WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marielle Global Limited and Addison Global Limited v. Roberto Calo
Case No. DEU2018-0032
1. The Parties
The Complainants are Marielle Global Limited of Road Town, British Virgin Islands and Addison Global Limited of Gibraltar, represented by Wiggin LLP, United Kingdom.
The Respondent is Roberto Calo of Sotogrande, Spain, represented by De Felipe Abogados, Spain.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <moplay.eu> (the “Domain Name”) is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2018. On December 10, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On December 12, 2018, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2018. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was February 1, 2019. The Center received an email communication from the Respondent on December 18, 2018. The Response was filed with the Center on February 1, 2019.
The Center verified that the Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules.
The Center appointed Carolina Pina-Sánchez as the sole panelist in this matter on February 6, 2019. 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 ADR Rules, Paragraph B(5).
On February 20, 2019, the Complainants filed additional unsolicited documentation with the Center. In accordance with Paragraph B(8) of the ADR Rules, the Panel decided not to admit the new documentation after finding that it did not affect the Panel’s findings in the present case.
4. Factual Background
In accordance with the information provided in this proceeding, Addison Global Limited operates a gambling and betting website under the trademark MOPLAY.
Marielle Global Limited owns several trademarks that protect the denomination “moplay”, as evidenced in Annex 5 of the Complaint, those trademarks include: (i) European Union Trade Mark registration No. 016981961 for services in class 41, granted on November 6, 2017; (ii) European Union Trade Mark registration No. 17633331 for services in class 41, registered on May 4, 2018; (iii) European Union Trade Mark registration No. 017633363 registered on May 4, 2018 for services in class 41 and; (iv) European Union Trade Mark Registration for MOPLAY THE BETTING APP No. 017633413 for services in class 41, registered on May 4, 2018, all of which are currently in force and licensed to Addison Global Limited as indicated by the Complainants (hereinafter jointly, the “MOPLAY Trademarks”).
The Domain Name was registered on February 15, 2018, as evidenced by the Complainants (vid. Annex 1 of the Complaint).
The Domain Name resolves to a parking page with the Registrar displaying pay-per-click links.
5. Parties’ Contentions
In their Complaint, the Complainants argue that the registration of the Domain Name by the Respondent is of a speculative nature for the following reasons:
A. The Domain Name is identical to the MOPLAY Trademarks.
The Complainants are the owners/licensees of the MOPLAY Trademarks and use domain names containing the term “moplay” (vid. Annex 4 of the Complaint).
The Respondent identifies its services as a website for online gambling and betting under the MOPLAY Trademarks.
The Domain Name incorporates the MOPLAY Trademarks in their entirety.
B. The Respondent has no rights or legitimate interests with respect to the Domain Name:
The Respondent has no rights to the name “moplay”. The database of the Spanish Patent and Trademark Office (“SPTO”) contains the application for a Spanish combined trademark containing the domain name <moplay.es> (Spanish trademark No. 3731354), filed for goods in class 28 in the name of Mrs. Maria Shabdurasuloba. According to the Complainants, the trademark is linked to the Respondent because the Respondent and Ms. Maria Shabdurasuloba share the same contact address (vid. Annexes 9 and 12 of the Complaint). The Complainants opposed its registration.
The Complainants further argue that the Respondent is not authorized by, affiliated with, endorsed by or connected to them.
C. The Domain Name has been registered and is used in bad faith:
The Complainants argue that the Respondent must have been aware of the Complainants and their rights before the Domain Name was registered because at the time of registration of the Domain Name (i) the Respondent was working at Nektan Plc, a developer of mobile gaming content which operates in the same territory as the Complainants: Gibraltar, and (ii) the Complainants had already registered European Union Trade Mark No. 016981961 for the term “moplay” (vid. Annexes 1 and 5 of the Complaint).
Mark Henrich (“Mr. Henrich“), General Counsel of one of the Complainants (Addison Global Limited), contacted Nektan Plc to express his dissatisfaction with the registration of the Domain Name by one of its employees. On July 2, 2018, Mr. Henrich received an offer from the Respondent’s counsel to sell the Domain Name and <moplay.es> to the Complainants for GBP 25,000 (vid. Annex 12 of the Complaint).
