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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merryvale Ltd. v. Website Website, Website

Case No. D2021-2099

1. The Parties

The Complainant is Merryvale Limited, Guernsey, represented by Herzog, Fox & Neeman, Israel.

The Respondent is Website Website, Website, Spain.

2. The Domain Name and Registrar

The disputed domain name <pokiespincasino.com> 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 July 1, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 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 July 7, 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 July 8, 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 July 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2021.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on August 13, 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 Guernsey-based company active in the online gaming field. It operates online gaming websites under the name “SpinCasino” since September 22, 2014. These websites are accessible under the URLs <spincasino.com> and <spincasino.se>.

The Complainant is the owner of various registrations for SPINCASINO as a word mark or a figurative mark in several countries worldwide, including:

- UK registration no. UK00003386746 registered on June 14, 2019 in relation to goods of class 9 and services of class 41;
- Canada registration no. TMA 1,019,217 registered on April 11, 2019 in relation to goods of class 9 and services of classes 41 and 42.

The disputed domain name <pokiespincasino.com> was registered on April 4, 2021.

The disputed domain name used to resolve to a website offering gaming and gambling services under the logo “Pokie Spins”. The denomination “Pokie Spin Casino” was featured at the top of this website’s homepage. In the descriptions of the services present on the website, the denomination “Pokie Spins Casino” (with a “s”) was used instead.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its SPINCASINO trademark. Indeed, the disputed domain name incorporates the trademark SPINCASINO in its entirety, and the addition of the term “pokie” does not obviate confusion, as the mark SPINCASINO remains clearly recognizable.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not authorized by the Complainant to use the disputed domain name, and there is no indication that the Respondent is known under the disputed domain name. The Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services, nor is the Respondent making any legitimate non-commercial use of the disputed domain name.

According to the Complainant, the choice of the SPINCASINO trademark and the use of the disputed domain name to resolve to a website the content of which reproduces the Complainant’s marks in relation to gaming and gambling services aim at creating a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of the Policy.

The Complainant contends finally that the disputed domain name was registered and used in bad faith as the Respondent must have been aware of the pre-existing mark of the Complainant, which is famous. Furthermore, the Complainant asserts that the Respondent used the reputation and goodwill of the Complainant and its SPINCASINO mark through the disputed domain name to create a likelihood of confusion and attract potential users for financial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent 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 registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant owns various trademark registrations for the trademark SPINCASINO.

The disputed domain name reproduces the Complainant’s trademark SPINCASINO in its entirety with no alteration. The trademark is combined with the term “pokie”, which appears to be an informal term designating a poker machine.

As a rule, UDPR panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the trademark SPINCASINO is clearly recognizable in the disputed domain name. The mere addition of the term “pokie” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (See for example DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark, WIPO Case No. D2019-3141).

UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11 of the WIPO Overview 3.0).

The Complainant has thus satisfied the conditions set forth in paragraph 4(a)(i) of the Policy with respect to both disputed domain name.

B. Rights or Legitimate Interests

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.

In addition, the use of the disputed domain name in connection to a website offering online gaming and gambling supports the apparent lack of rights or legitimate interests of the Respondent in the disputed domain name. Indeed, use of the Complainant’s trademark in relation to services of a competitor can hardly be a legitimate or fair use.

Furthermore, UDRP panels consider that even where a domain name consists of a trademark plus an additional term (at the second- or top-level), that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0).

Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b).

In view of the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence corroborates such prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the fact that the trademark “SPINCASINO” of the Complainant is distinctive and has been widely used before the registration of the disputed domain name, the Panel finds it unlikely that the disputed domain name was chosen independently without reference to the Complainant’s trademark. The Panel therefore accepts that the Respondent was aware of the existence of the Complainant and of its SPINCASINO trademark at the time of the registration of the disputed domain name.

The Respondent used the disputed domain name to redirect to a website offering online gaming and gambling services, i.e. services competing with the Complainant’s services. The fact the Respondent used in the texts describing its services the denomination “Pokie Spins Casino” (with an “s” after “Spin”) but chose to register a domain name in which the “s” was omitted (making it more similar to the Complainant’s trademark) further supports a finding that the Respondent’s aim was to attract to its website consumers looking for the Complainant’s website.

In view of the above, the Panel finds that the Respondent used the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such behavior amounts to use in bad faith according to paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the WIPO Overview 3.0).

For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.

7. Decision

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 <pokiespincasino.com> be transferred to the Complainant.

Anne-Virginie La Spada
Sole Panelist
Date: August 27, 2021

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