The Complainants are GVC Holdings PLC (“First Complainant”) and Ladbrokes Betting & Gaming Limited (“Second Complainant”) both of the United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On September 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2019 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 October 7, 2019. 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 October 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2019. The Center appointed Nicholas Smith as the sole panelist in this matter on November 15, 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 First Complainant is a sports betting and gaming group, offering betting services online through a number of brands. In 2018 the First Complainant acquired the Second Complainant, a United Kingdom company specializing in high street bookmaking. The Second Complainant is now the wholly owned subsidiary of the First Complainant. Prior to its acquisition, the Second Complainant, and its predecessors in title, had used the trademark Coral (the “CORAL Mark”) in connection with bookmaking and betting services since 1926. In 1996 the Second Complainant launched an online website at “www.coral.co.uk” offering online betting services. The Complainants’ online website offers gaming services of various forms including slots and other casino-style games. The Second Complainant is the owner of trademark registrations for the CORAL Mark in various jurisdictions including the United Kingdom (registered since October 9, 1997 (registration number 2147703) for various services in classes 35 and 41). The Domain Name The Complainants make the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainants’ CORAL Mark; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The Complainants are the owner of the CORAL Mark, having registered the CORAL Mark in the United Kingdom and other jurisdictions. The Domain Name is confusingly similar to the CORAL Mark since it wholly incorporates the CORAL Mark and adds the descriptive word “casino”. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainants to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve a website that capitalises on the Complainants’ reputation in the CORAL Mark to offer services in direct competition with the Complainants’ gaming services. The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website offering competing gaming services, the Respondent is using the Domain Name to divert Internet users searching for either of the Complainants to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Consolidation of Multiple Complainants The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” The present proceeding involves two Complainants bringing a single complaint against a common Respondent. The Complainants have made a request for consolidation and bear the onus of establishing that such a consolidation is justified. The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants have a common legal interest as related entities that hold and use the CORAL Mark. The Panel has considered whether it would be equitable and procedurally efficient to permit the consolidation. In the present case it is no doubt equitable and procedurally efficient. The Panel finds that it is equitable and procedurally efficient to grant the Complainants’ request for consolidation. B. Identical or Confusingly Similar To prove this element the Complainants must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainants’ trade or service mark. The Second Complainant is the owner of the CORAL Mark, having registrations for the CORAL Mark as a trademark in the United Kingdom. The Domain Name wholly incorporates the CORAL Mark along with the term “casino” (and the “.org” generic Top-Level Domain (“gTLD”) which can be discounted as an essential element of any domain name). Other UDRP panels have repeatedly held that “the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant”; see The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227. The Panel finds that the Domain Name is confusingly similar to the Complainants’ CORAL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (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.” The Respondent is not affiliated with the Complainants in any way. It has not been authorized by the Complainants to register or use the Domain Name or to seek the registration of any domain name incorporating the CORAL Mark or a mark similar to the CORAL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Respondent is using the Domain Name to resolve to the Respondent’s Website where it offers competing gaming services under the Complainants’ CORAL Mark to customers in the United Kingdom (in a manner that may constitute infringement of the Complainants’ CORAL Mark). Such conduct, involving the representation that the Respondent’s Website is in some way connected to the Complainants does not, on its face, amount to the use of the Domain Name for a bona fide offering of goods or services. The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its 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 trade mark 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 online 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 the respondent’s website or location (Policy, paragraph 4(b)). The Panel finds that the Respondent was aware of the Complainants and their reputation in the CORAL Mark at the time the Domain Name was registered. The Complainants and their predecessors in title have used the CORAL Mark in connection with betting and gaming services for over 90 years (offline) and 20 years (online). The Respondent’s Website offers services similar to those offered by the Complainant, under the same trademark and targeted at the same users in the same jurisdiction (the United Kingdom). The registration of the Domain Name in awareness of the CORAL Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Respondent has used the Domain Name, being confusingly similar to the CORAL Mark, to attract visitors to its website where it offers gaming services in direct competition with the Complainants, under the Complainants’ CORAL Mark. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website by creating a likelihood of confusion with the Complainants and the Complainants’ CORAL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi)). Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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, Nicholas Smith
Sole Panelist
Date: November 17, 2019
Full & Egal Universal Law Academy