WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yggdrasil Malta Limited v. Whois Agent, Domain Protection Services, Inc. / Mongkol Tahwon, Shareclip Network
Case No. D2021-3610
1. The Parties
The Complainant is Yggdrasil Malta Limited, Malta, represented by Aera A/S, Denmark.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America / Mongkol Tahwon, Shareclip Network, Thailand.
2. The Domain Name and Registrar
The disputed domain name <yggdrasilgaming168.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 November 4, 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 November 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2021. On November 11 and 12, 2021, the Respondent sent two email communications to the Center. The Complainant requested the suspension of the proceeding on November 15, 2021. On November 16, 2021, the proceeding was suspended until December 14, 2021, for purposes of settlement discussions. On December 9, 2021, the Complainant requested to reinstitute the proceeding. Therefore, the proceeding was reinstituted on December 14, 2021, and the Response due date was December 29, 2021. Pursuant to paragraph 6 of the Rules, on December 30, 2021, the Center notified the Parties that it would proceed with the panel appointment process.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on January 10, 2022. 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 provider of superior online gaming solutions for i-gaming operators, founded in 2013 with offices in Poland, Sweden, Gibraltar, and Malta.
The Complainant owns the YGGDRASIL trademark and YGGDRASIL GAMING trademark, which are registered as a word mark and as part of device marks around the world, not limited to European Union Trademark (EUTM) YGGDRASIL GAMING registration no. 015059959, registered on July 20, 2016; EUTM YGGDRASIL registration no. 015691959, registered on November 4, 2016; EUTM YGGDRASIL (device mark) registration no. 017763699, registered on June 30, 2018; EUTM YGGDRASIL registration no. 018563621, registered January 20, 2022; International trademark YGGDRASIL registration no. 1539627, registered May 4, 2020; International trademark YGGDRASIL registration no. 1538272, registered May 4, 2020; and United States of America trademark YGGDRASIL registration no. 97038404, registered on September 21, 2021. (Hereinafter, the Panel will refer to the above marks as the “YGGDRASIL trademark”)
The Complainant is the owner of several domain name registrations including <yggdrasilgaming.com>.
The disputed domain name was registered on September 5, 2021. The disputed domain name resolves to a website connected with an online casino in Thailand.
5. Parties’ Contentions
The Complainant says the disputed domain name is confusingly similar to the Complainant’s trademark and trade name YGGDRASIL and YGGDRASIL GAMING as the disputed domain name incorporates the entirety of those trademarks and trade name followed by the numbers 168 and the generic Top-Level Domain “.com”. According to the Complainant, the addition of the suffix “168” does not impact the overall impression of the dominant part of the name YGGDRASIL GAMING and hence is not sufficient to overcome the confusing similarity with respect to the Complainant’s YGGDRASIL trademark which remains the dominant and only distinctive element in the disputed domain name.
Because of the following factors, (a) the reputation and high degree of recognition of the Complainant’s YGGDRASIL marks; and (b) the lack of distinguishing factors between the disputed domain name and the Complainant’s marks, the Complainant says that the disputed domain name should be considered as confusingly similar to the YGGDRASIL and YGGDRASIL GAMING marks in which the Complainant has rights.
The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name based on the Complainant’s continuous and long prior use of its trademark and trade name YGGDRASIL. The Respondent is said not to be affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the YGGDRASIL mark in connection with a website providing casino business, email communication or for any other purpose. The Complainant says that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in that name or mark.
The disputed domain name resolves to an active casino website in Thailand, so the Complainant contends that the Respondent is intentionally diverting consumers for commercial gain by providing online casino games that do not comply with the reputation of the Complainant. The unauthorized use for a similar kind of business is said to show that the Respondent is well aware of the Complainant and the activity is damaging and diluting the reputation of the Complainant’s business.
According to the Complainant, the Respondent has intentionally registered and using the disputed domain name in bad faith. It is apparent from the composition of the disputed domain name that the Respondent must have known of the Complainant’s trademark YGGDRASIL and YGGDRASIL GAMING and its business. That being so, the Complainant argues that the Respondent could not have chosen or subsequently used the word “yggdrasilgaming168” for any reason than to trade-off the goodwill and reputation of Complainant’s trademark or otherwise create a false association, sponsorship or endorsement with the Complainant.
The Complainant points out that the registration of domain names confusingly similar to a registered trademark by a person with no connection to that trademark amounts to “opportunistic bad faith”: in itself evidence of bad faith both generally and specifically within the meaning of paragraph 4(b)(iii) and (iv).
Further, in light of the fact that the Respondent is directing visitors to their casino business, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor within online casino gambling within the meaning of paragraph 4 (b) (iii) of the Policy.
In conclusion, the Complainant says that it is established that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain name and its intention was to create likelihood of confusion with the Complainant’s trademarks in order to attract Internet users for commercial gain.
In the Respondent’s two email communications of November 11 and 12, 2021, the Respondent offered to transfer the disputed domain name to the Complainant. No further communications were received from the Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the YGGDRASIL trademark of the Complainant. Nonetheless that mark is immediately recognized within the dispute domain name. The mark is the first and most prominent part of the disputed domain name. The rest of the disputed domain name, namely the additional “168”, does not prevent a finding of confusing similarity.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the YGGDRASIL trademark of the Complainant.
B. Rights or Legitimate Interests
The Respondent has not replied to any of the contentions in the Complaint. There is nothing before the Panel that indicates any rights or legitimate interests vest in the Respondent. The latter was not authorized to use the YGGDRASIL trademark of the Complainant in any way or incorporate it in a domain name. The Respondent is not known by, or doing legitimate business by reference to the term “yggdrasil” or “yffdrasil gaming” or anything similar. The commercial use made of the website to which the disputed domain name resolves clearly illustrates the Respondent’s intent to capitalize from the YGGDRASIL trademark’s exclusive association with the Complainant. Moreover, the services sponsored on the website to which the confusingly similar disputed domain name resolves directly compete with those of the Complainant. This is an abusive activity that does not give rise to any rights or legitimate interests to a party engaged in it.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is immediately apparent from the composition of the disputed domain name, that the Respondent was aware of the reputation and activities of the Complainant, centered around the YGGDRASIL trademark for gaming software and services. The YGGDRASIL trademark is in any case distinctive, not having any common meaning other than its association to the Complainant, and the use the Respondent has made of the disputed domain name further illustrates that it was registered in bad faith and with the sole purpose of diverting Internet users to the Respondent’s own online gaming or casino presence. The registration and use of the disputed domain name are all part of a bad faith attempt to derive an illegitimate advantage from deceiving consumers as to the existence of a connection with the Complainant and its online business activities.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 <yggdrasilgaming168.com> be transferred to the Complainant.
William A. Van Caenegem
Date: January 24, 2022