Complainant is Merryvale Limited, Guernsey, represented by Herzog, Fox & Neeman, Israel.
Respondent is Domains By Proxy, LLC., DomainsByProxy.com, United States of America / Oliver Worth, Twenty Two Solutions Ltd, United Kingdom (“UK”), represented by Waterfront Solicitors LLP, UK. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2020. On August 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 23, 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 Respondent of the Complaint, and the proceedings commenced on August 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2020. The Response was filed with the Center September 18, 2020. The Center appointed Clive L. Elliott Q.C., Antony Gold, and David H. Bernstein as panelists in this matter on October 29, 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 Complainant is a member of the Betway Group of Companies (the “Betway Group”) which operates in the online gaming field. The Betway Group, including Complainant, runs a number of online gaming websites under the brand name “SpinCasino” (“Complainant’s Brand”). Complainant is the proprietor of a number of trade mark registrations for the word and figurative marks “SPINCASINO”, including in the European Union and Australia since 2015, and in Canada, Iceland, New Zealand, Peru, and the UK since 2019 (collectively referred to as “Complainant’s Marks”). During 2019, Complainant filed additional trade mark applications covering Complainant’s Marks in over 30 countries around the world. Complainant is also the owner of the following websites located at “www.spincasino.com” and “www.spincasino.se” (“Complainant’s Websites”). According to the publicly available WhoIs, the Domain Name was registered on January 9, 2019. 5. Parties’ Contentions A. Complainant Complainant asserts that after Complainant’s Brand had encountered significant success in the Australian, Canadian, and European markets, it was decided to expand the brand globally and to put it at the forefront of the business. Complainant states that, as part of the Betway Group, it has invested, and continues to invest, substantial sums in promoting the offerings under Complainant’s Brand around the world. It is asserted that in 2019 the marketing budget in connection with the Complainant’s Brand was 21 million, and the projected budget for 2020 is 32 million. Complainant provides an example of the promotion of Complainant’s Brand through its sponsorship of the Waterford Football Club during 2019, which, it says, has received extensive coverage on different websites and social networks. Complainant contends that as a result of this investment, Complainant’s Websites are considered to be leading gaming websites in the world, with an average of approximately 530,000 visitors per month and current monthly average revenue of approximately EUR 1,300,000. As a result, Complainant contends that it enjoys a substantial worldwide reputation as a market leader in the field of online gaming. Complainant notes that Respondent is not affiliated with Complainant and has never been licensed or otherwise authorized to use Complainant’s Marks. It points out that as of the date of this Complaint, the website under the Domain Name shows the following wording (“Respondent’s Website Statement”): OH NO! THIS CASINO IS NO LONGER AVAILABLE IN YOUR COUNTRY. DISCOVER A NEW WORLD OF CASINO AT OUR NEW INTERNATIONAL CASINO www.junglespins.com 100% WELCOME OFFER TODAY WELCOME TO THE JUNGLE! Furthermore, the Domain Name includes a link to another website “www.junglespins.com” which offers online gaming services (the “Linked Website”). Complainant asserts that the term “spinzcasino”, as used by Respondent in the Domain Name, is a duplication of Complainant’s Mark, with the addition of the letter “z”. This addition does not create an overall different impression. Further, Complainant submits that the Domain Name is confusingly similar to Complainant’s Marks as it consists only of the term “spinzcasino” and the suffix “.com”, which both do not create an overall different impression. Complainant goes on to say that Respondent has not used, or made demonstrable preparations to use, the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Instead, Complainant claims that Respondent has used the reputation of Complainant’s Marks within the Domain Name, in order to mislead Internet users seeking Complainant’s Websites, to finally enter the Linked Website. As Respondent offers, via the Linked Website, online gaming services the same as Complainant, Complainant contends that Respondent is using the Domain Name to unlawfully benefit from the reputation of Complainant’s Marks in order to attract Complainant’s customers, or potential customers to the Domain Name and through it to the Linked Website. Complainant argues that it owned and used Complainant’s Marks and Complainant’s Websites long before Respondent had registered the Domain Name, and at the time of its registration SPINCASINO was (and still is) a world-famous brand that had been in the existence for over several years, with millions of users worldwide. Therefore, Complainant submits Respondent knew, or at least should have known, about Complainant’s Brand and operation. B. Respondent Respondent states that it is a UK based company that provides, in conjunction with its regulated third-party partners, mobile casino games primarily via mobile applications, but also online. This includes the “Spinz Casino” website, which is primarily directed to persons in the UK and has operated from the Domain Name since shortly after the Domain Name was registered on January 9, 2019. Respondent challenges Complainant’s claim to have a widespread reputation in Complainant’s Mark. It asserts that prior to 2019 the Betway Group had a very limited online presence using the “Spin Casino” name and appears to have engaged in little or no promotion of that name. Respondent states it was not aware of Complainant’s use of the term Spin Casino when it registered the Domain Name. The Domain Name was chosen, it says, because “spin” or “spins” and “casino” are obvious names to use for an online casino featuring virtual slot machines and the use of a letter “z” in places of the second letter “s” in the word “spins” was considered to add a distinctive and “crazy” twist on that name. As a consequence, Respondent contends that it has a clear right or legitimate interest in the Domain Name and therefore disputes Complainant’s claims of bad faith registration. Respondent notes