English Harbour Entertainment Limited v. RaveClub Berlin

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

English Harbour Entertainment Limited v. RaveClub Berlin

Case No. D2002-0287

1. The Parties

The Complainant is English Harbour Entertainment Limited, 11 Old Parham Road,

St. John’s, Antigua.

Represented by Fasken Martineau DuMoulin LLP, Toronto Dominion Bank Tower,

Suite 4200, PO Box 20, Toronto-Dominion Centre, Toronto, Ontario, M5K 1N6

Canada.

The Respondent is RaveClub Berlin, 600 Haddonfield Road, Cherry Hill,

New Jersey, 08034, United States of America.

2. The Domain Name and Registrar

The Domain Name is <englisharbor.com>.

The Registrar is Computer Service Lagenbach GmbH d.b.a. Joker.com ("CSL").

3. Procedural History

The Complaint was received by WIPO Arbitration and Mediation Center ("the

Center") on March 26, 2002. The Center has verified that

the Complaint satisfies the formal requirements of the Policy, the Rules

and the Supplemental Rules and that payment was properly made. The Administrative

Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph

2(a). CSL has confirmed that the domain name <englisharbor.com> ("the

Domain Name") was registered through CSL and that RaveClub Berlin ("the

Respondent") is the current registrant. The Registrar has further confirmed

that the Policy is applicable to the Domain Name.

On April 5, 2002, the Center notified the Respondent of the Complaint in

the usual manner and informed the Respondent inter alia that the last day

for sending its Response to the Complainant and to the Center was April 25, 2002.

No Response was received and on April 26, 2002, the Center issued

a Notification of Respondent Default.

The Panel was properly constituted. The undersigned Panelist submitted

a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by the Center, as a consequence of

which the date scheduled for the issuance of the Panel’s Decision is May 20, 2002.

4. Factual Background

The Complainant is a company, which was incorporated in Antigua in December 2000.

It provides online gambling and casino services to the public under the

name English Harbour via the internet at www.englishharbour.com. It claims

to have been using the name English Harbour since January 1998. The

Complaint does not explain how the Complainant was using the name for nearly

three years prior to its incorporation, but the Panel assumes that the Complainant

was incorporated to carry on the business of an unincorporated entity trading

under that name. Currently the Complainant is using the domain name ‘englishharbour.com’,

which was first registered on September 22, 1999 and which is

now registered in the name of the Complainant.

The Respondent, RaveClub Berlin, is a business with an address in Cherry

Hill, New Jersey. It registered the Domain Name on July 6, 2001.

The Domain Name is currently connected to a website at www.amaturevideos.nl.

This website contains pornographic pictures and advertises pornographic

services. On the date that the Panel visited the site (May 13, 2001)

on seeking to exit the site, the Panel was faced with a window advertising

online casino services at www.888.com under the name Casino On Net.

On October 18, 2001, in an action between Federal Trade Commission and

John Zuccarini (trading under a variety of business names including

the name RaveClub Berlin) the United States District Court for the Eastern

District of Pennsylvania issued a wide-ranging preliminary injunction. Under

the heading of ‘prohibited business activities’ paragraph 1 reads:

"It is therefore ordered that, in connection with the advertising,

promotion, offering for sale, sale or provision of any goods or services

on the internet, the world wide web, and/or any web page or website the

Defendant is hereby preliminarily restrained and enjoined from both: (i)

the combined practice of redirecting and obstructing consumers on the

internet or world wide web and (ii) obstructing consumers on the internet

or world wide web."

Paragraph 4 reads:-

"It is further ordered that the Defendant and/or any agent, employee

or associate of Defendant, or any host or hosting company of the Defendant

shall:

AImmediately take whatever steps may be necessary to ensure that

the following web pages or websites operated, in whole or in part,

by the Defendant cannot be accessed by the public: … (4) www.amatuervideos.com.

