WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tailby Limited v. Private Registration Services, Inc.
Case No. D2017-1800
1. The Parties
Complainant is Tailby Limited of Belize City, Belize, represented by Herzog, Fox & Neeman, Israel.
Respondent is Private Registration Services, Inc. of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <europalacecasino.com> (the "Domain Name") is registered with Moniker Online Services, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2017. On September 18, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On September 19, 2017, the Registrar transmitted by e‑mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on September 24, 2017.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on September 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 20, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 1, 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
According to the Complaint, Complainant was founded in 2009 and has "taken ownership of many reputable and successful brands, many of which have been in existence since at least as early as 1999." These brands, Complainant asserts, "have had a significant role in shaping the online gaming industry and they enjoy a substantial worldwide reputation as some of the leading brands and gaming groups in the field of online gaming and gambling services." Among others, Complainant has been offering online gaming services under the EURO PALACE mark since 2010. These services are offered under a license from the Malta Gaming Authority. The services under EURO PALACE mark are offered in many countries around the world, and these services include casino games, online slots, video poker, and mobile gaming.
Complainant has registered the mark EURO PALACE in several jurisdictions around the world, including European Union trademark registration number 008930448, registered on November 16, 2010.
Complainant offers its gaming services at websites located at "www.europalace.com", "www.europalace.eu" and "www.europalace-casino.com". According to Complainant, these websites "are considered to be some of the leading multi-game websites in the markets where they are offered." During 2017, the monthly average of customers accessing the EURO PALACE branded services is 83,000. The average annual number of registered and wagering users under the EURO PALACE branded services since their inception is 73,500. Complainant asserts that it "enjoys a substantial worldwide reputation as a 'major player' in the field of online gaming."
Complainant alleges that it spends between EUR 850,000 and EUR 2,070,000 each year to advertise and promote its services under its marks, and examples of Complainant's marketing efforts are annexed to the Complaint.
The Domain Name was originally registered on December 13, 2006. It is alleged in the Complaint, however, that Respondent did not acquire the Domain Name until 2015. Annexed to the Complaint are WhoIs records for the Domain Name as of March 12, 2015 and June 6, 2015. The earlier WhoIs record shows the registrant as "WHOIS AGENT" located in Kirkland, Washington, United States of America, while the later WhoIs record shows the registrant as REGISTRAR PRIVACY SERVICES located in Panama City, Panama.
The Domain Name resolves to a website which provides sponsored hyperlinks to gaming-related websites operated by direct competitors of Complainant.
On July 23, 2017, Complainant sent a cease-and-desist letter to Respondent at the address provided under the privacy service used by Respondent, and requested transfer of the Domain Name. Neither the privacy service nor Respondent responded to this letter.
5. Parties' Contentions
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Panel concludes that Complainant has rights in the mark EURO PALACE through registration and use demonstrated in the record. The Domain Name is confusingly similar to Complainant's mark, since it incorporates the mark EURO PALACE in its entirety. The addition of the descriptive word "casino" does not prevent a finding of confusing similarity under the first element.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
The Domain Name resolves to a website where services of Complainant's competitors are offered. This is clearly not a bona fide offering of goods or services.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Complainant alleges that Respondent had Complainant's EURO PALACE mark in mind when it acquired the Domain Name in 2015. Respondent has not denied the allegation, which is plausible in view of the differences in WhoIs registration information between March 2015 and June 2015, that it acquired the Domain Name in 2015, long after Complainant had acquired extensive trademark rights in EURO PALACE. The addition of the word "casino" to the mark in the Domain Name underscores that Respondent was obviously targeting Complainant as the word "casino" is closely associated with the types of gaming services offered by Complainant under the EURO PALACE mark.
With regard to bad faith use, the above-quoted Policy paragraph 4(b)(iv) is violated by Respondent's resolution of the Domain Name to a website where commercial links to gaming sites operated by Complainant's competitors are featured.
Complainant has established Policy paragraph 4(a)(iii).
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 <europalacecasino.com> be transferred to Complainant.
Robert A. Badgley
Date: November 7, 2017