that Complainant’s own evidence demonstrates that Complainant only significantly promoted the “Spin Casino” name after the Domain Name was registered. Although, this has generated traffic for Complainant’s website, Respondent suggests that it has not gained a significant reputation or market share in the UK, where Respondent’s reputation is greater. Respondent accordingly submits that these proceedings involve a blatant attempt to engage in reverse domain name hijacking to knock out a more successful business in the UK and to steal its traffic. Respondent points out that the Complaint does not explain how the Betway Group operates or the relationship of that group to various gaming websites relevant to these proceedings. Respondent provides details of the Betway Group and Complainant’s activities in the years preceding the registration of the Domain Name. Further, Respondent disputes Complainant’s assertion that significant marketing effort was expended by Betway Group 2014 through to 2018 on the Respondent asserts that at the time the Domain Name was registered Respondent and its directors were unaware that Betway operated any “Spin Casino” named website. It says it did not conduct any trade mark searches at that time because it did not occur to it that it would even have been possible to obtain a registered trade mark for the descriptive terms “Spin” and “Casino” either separately or in combination, in respect of online gaming or casino activities. Further, Respondent notes that, in any event all but one of the trade marks relied upon by Complainant and potentially relevant to Respondent’s intended and actual business, post-date the registration of the Domain Name. Respondent responds to Complainant’s complaint about Respondent’s Website Statement and says there is an obvious explanation. It explains that websites need to be licenced in the territories they operate, regardless of where they are physically located and that reputable sites will take steps to block access from individuals with an IP address in a territory where they are unlicensed. For this reason, Respondent ensures that visitors with IP addresses associated with countries where Respondent’s website is not licensed, are presented with text stating that the website is not available in that country. Respondent submits that, as to Complainant’s claims as to its promotion and the reputation of the “Spin Casino” brand: it provides no evidence of any significant marketing prior to January 9, 2019, i.e., the registration date for the Domain Name; exaggerates the reputation of the Spin Casino brand; and there is no evidence of any significant website traffic prior to the registration of the Domain Name. Respondent argues that it is unsurprising that when registering the Domain Name Respondent had no knowledge of Complainant’s brand given the at best limited reputation of that brand when the Domain Name was registered. In terms of bad faith, Respondent submits that as a matter of principle, if a domain name was registered and has started to be used in good faith for a purpose, a complainant’s subsequent activities in building up a similar brand cannot turn respondent’s earlier good faith activity into a bad faith one. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant is the proprietor of a number of trade mark registrations for the word and figurative marks “SPINCASINO”, including in the European Union. These trade marks, referred to as Complainant’s Marks, have been registered since 2015 (and therefore predate the Domain Name). The Domain Name differs from Complainant’s Marks only to the extent that it contains the additional letter “z”. The Panel accepts Complainant’s submission that this additional letter does not create an overall different impression. The Domain Name is confusingly similar to Complainant’s Marks and the addition of the letter “z” does not detract from that similarity or prevent a finding of confusing similarity. Respondent’s contends that the mark SPINCASINO lacks a distinctive element and that the Panel should therefore rule that the registration was improvidently granted and should be disregarded. However, overcoming a trade mark registration requires compelling evidence of invalidity, and here Respondent has failed to make such a showing. Complainant has established that it has rights in Complainant’s Marks and that these rights predate registration of the Domain Name. Accordingly, the Panel finds that: a) Complainant has rights in respect of Complainant’s Marks; and b) the Domain Name is confusingly similar to Complainant’s Marks. Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests Complainant operates an online gaming business, running a number of online gaming websites under the brand name “SpinCasino”. Complainant asserts that Complainant’s Brand was (and still is) world-famous and it has millions of users worldwide. Respondent in turn challenges this assertion and questions Complainant’s lack of evidence to back up this claim. Complainant’s account of the expansion of Complainant’s Brand states that it commenced in 2014 and that it has been happening ever since. Respondent mounts a cogent challenge to this in its response. Moreover, Complainant’s assertions as to it being ranked among the top 10 online casinos and having a 2019 advertising spend of 21 million are countered by the Respondent. In these respects, the Complaint is unpersuasive. The key issue in this case is the nature and extent of Complainant’s use of Complainant’s Marks and the extent of its reputation in Complainant’s Brand and whether Respondent has provided a plausible explanation for its choice of the Domain Name. That issue goes to the question of whether Complainant can establish that Respondent lacks a legitimate interest in the Domain Name. It also has a bearing on the issue of bad faith which we deal with below. Respondent says that the Domain Name was chosen, because “spin” or “spins” and “casino” are obvious names to use for an online casino featuring virtual slot machines, and as discussed further in the section on bad faith below, Respondent says that it had no knowledge of Complainant’s trade mark and did not select the Domain Name with any intent to cause confusion or association with Complainant. Further, it says that the use of a letter “z” in places of the second letter “s” in the word “spins” was added to provide a distinctive and “crazy” twist on that name. Based on Complainant’s evidence, it is apparent that the word “spins” is used