WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oranje Casino Ltd., BML Group Limited v. Registration Private, Domains By Proxy, LLC / Jorn Oranje / Nevada x / M.L. Groottebrug, Sersk BV / Eric Mijnlieff / Marc Green, Private Registration, NameBrightPrivacy.com / Max Wood
Case No. D2021-1228
1. The Parties
The Complainants are Oranje Casino Ltd (First Complainant) and BML Group Limited (Second Complainant), Malta, represented by CSC Digital Brand Services Group AB , Sweden.
The Respondents are: Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Jorn Oranje, Netherlands / Nevada x, Netherlands / M.L. Groottebrug, Sersk BV, Netherlands / Eric Mijnlieff, Netherlands / Marc Green, Netherlands / Private Registration, NameBrightPrivacy.com, United States / Max Wood, United Kingdom.
2. The Domain Names and Registrars
The disputed domain names <casinowinner.casino>, < loyal.casino>, <oranje.casino>, <winnenincasino.com>, <winnercasino.casino> are registered with GoDaddy.com, LLC.
The disputed domain name <casino-winner.com> is registered with DropCatch.com LLC.
(GoDaddy.com, LLC and DropCatch.com LLC are hereinafter referred to as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2021. On April 21, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 21, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center received three email communications from one of the Respondents on April 26 and April 27, 2021. The Center sent an email communication to the Complainant on April 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received three email communications from the same Respondent on April 29 and April 30, 2021. The Complainant filed the first amended Complaint on May 4, 2021 and the second amended Complaint on May 12, 2021. The Center further received two email communications from different Respondents on May 21 and May 26, 2021.
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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021, and was extended to June 19, 2021. Two different responses were submitted on June 18 and June 19, 2021. The Complainant submitted a supplemental filing on July 5, 2021. One of the Respondents submitted a supplemental filing on the same date.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 6, 2021. 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 two Complainants are wholly-owned subsidiaries of Betsson AB. Betsson AB claims to be one of the largest online game companies in Europe and is listed on the NASDAQ Stockholm with revenue of SEK 6.4 million. It has a number of online casino and gaming brands.
The First Complainant began operating as “Oranje Casino” from the domain name <oranje.com> in 2000. It was acquired by Betsson AB in 2014. In 2019, the business formerly being conducted as “Oranje Casino” was in some way transferred to or “rebadged” as “Loyal Casino” which was, and is, operated by the Second Complainant from <loyalcasino.com>.
In 2014, Betsson AB also acquired the business of Kroon Casino being operated from <krooncasino.com>. In 2019, the business was in some way transferred to, or rebadged as, “Casino Winner” operating from <casinowinner.com>.
The First Complainant is the owner of:
(a) Benelux Registered Trade Mark No. 731682, ORANJE CASINO, which was filed on June 25, 2003 and registered on October 1, 2003 in respect of a range of computer hardware, software, games and entertainment and gaming services in International Classes 9, 28, and 41;
(b) European Union Trade Mark (EUTM) No. 006197784, ORANJE CASINO, which was filed on August 14, 2007 and registered on October 9, 2008 in respect of a range of computer hardware, software, games and entertainment and gaming services in International Classes 9, 28, and 41;
(c) EUTM No 014391941, ORANJE CASINO and device, which was filed on July 21, 2015 and registered on December 22, 2015 in respect of a range of computer hardware, software, games and entertainment and gaming services in International Classes 9, 28, and 41.
The Second Complainant is the owner of:
(a) EUTM No 018119018, L LOYAL CASINO and device (as set out below), which was filed on September 3, 2019 and registered on January 9, 2020 in respect of a range of computer hardware, software, games and entertainment and gaming services in International Classes 9, 28, and 41;
(b) EUTM No 018176440, CASINO WINNER POWERED BY WINNERS and device (as set out below), which was filed on January 8, 2020 and registered on May 22, 2020 in respect of a range of computer hardware, software, games and entertainment and gaming services in International Classes 9, 28, and 41;
(c) United Kingdom Registered Trade Marks corresponding to EUTM No 018119018 and EUTM No 018176440 numbered, respectively, UK00918119018 and UK UK00918176440.
