WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jackpotjoy Operations Ltd, Dumarca Holding Limited v. Anthony Von Ducci
Case No. D2018-1218
1. The Parties
Complainants are Jackpotjoy Operations Ltd and Dumarca Holding Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) (hereinafter jointly and severally referred to as “Complainant”), represented by Brimondo AB, Sweden.
Respondent is Anthony Von Ducci of Richmond, Canada (hereinafter referred to as “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <jackpotjoy247.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2018. On May 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2018, 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 Complainant on June 11, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 11, 2018.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 5, 2018.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 10, 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
Complainant comprises subsidiaries of Jackpotjoy Group PLC and holds JACKPOTJOY registered trademarks, the earliest of which was registered on December 23, 2005. Complainant has licensed the trademarks to Profitable Play Limited for the use with betting and gaming service located at the web site to which the domain name <jackpotjoy.com> resolves. The website was founded in 2001 and currently has four million members. During the 12 months preceding April 30, 2018, the website had more than 7,000,000 users. The trademarks have been in use since 2005. Complainant and the parent corporation are the recipients of numerous awards given to operators of gaming web sites.
Respondent registered the disputed domain name on February 27, 2015, approximately more than nine years after the registration of the JACKPOTJOY mark by Complainant and more than nine years after Complainant’s first use of the trademark in connection with Internet gaming purposes. Respondent has used the disputed domain name to resolve to a website located at “www.bodog.eu”, a website which is used for Internet gaming.
Complainant’s counsel sent two cease and desist letters to Respondent by email, the first on April 21, 2018, and the second on May 15, 2018. Respondent did not reply to either of the two notifications.
5. Parties’ Contentions
Complainant contends that the domain name at issue is confusingly similar to its registered JACKPOTJOY trademarks. Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name in that Complainant never authorized Respondent to use its JACKPOTJOY marks and Complainant promptly objected to Respondent’s use of the disputed domain name by two separate communications, both of which were disregarded by respondent. Finally, Complainant alleges that the disputed domain name has been registered and is being used in bad faith, since Complainant’s long use of the trademarks on the Internet must have been known by Respondent, and moreover since Respondent has used the mark at issue to resolve to a web site which offers services similar to those offered by Complainant’s authorized representative.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.”
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s long established JACKPOTJOY trademark to which the numbers 247 have been appended and the gTLD suffix, “.com”. Panels have long held that domain names which consist of a trademark belonging to a complainant to which a common word or number has been attached are confusingly similar. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that Respondent must have known of Complainant’s trademarks prior to Respondent’s registration of the disputed domain name, since Complainant’s licensee had been using Complainant’s marks on Internet gaming web sites for almost ten years prior to Respondent’s registration of the disputed domain name, and because Respondent immediately began using the disputed domain name to resolve to an Internet web site at which Internet gaming was being offered to users. Moreover, the use of the numbers “247” heightens the likelihood of confusion between the disputed domain name and the Complainant’s trademarks in that “247” suggests the common expression “twenty-four, seven,” an expression which indicates that something is available twenty-four hours a day, seven days a week, which online gaming sites indeed are. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and the express request of Complainant, the Panel orders that the disputed domain name, <jackpotjoy247.com>, be transferred to the first Complainant, Jackpot Joy Operations, Ltd.
M. Scott Donahey
Date: July 10, 2018