WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merryvale Limited v. Abha Utrwd Reewe
Case No. D2021-1638
1. The Parties
The Complainant is Merryvale Limited, Guernsey, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Abha Utrwd Reewe, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <spincasino.top> is registered with Hosting Ukraine LLC (ua.ukraine)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2021, 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 1, 2021, 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 1, 2021.
On June 1, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceeding. On June 1, 2021, the Complainant requested that English be the language of the proceeding and provided additional arguments in support of its request. The Respondent has not provided any response regarding the language of the proceeding.
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 in English and Russian of the Complaint, and the proceedings commenced on June 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2021.
The Center appointed Luca Barbero as the sole panelist in this matter on July 19, 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 member of the Betway group of companies (the “Betway Group”) specialized in online gaming. The Betway Group, and the Complainant amongst them, operate a number of online gaming websites under the trademark SPINCASINO.
The Complainant entered the online gaming market on September 22, 2014 and, as part of the Betway Group, has invested, and continues to invest, substantial sums in promoting the Betway Group’s offerings under the trademark SPINCASINO around the world.
In 2019, the relevant marketing budget in connection with the trademark SPINCASINO has been EUR 21.5 million, in 2020 increased to EUR 31.5 million, with a projected budget of EUR 29 million for 2021.
In the same year, the Complainant sponsored the Waterford Football Club, receiving extensive coverage on different websites and social networks.
The Complainant’s current monthly average revenue, received by the Betway Group from users' purchases on the SpinCasino Websites, is approximately EUR 12.4 million.
The Complainant is the owner of several trademark registrations for SPINCASINO, including the following, as per trademark certificates submitted as annexes 9 to the Complaint:
- Canada trademark registration No. TMA1019217 for SPINCASINO (word mark), filed on October 3, 2014 and registered on April 11, 2019;
- New Zealand trademark registration No. 1038829 for SPINCASINO (word mark), filed on March 8, 2016 and registered on September 9, 2016 in international classes 9 and 41;
- United Kingdom trademark registration No. UK00003386746 for SPINCASINO (word mark), filed on March 26, 2019 and registered on June 14, 2019, in classes 9 and 41.
The Complainant is also the owner of the domain names <spincasino.com>, registered on June 29, 2002, <spincasino.co.uk>, registered on March 26, 2007, and <spincasino.se>, registered on September 9, 2014, which are all used by the Complainant to promote its services under the trademark SPINCASINO.
The disputed domain name <spincasino.top> was registered on December 16, 2020 and is pointed to a website providing links to online slots, gaming and gambling related reviews and recommendations, promoting services of the Complainant’s competitors.
5. Parties’ Contentions
The Complainant contends that disputed domain name <spincasino.top> is identical to the trademark SPINCASINO in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domain “.top”.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not affiliated with the Complainant and has never been licensed or otherwise authorized to use the trademark SPINCASINO in any way. The Complainant also asserts that the Respondent has not used the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name, which was initially parked, is currently pointed to a website offering links to online slots, gaming and gambling related reviews and recommendations, in favor of the Complainant’s competitors, therefore offering services similar to those offered by the Complainant. The Complainant also submits that, to the best of its knowledge, neither the Respondent, nor any business operated by it, is or has ever been commonly known by the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant indicates that its trademark rights long predate the Respondent’s registration of the disputed domain name and that, considering the Complainant’s world-renown, the Respondent was undoubtedly aware of the Complainant at the time of registering the disputed domain name.
The Complainant also claims that, by using the disputed domain name in connection with the website described above, the Respondent has been intentionally attempting to attract internet users to its website for commercial gain, by creating a likelihood of confusion with the trademark SPINCASINO as to the source, affiliation, sponsorship or endorsement of its website.
The Complainant also submits that the very fact that the Respondent registered the disputed domain name using the Complainant’s well-known trademark indicates that the Respondent acted in opportunistic bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
In the case at hand, the language of the Registration Agreement of the disputed domain name is Russian. The Complaint was filed in English. Upon completing the Registrar’s verifications, the Center sent an email communication to the parties about the language of the proceeding requesting them to comment on the issue.
In its Amended Complaint dated June 1, 2021, the Complainant submitted a request for English to be the language of the proceeding for the following reasons:
i) the website active under the disputed domain name is available in many languages, including English;
ii) the disputed domain name consists of English characters only, rather than Ukrainian/Cyrillic ones;
iii) the language of the disputed domain name is identical to the one of the Complainant’s trademark;
iv) to the best of the Complainant’s knowledge, the Registration Agreement pursuant to which the disputed domain name is registered is available both in Ukrainian and English;
v) as an entity that conducts its business in the English language, the Complainant would incur in additional expense and delay due to the need to arrange for the translation of the Complaint and the supporting annexes as well as any subsequent documents in these proceedings.
The Respondent did not submit any comment with regard to the Language of Proceeding and did not file a Response.
The Panel further notes that all of the Center’s communications to the parties have been sent in English and Russian.
In view of the circumstances of the case, the Panel finds that English is the appropriate language of this proceeding and will thus proceed to render the Decision in English.
6.2. Substantive Issues
According to 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark SPINCASINO based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 9 to the Complaint.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In the case at hand, the Complainant’s trademark SPINCASINO is entirely reproduced in the disputed domain name, with the mere addition of the Top-Level Domain “.top”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you 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 (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 are making a legitimate non-commercial 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.”
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name.
The Panel also finds that, by pointing the disputed domain name to a website promoting online gaming and gambling services which compete with the Complainant’s ones, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate, noncommercial or fair use.
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the holder’s website or location or of a product or service on the holder’s website or location.
As to the bad faith at the time of the registration, the Panel finds that, in light of the prior registration and use of the trademark SPINCASINO in connection with the Complainant’s online gaming services, noting also the Complainant’s prior registration and use of the domain name <spincasino.com>, the Respondent’s registration of the disputed domain name, identical to the Complainant’s trademark and domain name, cannot amount to a mere coincidence.
in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its very selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.
The Panel also notes that, in view of the use of the disputed domain name to redirect users to a website promoting services similar to those offered by the Complainant and diverting users to gaming sites of the Complainant’s competitors, the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the services promoted therein, according to paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to 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 <spincasino.top> be transferred to the Complainant.
Date: August 2, 2021