WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casumo Services Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Azaz Khan
Case No. D2017-2523
1. The Parties
The Complainant is Casumo Services Ltd. of Swieqi, Malta, represented by Ports Group AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Azaz Khan of Lahore, Punjab, Pakistan, self-represented.
2. The Domain Name and Registrar
The disputed domain name <casumocasino.win> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2017. On December 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 27, 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 December 28, 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 the Respondent of the Complaint, and the proceedings commenced on January 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2018. The Respondent sent an informal email communication on December 28, 2017, but did not submit any formal response. Accordingly, the Center notified the Parties on January 25, 2018 that it would proceed to the panel appointment.
The Center appointed James A. Barker as the sole panelist in this matter on February 5, 2018. 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 was founded in 2012 and describes itself as a leading European online gambling company.
The Complainant is the owner of a number of registered marks in the European Union, including word marks for CASUMO (hereafter referred to as “the Complainant’s trademark”). These include a mark for CASUMO, no. 010863066, with a filing date of May 7, 2012, and registration date October 3, 2012.
The Complainant provides evidence that the disputed domain name does not resolve to an active website. The Complainant provides evidence of the website to which the disputed domain name resolves. The page is a generic page headed “Website Coming Soon” and “This page is used to test the proper operation of your recent MOJO Marketplace installation of WordPress!”.
The disputed domain name was registered by the Respondent on July 29, 2017.
The Complaint was originally filed against a privacy service. After the commencement of these proceedings, the Registrar confirmed that the disputed domain name was registered in the name of “Azaz Khan” of Lahore, Pakistan.
The Complainant’s mark has been the subject of a series of past decisions under the Policy: See among others Casumo Services Limited v. Ronny Iversen / Prioritet Norge AS, WIPO Case No. D2015-1653; Casumo Media Limited v. WhoisGuard, Inc. / Bonus Network, WIPO Case No. D2017-0892 (although there was a differently named complainant in that case, the Panel has inferred that it has some commercial relationship with the Complainant in this case); Casumo Services Limited v. Park HyungJin, WIPO Case No. D2014-1203. The latter case involved the same terms (“casumocasino”) that are in issue in this case, except with a different generic Top-Level Domain (“gTLD”). None of those cases touched on the relationship between the Complainant and Casumo Media Limited, if any.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its mark, because the mark is clearly recognizable in the disputed domain name. The gTLD “.win” does not dispel this confusing similarly, as the gTLD is generally disregarded in assessing confusing similarity. The generic word “casino” increases the risk of confusion since the Complainant is active in this industry.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, and has not been given any authorization to register the Complainant’s mark. There is no evidence that the Respondent is commonly known by the disputed domain name.
The Complainant, finally, says that the disputed domain name was registered and is being used in bad faith. The Complainant says that the disputed domain name clearly targets people who are interested in online casino services, and the browser heading “Casumo Free Spin” at the Respondent’s website, makes it obvious that the Respondent was well aware of the Complainant’s prior rights and business when the disputed domain name was registered. The disputed domain name is not being used in connection with a genuine, noncommercial website, but is rather a pretext for cybersquatting. The Complainant also notes that the disputed domain name was registered with a privacy service.
The Complainant sent a cease-and-desist letter to the Respondent (although does not indicate whether it received any reply).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove 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 was registered in bad faith and is being used in bad faith.
Each of these three elements are discussed in turn below.
A. Identical or Confusingly Similar
The Complainant claims to have registered trademark rights for CASUMO. An initial difficulty which the Panel has with this is that previous cases involving the Complainant’s mark (cited above) have variously involved either the Complainant (Casumo Services Limited) or what the Panel presumes is a related entity (Casumo Media Limited) which has its place of business in Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. The Panel is somewhat concerned that the Complainant in this case claims to have rights in the same trademarks (e.g., no. 010863066) in which the separate Complainant in that case also lays claim. The Complainant’s evidence of its marks, in this case, list it only as the “applicant” for those marks – there is no direct evidence that it is, in fact, the registrant. As the Complainant’s relationship with that other entity is entirely unexplained in the Complaint, it is also unknown to the Panel why the Complainant, Casumo Services Ltd, has brought these proceedings, rather than Casumo Media Limited.
