WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Entain plc and Ladbrokes Betting & Gaming Limited v. Reznichenko Dmiriy
Case No. D2021-3702
1. The Parties
The Complainants are Entain plc, United Kingdom (“First Complainant”) and Ladbrokes Betting & Gaming Limited, United Kingdom (“Second Complainant”), both represented by Stobbs IP Limited, United Kingdom.
The Respondent is Reznichenko Dmiriy, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <galabingocasino.com> is registered with Regtime Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent a document related to the language of the proceeding in both English and Russian to the Parties. The Complainant submitted a request to proceed in English on November 12, 2021, while the Respondent did not reply. The Complainant filed an amended Complaint and request for English to be the language of the proceeding on November 12, 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 in both English and Russian, and the proceedings commenced on November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2021.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 17, 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 First Complainant is an international sports-betting and gaming group, with over 24,000 employees in 20 offices across 5 continents. As of October 20, 2021, its market capitalization value was GBP 12.7 billion.
The Second Complainant is a subsidiary of the First Complainant. It is the owner of the following trademark registrations of the signs GALA, GALA BINGO and GALA CASINO (collectively, the “GALA, GALA BINGO and GALA CASINO trademarks”):
− the United Kingdom Trade mark GALA with registration No.1469995, registered on July 29, 1994 for services in International Class 41; and
− the United Kingdom Trade mark GALA BINGO with registration No. UK00905352042, registered on February 11, 2019 for goods and services in International Classes 9, 16, 28 and 43; and
− the European Union Trademark GALA BINGO with registration No. 005352042, registered on February 11, 2019 for goods and services in International Classes 9, 16, 28, 43.
− the United Kingdom Trade mark GALA CASINO with registration No. UK902094035, registered on March 11, 2002 for goods and services in International Classes 9, 16, 28 and 43; and
− the European Union Trademark GALA CASINO with registration No. 002094035, registered on March 11, 2002 for services in International Class 41.
The First Complainant is the owner of the domain name <galabingo.com> registered on April 13, 1999.
The disputed domain name was registered on July 27, 2021. It is currently inactive. According to the evidence submitted by the Complainant, until October 18, 2021 the disputed domain name resolved to a website that offered various casino and bingo games.
5. Parties’ Contentions
A. Complainants
The Complainants state that the disputed domain name is confusingly similar to their GALA and GALA BINGO trademarks, because it incorporates them in their entirety.
According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name. Given the considerable reputation of the GALA and GALA BINGO brands and the Complainants’ operations in the online gaming business since 2004, the reason for the registration or use of the disputed domain name was to take advantage of the Complainants’ rights. The Complainants point out that the disputed domain name was only created on July 27, 2021 when the GALA and GALA BINGO brands were established over fifteen years earlier.
According to the Complainants, the Respondent’s use of the disputed domain name or a name corresponding to the disputed domain name is not in connection with a bona fide offering of goods or services. From the date of its registration up until October 18, 2021, the disputed domain name resolved to a live website, which featured the GALA BINGO figurative trademark for the purpose of diverting users away from the Complainants’ genuine website.
The Complainants submit that the Respondent has never been known as Gala or Gala Bingo. The incorporation of the GALA and GALA BINGO trademarks within the disputed domain name, combined with its use within a key market for the GALA brands, indicates to Internet users the trade origin of the disputed domain name from the Complainants, and shows that the only reason that the Respondent registered the disputed domain name was to take advantage of the Complainants’ goodwill and valuable reputation.
According to the Complainants, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent of or commercial gain to misleadingly divert their clients. The Complainants submit that nothing from the content of the disputed domain name suggests that the Respondent is making a legitimate noncommercial or fair use. Rather, up until October 18, 2021, the disputed domain name was used to free-ride on the GALA and GALA BINGO trademarks within the key markets of the Complainants, through use of the website display.
The Complainants contend that the disputed domain name was registered and is being used in bad faith. They have established rights in the GALA and GALA BINGO trademarks, which date back to 1994, and the Respondent registered the disputed domain name on July 27, 2021, by which time the distinctive character of the GALA and GALA BINGO trademarks were well established. The Complainants maintain that the registration and use of the disputed domain name up until October 18, 2021 show that the intention of the Respondent was to divert consumers (intended for the Complainants) for commercial gain, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainants submit that an email address was set up at the disputed domain name until October 18, 2021 with the intention to phish personal or financial information from the Complainants’ customers.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”
The Respondent has however not submitted a Response in this proceeding and has not disputed the arguments of the Complainants and the evidence that they have put forward.