On March 14, 2002, the Complainant’s attorney sent a cease and desist letter

to the Respondent, but has received no reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to

a trade mark or service mark in which it has rights. Insofar as similarity

is concerned it points to the fact that in substance the Domain Name only

differs from the Complainant’s name and domain name in that it omits an

‘h’ and the ‘u’.

As to its trade mark rights, the Complainant claims no registered trade

mark rights, but seeks to rely upon its unregistered rights i.e. its common

law rights derived from what it claims to be the significant degree of consumer

recognition that its name has achieved. It claims that it receives significant

website traffic using its domain name, englishharbour.com and that its name

and website is well-known. It claims that its name is a symbol of the goodwill

and excellent reputation, which the Complainant enjoys for its on-line gambling

and casino services.

The Complainant claims that the similarity between the Domain Name and

the Complainant’s common law trade mark, English Harbour, is such that confusion

is likely. It points to the fact that the two names are phonetically similar

and claims that the differences are trivial. The meaning of each is the

same.

The Complainant contends that the Respondent has no rights or legitimate

interests in respect of the Domain Name. The Complainant has not licensed

the Respondent to use its name. The company name of the Respondent is RaveClub

Berlin. It has no apparent connection with the name English Harbor/Harbour.

The Domain Name is connected to a website at www.amaturevideos.nl which

contains pornographic material and nothing to do with English Harbor/Harbour.

So far as the Complainant is aware the Domain Name is not the name of any

legitimate business of the Respondent. In the view of the Respondent the

connecting of the Domain Name to the pornographic website cannot in all

the circumstances of the case be regarded as a genuine business use of the

Domain Name.

The Complainant contends that the Domain Name was registered in bad faith

and is being used in bad faith. The Complainant claims registration of the

Domain Name to have been a deliberate act on the part of the Respondent

to register a mis-spelling of the Complainant’s well-known domain name and

mark, the objective being to divert to itself traffic intended for the Complainant

and with a view to attracting customers for its services.

The Complainant also claims that the Respondent registered the Domain Name

and connected it to a pornographic site with a view to extorting from the

Complainant a sum of money in excess of the Respondent’s out-of-pocket expenses

relating directly to registration of the Domain Name.

The Complainant also points to the fact that the Respondent’s name is a

business name of John Zuccarini, a notorious ‘cyberscammer’. The Complainant

claims that in doing what the Respondent is doing the Respondent is in breach

of an order of the US District Court for the Eastern District of Pennsylvania

(extracts quoted above) and is therefore in contempt of that court.

B. Respondent

The Respondent has not responded

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical to a trade mark or service mark

in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect

of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is

being used in bad faith.

Where a Respondent who has been properly notified of the Complaint fails

to respond, the Panel is entitled to draw such inferences as it considers

appropriate (Rule 14(b)).

Identical or confusingly similar

There is no question but that the Domain Name is very similar, indeed confusingly

similar, to the Complainant’s name and domain name. The Domain Name is in

substance identical phonetically to the Complainant’s name and domain name.

The absence of one of the ‘h’s is insignificant and ‘harbor’ is the American

equivalent of ‘harbour’. While the Complainant is in the business of online

gambling and the Respondent is in the business of online pornography, as

is recorded above, the Panel having visited the Respondent’s website was

faced with a window advertising online casino services under the name Casino

On Net.

The question is: does the Complainant have common law rights in its name?

While the Complainant makes substantial claims as to the reputation and

goodwill associated with its name, it produces no evidence to support those

claims beyond exhibiting print-ups from its website. It provides no details

of the extent of its trade under and by reference to the name, not even

the numbers of visitors to its website.

Despite the weakness of the evidence, the fact is that the Respondent has

not disputed any of it. Moreover the exhibited pages from the website seem

to demonstrate a substantial business. The Panel is prepared to accept that

on the balance of probabilities the Complainant’s claims in this regard

are accurate.

