WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mr. Green Ltd. v. Bandilo

Case No. D2017-2026

1. The Parties

The Complainant is Mr. Green Ltd. of Sliema, Malta, represented by Ports Group AB, Sweden.

The Respondent is Bandilo of Lviv, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <mrgreencasinode.biz> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2017. On October 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 20, 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 October 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2017.

The Center appointed David Taylor as the sole panelist in this matter on December 6, 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 an online casino company based in Malta founded in 2007. The Complainant is the owner of a variety of trade marks in connection with gambling and casino services, including computer gambling software, such as:

- European Union Trade mark Registration No. 012630224, MR GREEN (figurative trade mark), registered on June 25, 2014, for goods and services in classes 28 and 41;

- International Trade mark Registration No. 1210675, MR GREEN (word trade mark), registered on February 24, 2014 (designating Austria, Switzerland, Norway, and the United States of America), for goods and services in classes 28 and 41; and

- International Trade mark Registration No. 1333553, MR GREEN (word trade mark), registered on October 11, 2016 (designating, inter alia, Ukraine and the United States of America), for goods and services in classes9, 28 and 41.

The Domain Name was created on August 21, 2017. It is resolving to a website offering a selection of online casinos.

The Respondent appears to be based in Ukraine. No further details about the Respondent are known.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to the Complainant’s MR GREEN trade mark. It states that the addition of generic terms such as “casino” and the letters “de” (which stands for a country name, “Deutschland”) does not diminish the confusing similarity with the Complainant’s trade mark. Moreover, the Complainant asserts that the addition of the Top-Level Domain (“TLD”) “.biz” is irrelevant for the assessment of confusing similarity.

The Complainant further contends that the Respondent does not have any rights or legitimate interests in the Domain Name. In this regard, the Complainant asserts that the Respondent is not a licensee of the Complainant and that the Complainant has not given the Respondent any authorization to register the Complainant’s trade mark as a domain name. The Complainant further submits that there is no evidence that the Respondent has been commonly known by the Domain Name and that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name. The Complainant also asserts that the Domain Name is not in itself generic.

The Complainant also states that the Domain Name was registered and is being used in bad faith. The Complainant states that it has been using its trade marks for many years, and registered them long before the Domain Name was registered. The Complainant further highlights that the content on the website and in the source code indicates that the Respondent was well aware of the Complainant’s prior rights and business activities. The Complainant argues that, upon examination of the source code, it can be seen that the Respondent is hiding “Mr Green” in text and images on the website and are also using png and jpeg files of Mr Green logotypes. The Complainant asserts that by doing this, the Respondent is obtaining higher Google rankings when Internet users search for products and/or services under the MR GREEN trade marks. The Complainant further argues that by using the Domain Name, the Respondent is disturbing the Complainant's business activity and is preventing the Complainant from reflecting its trade mark under the corresponding domain name. The Complainant also asserts that it sent a cease and desist letter to the Respondent but the website has not been updated nor has the Domain Name been transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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.

Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. Whilst the Complainant provided a list of trade mark registrations, the Panel notes that the Complainant did not submit supporting evidence to this effect, such as the corresponding registration certificates or extracts from the online database of the corresponding intellectual property office. Notwithstanding this fact, the Panel is satisfied that the Complainant has trade mark rights in connection with online casinos in the term “mr green” which is incorporated in the Domain Name.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. The Domain Name incorporates the Complainant’s MR GREEN trade mark in its entirety with the addition of the generic term “casino” and the letters “de”, which presumably stand for Germany. Prior UDRP panels deciding under the Policy have held that when a domain name wholly incorporates a complainant’s trade mark, it is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, given that the Complainant’s trade mark is clearly the dominant component of the Domain Name, the addition of the term “casino” and the letters “de” in the Domain Name does not diminishes the confusing similarity with the Complainant’s trade mark but rather reinforces it as the term “casino” refers precisely to the goods and services for which the Complainant’s trade marks have been registered. The nature of the generic term “casino” in this case is also relevant to the assessment of the second and third elements under the Policy, as discussed below. See Craigslist, Inc. v. Domains By Proxy, LLC / Pankaj Dhingra, WIPO Case No. D2016-1966 (“The addition of the generic term that describes the Complainant’s use of that mark reinforces the confusing similarity between the disputed domain name and the Complainant’s trademark”.) See also section 1.8 of the WIPO Overview 3.0.

The “.biz” TLD is generally disregarded under the identity or confusing similarity test as it is a functional element. See section 1.11 of the WIPO Overview 3.0.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out the following a non-exhaustive list of circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

“(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you 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 trade mark or service mark at issue.”

A complainant is required to establish a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See section 2.1 of the WIPO Overview 3.0.

The Panel has considered the arguments and evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has stated that the Respondent is not a licensee of the Complainant and that it has not given the Respondent any authorization to register the Complainant's trade mark as a domain name.

The Panel finds that the Respondent’s use of the Domain Name, which is confusingly similar to the Complainant’s trade mark, to resolve to a website displaying links to other online casinos that are in direct competition with the Complainant’s business cannot be considered a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy, as the Respondent is using the Complainant’s trade mark to “bait” Internet users searching for the Complainant and “switch” them to the Complainant’s competitors.

There is no indication that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

The Panel further finds that the Respondent’s use of the Domain Name as described above cannot be considered a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraph 4(c)(iii) of the Policy, as the Respondent is clearly obtaining some type of financial gain derived from the Complainant’s rights.

Finally, the Respondent’s lack of rights or legitimate interests in the Domain Name may also, in this case, be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”) and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As far as bad registration is concerned, the Complainant’s trade mark registrations in connection with online casinos predate the registration date of the Domain Name by at least three years. Furthermore, given the nature of the Domain Name itself, which identically reproduces the Complainant’s MR GREEN trade mark with the addition of the term “casino , a term that is descriptive of the goods and services for which the Complainant’s trade marks have been registered, and the Respondent’s subsequent use of the Domain Name (as described below), the Panel is persuaded, on balance, that the Respondent had the Complainant in mind at the time of registration of the Domain Name and deliberately registered it to take advantage of the Complainant’s rights. Therefore, the Panel finds that the Respondent registered the Domain Name in bad faith.

The Panel also finds that the Respondent’s use of the Domain Name, which is confusingly similar to the Complainant’s trade mark, to resolve to a website displaying links to the Complainant’s competitors also constitutes a classic example of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark.

Finally, the Panel also draws adverse inferences from the Respondent’s failure to respond to the Complainant’s cease and desist letter and to take part in the present proceedings.

The Panel finds that the Domain Name was registered and is being used in bad faith.

Accordingly, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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, <mrgreencasinode.biz>, be transferred to the Complainant.

David Taylor
Sole Panelist
Date: December 20, 2017