On July 6, 2018, the Complainants’ counsel sent a letter to the Respondent’s counsel rejecting the offer to buy the Domain Name (vid. Annex 7 of the Complaint). On July 12, 2018, Mr. Henrich received a call from the Respondent’s counsel informing him that the Respondent had received an offer for the Domain Name and <moplay.es> for GBP 20,000, but preferred to sell it to the Complainants for GBP 25,000. In that call, Mr. Henrich confirmed the initial refusal of the offer (vid. Annex 12 of the Complaint).
On September 6, 2018, Mr. Malcolm Campbell (Director of Compliance at Nektan Plc) sent an email to Mr. Henrich informing him that the Respondent had promised to give the Domain Name to the Complainants as a gesture of professionalism, however when the Respondent ultimately informed Nektan Plc he was seeking legal advice, his employment was terminated, and Mr. Malcolm Campbell had serious doubts about the veracity of the website content hosted in the domain name <moplay.es> (vid. Annex 12 of the Complaint).
The Domain Name does not host a webpage, it hosts a web generated by its Registrar GoDaddy.com, LLC, which offers a service for the purchase of the Domain Name (vid. Annex14 of the Complaint).
The Respondent states that he has not registered the Domain Name in bad faith for the following reasons:
- The Respondent was not aware of the existence of a website “moplay” at the time of registering the Domain Name.
- The Respondent’s use of the name “moplay” for his business is due to the phonetic meaning of “mo” – “play”, which means “more” “play”.
- The Respondent, through a delegate, Ms. Maria Shabdurasuloba, has applied for the registration of two Spanish trademarks: (i) the Spanish combined trademark No. 3731354 “moplay.es” for goods in class 28, filed on August 8, 2018, and the Spanish combined trademark No. 3747242 “moplay.es” for goods in class 25, filed on November 5, 2018 (jointly, the “Respondent’s Trademark Applications”).
In June 2018, the Respondent was contacted by one of the Complainants demanding the transfer of the Domain Name and the domain name <moplay.es>. In the conversation, the Complainant did not mention its prior rights that supported the petition. This contact took place seven months after the Respondent took an interest in the start-up of his business (vid. Annex 1 of the Response).
The Respondent was willing to accept the transfer of the Domain Name in exchange for compensation for damages due to the time and effort spent on the construction of his website hosted at <moplay.es>. The Respondent proposed a price of GBP 20,000 in exchange for the transfer of the Domain Name and <moplay.es>. On August 3, 2018, one of the Complainants replied in writing to the Respondent’s attorneys rejecting the offer to transfer the domain names.
The Domain Name is going to be used to host the European version of the webpage, which is currently hosted at <moplay.es>, and is directed at an audience different from the Complainants’ audience: the Complainants are engaged in online gambling and the Respondent is engaged in the sale of children’s clothing and toys.
6. Discussion and Findings
According to Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) and in connection with Paragraph B(11)(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedy requested by the Complainant if the latter proves in the ADR proceeding that:
(i) the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) the domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
Paragraph B(11)(d)(1)(i) of the ADR Rules requires the Complainant to show that the Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or Community law.
It has been generally accepted that the applicable Top-Level Domain (“TLD”) in a domain name (in this case “.eu”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The TLD does not have the capacity to distinguish the Domain Name from the MOPLAY Trademarks and is disregarded when comparing the Domain Name with the MOPLAY Trademarks. See Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175 1 ; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan, WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.
Therefore, considering the comparison made between the Domain Name and the MOPLAY Trademarks, this Panel considers that they are identical, since the Domain Name reproduces the MOPLAY Trademarks in their entirety. Thus, the complete inclusion of a registered trademark in a domain name can be sufficient to consider the existence of identity or confusing similarity. In this regard see Hoffman-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474.
In light of the foregoing, this Panel finds that the Complainants have satisfied the first of the requirements of the ADR Rules.
B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, the burden of production shifts to the Respondent to come forward to show that he has rights or legitimate interests in respect of the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Pursuant to Paragraph B(11)(e) of the ADR Rules, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so; or
(ii) the Respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
The Respondent has not proven before any notice of the dispute, his use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with the offering of goods or services. Annex 1 of the Response, does not demonstrate that the Respondent had any intention of registering a domain name containing the denomination “moplay” on December 23, 2017, the referred Annex consists of an email thread about a potential business cooperation in relation to an online store, in which the term “moplay” is not mentioned.