Information submitted by the Second Respondent (and not disputed by the Complainants) indicates that Corona Limited, which was then operating the Oranje Casino and Kroon Casino, was fined EUR 300,000 by the Dutch authorities for operating unlicensed online casinos and gaming services in the Netherlands. The decision imposing the fines was initially pronounced in July 2018 and confirmed in February 2019.
Based on WhoIs information and the Responses, the disputed domain names were registered as follows:
Disputed domain name
June 3, 2015
April 22, 2019, 09:02
April 22, 2019, 08:27
April 22, 2019, 08:31
February 28, 2018
April 22, 2019
April 26, 2021
April 27, 2021
An historical print-out included in the Complaint shows that the first disputed domain name resolved to a website at <oranje.casino>. The landing page described the website as “the Oranje Casino partner site”. It stated the casino had been licensed by the Malta Gaming Authority (MGA) since 2004, making it the first online casino for Flemish players. The website provided further information about the nature of the games and experience available at “Oranje Casino”. It appears to have provided a link to a bonus for 100 spins and 100% up to EUR 200 bonus. According to the disclaimer on the website, it was not possible to play games on the website itself. One presumably needed to click through to the official “Oranje Casino” website.
When the Complaint was filed, the first disputed domain name redirected to a website headed “Loyal Casino”. Like the landing page for the historical <oranje.casino> website, the landing page stated the casino had been licensed by the MGA since 2004, making it the first online casino for Flemish players. The website provided further information about Loyal Casino, offered an opportunity to register for a Welcome Bonus of EUR 100 + 250 free spins. It appears that the website also did not itself offer gaming, but linked through to the Complainant’s website.
Both forms of landing page noted that Betsson AB had acquired the respective businesses in 2014.
When the Complaint was filed, the second disputed domain name, <loyal.casino>, resolved to a page very similar to, if not the same as, the page to which <oranje.casino> redirected. Under the heading “Loyal Casino”, it stated “Welcome to the Loyal Casino information site. This casino has been licensed by the [MGA] ….”
When the Complaint was filed, the third disputed domain name, <casinowinner.casino> resolved to a website providing information about online gambling at the “Casino Winner” website said to be part of the Betsson Casino group. This webpage featured a bonus to register for “100 spins + 100% up to EUR200 bonus!” in identical layout and form to the corresponding bonus on the historical <orange.casino> website. The colour scheme was orange with a red or burgundy stripe down the right hand margin.
By the time the second amended Complaint was filed, the landing page had changed to one headed “Winner Casino”. The colour scheme changed to a royal blue background. Much of the text and the “bonus” registration button was the same or similar to the previous versions.
The fourth disputed domain name does not appear to have resolved to a website.
The fifth disputed domain name resolved to a website formatted differently to the other websites. It is headed “Casino” with a link to “Register”. After listing tabs for various types of gaming, it is headed:
“Welcome to the Casino Winner info site, the site with information about the well-known Maltese casino. We will provide you with info about all casino winner games, all bonuses, the options for fee sign up and current promotions at casino winner.”
Beneath this is a “button” to register now for “EUR200 + 50 Fee Spins” and then links to “play now” live games such as Blackjack, Roulette etc.
By the time the second amended Complaint was filed, the heading “Casino Winner” had been changed to “Winner Casino”.
The links on this website link through to games provided at the “www.winner.com” website. The “www.winner.com” website is operated by another entity licensed by the MGA, Universal Entertainment Services Malta Limited (C-60452). According to the Second Respondent, this entity is independent of the Betsson group.
The sixth disputed domain name, <winnenincasino.com> initially resolved to a webpage like the “Winner Casino” page to which the third disputed domain name resolved when the second amended Complaint was filed. By the time the second amended Complaint was filed, however, this disputed domain name did not resolve to an active website.
