WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cyberplay Management Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / DIREX NV and Johann Mayer
Case No. D2019-2992
1. The Parties
Complainant is Cyberplay Management Ltd., Malta, represented by Mapa Trademarks SL, Spain.
Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / DIREX NV, Curacao and Johann Mayer, Austria, represented by Soft Swiss, Belarus (“Respondent”).
2. The Domain Names and Registrars
The disputed domain names <lokicasino16.com>, <lokicasino17.com>, <lokicasino18.com>, and <lokicasino19.com> are registered with GoDaddy.com, LLC, and the disputed domain name <lokicasino.com> is registered with NameCheap, Inc. (The disputed domain names are referred to as the “Domain Names.”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 4, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On December 4 and 5, 2019, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 5, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and to provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all Domain Names are under common control; and/or file a separate complaint for any Domain Names for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate which domain names will no longer be included in the current Complaint. Complainant filed an amended Complaint on December 9, 2019.
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 December 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2020. The Center received an email communication from Respondents on December 13, 2019, and Respondents requested on December 30, 2019, an automatic four calendar day extension for response under paragraph 5(b) of the Rules. On January 2, 2020, the Center granted Respondents the extension of time, rendering the Response due date January 6, 2019.
On January 1, 2020, Respondent contested the notification procedure. The Center confirmed on January 2, 2020 that the notification procedure complied with due process. Accordingly, the Response was filed with the Center on January 6, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 16, 2020. 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.
Complainant provided various information and argumentation to justify filing a single Complaint involving several Domain Names, despite the fact that the named registrants were nominally different for each Domain Name. There is no need to parse this information here, because Respondent has conceded that it owns and controls each of the Domain Names.
4. Factual Background
According to Complainant, it is “an online casino with a great variety of slots”. Imbedded within the Complaint is an excerpt of an undated “Dynamic Seal of Authorisation” issued by the Malta Gaming Authority granting Complainant a Gaming Service License.
Complainant currently operates its online casino at the domain name <loki.com>. Complainant alleges that it has owned that domain name since September 16, 1992. Complainant applied for a European Union trademark for LOKI on January 10, 2017. That mark was registered on September 6, 2017 with the registration number 016240641, in connection with, among other things, casino services.
There is nothing in the record showing any use by Complainant of the mark LOKI in connection with an online casino (or any type of casino or gaming service) prior to the January 10, 2017, trademark application date. Respondent provided several screenshots from the Wayback Machine (“www.archive.org”), and the Panel on its own initiative also reviewed the Wayback Machine history of use of Complainant’s domain name <loki.com>. A discussion of these results follows.
On July 8, 1997 (the first date of a web page capture by the Wayback Machine), the website stated:
“Search the INTERNET (…)
Copyright © 1994-97, DirecTell, Inc.”
On June 3, 2006, the website “www.loki.com” included the following content:
“Loki is the first application to combine the physical with the digital to make the Internet a truly personal and local experience. We let you harness the World Wide Web by automatically identifying your exact physical location and then making the web revolve around you.
With one click, instantly find the nearest jazz band, directions to the closest Thai restaurant, the cheapest gas prices in town...or even pinpoint your exact location on a map. You can even share that location with others.”
On June 4, 2013, the website stated:
“By determining a website visitor’s precise location, Loki can enable instant store finders, hyper-local advertising, more engaging social networking features, and improve overall usability.”
On May 7, 2016 (the last web page captured by the Wayback Machine prior to Respondent’s registration of the Domain Name <lokicasino.com>), the website posted an error notice indicating that the domain name <loki.com> was being redirected to “www.skyhookwireless.com”.
On September 18, 2017 (12 days after Complainant had secured the European Union trademark registration for LOKI), Complainant’s website stated: “LOKI.COM is currently being parked by the owner.”
In sum, there is no evidence in the record that Complainant ever used the domain name <loki.com> in connection with any casino or gaming activities prior to the dates on which Respondent registered the Domain Names (the Domain Name <lokicasino.com> was registered on May 16, 2016, and the four other Domain Names were registered on January 11, 2017); those Domain Names resolved to similar pages with online gaming platforms.
Respondent operates an online casino. Respondent denies having any knowledge of Complainant or any LOKI trademark associated with casino or gaming activities. Respondent also notes that the term “loki” has various meanings and is not a coined word.
On September 16, 2019, Complainant’s counsel sent a pair of cease-and-desist letters to Respondent, who did not reply to the letters.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Names.
Respondent disputes that Complainant had any trademark rights prior to Respondent’s registration of the Domain Names, and that Respondent did not register or use the Domain Names in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark LOKI through registration demonstrated in the record. The Panel also finds that each of the Domain Names is confusingly similar to Complainant’s registered trademark. The Domain Names incorporate the entire LOKI mark and add the descriptive word “casino” (and in some cases a number). These minor additions do not sufficiently diminish the confusing similarity between the Domain Names and Complainant’s mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, 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 Names or a name corresponding to the Domain Names 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 Names, 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 Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel need not consider this issue, given its conclusion below on the “bad faith” issue.
C. Registered and Used in Bad Faith
For each of the Domain Names, 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 Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations 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 Names; or
(ii) that Respondent has registered the Domain Names 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 Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online 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 Complainant has not come close to carrying its burden of proving that Respondent registered and used the Domain Names in bad faith. The record is devoid of any allegation, much less proof, that Complainant had a registered trademark at the time the Domain Names were registered. With respect to unregistered trademark rights, the record lacks any evidence of Complainant using LOKI as a trademark in connection with casino and gaming services. As noted above, the trademark application was filed a single day before Respondent registered four of the Domain Names, and several months after Respondent registered the other Domain Name. In addition, Complainant’s website at “www.loki.com” does not appear to have featured casino and gaming services until well after the Domain Names were registered.
Respondent flatly denies that it had knowledge of Complainant or its LOKI mark when the Domain Names were registered. The Panel finds that denial plausible. The Panel adds that “loki” is not a coined word (which could give rise to an inference that someone using a coined word is likely referring to the trademark owner’s services). On this record, there appears to be no reason why Respondent would have known about Complainant and its LOKI trademark used in connection with casino and gaming services. Rather, the record tends to show that Respondent started registering “Loki Casino” Domain Names before Complainant launched its online casino.
The Complaint fails to establish Policy paragraph 4(b).
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: January 22, 2020