WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casumo Media Limited v. Frank Zielkowski, Wingtree Consulting FZE
Case No. D2017-1764
1. The Parties
The Complainant is Casumo Media Limited of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Ports Group AB, Sweden.
The Respondent is Frank Zielkowski, Wingtree Consulting FZE of the United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <casumo.discount> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2017. On September 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2017, 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 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2017.
The Center appointed Torsten Bettinger as the sole panelist in this matter on October 16, 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 a registered office in Gibraltar.
The Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation "Casumo" including, inter alia:
- European Union Trade Mark ("EUTM"), CASUMO, 010863066, registered on October 3, 2012.
- EUTM, CASUMO, 015393085, registered on August 12, 2016.
- EUTM, CASUMO (figurative), 015407893, registered on August 22, 2016.
The trademarks are registered in a number of classes, among these, class 41, for "gambling; casino, gaming and gambling services".
The Respondent appears to be a resident of the United Arab Emirates, and registered the disputed domain name on March 16, 2017.
The Respondent has used the domain name for a pay-per-click ("PPC") website with links to other casinos and gaming service providers that compete with the Complainant.
On April 26, 2017, the Complainant, through its attorneys, sent a cease-and-desist letter to the Respondent via email challenging the Respondent's registration and use of the disputed domain name.
In response to the cease and desist letter, the Respondent asserted by email dated May 5, 201,7 that the purpose of registering the disputed domain name was "to set up a business plan for a new affiliate concept" and that it had the intention "to contact the Complainant when the concept was more advanced and close to go live."
5. Parties' Contentions
Complainant submits that its CASUMO mark is widely known in the casino and gaming business and exclusively distinctive of the Complainant.
The Complainant further asserts that disputed domain name is confusingly similar to the Complainant's CASUMO trademark as it incorporates the mark in its entirety and that the risk of confusion is strengthened by the addition of the Top-Level Domain <.discount>.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant asserts that it has never licensed nor otherwise permitted the Respondent to use the CASUMO mark or use a domain name that incorporates or is similar to its CASUMO trademark and that the Respondent is not offering any goods or services under the disputed domain name.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that the Respondent was aware of the Complainant's trademark at the time of registration as the word "casumo" has no generic meaning and is solely connected with the Complainant's business activities. The Complainant further argues that this conclusion is reaffirmed by the fact that the Respondent itself claimed that the purpose of registering the disputed domain name was to set up a business plan for a new affiliate and that it intended to contact the Complainant when the concept of this project was more advanced.
Finally the Complainant submits that the disputed domain name was registered primarily for the purpose of preventing the Complainant from being able to register and use the disputed domain name and disrupting the business of the Complainant, as well as for the purpose of confusing the consumers and to profit from the Complainant's business operations.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which 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.
The Respondent's default in the case at hand does not automatically result in a decision in favor of the Complainant, however, paragraph 5(f) of the Rules provides that if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint.
Further, the Panel may draw such inferences as are appropriate from the Respondent's failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <casumo.discount> is identical to the CASUMO trademark, in which the Complainant has rights.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 1.7).
In this case, the disputed domain name incorporates the Complainant's trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety in a domain name can be sufficient to establish identity or at least confusing similarity to a registered trademark.
Moreover, as noted in many previous UDRP decisions, the generic Top-Level Domain ("gTLD") designation such as ".com", ".net" or ".org" is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see WIPO Overview 3.0, section 1.11).
Therefore, the Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
A respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are 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 or service mark at issue."
The Complainant has asserted that it never licensed or permitted the Respondent to use its CASUMO trademark, that the Respondent has no trademark rights that correspond to the disputed domain name and that the Respondent has not been commonly known by that name nor has the Respondent made any attempt to establish an Internet presence using the disputed domain name. These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Given that the Respondent has failed to come forward with any evidence to refute the Complainant's prima facie showing that the Respondent lacks rights or legitimate interests, the Panel concludes that the Complainant has satisfied the second element of the Policy set forth by paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's 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.
Based on the record in this proceeding, the Panel is satisfied that the Complainant's CASUMO Mark is widely known in the online gambling industry and solely associated with the Complainant's products and services.
As the disputed domain name is identical to Complainant's distinctive CASUMO mark and was registered after the registration of the Complainants trademark registrations, the Panel concludes that on the balance of probabilities the Respondent was aware of the Complainant's trademark CASUMO at the time of registration of the disputed domain name. This conclusion is reinforced by the fact that in response to the Complainant's cease and desist letter the Respondent admitted that it was its intention to use the disputed domain name to set up a business plan for a new affiliate and that it intended to contact the Complainant when the concept of this project was more advanced.
Because the disputed domain name resolves to a PPC web page at which competitive services are offered, the Complainant has also established that the Respondent's use of the domain name is in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is identical to the Complainant's CASUMO mark. The fact that the website available at the disputed domain name includes PPC links to sites offering competing products or services of the Complainant aggravates the likelihood of confusion also disrupts the Complainant's business by diverting consumers away from the Complainant's websites, with the intention to profit from the PPC revenue generated by this website. (See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096; and Nine West Development Corporation v. Registrant  / Moniker Privacy Services / Registrant : Domain Administrator, WIPO Case No. D2008-0154; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; and Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026, which confirm that bad faith is evidenced where a respondent uses virtually the same mark as a domain name and where a respondent attempts to trade on the goodwill associated with a mark in which the complainant has rights).
Finally, the fact that the website available under the disputed domain name provides multiple PPC advertising links to services of third parties competing with those of the Complainant also demonstrates that the disputed domain name was designed to attract Internet users who are looking for the Complainant's online gaming services to its own website in order to collect PPC revenue from advertising links.
This is sufficient to satisfy the Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's CASUMO mark as to the source, sponsorship, affiliation, or endorsement of its website in accordance with paragraph 4(b)(iv) of the Policy.
On the basis of the evidence put forward by the Complainant, the Panel therefore also concludes that the Complainant has satisfied its burden 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 disputed domain name, <casumo.discount> be transferred to the Complainant.
Date: October 25, 2017