5. Discussion and Findings
Responses have been filed by:
(a) the Respondent Max Wood in respect of the fifth disputed domain name, <casino-winner.com>; and
(b) the Respondent Eric Mijnlieff, DutchDeals, in respect of the first four disputed domain names.
Accordingly, the Panel proceeds on the basis that they hold, or control, the disputed domain names for which they have submitted Responses.
No response has been filed by the Respondent, Marc Green, who is the registrant of the sixth disputed domain name <winnenincasino.com>. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that this Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances.
Accordingly, paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
The Panel admits both supplemental filings into the record pursuant to the discretion under Rule 10. The Respondents raise arguments in their respective Responses which could not reasonably be anticipated and should be addressed. The First Respondent has also taken the opportunity to reply. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.
A. Consolidation of Complaints
The Complainants request consolidation of their respective Complaints.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.
(i) the complainants have a specific common grievance against the respondent, or
(ii) the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and
(iii) it would be equitable and procedurally efficient to permit the consolidation.
In the present case, both Complainants are members of the same corporate group. The First Complainant complains about conduct by the Second Respondent which involves the First Respondent’s domain name and redirects to a website about which the Second Complainant complains. The Panel considers this is sufficient to give rise to a common grievance and, further, that the conduct affects the Complainants in a similar fashion.
There is no suggestion of any disadvantage or unfairness arising from consolidation of the Complaints. It would also be inefficient to require separate proceedings involving the same website.
Accordingly, the Panel permits joinder of the two Complaints in this one administrative proceeding.
B. Consolidation of Respondents
Panels have exercised their discretion to permit joinder of complaints against multiple respondents where for example it appears that the disputed domain names or the websites to which they resolve are in reality held by the same person or under common control and consolidation would be fair and equitable to all parties. See WIPO Overview 3.0, section 4.11.2.
While the WhoIs information suggests that the first to fourth disputed domain names are held by different people, the Second Respondent has submitted a Response in respect of all four. Accordingly, the Panel proceeds on the basis that the Second Respondent controls, or represents the controllers of, all four disputed domain names.
As recited above, the sixth disputed domain name has resolved to a website which is essentially the same as the website to which the third disputed domain name resolved as to both content and appearance. Although the sixth disputed domain name no longer resolves to that website, it would appear therefore that the respective holders were working together. There does not appear to be any unfairness or prejudice to the Third Respondent if joinder be allowed. The Third Respondent has not suggested any prejudice.
Accordingly, the Panel considers that consolidation of the Complaints against both the Second and Third Respondents is appropriate.
The fifth disputed domain name resolves to a website which provides information about the website “www.winner.com”. The information is similar to the information provided by the website to which the third and sixth disputed domain names resolved. The website presented rather differently in terms of imagery, layout and colour. The fifth disputed domain name does involve the two words “casino” and “winner” as the third and fourth disputed domain names, but is somewhat different in structure.
As the Complainants point out, however, the telephone number in the WhoIs for the fifth and sixth disputed domain names is the same, although they were registered in the relevant Respondent’s name at least one year apart. Also the websites to which the third and sixth disputed domain names resolved included links to the fifth disputed domain name. Given the similarity of content and common basis of complaint – the Second Complainant’s claimed rights in “Casino Winner”, joinder would be more efficient than separate hearings. Neither the First nor Second Respondent has objected to joinder, although each has submitted a separate Response.
With some reservation, therefore, and mindful of the outcome dismissing the Complaint, the Panel considers it appropriate to allow joinder of the First and Second Respondents in this proceeding.
C. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain name(s) it objects to is identical with, or confusingly similar to, the Complainants’ trademark rights.
There are two parts to this inquiry: the Complainants must demonstrate that one of them has rights in a trademark at the date the Complaint was filed and, if so, the relevant disputed domain name must be shown to be identical or confusingly similar to the trademark.