A. Language of the proceeding
According to paragraph 11(a) of the Rules, 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 this case, the Complaint has been submitted in English and the Registrar confirmed that the language of the registration agreement was in Russian. The Complainant has submitted a request to proceed in English, to which the Respondent did not object, stating mainly that the disputed domain name includes Latin characters as opposed to Cyrillic characters which supports the fact that the Respondent understands English, the website content was in English, and that the Complainants are unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainants.
In view of the specific circumstances of the case, and notably given that the Respondent did not object and did not reply to the proceeding, the Panel accepts English as the language of the proceeding.
B. Identical or Confusingly Similar
The Complainants have referred to a number of valid registrations of the GALA, GALA BINGO and GALA CASINO trademarks, owned by the Second Complainant, which is a subsidiary of the First Complainant. As discussed in section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. The Panel considers that the same approach should be taken in respect of the parent company of the trademark owner. In view of this, the Panel accepts that the Complainants have established their rights in the GALA, GALA BINGO and GALA CASINO trademarks for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard the generic Top-Level Domain (“gTLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.
As discussed in section 1.7 of the WIPO Overview 3.0, the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. Where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The relevant section of the disputed domain name is the sequence “galabingocasino”. This sequence incorporates each of the GALA, GALA BINGO and GALA CASINO trademarks in their entirety, and each of them is easily recognizable in the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the GALA, GALA BINGO and GALA CASINO trademarks in which the Complainants have rights.
C. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has never been known as Gala or Gala Bingo, and that the disputed domain name was registered fifteen years after the GALA and GALA BINGO trademarks, and has not been used in connection with a bona fide offering of goods or services, but resolved to a gaming website that featured the GALA BINGO figurative trademark for the purpose of misleading Internet users as to the trade origin of the disputed domain name and diverting them away from the Complainants’ genuine website. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not disputed the statements of the Complainant and has not alleged that is has rights and legitimate interests in the disputed domain name or that it is carrying out any legitimate activity with the disputed domain name. The disputed domain name incorporates the GALA, GALA BINGO and GALA CASINO trademarks in their entirety without the addition of any other elements, and may indeed create the impression that the disputed domain name refers to a website of the Complainants where their offer gaming services to their clients. The Respondent’s website has offered bingo and casino games, included the heading “Gala Bingo Casino 2021. Online Casino in the UK”, and included the statements “Galabingo has been running since 2005”, “This platform uses two licenses one from the UK and the other from Gibraltar”. The Respondent’s website alsofeatured a logo containing the GALA BINGO trademark and the address of the Complainants’ official website at “www.galabingo.com”.
In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the GALA, GALA BINGO and GALA CASINO trademarks, has registered the disputed domain name in an attempt to exploit these trademarks’ goodwill by attracting the Complainants’ clients for commercial gain by misleading them that they are accessing an official online location of the Complainants where they may play online games. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.”
As discussed above, the disputed domain name is confusingly similar to the GALA, GALA BINGO and GALA CASINO trademarks, and may indeed create the impression that the disputed domain name refers to a website of the Complainants where their offer gaming services to their clients. The evidence submitted by the Complainants show that the Respondent’s website has offered online games similar to the games offered by the Complainants, featured a logo containing the GALA BINGO trademark and the address of the Complainants’ official website at “www.galabingo.com”, contained an email address set up at the disputed domain name, and offered visitors the option to deposit funds for paying games at the website. All this leads the Panel to the conclusion that the Respondent was well aware of the Complainants’ gaming business under the GALA, GALA BINGO and GALA CASINO trademarks when registering the disputed domain name, and has registered and used it targeting these trademarks.
Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in an attempt to attract traffic to the disputed domain name and confuse the Complainants’ customers that they are reaching an official online location of the Complainants offering gaming services, likely for commercial gain. As submitted by the Complainants, the circumstances of this case also indicate a risk that the Respondent may be using the disputed domain name jointly with its email address for phishing or other fraudulent activities.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
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 <galabingocasino.com> be transferred to the Complainants.
Assen Alexiev
Sole Panelist
Date: February 1, 2022