The Complainant is Casumo Services Ltd. of Swieqi, Malta, represented by Ports Group AB, Sweden.
The Respondent is Dmytro Ilchenko of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2018. On November 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2018, 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 29, 2018, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 4, 2018.
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 December 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2018.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 22, 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 Rules, paragraph 7. 4. Factual Background
The Complainant is an online casino founded in 2012.
The Complainant holds among others, the following trademark registrations:
Trademark
Registration Number
Filing Date
Registration Date
Class
Jurisdiction
CASUMO
10863066
May 7, 2012
October 3, 2012
35, 38 ,41
European Union
CASUMO
15393085
April 29, 2016
August 12, 2016
9, 25, 35, 38, 41, 42
European Union
CASUMO (& design)
15407893
May 4, 2016
August 22, 2016
9, 25, 35, 38, 41, 42
European Union
CASUMO
289555
May 13, 2016
November 3, 2016
9, 25, 35,3 8, 41, 42
Norway
CASUMO (& design)
289556
May 13, 2016
November 3, 2016
9, 25, 35, 38, 41, 42
Norway
CASUMO
17650391
January 2, 2018
April 16, 2018
9, 25, 28, 35, 38, 41, 42
European Union
CASUMO (& design)
17650482
January 2, 2018
April 24, 2018
9, 25, 28, 35, 38, 41, 42
European Union
Also, the Complainant holds the domain name , registered on March 10, 2013.
The disputed domain name was registered on October 27, 2018. The website to which the disputed domain name resolves contained advertisement for different casinos. After a few seconds, the Internet user is automatically transferred to another casino website. 5. Parties’ Contentions A. Complainant
The Complainant states the following:
(i) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:
That the Complainant is the owner of several registrations in Europe for the trademark CASUMO, which cover products and services related to online casinos.
That the disputed domain name is identical to its trademark CASUMO, since the inclusion of the
generic Top-Level Domain (“gTLD”) “.site” does not prevent the disputed domain name from being identical or confusingly similar to its trademark CASUMO.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name:
That the Respondent has no rights to, or legitimate interests in the disputed domain name. That the Respondent is not a licensee of the Complainant and that the Complainant has never authorized the Respondent to register or use the disputed domain name.
That the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name, as the Web site to which the disputed domain name resolves, displays pay-per-click (“PPC”) advertisements that divert traffic to casinos in direct competition with the Complainant’s services.
That the Respondent is not commonly known by the disputed domain name.
That the disputed domain name has been used to mislead consumers searching for information about the Complainant and its business, and to interfere with the use of the trademark CASUMO.
(iii) Registration and Use in Bad Faith:
That the Respondent was aware of the Complainant’s trademark CASUMO at the time of registration of the disputed domain name, since the Complainant has used the trademark directly or through affiliates well before the Respondent registered the disputed domain name.
That the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site, by creating a likelihood of confusion with the trademark CASUMO as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Web site.
That the Respondent registered the disputed domain name to disrupt and hinder the business of the Complainant.
That the Respondent acquired the disputed domain name primarily for commercial gain by using the Complainant’s trademark or otherwise with the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant.
That the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademark CASUMO in a corresponding domain name.
That the Complainant sent a cease and desist letter to the Respondent through an email communication, which was not replied to by the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed in this Complaint, the Complainant must prove that the three elements enumerated in paragraph 4(a) of the Policy have been met:
(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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and used in bad faith.
As the Respondent has failed to submit a formal Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complainant (see Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The Complainant has proven to be the owner of registrations for the trademark CASUMO in several jurisdictions.
The disputed domain name is confusingly similar to the Complainant’s trademark CASUMO, as it includes said trademark in its entirety.
The addition of the gTLD “.site” to the disputed domain name is irrelevant and immaterial for the purposes of assessing confusing similarity with the Complainant’s trademark CASUMO (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,WIPO Case No. D2014-1919).
The first requirement of the Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark at issue; or
(iii) the respondent is 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.
The Complainant argues that it has not licensed or authorized the Respondent to use the trademark CASUMO. This allegation has not been contested by the Respondent.
The disputed domain name resolves to a PPC Web site that displays advertising hyperlinks for online casinos that are directly targeting the Complainant and its services. This PPC site diverts Internet users to Web sites that promote services of a competitor of the Complainant. This fact increases the potential for confusion or wrongful association among Internet users (see AltaVista Company v. O.F.E.Z. et al.,WIPO Case No. D2000-1160; Expedia, Inc. v. Dotsan,WIPO Case No. D2001-1220; CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071).
The use of the disputed domain name to collect click-through revenue as a result of the implementation of a PPC mechanism which redirects traffic to the Web site of a competitor of the Complainant to take advantage of the reputation of said Complainant cannot be catalogued as fair, legitimate, or noncommercial (see Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413, and AMADEUS IT GROUP, S.A. v. Contact Privacy Inc. Customer 0151133672, Contact Privacy Inc. Customer 0151133672 / Milen Radumilo, WIPO Case No. D2018-2192, and WGCZ S.R.O. v. WhoIsProtectS / Ivan Makarov,WIPO Case No. D2014-0468).
The disputed domain name has unequivocally targeted the Complainant’s trademark CASUMO, and the services covered by it.
Since the Respondent has not proven to have rights or legitimate interests in the disputed domain name, the second element of the Policy, has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has 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) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The evidence submitted by the Complainant shows that the disputed domain name resolves to a Web page that displays several PPC links featuring the phrases “Online Casino Game | Play Free Casino Online Games for real money”, and which redirects users to a Web site operated by one of the Complainant’s competitors, which constitutes bad faith registration and use for the purposes of the Policy (see LeoVegas Gaming Ltd. v. Whoisguard Protected, Whoisguard, Inc. / Michael Shneier, Mshneier LLC,WIPO Case No. D2016-1298)
The Respondent’s adoption of a PPC scheme that targets the Complainant and its trademark CASUMO, creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name, with the purpose of attracting Internet users to the Respondent’s Web site, to obtain click‑through revenue from advertising links, for commercial gain. This constitutes bad faith conduct under paragraph 4(b)(iv) of the Policy (seeProduits Berger v. Romana Go,WIPO Case No. DPH2005‑0001).
The fact that the Web site to which the disputed domain name resolves has featured several hyperlinks promoting online casinos of competitors of the Complainant, evidences the Respondent’s attempt to profit from the disputed domain name at the expense of the Complainant, its reputation, and its trademark CASUMO (see Molmed S.p.A. v. Prof. Asif Ahmed,WIPO Case No. D2002-0177; Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd,WIPO Case No. D2011-0315).
The third element of the Policy has been met. 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 be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: February 7, 2019
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