The Complainant is Evolution Gaming Group AB, Sweden, represented by Zacco Sweden AB, Sweden.
The Respondent is Domains By Proxy, LLC, United States of America / Engin Talih, Tum Ltd., Malta, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 26, 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 June 26, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on June 26, 2020. The Complainant filed an amendment to the Complaint on June 29, 2020. The Center verified that the Complaint, together with the amendment to 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 June 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2020. The Center received an email communication from the Respondent on June 29, 2020. The Response was submitted to the Center on July 19, 2020. The Center appointed Nick J. Gardner, Douglas Clark, and Flip Jan Claude Petillion as panelists in this matter on August 11, 2020. The Panel finds that it was properly constituted. Each member of 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 relevant facts can be summarized as follows. The Complainant is a company incorporated in Sweden. The Complainant provides (via various subsidiary companies) what it describes as “Live Casino platforms”. As the Panel understands it this is gambling software/technology which can be used by online gambling providers to offer live gambling services to their customers. The Complainant is authorised by various regulatory authorities relevant to online gambling. The Complainant is the proprietor of various registered trademarks for the words “EVOLUTION GAMING” some of which are for those words as part of a device mark. The earliest such trademark appears to be European Union trademark 9320854 registered on August 9, 2011. These trademarks are referred to collectively in this Decision as the “EVOLUTION GAMING trademark”. The EVOLUTION GAMING trademark has been used by the Complainant since 2010. It promotes its business via its own website which is linked to The Disputed Domain Name was registered on June 18, 2015. The Disputed Domain Name resolves to a website (the “Respondent’s Website”) which has a header “Evolution Casinos” and then a short section of text extolling the Complainant’s products – including the following: “Evolution Gaming is one of the leader company which offers wide variety of Live Casino products. The company offers the most popular online live casino games worldwide. The success of the company in Europe is especially indisputable. Almost all European casino players consider Evolution Gaming as the best European Live Casino provider. Besides, it is appreciated all around the world because it serves in many languages. Therefore, we highly recommend Evolution Gaming for the players who want to play in their own native language”. Below this text is a further heading “casinos” and a series of labels identifying third party casino sites. Clicking on any label takes a visitor to a corresponding page on the Respondent’s Website which contains some information about the casino in question and provides a direct link to the website in question. Further pages on the Respondent’s Website provide additional information about the Complainant and its products. 5. Parties’ Contentions A. Complainant In summary the Complainant’s case is as follows. The Complainant says that the Disputed Domain Name is confusingly similar to its EVOLUTION GAMING trademark. The Complainant says that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says the Disputed Domain Name was deliberately chosen to take advantage of the Complainant’s fame and reputation and clearly amounts to an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s Website or by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. B. Respondent The Respondent says that it has been using the Disputed Domain Name for 5 years and that it is an “affiliate marketing company” which provides objective reviews of online casino products. It provides evidence that it operates a number of different websites which are directed at particular types of online gambling products (for example a website which provides details of online casinos offering a “no deposit bonus”). The Panel has visited some of these websites and notes they all feature click through links to the casinos featured on the pages concerned. The Respondent says “we mainly establish our business on the affiliation from the online casinos which recommend our visitors where to play at”. The Respondent also states that it is not a competitor of the Complainant’s and that the Respondent’s Website does not advertise any of the Complainant’s competitors. It says it is reviewing the Complainant’s games in order to provide “guidance for players”. It further says that after receiving the Complaint from the Complainant it added the following disclaimer (the “Disclaimer”) to the top of its website: “This Website: evolution.casino is not the official web site of Evolution Gaming. This website only aims to offer objective reviews about Live Casinos for Live Casino enthusiasts.” The Complainant did not make any allegation that the Respondent provides click-through links to competitors of the Complainant nor did it seek leave to file a Reply to challenge the Respondent’s assertion that it did not link to competitors of the Complainant. The Panel therefore accepts that the click through links on the website under the Disputed Domain Name are to affiliates of the Complainant. 6. Discussion and Findings Preliminary Matters The Panel notes this is a case where one Respondent (“Domains by Proxy, LLC”) appears to be a privacy or proxy service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows: “Panel discretion In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.” In the present case the Panel considers the substantive Respondent to be Engin Talih, Tum Ltd. and references to “the Respondent” are to that person. Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in the EVOLUTION GAMING trademark. It does not matter that some of the trademarks in question are device mark as each features prominently as part of the registered device the words “EVOLUTION GAMING” and in these circumstances the Panel concludes the Disputed Domain Name is similar to each of the above trademarks. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v. Nett Corp.,WIPO Case No. D2001-0031. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. The Respondent has taken the dominant part of the Complainant’s trademark, “evolution”, and used it without qualification. See in this regard WIPO Overview 3.0 at section 1.7: “[…] where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.casino”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. It is however relevant in this case to assessment of the second and third elements (see below). Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the EVOLUTION GAMING trademark. The Complainant has prior rights in the EVOLUTION GAMING trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003‑0455). Paragraph 4(c)(i) requires use be bona fide. Paragraph 4(c)(ii) does not apply. The Respondent is not commonly known by the Disputed Domain Name. As to paragraph 4(c)(iii), the Respondent’s use is clearly commercial. However, even if commercial, it may be allowed if it constitutes “fair use” of the Disputed Domain Name (such as, in the case of an authorized distributor). The question therefore is whether the Respondent’s use is bona fide or fair. It seems to the Panel that use is not bona fide or fair if a business exists which has in bad faith deliberately adopted another person’s trademark as its name. The words bona fide or “fair use” must encompass the Respondent’s knowledge and motives in choosing the Disputed Domain Name – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the bona fide or “fair use” requirement is not met. This is also consistent with WIPO Overview 3.0 which states at section 2.5: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry”. The Panel takes the view that use of the word “evolution” in combination with the gTLD “.casino” clearly suggests an affiliation with the Complainant. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: “(i) circumstances indicating that you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” In the present case, the Panel takes the view that the Respondent’s business model is to attract visitors to its various gambling related websites, including the Respondent’s Website, and then earn “click through” revenue in respect of visitors who follow links through to the various casinos the Respondent features on its websites, including the Respondent’s Website. The Respondent in effect admits this when it states “we mainly establish our business on the affiliation from the online casinos which recommend our visitors where to play at”. Whilst there is nothing wrong with a referral business model as such, the difficulty the Respondent has that it has used the dominant part of the Complainant’s trademark as the Disputed Domain Name and used it with a gTLD suffix “.casino” which directly references the area of business the Complainant is involved with. As such the Panel views the Disputed Domain Name as designed to suggest it is a website operated by or with the permission of the Complainant and thus likely to attract visitors who are looking for the Complainant or its services. The Panel infers that at least some of these visitors and users are likely to have followed the links and the Respondent will have earned revenue as a result. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use is not bona fide, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; Owens Corning v. NA,WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396. The Panel notes that the Respondent itself stated in its June 29 email to the Center “As Evolution Gaming LTD (the Complainant’s subsidiary) is the biggest company among the Live Casino industry, I preferred to use that name for my website promoting Live Casino games”. That seems to the Panel to confirm its view – namely that the Respondent is in effect using part of the Complainant’s name and mark as the Disputed Domain Name to attract visitors to its website, and those visitors are attracted by the Complainant’s name and reputation, and the Respondent earns revenue as a result. The fact that the click-through revenue is generated from affiliates of the Complainant does not affect this analysis. The Respondent is deriving payments (directly or indirectly) from those affiliates as a result of the traffic that is generated because of its use of the Disputed Domain Name. That in the Panel’s view amounts to bad faith use when the Disputed Domain Name is confusingly similar to the Complainant’s trademark (see above). So far as the Disclaimer is concerned the Panel does not consider this assists the Respondent. This issue is discussed in WIPO Overview 3.0 at section 3.7: “How does a disclaimer on the webpage to which a disputed domain name resolves impact a panel’s assessment of bad faith?” “In cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. For example, where a respondent is legitimately providing goods or services related to the complainant’s mark only (see Oki Data and its progeny discussed at 2.8), the presence of a clear and sufficiently prominent disclaimer can support a finding that the respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users. On the other hand, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.” The Panel remains of the view that the Disputed Domain Name is by its very nature likely to attract users who believe they are seeking an official or authorised site operated by or with the permission of the Complainant. The Disclaimer seems to the Panel to be an attempt to dispel confusion which arose because of the nature of the Disputed Domain Name and in effect acknowledges such confusion is likely. It does not alter the Panel’s analysis. As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Nick J. Gardner Douglas Clark Flip Jan Claude Petillion
Presiding Panelist
Panelist
Panelist
Date: August 25, 2020
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