WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pomadorro N.V. (Limited Liability Company) v. Volodymyr Piddubnyi, Piddubnyi Volodymyr
Case No. D2021-1247
1. The Parties
The Complainant is Pomadorro N.V. (Limited Liability Company), Netherlands, internally represented.
The Respondent is Volodymyr Piddubnyi, Piddubnyi Volodymyr, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <joykasino.net> (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 10, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not amend the Complaint but provided the Center with a trademark excerpt notarized on May 12, 2021.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on May 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 17, 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 Complainant is a public company incorporated on the island of Curaçao, a territory of the Kingdom of the Netherlands. It operates an online casino and sports gambling website in English and Russian versions at “www.joycasino.casino” offering players a choice of currencies: Euro, United States Dollars, and Australian Dollars.
The Complainant applied for a trademark registration in Ukraine on March 31, 2016 for a figurative trademark featuring the textual element JOYCASINO in an oval nameplate, superimposed over images of gears. This was registered as trademark number 218388 on October 25, 2016.
The Complainant states that it has also owned the domain name <joycasino.com> since March 27, 2014. The Panel notes that screenshots of the website associated with this domain name, retrieved with the Internet Archive’s Wayback Machine, show that the Complainant operated a substantially similar gambling website at this address for several years, beginning at least as early as April 2015. Like the Complainant’s current website (with its self-described “steampunk feel”), this website displayed the oval JOYCASINO figurative trademark on a site with colorful cartoon graphics for each game in squares against a black background, a prominent red task bar, and characters in Victorian dress.
The Registrar reports that the Domain Name was registered on May 11, 2016 by the Respondent Mr. Piddubnyi of Ukraine, listing his own name in reverse order as the “organization” and giving a Gmail contact email address.
The Complaint refers to the Respondent’s misuse of the Domain Name for an imitative website but does not provide detailed descriptions or copies of screen captures. At the time of this Decision, the Domain Name does not resolve to an active website. The Panel notes, however, that screenshots retrieved from the Internet Archive’s Wayback Machine show that the Domain Name was used as early as April 2017 for a Russian-language online casino gambling website with a design similar to the Complainant’s (black background, red task bar, characters in Victorian dress, cartoon squares for the games), and in many instances featuring an exact copy of the Complainant’s JOYCASINO oval nameplate-over-gears figurative mark, copying even the Complainant’s textual element “JOYCASINO” despite the fact that the Domain Name is spelled differently, with a “k” rather than a “c”. The Panel finds archived screenshots of the Respondent’s website displaying the Complainant’s JOYCASINO mark from October 2017 through March 2021.
5. Parties’ Contentions
The Complainant points to its registered JOYCASINO trademark and argues as follows:
“JOYKASINO.net is picking up our organic traffic in search engines and is misleading our users using similar domain spelling, and also therefore damages our reputation. They also use our logo and brand colours at their site to make it visibly similar to the original.”
The Complainant requests that the Domain Name be cancelled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[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”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant holds a Ukrainian trademark registration for the figurative mark JOYCASINO. The textual element of the mark is dominant and compounds the English words “joy” and “casino”. The Domain Name varies from this string only by substituting the letter “k” for the letter “c”, which would be pronounced the same in English. The Panel finds that the Domain Name is visually and phonetically similar to the mark and that the slight variation in spelling does not prevent a finding of confusing similarity, as in similar instances of apparent typosquatting. See WIPO Overview 3.0, section 1.9. As usual, the generic Top-Level Domain (“gTLD”) “.net” is disregarded as a standard registration requirement. See id. section 1.11.2.
The Panel concludes that the first Policy element is established on these facts.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its marks, and the Respondent’s use of the Domain Name to date only for a website imitating the Complainant’s website and displaying the Complainant’s logo. This does not indicate a bona fide commercial activity or noncommercial fair use, so the burden shifts to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so.
The Panel concludes, therefore, that the Complainant prevails on the second element of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent was almost certainly aware of the Complainant when the Respondent registered the Domain Name in May 2016. The Complainant registered the domain name <joycasino.com> in March 2014 and was operating an online gambling website in Russian and English using that domain name by at least early 2015, featuring the same oval “steampunk” JOYCASINO logo that was ultimately registered as a trademark in Ukraine in 2016. The Respondent registered the Domain Name with a slight misspelling of the Complainant’s mark, mimicked the look and feel of the Complainant’s gambling website, reproduced the Complainant’s logo, and operated a website competing for the Russian-language portion of the Complainant’s business. This conduct fits the example of intentional misdirection described in the Policy, paragraph 4(b).
The difficulty for the Complainant is that the Respondent registered the Domain Name before the Complainant obtained trademark registration, and the Complainant has not offered evidence or argument concerning earlier unregistered or common law trademark rights (see WIPO Overview 3.0, section 1.3). Panels do not normally find bad faith where domain names are registered before trademark rights accrue. See WIPO Overview 3.0, section 3.8.1. There are relevant exceptions, however, as summarized in WIPO Overview 3.0, section 3.8.2:
“As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
Here, there is such evidence that the Respondent was aware of an impending mark. The Complainant applied for trademark registration in Ukraine of the figurative JOYCASINO mark on March 31, 2016. By that time, the Complainant had been using the mark on its website, with a corresponding domain name, for roughly a year (based on archived screenshots). The Respondent in Ukraine then registered the Domain Name less than six weeks later. The Complainant’s mark was registered in October 2016. The Respondent promptly used the Domain Name for a competing website, displaying the Complainant’s trademark and failing to disclose the relationship, or lack thereof, between the Complainant and the Respondent. This all suggests that the Respondent’s aim in registering a confusingly similar Domain Name was to target a competitors’ nascent mark. The Respondent has not come forward to offer an alternative explanation.
The Panel finds on this record that it is more probable than not that the Respondent was aware that the Complainant was using the JOYCASINO logo as a mark and intended to seek protection for it, and that the Respondent registered and used the Domain Name in an effort to mislead Internet users as to source and affiliation, targeting the Complainant’s online gambling brand. This constitutes bad faith within the meaning of the Policy. The fact that the Domain Name does not currently resolve to an active website does not prevent a finding of bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders, as requested, that the Domain Name, <joykasino.net> be cancelled.
W. Scott Blackmer
Date: July 6, 2021