WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cassava Enterprises (Gibraltar) Ltd. v. Changeover Services Ltd.
Case No. D2014-2150
1. The Parties
The Complainant is Cassava Enterprises (Gibraltar) Ltd. of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Herzog, Fox & Neeman, Israel.
The Respondent is Changeover Services Ltd. of Road Town, Virgin Islands, Overseas Territory of the United Kingdom (“BVI”).
2. The Domain Name and Registrar
The disputed domain name <888casino.net> (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 December 10, 2014. On December 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
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 December 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2015.
The Center appointed Ian Lowe as the sole panelist in this matter on January 16, 2015. 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 member of the 888 group of companies (“888 Group”) and, amongst other things, operates the gaming websites at “www.888.com” and “www.888casino.com”. The first company in the 888 Group was founded in 1997 and 888 Group has since established a substantial worldwide reputation as one of the leading entities in the field of online gaming. The Complainant registered the <888casino.com> domain name on June 28, 2001 and launched a website at that domain name in December 2003. Since June 2001, the Complainant has invested substantial sums in promoting its brands, notably the 888 Mark and the 888CASINO Mark, around the world, through television, print and online advertising.
The Complainant is the registered proprietor of a number of trademark registrations in respect of “888” and 888CASINO, including: Community trademark 888.COM number 3220688 registered as of June 4, 2003; Community trademark 888CASINO number 9196916 registered as of June 23, 2010; and Community trademark 888 number 9197179 registered as of June 23, 2010.
The Respondent is a company registered in the BVI. According to the historic WhoIs records submitted by the Complainant, the Respondent became the registrant of the Domain Name in about January 2007 when the Domain Name was transferred to it from the previous registrant. Prior to January 2007, the website at the Domain Name provided links to third-party gaming websites and the look and feel of the website at the Domain Name was similar to that of the Complainant’s websites at “www.888.com” and “www.888casino.com”.
Following the transfer to the Respondent and since about June 2008, the website at the Domain Name has displayed information about the 888 Group.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its 888, 888.COM and 888CASINO trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(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
The Complainant has undoubted registered trademark rights in respect of 888, 888.COM and 888CASINO. Although 888 and 888CASINO were only registered as Community trademarks in 2010, some three years after the Domain Name was registered to the Respondent, the Panel is satisfied that as a result of long-standing use of those marks over many years from as early as 2001 when the Complainant launched its services at “www.888.com”, and the very widespread reputation that the marks acquired, the Complainant also has substantial unregistered trademark rights in respect of those marks which had been established well before the transfer of the Domain Name to the Respondent.
Ignoring the “.net” suffix for this purpose, the Domain Name is identical to the Complainant’s 888CASINO Mark and, of course, comprises the distinctive 888 Mark. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a mark or marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Domain Name resolved at the date of the Complaint to a website simply giving information about the 888 Group of which the Complainant is a member. The Respondent is in no way affiliated with or connected with the Complainant or the 888 Group. The Respondent has not filed a Response or otherwise attempted to explain what rights or legitimate interests it may have in respect of the Domain Name or counter the prima facie case established by the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In view of the very long-standing use made by the Complainant and the 888 Group of the 888 Mark in connection with online gaming and the fact that as at the date of the Complaint the website at the Domain Name simply provided information about the Complainant’s 888 Group, the Panel is quite satisfied that the Respondent was well aware of the Complainant and the Complainant’s prior rights in the 888 Mark at the time the Domain Name was registered by the Respondent. On the same basis, the Panel cannot conceive of any legitimate or good faith use to which the Respondent could put the Domain Name. To the extent that the use being made of the Domain Name by the Respondent could be said to be akin to passive holding under the circumstances, that is no bar to a finding of bad faith on its part. In accordance with the consensus view of the UDRP panels, the factors indicated and the absence of any Response on the part of the Respondent, all support a finding of bad faith use (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
Accordingly, 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, <888casino.net>, be transferred to the Complainant.
Date: January 30, 2015