The Respondent’s Trademark Applications were not filed at the time of registering the Domain Name but only after the Complainants contacted the Respondent’s previous employer and received an unsolicited offer to buy the Domain Name and <moplay.es> from the Respondent’s legal representative (vid. Annex 1 of the Complaint and Annex 4 and 5 of the Response). According to the WhoIs record, the Domain Name was registered on February 15, 2018; at that time, the Complainants had already registered the European Union Trade Mark No. 016981961 (registered on November 6, 2017).
Taking into account that the Domain Name is not in use, the Respondent has not proven that he is commonly known by the Domain Name.
The Respondent has admitted in his Response the commercial purpose of the Domain Name. The Respondent has indicated that the Domain Name will contain in the future the European version of the website hosted in <moplay.es>.
According to the Case File (and the evidence submitted by the Respondent), the Panel considers that the Respondent has not rebutted the Complainant’s prima facie case.
As a result, the Panel finds that the Complainants have provided reasonable evidence to support the absence of rights or legitimate interests on the part of the Respondent regarding the Domain Name.
C. Registered or Used in Bad Faith
Although the Panel has determined that the Complainants have sufficiently met the criteria for the second condition under Article 21(1)(a) of the Regulation, and it is therefore unnecessary for the Complainants to also satisfy the third condition, the Panel will nevertheless render findings on the arguments and evidence presented. Under Paragraph B(11)(d)(1)(iii) of the ADR Rules the Complainant have to show that the Respondent either registered or is using the Domain Name in bad faith. Paragraph Paragraph B(11)(f) of the ADR Rules provides circumstances that may evidence bad faith under Paragraph B(11)(d)(1)(iii) of the ADR Rules.
This Panel considers that the requirements set forth in Paragraph B(11)(d)(1)(iii) of the ADR Rules are met in this case. There are circumstances indicating that the Domain Name was registered primarily for the purpose of selling it to the Complainants for an amount that exceeds the documented amount directly related to the Domain Name.
The Complainants have proven that (i) the Respondent has previously worked in a company in the same industry as the Complainants: online gambling and betting services, which indicates that, the Respondent more probable than not was aware of the MOPLAY Trademarks at the time of registering the Domain Name; and (ii) the Respondent made an unsolicited offer of GBP 25,000 for the transfer of the Domain Name and <moplay.es>.
(i) Regarding the registration of the Domain Name including the MOPLAY Trademarks in their entirety:
This Panel considers it highly unlikely that the Respondent did not have knowledge of the MOPLAY Trademarks at the time of registering the Domain Name, since it has been demonstrated that, in that time, he worked in a company in the same sector (vid. Annex 12 of the Complaint).
In this regard, the Panel accepts the Complainants’ allegation that the Respondent was aware that at least one of the MOPLAY Trademarks was already registered when registering the Domain Name (European Union Trade Mark No. 016981961, granted on 6 November 2017). Other similar decisions have been issued in this regard such as Accenture Global Services Limited v. Patel Holdings, WIPO Case No. D2016-0367.
(ii) Regarding the amount of money requested by the Respondent to transfer the Domain Name:
The amount requested is much higher than the costs of registering a Domain Name. The Respondent alleges in his Response that the amount requested corresponded to the expenses he incurred for preparing the start-up of his online business (as compensation for damages for the creation of his website). However, the Respondent has not evidenced these expenses. On the other hand, the Complainants have provided evidence showing that the Domain Name contains a website with pay-per-click links, that even if generated by the Registrar, the Respondent cannot disclaim responsibility for content appearing on the website associated with the Domain Name.
Based on the above, the Panel finds that the Complainants have also evidenced the third and last requirement under Paragraph B(11)(d)(1)(iii) of the ADR Rules, and that the Domain Name has been registered and is used in bad faith.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the Domain Name <moplay.eu> be transferred to Addison Global Limited 2 .
Date: February 28, 2019
1 Noting the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel has also referred to UDRP cases, where appropriate.
2 The remedy sought by the Complainants is the transfer of the disputed domain name to Addison Global Limited. Addison Global Limited is established in Gibraltar, which is a British overseas territory and is therefore a part of the European Union, it satisfies the general eligibility criteria for registration of the Domain Name set out in Paragraph 4(2)(b) of Regulation (EC) No.733/2002. Therefore, the Complainants are entitled to request the transfer of the Domain Name.