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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yggdrasil Malta Limited v. Nikolay V Korobov / Nikolay Korobov

Case No. D2018-0442

1. The Parties

The Complainant is Yggdrasil Malta Limited of Sliema, Malta, represented by Mario Petraglia, Malta.

The Respondent is Nikolay V Korobov / Nikolay Korobov of St. Petersburg, Russian Federation / PRIVACY_PROTECTION, Domain Admin of Praha, Czech Republic / Privacy Protection Service – Whoisproxy.ru.

2. The Domain Names and Registrars

The disputed domain name <chibeasties.net> is registered with Gransy, s.r.o. d/b/a subreg.cz, the disputed domain name <yggdrasil-gaming.com> (together "disputed domain names") is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the "Registrars").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2018. On February 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 27, 2018 and March 1, 2018, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent Complaint Deficiency Notification to the Complainant on March 2, 2018 in regard to the Registrar of the disputed domain name <chibeasties.net> and Language of Proceeding email. The Complainant filed an amendment to the Complaint on March 2, 2018 and confirmed English to be the language of the proceeding. The Respondent did not comment on that.

The Center verified that the Complaint together with the amendment to 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 March 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 4, 2018.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 16, 2018. 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 provider of online and mobile casino games. The Complainant owns:

- the YGGDRASIL SUPERIOR GAMING mark (European Union registration for goods and services in classes 9, 35, 41, 42, registered on July 20, 2016 application No. 015133598),

- the YGGDRASIL GAMING mark (European Union registration for goods and services in classes 9, 35, 41, 42, registered on July 20, 2016, application No. 015059959),

- the CHIBEASTIES mark (European Union registration for goods and services in classes 9, 41, registered on May 8, 2017, application No. 016266389).

The domain name <yggdrasil-gaming.com> was registered on December 14, 2016 and the domain name <chibeasties.net> was registered on January 31, 2017

The websites under <yggdrasil-gaming.com> has copied graphics from the Complainant's 2016 version of its official website under <yggdrasilgaming.com>. Currently, both disputed domain names are inactive.

On January 4, 2018, the Complainant sent cease and desist letter to the Respondent regarding the domain name <yggdrasil-gaming.com>. On January 31, 2018, the Complainant sent an email to the Registrar requesting it to reveal the identity of the hosting provider and to provide a copy of the Registration Agreement of <chibeasties.net>.

5. Parties' Contentions

A. Complainant

Firstly, the Complainant asserts that the disputed domain names are identical to its trademark since the latter has been entirely incorporated in the disputed domain names.

Secondly, the Complainant contends that it has never granted the Respondent any permission, license, authorization or consent to use in the disputed domain names. According to the Complainant, there is also no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Quite the opposite, the Complainant emphasizes that the content of the websites under the disputed domain names is a copy of its intellectual property rights. It also asserts that these websites "falsely suggest affiliation with the trademark legitimate owner highlighting Respondent's deliberate practice with the ultimate intent to deceive users as to the origin of the domain, this activity in itself amounting to appropriation of the plaintiffs' goodwill". Furthermore, the Complainant points out that the Respondent registered the disputed domain names after the Complainant stared to use Yggdrasil Gaming and Chibeasties names in trade.

Thirdly, the Complainants states that the disputed domain names were registered and are being used in bad faith. The Complainant claims that given the overall look of the Respondent's websites and the absence of any effective disclaimer, users easily could be deceived as to whether the Respondent's website is affiliated with or have the endorsement or sponsorship of the Complainant, or ultimately whether the goods being offered on this website are in fact the genuine Complainant's branded products. Further, the Complainant emphasizes that the Respondent pursues personal profit from the disputed domain names by redirecting deceived users to a number of online gambling operators' websites offering the Complainant's games. According to the Complainant, the timing of the registration of the disputed domain names which was effected after the Complainant has acquired his rights and reputation on the market is another factor proving that the Respondent has registered the disputed domain name in bad faith. Finally, the Complainant point out to the fact that immediately after the Respondent received the cease and desist letter regarding the domain name <yggdrasil- gaming.com>, to which no response has been provided, it changed his coordinates by making use of Proxy Registration Service. Such a practice is commonly known as "cyberflying".

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

The language of the Registration Agreement of <chibeasties.net> is Russian. Paragraph 11(a) of the Rules provides that "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that neither the Complainant, nor its representatives, understand Russian.

The Respondent was properly notified about the language of the proceeding in English and Russian, and the Respondent has not objected to the Complainant's language request. Notification of the Complaint was also sent to the Respondent in English and in Russian, however, the Respondent has not participated in these proceedings in any way.

The Panel believes that it would be unduly burdensome to require the Complainant to invest money and time in translating the Complaint along with the annexes. Additionally, as the Registration Agreement for <yggdrasil-gaming.com> is in Czech and English, it is probable that the Respondent understands English.

In this light, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.

6.2. Merits

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:

(i) the disputed 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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

A. Identical or Confusingly Similar

The disputed domain name <yggdrasil-gaming.com> contains the YGGDRASIL GAMING mark in its entirety, only with addition of a hyphen. The disputed domain name <chibeasties.net> contains the CHIBEASTIES mark in its entirety with no addition of any other word or sign.

For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the top-level domain ("TLD") suffixes ".com" and ".net" may generally be disregarded (see LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).

Given the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant's registered marks and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1 and cases cited therein).

The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain names: (a) the Respondent is neither licensed nor authorized by the Complainant to use the its marks; (c) there is no evidence that the Respondent has been commonly known by either of the disputed domain names; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain names, the Panel accepts the Complainant's unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and concludes that the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The disputed domain name <yggdrasil-gaming.com> was registered many years after the Complainant registered the YGGDRASIL GAMING mark. Therefore, this creates an interference – not rebutted – that the Respondent registered that domain name due to its knowledge of the Complainant.

The disputed domain name <chibeasties.net> was registered on January 31, 2017 while the Complainant registered the CHIBEASTIES mark on May 8, 2017 (the application was filed already on January 19, 2017). However, taking into account the all the circumstances of the case, including the Respondent's conduct in regard to the disputed domain name <yggdrasil-gaming.com>, the Panel decides that the disputed domain name <chibeasties.net> was registered in bad faith (See WIPO Overview 3.0, section 3.8.2).

Moreover, both disputed domain names registered by the same Respondent were active before the Notification of the Complainant and presented graphics from the Complainant's official website.

The Panel finds that this way the Respondent created the impression that the website linked to the disputed domain names belongs to the Complainant or its affiliate. Creating such a website by the Respondent involves registration and use in bad faith (see The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki, WIPO Case No. D2017-0388).

In addition, the Respondent used a privacy shield after it received the cease and desist letter by the Complainant in regard to the disputed domain name <yggdrasil-gaminf.com>. While the use of a privacy shield cannot be considered in itself as use of bad faith, once connected with additional elements, which is this case is timing, it may support a bad faith finding (see Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571).

In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.

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 names <yggdrasil-gaming.com> and <chibeasties.net> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: April 28, 2018

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