WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Plain Support S.A. v. Anthony Von Ducci

Case No. DCO2017-0011

1. The Parties

Complainant is Plain Support S.A. of San José, Costa Rica, represented by Mishcon de Reya LLP, United Kingdom of Great Britain and Northern Ireland.

Respondent is Anthony Von Ducci of Richmond, Canada, self-represented.

2. The Domain Name and Registrar

The disputed domain name <verajohn.co> (the “Domain Name”) 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 April 6, 2017. On April 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with Domain Name. On April 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on April 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2017. The Response was filed with the Center on May 3, 2017.

The Center appointed John C. McElwaine as the sole panelist in this matter on May 10, 2017. 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

Complainant is a Costa Rica registered company that licenses its trademarks to the operator of an online betting and gaming services provided through a website located at <verajohn.com>.

Complainant owns trademark registrations for VERA&JOHN in Australia, the European Union, Japan, Norway and Viet Nam. For instance, Complainant is the owner of European Union Trade Mark Registration Number 9453333, issued on February 2, 2011.

Respondent’s business model involves registering domain names and developing websites as well as trading in domain names, where Respondent seeks to acquire domain names, which may then be held or offered for sale to the public.

The Domain Name was registered by Respondent on March 17, 2011. According to the evidence in the Complaint, the Domain Name redirected to resolves to a website offering betting and gaming services.

5. Parties’ Contentions

A. Complainant

On January 10, 2010, Complainant applied to register the word mark VERA&JOHN with the European Union Trade Mark Office in classes 9, 28, 38 and 41 (Registration Number 9453333). This registration issued on February 2, 2011. On March 10, 2014, Complainant received an International Trade Mark Registration for the word mark VERA&JOHN in classes 9, 28, 38 and 41 (Registration Number 1220952). On March 10, 2014, Complainant also received an International Registration for a device mark consisting of the words VERA&JOHN in a pink circle in classes 9, 28, 38 and 41 (Registration Number 1220953). Both International Registrations were extended to Australia, the European Union, Japan, Norway and Viet Nam. Collectively, these marks are referred to herein as the VERA&JOHN Mark.

Complainant alleges that the VERA&JOHN Mark has been extensively used since at least 2010 and that from such use Complainant has established substantial goodwill and reputation. Complainant submits that it has received substantial press coverage of its services in the betting and gaming industry. In support, Complainant submitted evidence of press release and press photographs of its sponsorship of the Vikings, a Swedish rock band. See Complaint Annex 7. Complainant also claims to be the recipient of prestigious industry awards and rankings as a result of their success. In support, Complainant submitted evidence that it won the “Norsk Casino Year’s Best Casino 2013” and “casino.se Best Casino 2013”. See Complaint Annex 8. In addition, Complainant asserts that it has spent EUR 14.5 million marketing services under the VERA&JOHN Mark.

Complainant argues that the popularity of the VERA&JOHN Mark is demonstrated by Internet traffic statistics that show that between December 2015 and December 2016 the mobile website at “www.mobile.verajohn.com” received over 68 million page views and the website “www.verajohn.com” received over 66 million page views. See Complaint Annex 10.

With respect to the first element of the Policy, Complainant alleges that the Domain Name is virtually identical to the VERA&JOHN Mark differing only by the removal of the ampersand character.

With respect to the second element of the Policy, Complainant claims that Respondent does not own a trademark registration for “vera john”. Complainant claims that, until January 2017, the Domain Name was redirected to “www.bodog.eu”, a betting and gaming website that competes with Complainant. Complainant asserts that given the reputation and distinctiveness of the VERA&JOHN Mark it is inconceivable that Respondent could legitimately register or use the Domain Name.

With respect to the third element of the Policy, Complainant alleges that based upon the reputation of the Complainant and use of the VERA&JOHN Mark since at least 2010, it is clear that the Respondent in all likelihood knew of the existence of the Complainant's VERA&JOHN Mark when it registered the Domain Name. In addition, Complainant asserts that the words VERA&JOHN are highly distinctive in relation to betting and gaming services and it is plain that the use of that word is not coincidental. Overall, Complainant concludes that it is clear that Respondent registered and used the Domain Name in bad faith in an attempt to mislead Internet users into thinking that the Domain Name refers to the Complainant. Complainant alleges that Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor, which is demonstrated by Respondent’s redirection of the Domain Name to the website of a competitor of Complainant. In addition, this action of redirecting the Domain Name to a competitor is also alleged to be an intentional attempt to attract, for commercial gain, Internet users to the Domain Name, by creating a likelihood of confusion with the VERA&JOHN Mark.

With respect to the third element of the Policy, Respondent argues that there is no evidence that he registered the Domain Name in bad faith. In addition, Respondent claims that he did not use the Domain Name in bad faith because Respondent immediately removed the redirection of the Domain Name to a competing gaming site upon request of Complainant and Respondent has never sought any payment or

compensation from the Complainant to transfer the Domain Name.

B. Respondent

Respondent is in the business of registering and selling domain names.

With respect to the first element of the Policy, Respondent asserts that there is nothing distinct of joining the two common names “Vera” and “John”. Respondent points out that the word VERA is used by another company as a trademark and that “John” is a common first name.

In addition, Respondent also points out that only one of Complainant’s trademarks was registered prior to 2014; namely, the European Union Trademark 009453333, for the word mark VERA&JOHN. Respondent asserts that he was not aware that VERA&JOHN was subject to registered trademark rights when the Domain Name was registered in early 2011. Respondent asserts that Complainant’s VERA&JOHN Mark was not an internationally well-known trademark in 2011.

