WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playtech Software Limited v. Diego Torres, Play Technologies S.A.S
Case No. D2017-1154
1. The Parties
The Complainant is Playtech Software Limited of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Linklaters, London, United Kingdom.
The Respondent is Diego Torres, Play Technologies S.A.S of Cali, Colombia, represented by Sebastian Miranda Consultoria Juridica, Colombia.
2. The Domain Name and Registrar
The disputed domain name <playtechla.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 13, 2017, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 27, 2017.
The Center verified that the Complaint together with the amended Complaint (hereafter 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2017. On July 18, 2017, the Respondent asked for an automatic 4−day extension of the deadline to file the Response which was granted pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on July 19, 2017.
On July 25, 2017 the Complainant filed a document entitled “Complainant’s Observations on Respondent’s Response dated July 18, 2017”, which amounted to submissions in response to the Response. On August 2, 2017, the Respondent filed a similar document that commented on the Complainant’s Observations. The Panel has exercised its discretion to admit both Supplemental Filings.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 28, 2017. 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 a United Kingdom company that provides online gaming software, which it has done so since 1999. In 2016 the Complainant and its affiliates earned revenue of approximately EUR 708 million.
The Complainant has registered numerous trade marks that consist of the word “playtech” (the “PLAYTECH Mark”) and has traded under the PLAYTECH Mark for a number of years. In particular the Complainant has registered the PLAYTECH Mark as a trade mark in the European Union (Registration Number 005447669, applied for on November 8, 2006 and registered on November 26, 2007) and the United States of America (“United States”) (Registration Number 3625113, applied for on November 7, 2006 and registered on May 26, 2009). On May 16, 2017 the Complainant filed an international trade mark registration for the PLAYTECH Mark designating Colombia which is opposed by the Respondent. The Complainant also has registered in the United States and European Union a device mark that consists of the PLAYTECH Mark and a graphic element, similar to a play button (the “Complainant’s Logo”). An affiliate of the Complainant has owned the <playtech.com> domain name since March 2000.
The Domain Name <playtechla.com> was registered on July 25, 2008 and used for email addresses and for a website (the “Respondent’s Website”). The Respondent’s Website is the official website for the Respondent, Play Technologies S.A.S, of Cali, Colombia. The Respondent was found on June 1, 2004 and offers various IT products and services, including a portfolio of apps and software products specifically for the betting, car wash and credit industries, and various bespoke products it creates for its Colombian clients. It has approximately 25 employees and in 2016 had revenues of COP 925 million. The Respondent has used the PLAYTECH Mark since 2004 in Colombia, both as a word mark and in combination with a graphic element, similar to a play button (the “Respondent’s Logo”) which is similar but not identical to the Complainant’s Logo. The Respondent’s Website, features the PLAYTECH Mark and Respondent’s Logo and otherwise provides details of the Respondent, its history, employees and products and services it offers. It does not refer to the Complainant in any way.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s PLAYTECH Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the PLAYTECH Mark having registered the PLAYTECH Mark in the European Union and the United States, with application dates of November 8, 2006, and November 7, 2006 respectively. The Domain Name is identical or confusingly similar to the PLAYTECH Mark because it reproduces the PLAYTECH Mark and adds the additional element “la”, which simply means “the” in Spanish.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not known as “Playtech”, rather it is known as Play Technologies S.A.S and has sought to register the Domain Name in order to create an association with the Complainant. By reason of those facts the Respondent holds no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Complainant first became aware of the Respondent in April 2017 at an exhibition in Colombia where a representative of the Respondent asked an agent of the Complainant to help incorporate the Complainant’s works into the Respondent’s product offerings. The actions of the Respondent in registering an abbreviation of its company name, the use of the Respondent’s Logo and the registration of the Domain Name when other corresponding domain names consisting of “playtechnology” are available for purchase indicates that the Respondent registered and used the Domain Name to unfairly take advantage of the reputation and distinctive nature of the Complainant’s PLAYTECH Mark. This conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent was founded on June 1, 2004 in Colombia. Since that date it has offered its goods and services under the PLAYTECH Mark, “playtech” being a commercial name that synthesizes and abbreviates the name of the Respondent, being “Play Technologies”. Such a use is expressly permitted under Colombian law. Since 2004 Respondent has launched a number of its products including AuditPlay, Listo, and Octoplus, and developed products for various larger enterprises in Colombia. It presently has 25 employees and has grown strongly in the last three years. At all times it has used the PLAYTECH Mark to identify its commercial activities in Colombia. The Respondent also uses the PLAYTECH Mark and Respondent’s Logo on its Facebook, Twitter, Instagram and YouTube pages.
The Respondent registered the Domain Name on June 25, 2008 and since then has used it for its company website. The Respondent’s Website promotes the products and services of the Respondent. The Respondent does not attempt to identify with or create confusion with the Complainant. The Respondent has not sought to sell the Domain Name to the Complainant and seeks to continue to use the Domain Name as its official company website.
The Respondent’s use of the PLAYTECH Mark in Colombia is entirely legitimate and not in bad faith as the Complainant has no trade mark rights in Colombia. The Complainant’s application for the PLAYTECH Mark in Columbia has not yet been granted and is presently opposed by the Respondent. The Complainant has also provided no evidence of the international reputation of the PLAYTECH Mark, including reputation in Colombia.
