WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intouch Games Ltd v. Private Registration Services, Inc.
Case No. D2013-1552
1. The Parties
The Complainant is Intouch Games Ltd. of Stourbridge, Dudley, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by SafeNames Ltd., UK.
The Respondent is Private Registration Services, Inc. of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <mfortunecasino.com> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2013. On September 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 5, 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. On September 12, 2013, the Center noticed that the Registrant number available on the public WhoIs has been changed from that confirmed by the Registrar in its verification dated September 5, 2013. On September 12, 2013, the Center transmitted by email to the Registrar, requesting confirmation that the Domain Name is on lock regardless of the change of the Registrant number. On September 21, 2013, the Registrar transmitted by email to the Center its clarification of change of the Registrant number and confirmation that the Registrant contact information has not been changed.
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 September 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2013.
The Center appointed Michelle Brownlee as the sole panelist in this matter on October 24, 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 owns European Community Trade Mark Registration Number 11312824 MFORTUNE, filed January 11, 2012, in connection with computer software and services related to online gaming, betting and gambling in International Classes 9, 38 and 41. The Complainant also owns UK Trade Mark Registration Number 2511895 MFORTUNE (and design), filed March 24, 2009, in connection with services related to online gaming.
The Domain Name was registered on September 8, 2010. The web site at the Domain Name resolves to a pay-per-click website.
5. Parties’ Contentions
The Complainant is a well-known manufacturer of coin operated gambling machines and has expanded into the development of mobile casino games. For more than 20 years, the Complainant has been in the business of creating interactive casino games, with its most prominent brand being MFORTUNE, a brand that was launched in 2008. The Complainant’s MFORTUNE brand is a mobile casino which supports over 400 mobile handsets and offers a selection of games such as Slots, Blackjack, Roulette and Casino Poker. The Complainant’s mobile casino services are used by more than 1.6 million players, and the Complainant is regarded as the industry leader within the mobile casino market. Users of the Complainant’s services won more than 18,2 million GBP in 2012. The Complainant’s business under the MFORTUNE trademark has grown substantially since its inception, with annual turnover of 3,210 million GBP in 2009, and annual turnover of 17,225 million GBP in 2012.
“MFORTUNE” is a unique, coined term that is not used by any other gaming operator. The Complainant has advertised the trademark extensively via social media, newspaper, print and television, pay-per-click keyword advertising and on the Complainant’s official web sites. This has resulted in consumers associating the MFORTUNE trademark with the Complainant’s services.
The Complainant contends that the Domain Name is confusingly similar to its MFORTUNE trademark. The Complainant also argues that the Respondent has no rights to or legitimate interests in respect of the Domain Name. The Complainant alleges that the Respondent has been using the Domain Name in connection with a pay-per-click web page that attracts Internet users to gambling web sites that compete with the Complainant’s site. Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant argues that the Respondent is profiting by attracting Internet users to competitive web sites and earning commissions if those users pay to use the competitive gambling services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove 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 to 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
The Complainant has demonstrated that it owns rights in the MFORTUNE trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the MFORTUNE trademark with the generic term “casino” is confusingly similar to the Complainant’s MFORTUNE trademark. The likelihood of confusion is exacerbated by the fact that the term “casino” is descriptive of the Complainant’s services.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainant’s prima facie case.
The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Name in connection with pay-per-click advertising that promotes services that are directly competitive with the services offered by the Complainant. This activity cannot under the circumstances be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has demonstrated that the Respondent is using the Domain Name to promote competitive web sites by creating a likelihood of confusion with the Complainant’s MFORTUNE mark and web site. This activity presumably results in commercial gain to the Respondent. Thus, the Panel finds that the Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mfortunecasino.com> be transferred to the Complainant.
Date: November 4, 2013