Respondent notes that the statistics provided by Complainant were from December 2015 to December 2016. Respondent believes that this is a glaring omission and that the inference that can be drawn by this omission is that prior to the acquisition of “Vera&John” by “The Intertain Group Limited” in 2014, there was not the purported degree of recognition and use of the mark. Respondent also notes that the two awards cited by Complainant were awarded to Complainant two years after the registration of the Domain Name by the Respondent.

With respect to the second element of the Policy, Respondent begins by reciting that the Policy requires a finding of both bad faith registration and use. Respondent admits that his business model is trading in domain names, where Respondent seeks to acquire domain names, which may then be held or offered for sale to the public. Respondent argues that its registration and use of hundreds of such domain names is strong evidence of Respondent’s intent to use the Domain Name for a bona fide purpose. Respondent contends that it is well settled that buying and selling domain names that are dictionary terms is legitimate under the Policy. Respondent argues that Complainant has failed to put forth any evidence that Respondent is seeking to capitalize on Complainant’s goodwill and that evidence of such includes Respondent’s immediate direction away from “www.bodog.eu” gaming site after notification from Complainant. Respondent asserts that this professional behavior should be considered by the Panel.

6. Discussion and Findings

Paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must prove its assertions with evidence demonstrating:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

Complainant bears the burden of establishing each of the three elements by a preponderance of the evidence. See, e.g., F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629. Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

The Domain Name <verajohn.co> is confusingly similar to Complainant’s VERA&JOHN Mark because it differs only by virtue of the addition of the ampersand symbol between the words VERA and JOHN. The ampersand character cannot be used as a part of a domain name. This Panel agrees that the deletion of the ampersand does not materially distinguish the Domain Name from Complainant’s Mark. See Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501 (finding that <huntonwilliams.com> was the functional equivalent of the service mark HUNTON & WILLIAMS). Respondent’s claim that the VERA&JOHN mark is not a protectable mark because it consists of two names or names registered by third parties is unavailing.

The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant’s VERA&JOHN Mark.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. A complainant need only make a prima facie showing on this element, at which point the burden of production shifts to respondent to present evidence that it has some rights or legitimate interests in the disputed domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. Respondent may establish a right or legitimate interest in the 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 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.”

Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. In particular, Complainant has demonstrated that there is no evidence that Respondent has been commonly known by the Domain Name or has any other right to use the Domain Name. In fact, Respondent admits that his business model is trading in domain names, where Respondent seeks to acquire domain names, which may then be held or offered for sale to the public. Respondent argues that its registration and use of hundreds of such domain names is strong evidence of Respondent’s intent to use the Domain Name for a bona fide purpose. Merely registering a domain name for its later sale does not provide evidence of being “commonly known by the domain name” under paragraph 4(c)(i) of the Policy. Moreover, Respondent does not claim to have made fair use of the domain name under paragraph 4(c)(iii).

Given the fact that Respondent admits that he redirected the Domain Name to a competitor of Complainant for a period of time is conclusive evidence that Respondent neither used the Domain Name in connection with a bona fide offering of services, nor that he made a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers.

Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name and Respondent has failed to rebut that showing. For all of the reasons discussed above, the Panel accepts that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant must show that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(a)(iii) of the Policy.

In particular, Complainant argues in this matter that bad faith exists under paragraph 4(b)(iii) because Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor. Complainant asserts that at the time of registering the Domain Name, Respondent likely knew of the existence of the VERA&JOHN online casino website.

The panel agrees with Complainant that Respondent’s redirection of the Domain Name to the website of a competitor of Complainant was likely intended to trade off the reputation and popularity of Complainant’s VERA&JOHN Mark. This is sufficient evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The question is whether Respondent registered the Domain Name in bad faith. On this point, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 3.2.1, states the following factors:

“(i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iv) the timing and circumstances of the registration (particularly following a product launch, or the complainant’s failure to renew its domain name registration), (v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location, (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant.”

Furthermore, paragraph 3.1.4(v) notes that “redirecting the domain name to the complainant’s (or a competitor’s) website” supports a finding that respondent as registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark.”

Lastly, paragraph 1.7 provides “panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.”

In this case, Respondent has no rights or legitimate interests in the Domain Name. Respondent is not known by this name. Respondent has not been licensed to use the VERA&JOHN Mark.

Regarding the registration of the Domain Name, Respondent claims to have selected the Domain Name because it consisted of a simple combination of two common first names. Given the multitude of even common first names, the odds of accidently selecting the same two names that correspond with Complainant’s VERA&JOHN Mark is astronomical. Likewise, Respondent cannot rely upon an argument that VERA&JOHN is a weak or generic mark. In fact, the opposite is true. VERA&JOHN is an arbitrary mark, and thus, is legally considered distinctive and strongest type of trademark. The evidence establishes at the time of the registration of the Domain Name, Complainant was operating a website for online gaming for approximately one month. Regardless of the amount of time, Respondent admits that it redirected the Domain Name to the website of a competitor to Complainant, but argues that its removal of such redirection is evidence of his professionalism. Respondent’s reason for redirecting the Domain Name is never explained. Under the circumstances, Respondent has failed to rebut the inference that the Domain Name was registered for commercial purposes to trade off the good will and reputation of Complainant.

For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Domain Name, <verajohn.co>, be transferred to Complainant.

John C McElwaine
Sole Panelist
Date: May 29, 2017