The First Complainant has proven ownership of the registered trademark for ORANJE CASINO identified in section 4 above.
The Second Complainant has proven ownership of the registered trademarks:
(a) L LOYAL CASINO; and
(b) CASINO WINNER POWERED BY WINNERS (fancy).
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of "likelihood of confusion" under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, section 1.7.
The first disputed domain name
The Second Respondent contends that the First Complainant’s trademark is for the composite expression “Oranje Casino” while his domain name is just “Oranje” alone – he claims he has not registered “Oranjecasino.casino”. While that is true, it misses the point.
Generally, in undertaking the comparison, it is permissible to disregard the Top-Level Domain (“TLD”) component of a disputed domain name as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. However, that is not an invariable rule, particularly having regard to the vast expansion of TLDs over the original generic TLDs. Thus, the TLD component can be taken into account where an overall assessment of the disputed domain name as a whole discloses the visual and aural resemblance to the Complainant’s trademark. See e.g. Plan.Net concept Spezialagentur für interactive Kommunikation GmbH v. Murat Yikilmaz, WIPO Case No. D2006-0082 and WIPO Overview 3.0, section 1.11.3.
Accordingly, the first disputed domain name is identical to the First Complainant’s trademark.
The second disputed domain name
As shown in section 4 above, the Second Complainant’s trademark consists of a device element featuring the letter “l” and the words “loyal casino”.
In undertaking the comparison, it is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10.
In the present case, the device element “L” is a prominent part of the trademark. The words “loyal casino”, however, are also a significant and distinct component of the trademark. The letter “l” contained within the device element emphasises the initial letter of “loyal” and reinforces the importance of that term. The trademark might be referred to as the “L” trademark. In many contexts, however, it is more likely that the public would understand it and refer to it as the “loyal casino” trademark. Therefore, the approach indicated in WIPO Overview 3.0 section 1.10 is appropriate.
The words “loyal” and “casino” are ordinary English words. It would be something of a misnomer, however, to describe a casino as “loyal”. The expression in combination is not really descriptive or directly laudatory in the way that an expression like, say, “best casino” would be. Applying the same approach as for <oranje.casino>, therefore, the Panel finds that the second disputed domain name is identical to the Second Complainant’s trademark.
The third, fourth, fifth and sixth disputed domain names
As shown in the depiction in section 4 above, the words “casino winner” are clearly a prominent part of this trademark. However, they are essentially descriptive and it is only in the context of the trademark as a whole that they are likely registrable. They are nonetheless clearly recognisable within the disputed domain names albeit in the fourth and sixth disputed domain names in reversed order and, in the sixth disputed domain name, in an altered form “winnenin”.
In cases of doubt such as this, it is permissible to take into account the content of a website which a disputed domain name resolves to and confirm confusing similarity where it appears the disputed domain name seeks to target the trademark through the disputed domain name. See WIPO Overview 3.0, section 1.15.
In the case of the third and sixth disputed domain names, that examination confirms the Respondents are targeting the trademark. Accordingly, the Panel finds that each of these disputed domain names is confusingly similar to the Second Complainant’s trademark.
The fourth disputed domain name does not resolve to a webpage. It is, however, registered to the Second Respondent, was registered a mere four minutes after the third disputed domain name. It merely reverses the order of the two words “casino” and “winner”. While that reversal cannot be described as a simple typographical error, the Panel considers it is as conducive to mistaken recollection as many examples of so-called “typosquatting”. See WIPO Overview 3.0, section 1.9. Accordingly, the Panel finds this disputed domain name is also confusingly similar to the Second Complainant’s trademark.
The content of the website at the fifth disputed domain name is similar to the other websites, albeit presented differently. Much of that content appears to relate to a different party’s website. However, the registrant used the same telephone number as the registrant of the sixth disputed domain name and there have been links from the third and sixth disputed domain names to the website at the fifth disputed domain name. Overall, the Panel considers the Complainant had shown enough to satisfy the standing requirement under the Policy. Issues arising from the nature and content of the website are better addressed under the other requirements.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar or identical, respectively, with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainants must prove is that the relevant Respondent has no rights or legitimate interests in the applicable disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainants. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainants state that they have not authorised the Respondents to use the disputed domain names. Nor are the Respondents affiliated with them. The disputed domain names are not derived from the Respondent's names.
