The Complainant is Veikkaus Oy of Veikkaus, Finland, represented by Eversheds Ltd., Finland.
The Respondent is David Webb of Wylie, Texas, United States of America, represented by Law Office of David Dingeman at C, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2016. On February 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 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.
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 the Respondent of the Complaint, and the proceedings commenced on March 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2016. The Response was filed with the Center on March 23, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 5, 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.
On April 4, 2016, the Complainant filed a supplementary filing with the Center seeking to address some matters put in the Response. 4. Factual Background
The Complainant is the Finnish national betting agency. According to the Complaint, the Complainant has been using the sign VEIKKAUS since the 1940s. Quite often this has been in a stylized form or with a device element such as the device of a V and a target, which has been in use since at least 1964. It owns a number of registered trademarks including:
- Finnish Trademark No. 49407 for VEIKKAUS and the V superimposed on a target logo, registered on January 20, 1965 for goods in International Classes 16, 20, 22 and 24;
- Finnish Trademark No. 128212 for VEIKKAUS with a device element, registered on September 20, 1993 for goods and services in International Classes 16, 20, 22, 24 and 36;
- Finnish Trademark No. 134649 for VEIKKAUS with a different device element, registered on November 7, 1994 for goods in International Classes 16, 20, 22, 24, 35, 36 and 41;
- Community Trademark No. 005011408 for VEIKKAUS as a figurative mark registered from April 11, 2006 for goods and services in International Classes 9, 16, 25, 28 and 41; and
- Community Trademark No. 007233083 for the plain word VEIKKAUS registered from June 18, 2010 for goods in International Classes 9 and 16.
The Respondent registered the disputed domain name in 1996. He has been using it since then for what he calls a search engine which displays "pay-per-click" advertisements. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Before addressing the substantive requirements under the Policy, the Panel deals with the Complainant's request to file a supplemental filing.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent's position on a particular point was clear.
In the present case, the supplemental filing does address matters raised in the Response which are appropriate to be admitted into the record. Accordingly, the Panel does so. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above.
The Respondent points out that the trademarks registered before he registered the disputed domain name include device elements, not just the word "veikkaus". The Respondent also points out that the Complainant does not have a registered trademark in the United States of America which the Respondent says is significant because "the contested domain name resolves as a U.S. domain name".
In fact, as the Complainant points out in its supplemental filing, the disputed domain name is registered in the ".com" generic Top-Level Domain ("gTLD"). This is open to everyone, not just people in the United States of America. Further, the website to which the disputed domain name resolves is accessible by people from all over the world.
In any event, for the present argument, satisfaction of the first requirement under the Policy does not require proof of registration in the place where the Respondent is located: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.1.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the ".com" component of the disputed domain name as a functional aspect of the domain name system: WIPO Overview 2.0, paragraph 1.2.
Therefore, the disputed domain name is identical to Community Trademark No. 007233083 for the plain word VEIKKAUS. As the Respondent points out, the other trademarks include significant device or figurative elements. However, the word "veikkaus" is in each case a prominent and significant feature of the trademark. It is also the only, or main, verbal element and for that reason likely to be a common means of referring to the trademark. In these circumstances, the Panel has no hesitation in finding that the disputed domain name is confusingly similar to the other registered trademarks referred to above. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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 in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent does not dispute these matters. He says that the word "veikkaus" is a generic term. He says further that he had never heard of the Complainant or its trademark when he registered the disputed domain name. It is also relevant to note the Respondent's point that the Complainant's trademarks are not registered in the United States of America.
As the Panel has noted above, however, the Respondent's website is registered in a gTLD and is accessible from anywhere in the world. It is well established that "pay-per-click" advertising is not intrinsically impermissible under the Policy. Whether it is, or is not, depends on whether it uses another's trademark, without permission, to take advantage of the trademark's significance as a trademark; for example to generate revenues or divert trade from the trademark owner: see WIPO Overview 2.0, paragraphs 2.6 and 3.8.
The Respondent, relying on the evidence submitted in the Complaint of newspaper reports and the like dating from the 1940s, says:
Complainant's use of the mark "veikkkaus" in their 1940s – 1960s Annexes uses a number of variations of the word "veikkaus" including: veikkausasiamies, veikkauksen, veikkausahelska, veikkaten suggesting that "veikkaus" is not a made up word but in fact, just a shortened word for variations on betting and games of chance.
Google Translate offers the interpretation "pools". The Complainant says that the word is an invented word. In its supplemental filing, it says that betting and games of chance in Finnish were known as "tippaus", before the Complainant's name which came into existence as a result of a competition for a new name for its service. The fact that the word is a contraction or variation from other words in the Finnish language does not preclude the word itself being a coined term making an allusive or subtle reference to its subject matter. On the basis of the material before the Panel, the Panel considers that the word "veikkaus" was initially a coined term. It has had significance as the name and trademark of the Complainant since the early 40s, and further notes that the Complainant has been provided with a sole and exclusive license to organize lotteries and betting games in Finland. As of 2012, that license was extended to the Complainant by statute (the Finnish Lotteries Act).
While the Respondent denies that his website contains links to competitors of the Complainant, Annex 24 in the Complaint includes a print out showing links to gaming websites such as "lotto", "Lotto Number", "Lotto Winning Numbers", "", "" and "". The last three links are perhaps more accurately described as games sites rather than gaming sites in the sense which applies to the Complainant's business.
Nevertheless, the Panel notes that, except perhaps for someone with a Finnish background or who has been to Finland, the word "veikkaus" is very unusual. While the Respondent denies knowledge of the Complainant's marks, he does not offer any explanation of how it is that he came to register it. Given how unusual the term is and the length of the Complainant's use before the Respondent registered the disputed domain name, the Panel is unable to accept the Respondent's bare denial in these circumstances.
Having regard to these matters, the use the Respondent has made of the disputed domain name outlined above does not qualify as a bona fide offering of goods or services under the Policy. Therefore, the Panel finds that the Complainant has established the second requirement under the Policy. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
For the reasons outlined in section 5B above, the Panel considers that that is the case here. As outlined above, the Panel has not accepted the Respondent's bare denial of knowledge of the Complainant's trademark. From the available record, it appears that the Respondent registered the disputed domain name to put it to the use which he has in fact put it and, in the absence of a convincing explanation of how he arrived at the disputed domain name, that it was registered with knowledge of the Complainant and its trademark. The Panel has also found that the use the Respondent is making of the disputed domain name does not qualify as a bona fide offering of goods or services under the Policy. As a result, it follows that the Complainant has established that the disputed domain name was registered and is being used in bad faith under the Policy. 6. 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, , be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: April 19, 2016
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