WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lumen Ltd v. Private Registrant, Digital Privacy Corporation / Oleh Desiatove

Case No. D2020-1942

1. The Parties

The Complainant is Lumen Ltd, Marshall Islands, represented by Vladimiros Barsegiannidis, Cyprus.

The Respondent is Private Registrant, Digital Privacy Corporation, United States of America (“United States” or “U.S”) / Oleh Desiatove, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <playamo1.com> is registered with 101domain GRS Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on July 31, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 5, 2020.

The Center verified that the Complaint together with the amended 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 August 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on September 7, 2020. 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 part of a group of affiliated entities that provide gaming and betting services under the brand PLAY AMO through the websites at the domain names <playamo.com>, registered on December 10, 2015, and <playamopartners.com>, registered on October 30, 2017.

The Complainant is the owner of the European Union combined trademark PLAY AMO with registration No.018021799, applied for on February 13, 2019 and registered on June 7, 2019 for services in International Classes 35, 38, 41, and 42 (the “PLAY AMO trademark”).

The disputed domain name was registered on November 13, 2018. At the time of filing of Complaint, the disputed domain nameresolves to a Russian language gambling website described as „Официальный сайт онлайн казино Вулкан” (“Official website of the online casino Vulkan”).

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain name is confusingly similar to the PLAY AMO trademark and to the Complainant’s affiliate’s domain name <playamo.com>, as the only difference between them is the number “1” which is included in the disputed domain name. The Complainant adds that the website at the disputed domain name copies the design and content of the website of the Complainant’s affiliate at “www.playamo.com”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent is not commonly known under it and is not using it in connection with a bona fide offering of goods or services or carrying out a legitimate noncommercial or fair use of it. The Complainant points out that the Respondent’s website at the disputed domain name lacks basic functionalities and is unusable, and when a visitor attempts to access any of the content and games listed on the website, it is redirected to the website’s homepage. The Complainant notes that the Respondent has named its unusable website as “Casino Vulkan” and causes damage to the Complainant by associating this name and non-functioning website to the Complainant’s PLAY AMO trademark.

The Complainant contends that the disputed domain name was registered and is being used in bad faith, as the Respondent aims to resell the disputed domain name at a profit by taking advantage of the confusing similarity between the disputed domain name and the PLAY AMO trademark of the Complainant. The Complainant notes that the Respondent’s website is not functional and does not provide any information regarding a gambling license issued for it. According to the Complainant, the Respondent targeted the PLAY AMO trademark with the registration of the disputed domain name, which was made without the consent of the Complainant, in an attempt to mislead and attract the potential clients of the Complainant.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent however did not submit a formal Response in this proceeding addressing the specific contentions of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the PLAY AMO trademark, so the Panel accepts that the Complainant has rights in this trademark for the purposes of the Policy.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level-Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name for purposes of the first element is therefore the sequence “playamo1”, which incorporates the dominant word elements of the PLAY AMO trademark, omitting the space between them, and adding the number “1”. As discussed in section of 1.7 of the WIPO Overview 3.0, in cases where the dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing, and as discussed in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of a term or (as here) a number would not prevent a finding of confusing similarity under the first element.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the PLAY AMO trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not commonly known by it and is not using it in connection with a bona fide offering of goods and services or for a noncommercial or fair purpose, but has associated it to non-functional gambling website under the name “Casino Vulkan”, and causes damage to the Complainant by associating this name and non-functioning website to the Complainant’s PLAY AMO trademark. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not disputed the Complainant’s allegations and the evidence in the case file, and has not alleged that it has rights or legitimate interests in the disputed domain name. The contact details that the Respondent has provided to the Registrar are non-existent.

The disputed domain name is confusingly similar to the PLAY AMO trademark, and the evidence in the case file shows that it resolves to a gambling website. The Complainant is active in the same business. This makes it likely that Internet users may be attracted by the disputed domain name due to its confusing similarity to the PLAY AMO trademark of the Complainant, and when they arrive at the Respondent’s website, they will be offered competing gambling services under a different brand. In the Panel’s view, such conduct does not appear to be legitimate and giving rise to rights and legitimate interests of the Respondent in the disputed domain name.

In view of the above, the Panel accepts that the evidence in the case file supports the prima facie case made by the Complainant, and finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name is confusingly similar to the PLAY AMO trademark. This trademark was registered after the Respondent registered the disputed domain name. However, the disputed domain name is also confusingly similar to the domain names <playamo.com> and <playamopartners.com>, which feature the PLAY AMO brand with the authorization of the Complainant and the first of them was registered three years before the registration of the disputed domain name. The Respondent has linked the disputed domain name to a gambling website that appears to be competing with the Complainant’s business by offering visitors to play gambling games under a different brand – “Vulkan”, and which copies the design and content of the official website authorized by the Complainant at “www.playamo.com”. This suggests that the Respondent’s intent in registering the disputed domain name is likely to have been to unfairly capitalize on the Complainant’s nascent (typically as yet unregistered) trademark rights in the PLAY AMO brand. See section 3.8.2 of the WIPO Overview 3.0. It is also notable that the Respondent has provided non-existent contact details to the Registrar.

In view of the above and in the lack of any explanation by the Respondent why it has chosen a domain name that is confusingly similar to the Complainant’s PLAY AMO brand and why it has then used it for a gambling website that resembles the design and content of the official website authorized by the Complainant, the Panel accepts that the Respondent is more likely than not to have registered the disputed domain name with knowledge of the Complainant and targeting its PLAY AMO brand and yet unregistered PLAY AMO trademark in an attempt to attract traffic to the disputed domain name for commercial gain by confusing Internet users that they are reaching an official online location of the Complainant, and then offer them competing services.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

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 <playamo1.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: September 16, 2020