The Complainant has made various accusations of fraud in the Complaint which are not justified given the Respondent’s entirely legitimate use. Moreover the fact that both the Complainant and the Respondent use logos featuring a graphic device similar to a play button is not an attempt by one party to take advantage of the reputation of another, rather it is each party choosing to use a common, universal icon that reflects the word “play”. The Complainant’s accusations that the Respondent is attempting to exploit the reputation of the Complainant are reckless, indeed the parties trade in very different industries. Moreover the Complainant’s actions in bringing this complaint, despite the Respondent having legitimately used the Domain Name for nine years, the Complainant lacking any mark rights in the Respondent’s jurisdiction and the absence of any fraud amounts to reverse domain name hijacking.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the PLAYTECH Mark, having registrations for PLAYTECH as a trademark in the European Union and United States. The Domain Name consists of the PLAYTECH Mark in its entirety and the common Spanish word “la”. The addition of the additional term does not prevent a finding of confusing similarity. The Panel finds the Domain Name is confusingly similar to the Complainant’s PLAYTECH Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent circumstances which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.
In the present case, the evidence in the Response satisfies the Panel that the Respondent has used the Domain Name in connection with a bona fide offering of goods and services. The evidence in the Response, including the information on the Respondent’s Website itself, is that the Respondent has offered its goods and services under the PLAYTECH Mark in Colombia since 2004 and has used the Domain Name that corresponds to the PLAYTECH Mark for the purposes of operating its official company website since 2008. There is no evidence of the Complainant presently having any mark rights or reputation in Colombia or the Respondent making any attempt to take advantage of any reputation generally the Complainant may have in the PLAYTECH Mark. The Complainant’s claim that in 2017, a representative of the Respondent asked an agent of the Complainant to help incorporate the Complainant’s works into the Respondent’s product offerings, lacks any detail, is denied by the Respondent and in any event does not lead to the conclusion that the Respondent, who has used the Domain Name for 9 years without making contact with the Complainant, is not using the Domain Name in connection with a bona fide offering of goods or services.
This case illustrates the widely recognized principle that the Policy is designed to deal with clear cases of cybersquatting, see Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”). In the present case, the Panel finds that the record simply does not yield clear evidence of cybersquatting, circumstances that bring the case within the provisions of paragraph 4(c) of the Policy, or other facts showing that Respondent is not using the domain name in connection with a bona fide offering of goods or services.
C. Registered and Used in Bad Faith
Given the Panel’s finding that the Respondent has rights and legitimate interests in the Domain Name, the Panel concludes that in these circumstances it is not necessary to make a finding under this element of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that if after considering the submissions the panel finds that the complaint was brought in bad faith (for example, in an attempt at Reverse Domain name Hijacking) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Jazeera went on to note that:
“Allegations of reverse domain name hijacking have been upheld in circumstances where respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations.”
The panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.
A cursory examination of the Respondent’s Website would have revealed that the Respondent, although it had not sought to register the PLAYTECH Mark in Colombia, has been using the PLAYTECH Mark as a trade name in respect of its goods and services in Colombia. The Domain Name corresponds to the PLAYTECH Mark. As the Complainant presently has no registered trade mark rights in Colombia nor has provided any evidence of any reputation in Colombia, such use is prima facie legitimate. The Complainant, who did examine the Respondent’s Website as part of preparing the Complaint, ought to have been aware that the Respondent has been active since 2003-2004 and has held the Domain Name since 2008. Putting the Complainant’s evidence at its highest, the Respondent between 2004 and 2017 made no attempt to contact the Complainant until a chance meeting in 2017, has never offered to sell the Domain Name to the Complainant and operates a website that at no point refers to the Complainant.
The Complainant’s arguments that the Respondent’s use of the Domain Name is not bona fide and in bad faith are:
a) That the Respondent registered a Domain Name that is an abbreviation of its company name and not an exact version of its company name (even though such names may have been available to register); a claim that ignores the evidence that the Respondent actively uses the PLAYTECH Mark as a mark for its goods and services. It also ignores the fact that the Respondent appears to trade in Colombia, a country that the Complainant had no pre-existing rights in (and to the best of the evidence before the Panel, continues to have no trade mark rights in). The statement in the Supplemental Filing that the Complainant “licenses games to operators which target Colombia for both gambling and casual (non-gambling use)” provides no details of the nature and extent of any actual use of the PLAYTECH Mark in Colombia by the Complainant or its licensees, any reputation that arose from such use and whether any such use occurred prior to the Respondent’s purported first use of the PLAYTECH Mark in 2004 or registration of the Domain Name in 2008;
b) That the Respondent uses a similar logo to the Complainant’s logo; in each case the logo consists of the word “playtech” and the common graphic symbol for “play”, which is hardly evidence that the Respondent has deliberately attempted to copy the Complainant’s logo (especially in the absence of any other evidence that between 2004 and 2017 the Respondent took any steps to target the Complainant in any way); and
c) That in April 2017, at an exhibition in Bogota, a representative of the Respondent asked an agent of the Complainant to help incorporate the Complainant’s works into the Respondent’s product offerings. Even if this incident occurred, in the absence of any additional detail, it is not clear how this differs from any other conversation in a trade show where one party offers to work with another party. It does not show that the Respondent’s use of the Domain Name (which it had used for 9 years before encountering the Complainant, by chance, at a trade show) was not bona fide.
The Panel finds that the decision to file a Complaint when the Complainant was aware of the Respondent’s prima facie legitimate use of the Domain Name and in circumstances where its arguments as to the Respondent’s lack of bona fide use had no realistic prospect of success constitutes reverse domain name hijacking. Any reasonable investigation would have revealed that this was a Complaint that could not have succeeded.
The Panel finds that the Complaint was brought in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: August 1, 2017