WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virtual IP Assets Limited v. Unknown / Szentes Attila
Case No. DRO2016-0001
1. The Parties
The Complainant is Virtual IP Assets Limited of Tortola, British Virgin Island, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Unknown / Szentes Attila of Bistrita, Romania.
2. The Domain Name and Registrar
The disputed domain name <888casino.ro> (“Disputed Domain Name”) is registered with ROTLD (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2016. On January 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient and that the language of the proceedings should be Romanian, the Complainant filed an amended Complaint on January 14, 2016, and submitted a request for English to be the language of the proceedings.
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 January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 23, 2016. 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. Language of Proceedings
On January 11, 2016, the Centre sent an email to the parties, which noted that the Complaint had been submitted in English, but the language of the registration agreement was Romanian. On January 14, 2016, the Complainant submitted an amended Complaint, which included a request that English be the language of the proceedings. The Respondent did not make any submissions.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceedings. The Panel considers that for the purposes of equity and efficiency the language of the present proceedings should be English, taking into consideration the lack of objection from the Respondent and the fact that the Complainant claims to be unfamiliar with the Romanian language.
5. Factual Background
The Complainant is a member of the 888 group of companies and is involved in the online gaming industry. The first entity within the 888 group of companies was established in 1997. The Complainant operates its business via various websites, including “www.888.com” and “www.888casino.com”. The Complainant first registered the domain name <888casino.com> on June 28, 2001. The Complainant obtained registered trade mark rights in the 888CASINO mark in the European Union (EU) and Australia, and has also registered the 888.COM mark in the EU and the UK and the 888 mark in the EU and Benelux (the “Complainant’s Trade Marks”).
The Respondent registered the Disputed Domain Name on May 5, 2006.
6. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s Trade Marks.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Respondent has not used and is not using the Disputed Domain Name in connection with the bona fide offering of any goods or services and he has not been making any noncommercial or fair use of the Disputed Domain Name. The Complainant has also not authorised the Respondent to use any of the Complainant’s Trade Marks, nor is the Respondent known by the Disputed Domain Name.
(c) The Complainant’s group of companies have been in operation since 1997, and are well known worldwide in the online gaming industry. The Complainant first registered the domain name <888casino.com> on June 28, 2001, and has been actively using the 888CASINO mark since 2004. The Respondent therefore must have known of the Complainant’s well-known brand at the time he registered the Disputed Domain Name.
(d) The Respondent registered and is using the Disputed Domain Name in bad faith for the purposes of attempting to attract Internet users to his website by creating a likelihood of confusion as to the source of the website.
(e) The fact that the Respondent registered the Disputed Domain Name which consists of the Complainant’s well-known trade mark is in itself indicative of bad faith. Further, as no use has been made of the Disputed Domain Name, this indicates that the Respondent’s intention in registering the Disputed Domain Name was to preclude the Complainant from doing so.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the 888CASINO trade mark, 888.COM trade mark and the 888 trade mark, based on its various trade mark registrations (including CTM registrations, and registrations in the UK, Australia and Benelux).
The Disputed Domain Name incorporates the Complainant’s 888CASINO trade mark in its entirety. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the top-level domain extension, in this case “.ro”, may be disregarded (see Koninklijke Philips Electronics N.V. v. SC Evergreen Consult & Aviation SRL (Catalin Mogoseanu), WIPO Case No. DRO2001-0001; and Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered trade mark, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the 888CASINO trade mark or any of the Complainant’s Trade Marks.
The Panel has also noted the Complainant’s claim in the amended Complaint, that the Respondent was a marketing affiliate of one of the Companies from the 888 group but such commercial relationship has ended in 2007.
Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Disputed Domain Name is currently inactive. As such, there is no evidence that the Respondent has used or has made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, or that it is making legitimate, noncommercial or fair use of the Disputed Domain Name, without the intent to misleadingly divert Internet users from the Complainant’s website and/or services.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The fact that a domain name is inactive does not prevent a finding of bad faith registration and use (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The passive holding of a domain name may amount to bad faith registration and use when it is difficult to imagine any conceivable future use of the domain name that would be legitimate and would not infringe a complainant’s well-known mark or would not amount to unfair competition (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra).
Other circumstances which have been fuond to amount to bad faith registration and use include:
(a) the fact that a complainant’s trademark has a strong reputation and has been used over a long period of time; and
(b) the absence of evidence of any actual or contemplated good faith use,
(see Telstra Corporation Limited v. Nuclear Marshmallows, supra; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The Panel accepts that it is likely that the Respondent was aware of the Complainant’s Trade Marks at the time of registration of the Disputed Domain Name, as the Complainant is well-known worlwide and has been in operation for many years. It also cannot be mere conincidence that the Respondent has used the words “888” and “casino” in the Disputed Domain Name, which results in a domain name identical to the Complainant’s 888CASINO mark and is suggestive of a business or services in the same industry as that in which the Complainant operates. The Respondent has also not made any submissions or provided any evidence to show any contemplated good faith use of the Disputed Domain Name.
While the Panel finds the Complainant’s submissins and evidence concerning its relations with the Respondent to be lacking, it appears to be the Complainant’s case that the Respondent originally registered the Disputed Domain Name without the approval of the Complainant. Moreover, the Complainant has stated that “nothing in this short-lived commercial affiliation entitles the Respondent to maintain a domain name which incorporates any of the 888 group’s marks”. These contentions remain unrebutted by the Respondent, and on consideration of the overall circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied (see e.g., in this regard Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171.
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, <888casino.ro>, be transferred to the Complainant.
Date: March 8, 2016