WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DEQ Systems Corp. v. Repenko, Andrey

Case No. D2013-1466

1. The Parties

The Complainant is DEQ Systems Corp. of Quebec, Canada, represented by Howard and Howard Attorneys, PLLC, Nevada, United States of America.

The Respondent is Andrey Repenko, of Drums, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ezbaccarat.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2013. On August 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2013.

The Center appointed John Swinson as the sole panelist in this matter on September 25, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is DEQ Systems Corp. of Canada, a global provider of gaming technology in over 30 countries. The Complainant specializes in progression and random bonusing systems for casino table games. It also commercializes various casino game products, including the “EZ Baccarat” game and its related auxiliary products. The EZ Baccarat game is currently installed in over 400 casinos throughout the United States of America (“US”).

The Complainant is the owner of US Trade Mark No. 4188347 for EZ BACCARAT (word) (the “Trade Mark”). The Complainant also owns US Trade Mark No. 4006358 for EZ BACCARAT EZ (word and design). Both trade marks have a priority date of October 6, 2006.

The Respondent is Andrey Repenko, of the United States of America. The Respondent has not filed a Response and consequently little is known about the Respondent.

The Complainant submits that the Respondent acquired the Disputed Domain Name sometime between August 2012 and September 2012. The website at the Disputed Domain Name provides information about the game of Baccarat. It also advertises several online casinos (Go Casino and Lucky Red Online Casino) and provides (inactive) links titled “PLAY NOW”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Name is identical to the Trade Mark.

Rights or Legitimate Interests

The Complainant acquired the Disputed Domain Name and maintained it until August 12, 2012. On this date, the Complainant lost use of the Disputed Domain Name due to an administrative error. The Complainant attempted to retrieve the Disputed Domain Name, however, it discovered that the Respondent was operating a website at the Disputed Domain Name. The website at the Dispute Domain Name appears to be an online casino, where the Respondent offers its own “ezbaccarat” game.

The Respondent is using the Disputed Domain Name to trade off the goodwill of the Complainant in order to generate profit. The Respondent’s use of the Disputed Domain Name and the Trade Mark is likely to cause customer confusion as to the affiliation, connection or association of the Respondent with the Complainant.

Registered and Used in Bad Faith

The Respondent has intentionally attempted to attract, possibly for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Respondent operates other online casinos. The Complainant provided evidence that at least one of these online casinos has engaged in phishing (a phishing report was annexed to the Complaint). In light of this conduct, the Complainant is concerned that the Respondent will use the Disputed Domain Name for “similar nefarious purposes” which would cause harm to the Complainant and the goodwill it has earned in its Trade Mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural Matters

The Panel confirms that the Center has taken the steps required under the Policy and the Rules regarding notification. The Panel is satisfied that the Respondent has been given adequate notice of the Complaint and a reasonable opportunity to file a Response.

The Respondent has failed to file a Response. This does not automatically result in a decision in favor of the Complainant (see, e.g., Cynthia Ann Crawford v. Julian S. Garcia, WIPO Case No. D2012-2454). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to one of the Complainant’s trade marks.

The Disputed Domain Name is identical to the Trade Mark. The addition of generic top-level domains (the “.com” suffix) can be disregarded when comparing the similarities between a domain name and a trade mark (see, e.g., Banco Bradesco S/A v. Compevo, WIPO Case No. D2013-1059).

Accordingly, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case for the following reasons:

- there is no evidence that the Respondent is commonly known by the Disputed Domain Name;

- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark;

- the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. It appears that the Disputed Domain Name is used for a commercial website, where the Respondent advertises services (online casinos) that are similar to the Complainant’s gaming product (see, e.g., SIX Group AG v. mayangroup, WIPO Case No. D2013-0008); and

- the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent’s use of the Disputed Domain Name in connection with a website which, among other things, advertises online casinos, diverts Internet users looking for the Complainant’s gaming services by trading off the reputation associated with the Trade Mark.

The Respondent had the opportunity to demonstrate its rights or legitimate interests in respect of the Disputed Domain Name, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) of the Policy is particularly relevant here and provides that there is evidence of bad faith where a domain name is “used to intentionally attract, for commercial gain, internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location”.

The Complainant has a significant presence and reputation in the gaming industry, partly due to its provision of the popular EZ Baccarat game to numerous casinos. It appears that the Respondent is also involved in this industry (the Panel has verified that the Respondent is affiliated with the website at <casinomagic.biz>). The Panel finds that the Respondent, prior to its registration and use of the Disputed Domain Name, which wholly incorporates the Trade Mark, was likely aware that the Complainant was the owner of the Trade Mark.

As discussed above, the website at the Disputed Domain Name advertises online casinos that compete with the Complainant’s product. The Panel concludes that the Disputed Domain Name is being used to misleadingly divert Internet users to this website.

The Complainant submitted that the Respondent acquired the Disputed Domain Name when the Complainant “lost use” of the Disputed Domain Name due to an administrative error. While the Complainant has not provided specifics of this administrative error, the Panel notes that other UDRP panels have considered re-registration of a domain name by another shortly after it has accidently expired to amount to opportunistic bad faith (see, e.g., Bryant Tyson v. Fundacion Private Whois/ Domain IP Holding Corp., WIPO Case No. D2013-0529 and cases cited therein).

The Respondent had the opportunity to provide evidence of good faith use of the Disputed Domain Name but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any such evidence (see, e.g., Paris Hilton v. Turvill Consultants, WIPO Case No. D2012-0965 and cases cited therein).

In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith as defined in paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <ezbaccarat.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: October 7, 2013