WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Plain Support S.A v. Registration Private, Domains By Proxy, LLC / Ido Raviv
Case No. D2018-1240
1. The Parties
The Complainant is Plain Support S.A of San José, Costa Rica, represented by Brimondo AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Ido Raviv of West Byfleet, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <verajohnslots.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 June 4, 2018. On June 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 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 the Complainant on June 6, 2018 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 June 7, 2018.
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 June 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 6, 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 is the owner of the trademark VERA & JOHN in association with online betting and gaming services. The Complainant owns several trademark registrations around the world, including:
- European Union Trade Mark Registration No. 009453333 for VERA & JOHN dated February 2, 2011
- Swedish Trademark Registration No. 518814 for VERA & JOHN dated April 17, 2014
- Swedish Trademark Registration No. 518815 for VERA & JOHN Design dated April 17, 2014
- International Registration No. 1220953 for VERA & JOHN Design dated March 10, 2014
- International Registration No. 1220952 for VERA & JOHN dated March 10, 2014.
The Complainant has operated a business and website at “www.verajohn.com” in association with its online betting and gaming services featuring the VERA & JOHN trademark.
The Complainant has won several awards including Norsk Casino Year’s Best Casino 2013 and casino.se Best Casino 2013. It’s online betting services have generated revenue in excess of EUR 83 million. Internet traffic to the Complainant’s website was approximately 54,041,941 page views from December 13, 2016 to December 12, 2017, and subsequently 83,374,473 page views on <mobile.verajohn.com> from December 13, 2016 through December 12, 2017.
The Complainant also owns domain names containing the VERA & JOHN trademark, including <verajohn.com>, <verajohn.net>, <verajohn.de>, <verajohn.se> and <verajohn.co.uk>.
The disputed domain name was registered on June 27, 2012. At the time the Complaint was filed, the disputed domain name reverted to a website which redirected Internet users to an online betting and gaming website at “www.vegascasino.com”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark VERA & JOHN. The Complainant has registered rights in the VERA & JOHN trademark dating back to February 2, 2011 (listed in paragraph 4 of this Decision), which pre-date the registration of the disputed domain name. The disputed domain name <verajohnslots.com> contains the Complainant’s registered trademark almost in its entirety except for the “&” symbol. The addition of the descriptive word “slots” does not make the disputed domain name any less confusingly similar to the trademark in question.
The Complainant submits that the Respondent is not sponsored by or affiliated with the Complainant in any way, and has not been given permission by the Complainant to create, register or use the disputed domain name. The Respondent is not commonly known by the name or mark VERA & JOHN. The Complainant further contends that the Respondent is not making a legitimate or bona fide use of the disputed domain name. The Respondent is using the disputed domain to redirect Internet users to a competitor’s website at <vegascasino.com>.
The Complainant also submits that the Respondent has registered and used the disputed domain name in bad faith. The Respondent has registered and used a confusingly similar domain name for the purposes of monetary gain by redirecting Internet users to a competitor’s website at <vegascasino.com> and is thereby interfering with the Complainant’s business. The Complainant contends that the Respondent has concealed its identity which is further evidence of bad faith under the Policy. The Complainant wrote a cease and desist letter to the Respondent on April 21, 2018, and again on May 15, 2018. The Respondent did not respond to that correspondence.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest 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 finds that the Complainant does have registered trademark rights in the mark VERA & JOHN by virtue of its trademark registrations, notably the European Union Trade Mark Registration No. 009453333 dated February 2, 2011.
The test for confusing similarity is summarized at WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark VERA & JOHN, as the disputed domain name replicates the entirety of the Complainant’s registered mark except for the “&” symbol. The addition of the descriptive term “slots” does not change the analysis of confusing similarity. In fact, the addition of the term “slots” increases the risk of confusion, because the services associated with the registered trademark are “online betting and gaming” services.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, 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.”
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests.
The Complainant has owned relevant rights in the registered mark VERA & JOHN since at least as early February 2, 2011. The Respondent appears to have been fully aware of those rights when it registered the disputed domain name, because of the Respondent’s addition of the descriptive word “slots”. The Respondent has registered and used a confusingly similar domain name in association with a website that redirects Internet users to the website of a competitor of the Complainant, namely <vegascasino.com>.
Once the Complainant has established a prima facie case, the burden then shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent has not filed any materials in this proceeding.
Accordingly, the Panel finds that the Respondent is not commonly known by the disputed domain name, is not affiliated or permitted by the Complainant to register and/or use the disputed domain name, and is not using the disputed domain name in association with a bona fide offering of goods or services.
The Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As set out above, the Respondent registered the disputed domain name <verajohnslots.com> with full knowledge of the Complainant’s registered trademark rights in VERA & JOHN. The descriptive word “slots” that the Respondent chose to add to the Complainant’s trademark constitutes compelling evidence that the Respondent was fully aware of the Complainant and the Complainant’s trademark rights. The disputed domain name reverts to a website that is a direct competitor of the Complainant. This is clear evidence of bad faith under the Policy.
In the absence of any response, the Panel is therefore prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.
The Complainant has therefore satisfied the requirements 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 <verajohnslots.com> be transferred to the Complainant.
Christopher J. Pibus
Date: July 20, 2018