While this was unfortunately unexplained in the Complaint, the Panel has nevertheless proceeded to a decision on the basis that the Complainant has some “rights” in its claimed mark. It has been accepted in a number of previous decisions under the Policy that the Complainant in this case has such rights: in addition to those mentioned above see, e.g., Casumo Services Limited v. Ido Raviv, Net Games Inc., WIPO Case No. D2014-0442. The mark also corresponds with the name of the Complainant and the Complainant was the “applicant” for that mark. So there is at least a colorable case that the Complainant retains some rights in it. As there is no Response, the Complainant’s rights in that mark are otherwise undisputed.
The disputed domain name entirely incorporates the CASUMO mark, and merely adds a descriptive term (“casino”). It is well established under the Policy to find that the entire incorporation of a mark in a domain name, including a domain name that adds a descriptive word, may be sufficient for a finding of confusing similarity. See, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
Further, in the Panel’s view, the addition of the descriptive term “casino” is one that an Internet user might readily associate with the Complainant’s business. As such, the addition of that term is only likely to reinforce the confusing similarity with the Complainant’s mark.
These findings are consistent with similar findings of the panel in Casumo Services Limited v. Park HyungJin, WIPO Case No. D2014-1203, which also considered whether the terms “casumocasino” was confusingly similar to the Complainant’s CASUMO mark.
For these reasons, the Panel considers that the Complainant has established that the disputed domain name is confusingly similar to a trademark in which it has rights, for the purpose of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second thing which the Complainant must establish to succeed is that the Respondent has no rights or legitimate interests in the disputed domain name. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), for this element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating such rights or legitimate interests.
In the circumstances, the Complainant has made a brief but sufficient case against the Respondent. The Respondent has not submitted a substantive Response. As such, the Complainant’s case stands unanswered. There is otherwise no evidence in the case file that would suggest the Respondent has rights or legitimate interests in the disputed domain name. Instead, the evidence of bad faith (outlined below) strongly indicates that the Respondent also lacks rights or legitimate interests.
For these reasons, the Panel considers that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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.
In the absence of a Response, there is limited evidence as to the conduct or business of the Respondent in relation to the disputed domain name. As such, there is little evidence that is suggestive of the types of bad faith set out in paragraph 4(b)(i) – (iii) of the Policy.
There is however evidence that the Respondent has registered and used the disputed domain name in bad faith, as described in the additional circumstance of bad faith in paragraph 4(b)(iv) of the Policy. The Complainant has a registered mark which appears to the Panel to be relatively distinctive. As noted by the Panel in Casumo Services Limited v. Ronny Iversen / Prioritet Norge AS, WIPO Case No. D2015-1653: “the Complainant’s trademark is a fanciful name with no meaning”.
Given the limited evidence in the Complaint, the Panel also undertook research in the form of a Google search for “casumo”, for which all the top results relate to the Complainant’s business. In light of this, the Panel considers it highly likely that the Respondent was aware of the Complainant’s mark and chose the disputed domain name because of the confusing association it would create with that mark. The Respondent’s selection of the term “casino” in the disputed domain name, only reinforces that impression. The Complainant provides evidence that the browser heading “Casumo Free Spin” appears (presumably automatically) at the Respondent’s website. While no developed website appears at the disputed domain name, the Panel considers there is a reasonable inference that this activity was undertaken deliberately by the Respondent in some hope of financial gain. In the circumstances, the Panel cannot conceive of any good faith use the Respondent could make of the disputed domain name that would not have the effect of creating a misleading impression of association with the Complainant’s CASUMO mark, and considers the Respondent’s conduct in this case to amount to use of the disputed domain name in bad faith.
The Respondent has also sought to mask its identity with a privacy service. As indicated in section 3.6 of the WIPO Overview 3.0, in appropriate circumstances, this can be a further indicator of bad faith. While there can be legitimate reasons for a domain name registrant to use a privacy service, the Respondent in this case has not come forward with any. And the Panel cannot think of a good reason, given all the other indications of bad faith in this case, for the Respondent to have used a privacy service. Given those indications, the Panel thinks it is more likely that the Respondent merely used a privacy service as a convenient means to conceal its identity.
For these reasons, the Panel finds that the disputed domain name was registered and has been used 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 <casumocasino.win> be transferred to the Complainant.
James A. Barker
Date: February 18, 2018