The First Respondent
The First Respondent contends he acquired the fifth disputed domain name before the Second Complainant acquired its trademark and also before the Second Complainant started using the <casinowinner.com> domain name. The Second Complainant replies, however, that its lengthy communication announcing its intention to rebrand to “Casino Winner” was emailed out to all its subscribers on April 21, 2019; that is, the day before the First Respondent acquired the fifth disputed domain name. The Second Complainant contends it is likely, therefore, that the First Respondent had notice of its plans and opportunistically sort to register its new brand.
The First Respondent points out that “casino winner” is a wholly descriptive term. The website to which the fifth disputed domain name resolves is very different in format to those operated by the Second Respondent. It contains some rudimentary information about online gambling and links through to the website at “www.winner.com” operated, apparently, by a company independent of the Betsson group. It does not appear to reference the Betsson group’s operations at all.
The Complainants point out that the First Respondent changed the name on the website after the Complaint was filed from “Casino Winner” to “Winner Casino”. According to the Complainants this indicates the First Respondent did not have a legitimate purpose. The use of the same telephone number as the Third Respondent and the links to the First Respondent’s website from the websites at the third and sixth disputed domain names indicate some connection or association between the parties.
The Panel accepts that “Winner Casino” is a more accurate description of the First Respondent’s website and connection with the website “www.winner.com”. The Panel questions, however, the extent to which the gambling public is likely to distinguish between “Winner Casino” and “Casino Winner”. Indeed, the Complainants’ objection to the fourth and sixth disputed domain name is predicated on the likelihood that the gaming public does not. Moreover, the latter expression is nonetheless descriptive.
In addition, the First Respondent also provides evidence of dealing with the Winner.com entity since 2010 including that entity seeking promotions for the webpage at “http://casino.winner.com/ironmanpromo/”. It is not clear from the Response or submitted evidence what domain name or website the First Respondent was using at this time. The Complainants also point out that the URL “www.casino.winner.com” redirects to “www.winner.com/casino” now. That does not gainsay the historical use.
In these circumstances, the Panel considers the First Respondent has rebutted the prima facie inference that he does not have rights or legitimate interests in the fifth disputed domain name. The expression “casino winner” is directly descriptive. It is being used in connection with a service providing links to the Winner.com online gaming site. There are images on the First Respondent’s website similar to those on the Second Complainant’s website. However, they are different images and arranged and presented differently. The similarity appears to result from the fact that both websites are promoting links to the same type of games such as roulette, black jack and other common casino games. The Complainants can have no monopoly over the use of such images to promote such services.
These circumstances are sufficient, noting also the descriptiveness of the domain name, to fall within the approach permissible as discussed in WIPO Overview 3.0, section 2.10. Accordingly, the Panel finds that the Complainants have not established that the First Respondent does not have rights or legitimate interests in the fifth disputed domain name.
The Second and Third Respondents
In addition to the limited nature of the rights the Second Respondent claims the Complainants hold, the Second Respondent contends he is merely operating a legitimate link referral business by means of the disputed domain names.
The Second Respondent’s reliance on the descriptive nature of the Complainants’ trademarks cannot assist him with at least the first disputed domain name <oranje.casino> or, at least arguably, the second disputed domain name <loyal.casino>.
Having regard to the nature of the claims made by the Second Respondent, however, the Panel considers it appropriate to consider the third requirement under the Policy, registration and use in bad faith, next.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The First Respondent
Given the conclusion reached in section 5.D. in relation to rights or legitimate interests, it is unnecessary to consider this issue as the Complaint must fail in any event.
