Complainant, namely "Casino

de Genting". It is a straightforward case of colorable imitation. It uses

the Complainant’s Trademark and matches it with the words ‘online’ and ‘casino’

thus misrepresenting casino and gambling operations in an online environment

carried out by an entity which owns the trademark or service mark ‘genting’.

The name ‘genting’ when used with the word ‘casino’ refers to the Complainant

and no other. The use of the domain name <genting-online-casino.com> therefore

makes direct reference to the Complainant as operating casino or gambling activities

in an online environment.

5) The Respondent has

no rights or legitimate interests in the domain name at issue. The Complainant

does not know of any other casino or gambling operator in other parts of the

world which uses the name or word ‘genting’, whether as part of its trade mark,

service mark, trade name or otherwise. The name is unique to casino and gambling

operations and services and is distinctive of the Complainant as a whole. The

Respondent’s name bears the word ‘genting’, appropriate searches with the Singapore

Registry of Companies and Businesses and the Singapore Trade Development Board

reveal that no such business entity or representative office as reflected by

the Respondent’s recorded name exists.

6) The domain name at

issue was registered and used in bad faith. The Respondent completely neglected

and failed and refused to reply to the Complainant’s letter of demand dated

April 4, 2001. As a result thereof the Complainant’s demands and allegations

were left unrebutted by the Respondent. To the best of the Complainant’s knowledge,

the domain name was registered by a fictitious entity supposedly based in Singapore

which does not trade or carry on any other business, apart from its online

casino or gambling operations, using the name ‘genting’ whether in Singapore

or elsewhere. Prior to receipt of the letter of demand, there was no website

located at <genting-online-casino.com>. The user was instead re-directed

to unlawful webpages located at <genting.com/mystic>. A perusal of the

webpages located at <genting.com/mystic> indicated that the Respondent

represented itself as an affiliate member of the "Casino Affiliate Network".

Presumably therefore, it was and is knowledgeable of the casino or gambling

trade. In this regard, the Complainant avers that the Respondent had or should

have had the requisite knowledge of the Genting Group’s and/or the Complainant’s

internationally renowned "Casino de Genting" when it registered and

used the domain name.

7) The acts and conduct

of the Respondent are calculated to deceive and mislead or are likely to deceive

and mislead the trade and public into an erroneous belief that the domain name

<genting-online-casino.com> registered by the Respondent is that of the

Complainant or is otherwise howsoever associated, affiliated or connected with

the Complainant. The actions and conduct of the Respondent have deprived the

Complainant of the right and opportunity to have a domain name comprising its

own name that is international in character. This amounts to a loss of competitive

advantage and loss of identity in the information superhighway. The actions

and conduct of the Respondent leaves with it an instrument of deception that

may be used to perpetrate a wrong at law. If the Respondent is allowed to continue

to activate, use or deal with the domain name <genting-online-casino.com>,

this would result in a false association of the domain name <genting-online-casino.com>

with the Complainant. Further and in any event the actions and conduct of the

Respondent will cause a dilution of the Complainant’s Trademark and hence lead

to a devaluation of the goodwill and reputation residing therein.

The Respondent has not

submitted its contentions.

6. Discussion and Findings

In accordance with the

Policy, the Complainant asking for transfer of the domain name must prove the

following three elements: 1) Respondent's domain name is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

2) Respondent has no rights or legitimate interests in the domain name; and

3) Respondent has registered the domain name and is using it in bad faith. (ICANN

Policy, 4 (a)).

Identical or Confusingly

Similar

The Complainant owns trademark

rights for the word ‘genting’ in several countries including Singapore, the

country the Respondent resides in. The word ‘genting’ is directly incorporated

into the domain name at issue. Apart from using the word ‘genting’, the domain

name at issue also combines two descriptive words ‘online’ and ‘casino’. The

Panel finds that the domain name at issue is confusingly similar to the trademark

owned by the Complainant based on the following reasons: 1) When the word ‘online’

is used together with a mark or a term representing an activity to form a domain

name, the most likely implication is that the domain name merely demonstrates

the mark or the activity in internet environment. 2) The Complainant has established

that the Complainant is a famous company with long history and numerous business

sectors and it has gained due recognition in some countries especially in Malaysia.

As casino operations have formed a substantial part of the Complainant’s development

and are closely associated with the Complainant, when ‘genting’ and ‘casino’

are combined, it is very likely to refer to the Complainant from perspective

of the public, especially in Malaysia and its neighbor country Singapore. Therefore,

the Panel holds that the first element of ICANN Policy, 4 (a) is met.

Respondent’s Rights or

Legitimate Interests in the Domain Name

The Respondent has not

provided evidence of circumstances of the type specified in the ICANN Policy,

4(c). Furthermore, the Respondent has not provided evidence of any other circumstances

giving rise to a right or legitimate interest in the disputed domain name. As

such, the Panel believes that the Respondent has no rights or legitimate interests

with respect to the disputed domain name.

Domain Name Registered

and Used in Bad Faith

Paragraph 4(b) of the ICANN

Policy specifies four types of circumstances that could be evidence of the registration

and use of a domain name in bad faith. According to the ICANN Policy, circumstances

of bad faith are not limited to the listed ones.

The Panel finds that the

domain name has been registered and used in bad faith based upon the following

reasons: 1) The Complainant has established that the Complainant is a famous

company with long history and numerous business sectors and it has gained due

recognition in some countries especially in Malaysia. It can be reasonably inferred

that the Respondent knew the Complainant and its trademark at the time when

the disputed domain name was registered. In addition, the Respondent represented

itself as an affiliate member of the "Casino Affiliate Network". Presumably

therefore, it was knowledgeable of the casino or gambling trade. Therefore,

the Respondent had or should have had the knowledge of the Complainant’s renowned

"Casino de Genting" when it registered and used the domain name. 2)

The Complainant’s searches with the Singapore Registry of Companies and Businesses

and the Singapore Trade Development Board reveal that no business entity or

representative office as reflected by the Respondent’s recorded name exists.

Providing fictitious entity information to the registrar demonstrates bad faith.

3) The Respondent completely neglected and failed and refused to reply to the

Complainant’s letter of demand dated April 4, 2001. Also, the Respondent has

failed to respond to the Complainant in this proceeding, which makes specific

allegations. These support the contention that bad faith exists.

For the reasons above,

the Panel finds that the registration and use of the domain name at issue is

in bad faith.

7. Decision

The Panel concludes (a)

that the domain name <genting-online-casino.com> is confusingly similar

to the trademark owned by the Complainant, (b) that the Respondent has no rights

or legitimate interest in the domain name and (c) that the domain name at issue

has been registered and used in bad faith. Therefore, pursuant to paragraphs

4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name

<genting-online-casino.com> be transferred to the Complainant.

Li Yong

Sole Panelist

Dated: November

29, 2001

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