WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Divine Chance Limited, Criszo Worldwide Inc. v. Ni Hao
Case No. D2014-1497
1. The Parties
The Complainants are Divine Chance Limited of Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“First Complainant”) and Criszo Worldwide Inc. of Belize City, Belize (“Second Complainant”) (collectively the “Complainants”), represented by Quahe Woo & Palmer LLC, Singapore.
The Respondent is Ni Hao of Guangzhou, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <opus-gaming.net> (the “Domain Name”) is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2014. On September 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 3, 2014, 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 Complainants filed an amended Complaint on September 4, 2014.
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 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 8, 2014. 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 First Complainant is the holder of intellectual property in respect of the trade mark OPUS GAMING (the “OPUS Mark”). It has licensed its intellectual property, including its rights in the OPUS Mark to the Second Complainant which is a company, licensed to operate in Philippines that develops online casino games and software. The Second Complainant’s business was established in 2009, specializing in developing software for the provision of casino, sports book and slot games online. The Second Complainant’s software is supplied to a number of online casino and gambling interfaces on the basis that the companies indicate that their games are “powered by Opus Gaming”. The Second Complainant also operates a website at “www.opus-gaming.com” to promote its services.
On or around August/September 2013 the First Complainant applied for the registration of the OPUS Mark in a number of jurisdictions, including China, the European, Hong Kong, China, Japan and Singapore. Most of these applications are under examination but the First Complainant has been able to obtain the registration of the OPUS Mark in Japan, with a priority date of August 29, 2013. The OPUS Marks are generally registered for goods and services in classes 28 or 38, and 41.
The Domain Name <opus-gaming.net> was registered on February 20, 2014. The Domain Name resolves to a website (the “Respondent’s Website”), that appears to provide gaming development services to online gaming operators. In particular, the Respondent’s Website contains the statement:
“Opus Gaming established in 2009, being known as dynamic Asia’s best provider with given such short time in length of establishment, Opus have surpass, reached and successfully make known of our branding image in this gaming industry and flagships of big well known operators.
We are One of Asia’s fast track leading provider with proven well-known operators identity of today’s gaming industry revolutionary live gaming platform with impressive top cutting edge factors to suit our customers specific requirements.
We constantly offers the best gaming features specializing in real Live Studios with State-of-The-Art equipments to cast high resolution “Real Time” broadcast to consumers that others still try to catch-up as a provider similar to us.
We believe in delivering the well-built, customization, secured system and continuously enhance, improve and integrate system will provide what is the best in the market to our clients.”
There is no evidence before the Panel that a company known as Opus Gaming exists: the named Respondent is Ni Hao (“hello” in Chinese).
5. Parties’ Contentions
The Complainants make the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainants’ OPUS 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 Complainants are the owner of the OPUS Mark. The First Complainant owns or has applied for trademark registrations for the OPUS Mark in various jurisdictions around the world and has licensed the OPUS Mark to the Second Complainant.
The Domain Name is identical or at least confusingly similar to the OPUS Mark in that the “.net” suffix should be discarded in comparing the OPUS Mark and the Domain Name.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainants have not licensed, authorized or permitted the Respondent to use the OPUS Mark. The Respondent has created a website at the Domain Name that masquerades as the Second Complainant’s business, using the OPUS Mark. The Respondent is using the Domain Name as a means to deceive visitors in thinking that the Respondent’s Website has an affiliation with the Complainants.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered for the purpose of causing Internet users to mistake the Respondent’s Website as a website that belongs to or is associated with the Complainant. The Respondent will then exploit or profit from this confusion. This is particularly the case as the Respondent is offering a similar service to that of the Complainants. Furthermore, the fact that the Respondent uses a fake name, being the Chinese word for “hello”, is further evidence of bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainants must have trade mark or service mark rights and the Domain Name must be identical or confusingly similar to the Complainants’ trade mark or service mark.
The Complainants are the owner of the OPUS Mark, having registrations for OPUS GAMING as a trade mark in Japan.
The Domain Name consists of the OPUS Mark with the addition of a hyphen between “opus” and “gaming”. The Panel finds that the addition of a hyphen does not prevent a finding of confusing similarity between the OPUS Mark and the Domain Name. An individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site run by the Complainants as the Domain Name differs from the OPUS Mark in a minor way. The Domain Name and the OPUS Mark are also phonetically identical. The Panel finds that the Domain Name is confusingly similar to the Complainants’ OPUS 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 legitimate non-commercial 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainants in any way. It has not been authorized by the Complainants to register or use the Domain Name or to seek the registration of any domain name incorporating the OPUS Mark or a mark similar to the OPUS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name or that it is using the Domain Name for a legitimate noncommercial purpose.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainants that the Respondent is using the Domain Name to operate a website that mimics the look and feel of the Second Complainant’s website, purporting to offer identical goods and services under an identical trading name to that of the Second Complainant. In the absence of any actual rights to use the OPUS Mark such use is not a bona fide offering of goods or services.
The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests, including providing any explanation for purporting to offer identical services under the OPUS Mark, but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’s registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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 website or other on-line location, by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainants and their reputation in the OPUS Mark at the time the Domain Name was registered. The Respondent’s Website operates in the exact same market, using the identical trading name as the Second Complainant.
While “opus” and “gaming” are both descriptive words, the OPUS Mark is a coined mark with no particular generic or descriptive meaning. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainants. The registration of the Domain Name in awareness of the Complainants and any rights they had at the time in the OPUS Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the OPUS Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consisted of a website offering gaming development services to online gaming operators under the Second Complainant’s trading name. The Respondent would benefit from any confusion that a potential gaming operator would have between the Respondent and the Complainants that would arise from the similarities in the Domain Name, website and business services offered by the Complainants and the Respondent. It is therefore highly likely that the Respondent received revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the OPUS Mark. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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 <opus-gaming.net> be transferred to the Complainants.
Date: October 11, 2014