The Complainant is Merryvale Ltd., Guernsey, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Vlad Kordov, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2020, 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 April 20, 2020 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 April 21, 2020. 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 April 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2020. The Center appointed Stefan Naumann as the sole panelist in this matter on May 27, 2020. 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 a Guernsey company that operates online gaming websites under its SPINCASINO trademarks. The evidence shows that the Complainant owns a number of word trademarks SPINCASINO, including a European Union Trade Mark No. 01335427, registered on February 18, 2015, for products and services in classes 9, 41, and 42, notably online gaming, gambling and betting services. The Complainant also owns a number of SPINCASINO trademarks in a specific type face with a star on the “i”. The evidence shows that the “Spincasino” brand is well established and has built a reputation that is reflected in the third party rankings of online gaming services and is supported by advertising and sponsorship expenditures. The Respondant registered the disputed domain name The Complainant asserts that its SPINCASINO marks are well-known, that the Respondent has no permission from the Complainant to use the Complainant’s trademarks or apply for a domain name with the Complainant’s trademarks, that the Respondent used the Complainant’s trademarks without rights or legitimate interests to attract users for commercial gain by creating a risk of confusion, and that the “403 Forbidden” error message constitutes continued bad faith use that damages the reputation of the Complainant’s brand. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in its claim, the Complainant must demonstrate that all three elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent must have no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name must have been registered and used in bad faith. A. Identical or Confusingly Similar The disputed domain name combines the term “spincasino” with the generic Top-Level Domain (“gTLD “) ”.best”. The addition of the gTLD does not affect the fact that the disputed domain name reproduces the Complainant’s SPINCASINO marks. The disputed domain name is identical to the Complainant’s trademarks since the SPINCASINO mark is reproduced as is in the disputed domain name. The Panel is satisfied that the disputed domain name is identical to the Complainant’s trademarks for the purposes of the Policy. B. Rights or Legitimate Interests The disputed domain name carries a clear risk of implied affiliation since consumers would expect to land on a website of the Complainant when typing in the Complainant’s trademark SPINCASINO, particularly since the Complainant also uses the term “Spincasino” in its domain names. The Respondent’s website did not feature the Complainant’s SPINCASINO trademarks, but appeared to offer services that are identical to those of the Complainant (gambling, online gambling). The use of the Complainant’s trademark as domain name to offer directly competing services and to divert and mislead consumers by creating a risk of confusion does not constitute a bona fide offering of goods under paragraph 4(c)(i) of the Policy (Abbott Laboratories v. United Worldwide Express Co., Ltd.,WIPO Case No. D2004-0088; Care Source v. Domain Administrator,WIPO Case No. D2018-2411). The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and finds no indication in the evidence that the Respondent could claim rights or legitimate interests of his own in the term “Spincasino”. Since the Respondent has no permission from the Complainant and chose not to respond, his use of the disputed domain name is without rights or legitimate interests. The Panel finds that in the present case the Respondent does not have any rights or legitimate interests with respect to the disputed domain name The Complainant argues that the Respondent knew of the Complainant’s well-known trademarks and that the “403 Forbidden” notice to which the disputed domain name now leads allows of finding of bad faith under the passive holding doctrine. Based on the webpage submitted into evidence the gambling website the Respondent appears to have operated at the disputed domain name The subsequent switch to a “403 Forbidden” notice does not in the circumstances described above change this finding. In addition, these circumstances are sufficient to find bad faith registration and use based on the passive holding of the disputed domain name also. As discussed in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the relevant issue is whether under the circumstances of a case, it can be held that a respondent is acting in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, supra, the panel noted that: “[…] paragraph 4(b) recognizes that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.” “The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the [Policy] only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.” In the present matter, the record shows that: (i) the Complainant’s trademarks are well known, as evidenced by their substantial use by the Complainant, apparent success and the Complainant’s substantial advertising of the brand, (ii) the disputed domain name is identical to the Complainant’s trademark, and (iii) the Respondent set up a website offering directly competing services using the Complainant’s SPINCASINO trademark to confuse and mislead Internet users before the disputed domain name led to an inactive page. In light of these specific circumstances, the Panel concludes that the Respondent’s prior use of the disputed domain name for a gambling website and his current passive holding of the disputed domain name in the present matter also satisfies the bad faith requirement of 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 disputed domain name Stefan Naumann
Sole Panelist
Date: June 10, 2020
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