WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swiss Casinos Brands AG v. Registration Private, Domains By Proxy, LLC / Laurent North
Case No. D2020-1128
1. The Parties
Complainant is Swiss Casinos Brands AG, Switzerland, represented by Wild Schnyder AG, Switzerland.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Laurent North, France.
2. The Domain Name and Registrar
The disputed domain name <swisscasinoonline.org> (the “Domain Name”) 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 6, 2020. On May 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 7, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 8, 2020, 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 May 13, 2020.
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 May 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 9, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 15, 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.
4. Factual Background
According to Complainant, it “is well known in Switzerland and beyond the borders for setting up and operating casinos. With its four casinos – including SWISS CASINOS Zürich, SWISS CASINOS Pfäffikon-Zürichsee, SWISS CASINOS Schaffhausen and SWISS CASINOS St. Gallen – it achieved in the year 2018 accumulated earnings in the amount of CHF 159.0 million. In the year 2017, the accumulated earnings were 161.3 million”.
Complainant holds various trademarks for SWISS CASINO, including Swiss mark P-551086 registered on March 2, 2006, and Swiss mark 418930 registered on March 31, 1995. Complainant also owns the International trademark 1444104 for SWISSCASINO, registered on April 20, 2018. Complainant asserts that its marks are well known in the area of gaming and casinos, and provides Google search results to corroborate this assertion.
Complainant operates a commercial website at “www.swisscasinos.ch”, a domain name Complainant has owned since June 30, 2010. Complainant has also owned the domain name <swisscasinos.com> since April 18, 1996.
The Domain Name was registered on May 27, 2016. The Domain Name resolves to a website in the German language, which purports to provide information about the “top” casinos in Switzerland. According to Complainant, there is no list of top casinos provided; rather there is always a link to the same casino, a competitor of Complainant’s located in Davos. Complainant alleges that Respondent derives income via the hyperlink to the Davos casino’s website.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not respond to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is 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 Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark SWISS CASINOS and SWISSCASINO through registration and use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to those marks. The only non-trivial difference between the marks (one of which refers to casino in the singular and one of which refers to casinos in the plural) and the Domain Name is the latter’s addition of the dictionary word “online”. This additional word does not overcome the fact that Complainant’s marks are still recognizable within the Domain Name, and constitute the dominant portion thereof, see section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)..
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, 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 Name or a name corresponding to the Domain Name 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 Name, 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 Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to explain his bona fides vis-à-vis the Domain Name. Moreover, the undisputed record in this case indicates that Respondent, who has no relationship with nor any permission from Complainant, has used the Domain Name, for commercial gain, to redirect users to a website of Complainant’s competitor. Such conduct does not confer rights or legitimate interests within the meaning of the Policy.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
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 Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration 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 Name; or
(ii) that Respondent has registered the Domain Name 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 Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, 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 Respondent registered and used the Domain Name in bad faith. The Panel finds it more likely than not that Respondent had Complainant’s SWISS CASINOS and SWISSCASINO marks in mind when registering the Domain Name. Complainant provided evidence in the record that its marks enjoy a fair measure of renown. Further, because Respondent held himself out (on his website) as something of an authority on Swiss casinos (by promising to furnish a “top ten” list of same), it appears quite likely that Respondent was well aware of Complainant’s marks.
As respects bad faith use, Respondent’s site contains a hyperlink to the commercial website of a casino from the Swiss city of Davos. The Panel accepts as plausible Complainant’s contention, not denied by Respondent, that Respondent derives commercial gain from this hyperlink. Such conduct constitutes bad faith within the meaning of the above-quoted Policy, paragraph 4(b)(iv).
Complainant has established Policy, paragraph 4(a)(iii).
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 <swisscasinoonline.org> be transferred to Complainant.
Robert A. Badgley
Date: June 16, 2020