Accordingly, the Panel finds that the Domain Name is confusingly similar

to a trade mark or service mark in which the Complainant has rights.

Respondent’s Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances,

any one of which if found by the Panel to have been proved shall demonstrate

the Respondent’s rights or legitimate interests in respect of the Domain

Name.

However, the need for the Respondent to demonstrate anything only arises

once the Complainant has shown a prima facie case, the burden of proof under

paragraph 4(a) being on the Complainant.

The Complainant’s case is that the Respondent is not licensed to use its

trade mark, is not known by the Domain Name, has not been conducting any

genuine business under and by reference to the Domain Name and is not making

a non-commercial or fair use of the Domain Name. The Complainant asks the

Panel to infer from the track record of Mr John Zuccarini, who has a business

name, which is the same as the name of the Respondent, that this is just

another example of the cybersquatting activity of that individual.

In the view of the Panel the Complainant has made out a prima facie case.

The Respondent’s name has no obvious association with the Domain Name and

the use that the Respondent has made of the Domain Name has no obvious connection

with the name the Respondent has selected for the Domain Name. Moreover,

given the very close similarity between the web address to which the Domain

Name is connected (www.amaturevideos.nl) and the web address the subject

of the preliminary injunction quoted above www.amatuervideos.com , the Panel

is of the view that the Respondent is in all probability an alter ego of

Mr Zuccarini.

In other words the Respondent has a case to answer. The Respondent has

not answered and the Panel can think of no reason why the Respondent might

reasonably be said to have rights or legitimate interest in respect of the

Domain Name.

The Panel finds on the balance of probabilities that the Respondent has

no rights or legitimate interest in respect of the Domain Name.

Bad Faith

The Complainant asserts that the Domain Name was registered in bad faith

and is being used in bad faith. The Complainant claims that the Respondent

registered the Domain Name with a view to extorting money from the Complainant

in return for transfer of the Domain Name. The allegation is that the sum

of money involved would be in excess of the Respondent’s out-of-pocket expenses

relating directly to the registration of the Domain Name and that this,

therefore, constitutes bad faith registration and use within the meaning

of paragraph 4(b)(i) of the Policy. The Complainant also claims that the

Respondent registered the Domain Name deliberately with a view to diverting

customers from the Complainant’s website to its own website for commercial

gain, which constitutes bad faith registration and use within the meaning

of paragraph 4(b)(iv) of the Policy.

The Panel notes that the Respondent has made no attempt to approach the

Complainant with a view to selling the Domain Name to the Complainant and

that the Respondent did not respond to the Complainant’s Attorney’s cease

and desist letter. The Panel doubts therefore that the Respondent has any

immediate intention of offering to sell the Domain Name to the Respondent.

Whether or not that is the Respondent’s long-term objective, it is not possible

to say.

However, it is clear that would-be visitors to the Complainant’s website

who spell the name in the American fashion and omit the second "h"

will be faced with the advertisements referred to above, including the Casino

On Net online gambling advertisement. The Panel is of the view that that

is likely to have been the Respondent’s intention when the Respondent registered

the Domain Name.

The Panel finds that by its use of the Domain Name the Respondent has intentionally

attempted to attract for commercial gain internet users to its website by

creating a likelihood of confusion with the Complainant’s mark as to the

source of the Respondent’s website or location of a product or service on

the Respondent’s website.

Accordingly, the Panel finds that the Domain Name has been registered and

is being used in bad faith within the meaning of paragraphs 4(a)(iii) and

4(b)(iv) of the Policy.

7. Decision

In light of the foregoing findings, namely that the Domain Name is identical

or confusingly similar to a trademark in which the Complainant has rights,

that the Respondent has no rights or legitimate interests in respect of

the Domain Name and that the Domain Name was registered and is being used

in bad faith, the Panel directs that the Domain Name, <englisharbor.com>,

be transferred to the Complainant.

Tony Willoughby

Single Panelist

Dated: May 13, 2002