The Second and Third Respondents
The Second Respondent states that he acquired the first to fourth disputed domain names in the early 2020s. He says the person he acquired them from had been operating an affiliate business providing links to the Complainant’s websites. The Second Respondent claims that over the years the “vendor” sent hundreds of gamers via these referral links to the Complainants’ websites. Going some way to corroborate this claim, the Response provides evidence of emails from different people at the Betsson group to the unnamed “vendor” (the “vendor’s” details have been redacted) issuing instructions and requests relating to promotions on the <oranje.casino> and <krooncasino.cc> websites.
The Second Respondent claims that it was well-known in professional gaming circles that the Complainants allowed referral sites to use their brands. According to the Second Respondent, the “vendor” transferred the disputed domain name as he was terminating most of his activities in the Netherlands due to legal issues with the Dutch authorities. The Second Respondent admits that online gambling is currently illegal in the Netherlands and will be legalised only in October 2021.
The Second Respondent relies on the decision in Authorize.Net LLC v. Cardservice High Sierra WIPO Case No. D2008-0760 in support of the legitimacy of such referral links.
The Panel accepts that provision of referral links with the permission, or perhaps acquiescence, of the trademark owner can be a legitimate offering under the Policy.
The present case is somewhat different to the Authorize.Net LLC v. Cardservice High Sierra case, above, in that in this case the Second Respondent is not the party with whom the claimed referral arrangements were originally made but a successor in title.
As a transferee, the Second Respondent’s status as a successor in title means that the question of registration in good faith falls to be determined at the time of transfer, not when the “vendor” initially registered the disputed domain names. There might arguably be an exception where the transferee simply continues the existing business without change. See WIPO Overview 3.0, section 3.9.
Apart from the blunt denial that the Second and Third Respondents are not authorised by it, the Complainants do not address the claimed pre-existing referral business. The Complainants do point out, however, that links on the “www.casinowinner.casino” and “www.winnencasino.com” websites when (a) the Complaint and (b) the amended Complaints were filed linked through to the “www.casino-winner.com” website which, in turn, links to the “www.winner.com” website. Such conduct could lead to an inference that the disputed domain names were registered to refer business to the Complainants’ competitor. This appears, however, to be one link from a number of links on these websites.
The Panel accepts that the Second Respondent has not fully explained the basis for what appears to have been his assumption that he could continue the referral previously carried on by the unidentified “vendor”. The Second Respondent, however, has provided some limited information which appears to support the existence of the referral arrangement.
On the other hand, despite submitting an unsolicited supplemental filing, the Complainants have not directly addressed the issue of the claimed referral arrangement. They have not explained whether or how it came about and, if so, its terms. Nor have the Complainants explained how that arrangement was terminated (if it existed). The record also does not show how the websites appeared before transfer to the Second Respondent. Nor does the record fully explain how the websites operated under the Second Respondent’s control – for example, as already mentioned, while a link to the First Respondent’s website has been identified, the operation of what appear to be other links has not.
There are deficiencies in the evidence on both sides.
The onus, however, falls on the Complainants and, on the limited information available in this proceeding, the Panel considers that onus has not been discharged.
As the learned panel in Authorize.Net LLC v. Cardservice High Sierra case, above, pointed out the types of issues this kind of dispute gives rise to in these circumstances are more appropriately addressed in a forum such as court which are not limited to determination on the written submissions.
The sixth disputed domain name is in a different position. It was not transferred by the “vendor” of the other domain names. It was also registered after the Complainants’ cease and desist letter. Given it appears to be under common control with the first to fourth disputed domain names and replicated the format of the website to which the third disputed domain name resolved, however, the Panel considers it is properly treated as falling within the scope of the referral business claimed by the Second Respondent particularly bearing in mind the descriptive nature of the term “casino winner” and the concocted nature of the term “winnenin” in the sixth disputed domain name.
As the onus is on the Complainants to make out registration in bad faith, the Panel finds that the Complainants have not established this requirement under the Policy.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: July 20, 2021