WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casumo Media Limited v. WhoisGuard, Inc. / Bonus Network
Case No. D2017-0892
1. The Parties
The Complainant is Casumo Media Limited, Watergardens, Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Ports Group AB, Sweden.
The Respondent is WhoisGuard, Inc., Panama / Bonus Network, Cyprus.
2. The Domain Names and Registrar
The disputed domain names <casumocasinobonus.com> and <casumofreespins.net> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2017. On May 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 3, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 8, 2017 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 May 8, 2017.
The Center verified that 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 May 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2017.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 21, 2017. 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 gaming company with its registered office in Gibraltar. The Complainant is well known in the online gambling industry and provides gaming services under the registered trademark CASUMO.
The Complainant owns European Union word trademarks such as no. 010863066, Filing Date, May 7, 2012 and no. 015393085, Filing Date, April 29, 2016, as well as figurative marks such as no. 015407893, Filing Date May 5, 2016. All trademarks are registered in a number of classes, among others, class 41 for gambling and casino services.
The Complainant has registered several domain names, such as <casumo.com>.
The Domain Names were registered on April 5, 2017. At the time of filing the Complaint, one of the Domain Names, <casumocasinobonus.com>, resolved to a webpage with text in Swedish and English, offering CASUMO customers to register at the webpage to receive bonus codes.
At the time of drafting this decision, one Domain Name does not resolve to an active website (<casumocasinobonus.com>), the other Domain Name resolves to the Registrar’s parking page with pins related links.
5. Parties’ Contentions
The Complainant provides trademark registrations, and submits that its trademark is famous. The Complainant argues that the Domain Names are confusingly similar to the Complainant’s trademark. The Domain Names incorporate the Complainant’s trademark in its entirety, in combination with the descriptive terms “casinobonus” and “freespins”. This addition of a commonly used and descriptive market expressions is not enough to distinguish the Domain Names from the Complainant’s trademark. The Top-Level Domains “.net” or “.com” are irrelevant for the assessment of confusing similarity between a trademark and a domain name.
The Complainant argues further that the Respondent is not licensed or otherwise authorized to use the CASUMO trademark. There is no evidence of any fair use or demonstrable preparations to use the Domain Names. On the contrary, there is evidence that the Domain Name <casumocasinobonus.com> has been used for providing some kind of gaming service. As the other Domain Name, <casumofreespins.net>, it resolves to the Registrar’s parking page that provides pins-related sponsored links, apparently unrelated to the Respondent.
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant’s famous trademark at the time of the registration of the Domain Names. “Casumo” is a distinctive wording which has no meaning in itself, without connection to the relevant goods/services. The probability of the Respondent coming up with such names independent of the Complainant is low. To the Complainant, this strongly suggests that the Domain Names were registered with the trademark CASUMO in mind and for the purpose of preventing the Complainant from being able to register and use the Domain Names and thereby disrupting the business of the Complainant. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Domain Names.
The Respondent did not reply to the Complainant. However, before the filing of the Complaint and as a reply to the Complainant’s cease and desist letter, a person named Jacob Faye replied by email on April 26, 2017:
“You’re not getting the domain(s). If it was available for sale, your brand protection plans
didn't include it.
The domain isn’t casumo casino, it’s casumo casino bonus - which we’re planning to use as a
review for casumo bonuses and comparison of them to other available offers in the industry.
It’s down to end visitors decision which bonus they want to choose. We will also specify that
It’s a review site only and that the actual offers can be received at official urls.
If you chose the C&D path from day one, it’s now up to you, how you want the tone of our
content to look like.
Basically, I’m seeing 4 options here:
1. Work out an affiliate deal with Casumo, so we take care of protecting casumo casino's
interests and work on good terms
2. Consider monthly exclusivity payment, so the site the only one featured on the domain
3. Buy the domain and make it part of your brand protection program
4. Keep acting as you’re doing now and we will have to redirect the domain to more
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark CASUMO.
The test for confusing similarity involves the comparison between the trademark and the Domain Names. The Domain Names consist of the Complainant’s trademark CASUMO with the descriptive terms “casinobonus” and “freespins” added. These additions do not dispel any confusing similarity. The descriptive terms relate to the business where the Complainant’s trademark is used.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domains “.com” and “.net”.
The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register domain names containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not related to the Complainant in any way, and the Respondent is not using the Domain Names in connection with any bona fide offering of goods or services. The Domain Names do not resolve to any bona fide offering of goods or services by the Respondent. Even if the Respondent has claimed that it is “planning to use as a review for casumo bonuses and comparison of them to other available offers in the industry”, there is no evidence to back this allegation, and there is no evidence that such use would be non-commercial, which is a requirement for criticism or fan-sites to be generate rights and legitimate interests under the UDRP. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 3.0”), paragraph 2.6. Based on the Respondent’s reply to the cease and desist letter, it seems more likely that the Respondent seeks to derive commercial advantage from its registration and use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its business when the Respondent registered the Domain Names. This is underlined by the fact that the Respondent inserted the gaming related descriptive terms “casinobonus” and “freespins” in the Domain Names, deliberately pointing to the Complainant’s business.
The Panel finds that on the balance of probabilities the Respondent registered and holds the Domain Names with the trademark CASUMO in mind and for the purpose of preventing the Complainant from being able to register and use the Domain Names and disrupting the business of the Complainant. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Domain Names, and the Respondent has not replied to the Complaint. The Panel finds therefore that on the balance of probabilities the Respondent registered and uses the Domain Names in bad faith.
For the reasons set out above, the Panel concludes that the Domain Names were registered and is being used in bad faith, within the meaning of the 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 Names, <casumocasinobonus.com> and <casumofreespins.net>, be transferred to the Complainant.
Date: June 29, 2017