WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casumo Services Limited v. Ronny Iversen / Prioritet Norge AS
Case No. D2015-1653
1. The Parties
The Complainant is Casumo Services Limited, Zebbug, Malta, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Ronny Iversen / Prioritet Norge AS, Oslo, Norway.
2. The Domain Name and Registrar
The disputed domain name <casumo.xyz> is registered with Domeneshop AS dba domainnameshop.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2015. On September 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2015, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 15, 2015.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on October 20, 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 Casumo Services Limited, a limited liability company which has its seat of incorporation in Malta. The Complainant runs a casino game site "www.casumo.com" under the name CASUMO where a wide range of online gambling products and games is provided.
The domain name <casumo.com> held by the Complainant was registered on March 10, 2011.
A cease and desist letter regarding the disputed domain name <casumo.xyz> was sent to the Respondent via email on August 26, 2015without receiving any response.
The Complainant owns the following trademark:
Community trademark registration CASUMO, no. 010863066, filing date May 7, 2012, registered in the following classes: 35 (advertising), 38 (providing access into network system) and 41 (gambling, games and betting services).
The disputed domain name was registered on August 12, 2015. The website at the disputed domain name redirects to the Respondents website "www.prioritetnorge.no".
5. Parties' Contentions
The Complainant claims that the disputed domain name, <casumo.xyz>, is identical to the Complainant's CASUMO registered trademark, the addition of the Top Level Domain ("TLD"), ".xyz", being irrelevant for the assessment of confusing similarity between a trademark and a domain name; that the Respondent has no rights or legitimate interests with respect to the disputed domain name,nor is the Respondent a licensee of the Complainant; and that the Respondent registered and is using the disputed domain name in bad faith for the following reasons:
1) the Complainant's Community trademark was registered well before the Respondent registered the disputed domain name <casumo.xyz>; in fact the Complainant was using the CASUMO trademark in the domain name <casumo.com> as early as 2011;
2) the Complainant was using the services provided by the Trademark Clearinghouse at the time of registration of the disputed domain name, thus the Respondent received a notice CASUMO was a registered trademark. Consequently, before completing the registration of the disputed domain name, the Respondent was aware of the Complainant's rights to the wording CASUMO and registered the disputed domain name anyway.
3) the Respondent is trying to take advantage of the CASUMO trademark in order to draw traffic to its own website. Therefore, the Complainant submits that the website has been registered to commercially profit from the likelihood of confusion between the trademark and the domain name. The domain name <casumo.xyz> is redirected to the website "www.prioritetnorge.no" containing information about the Respondent and its business.
4) the Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to obtain the transfer of the disputed domain name, the Policy paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant demonstrate to the Panel that:
(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 respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the CASUMO trademark. The disputed domain name is identical to the Complainant's CASUMO trademark save for the ".xyz" TLD that is irrelevant for the assessment of confusing similarity between a trademark and a domain name.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark CASUMO in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.D below. In addition, the Respondent does not appear to be commonly known by the name "Casumo" or by similar names. Moreover, the Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant's trademark registrations and rights to the CASUMO when he registered the disputed domain name.
In fact, the Complainant's trademark is a fanciful name with no meaning, it has been registered and used for several years and thus predates the disputed domain name's registration, and it was registered in the Trademark Clearinghouse database1 . Therefore, in the absence of contrary evidence, the Panel finds that the Respondent knew of the Complainant's trademark and intentionally intended to create an association with the Complainant and its business; that the Respondent must have had actual knowledge of the Complainant's trademark at the time of the registration of the disputed domain name, with respect to the use of the disputed domain name, the Panel notes that the disputed domain name redirects to the Respondent's website www.prioritetnorge.no which offers "web solution services". ( i.e., to divert Internet traffic to Respondent's website), and that this falls clearly within the example of bad faith set out in 4(b)(iv) of the Policy: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent never replied to the Complainant's cease and desist letter. Indeed, due to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent had had legitimate purposes in registering and using the disputed domain name it would have responded.
Further inference of bad faith is given by Respondent's provision of an apparently incorrect fax number to the Registrar combined with a non -reaction to the Complainant's cease and desist letter.
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed 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 disputed domain name <casumo.xyz> be transferred to the Complainant.
Date: October 22, 2015
1 The Trademark Clearinghouse (TMCH) is a rights protection mechanism built into ICANN's new gTLD program. It is a centralized database of verified trademarks that is connected to each and every new Top Level Domain (TLD) that will launch. When someone wishes to register a domain name that matches a trademark recorded in the Clearinghouse this person will be alerted of the existing trademark rights and he or she will need to acknowledge these rights before completing registration.