in the online gaming industry, and most of the online gaming sites referred to by Complainant show them offering “free spins”, to attract new or returning customers. Therefore, while the Panel accepts that Complainant had a registered mark, which predated the Domain Name, the point remains that it is at the descriptive end and “spins” or a variant of the word would be a term apt for use by bona fide competitors in the online gaming industry. Given that the Panel is willing to accept Respondent’s assertion that it had no knowledge of Complainant’s trade mark and selected the Domain Name entirely for its descriptive qualities and not because of Complainant’s trade mark rights, the Panel is prepared to find, on this particular record, that Complainant has not shown a lack on Respondent’s part of a legitimate interest in the Domain Name for its casino-related services. Accordingly, the second element of the Policy has not been met. C. Registered and Used in Bad Faith Complainant makes the case that Complainant’s Marks are famous and predate the Domain Name registration, so much so that Respondent could not ignore the preexistence of Complainant’s trade mark rights, and that Respondent must have been aware of Complainant’s Marks when selecting the Domain Name. In response, Respondent makes the point that it was not aware of Complainant or its trade marks at the time it registered the Domain Name. Respondent’s account of its choice of the Domain Name, as discussed under the previous ground, is plausible and it has offered a credible explanation as to why it did not undertake a trade mark search prior to registration. This is significant in the present circumstances because, other than pointing to its trade mark registrations, Complainant fails to make a case for being so well known that Respondent must have known of its trade marks, especially given that, as the Response points out, Complainant’s Mark is somewhat descriptive or common for casinos. On the basis of the facts, as presented, the Panel does not see this as a case where an obligation to search should be imposed -- especially given that Respondent apparently believed that “spin” was a descriptive term in the context of casino services, or where willful blindness can or should be inferred (including because Respondent was not acquiring a portfolio of domain names and did not have a basis for suspecting that a search would yield any trade mark rights owned by others). Moreover, Complainant appears to have exaggerated its repute, particularly at the date the Domain Name was registered, such that there does not appear to be any reason why the Respondent could be expected to have any actual or constructive notice of the Complainant and Complainant’s Brand, not least given the low degree of distinctiveness of the Complainant’s Marks. That is not to say that Respondent’s apparent unknowing adoption of a domain name that is similar to Complainant’s trade mark registration is immune from all challenges. Even the innocent adoption and use of a third party’s trade mark may give rise to confusion, and that might constitute trade mark infringement under national law. But that is not the question before this Panel. Under the Policy, a complainant can only prevail if it proves bad faith – that the respondent registered and used the domain name at issue with actual or imputed knowledge of the complainant’s trade mark rights and to take unfair advantage of that trade mark (such as by selling the domain name back to the trade mark owner for a premium price, or interfering with the trade mark owner’s ability to commercialize its trade mark through the domain name, or to cause confusion among the parties’ customers). Although Complainant may well have been justified in its suspicion that Respondent did act in such bad faith, the evidence submitted to the Panel persuades the Panel that Respondent more likely than not adopted the Domain Name without knowledge of Complainant’s trade mark rights. To be clear, this is a close question in light of Respondent’s Website Message that “THIS CASINO IS NO LONGER AVAILABLE IN YOUR COUNTRY.” The Panel is sympathetic to Complainant’s assertion that this message wrongly creates the impression that Respondent is affiliated with or licensed or otherwise authorized to use Complainant’s Mark. Further, the Panel notes that Respondent’s explanation is not fully responsive. Respondent’s Website Message did not say: “this casino is NOT available in your country”; rather, it said it “is no longer available.” On one view, that might seem to be an acknowledgement that a Spinz Casino was previously available in those countries and no longer is. In that case, it could be construed as an acknowledgement that there was a prior online casino available in that country using the name Spinz or some other iteration of “spin,” and as an effort to divert consumers who may be looking for Complainant. The Rules do not provide a Panel with the full compliment of tools to allow a Panel to resolve factual disputes like this one, or to deeply probe evidence of a party’s subjective knowledge and intent. In proceedings under the Policy, there is no discovery, cross examination, or live testimony. The Panel’s only ability is to revolve these disputes as best it can, on the written record presented, under the preponderance of the evidence standard. Here, both parties have credible arguments, but for the reasons articulated above, the Panel concludes that the evidence more likely than not supports the finding that Respondent was not aware of Complainant’s trade mark rights. The Panel also finds it more likely than not that Respondent’s use of this language in the Website Message reflects an effort to promote its other casino rather than its knowledge of Complainant’s trade mark rights and a commensurate effort to divert Complainant’s consumers. For example, the Website Message does not use any branding associated with Complainant’s casino; rather, the form of “Spinzcasino” featured in the Website Message takes the same distinctive stylisation as that on Respondent’s website. In light of all of the facts in this record, the Panel concludes that the Website Message does not support a finding, by the preponderance of the evidence, of any awareness by Respondent of Complainant’s trade mark. For these reasons, the Panel finds that the third element of the Policy is not met.” Reverse Domain Name Hijacking Respondent alleges that by filing the Complaint, Complainant has engaged in Reverse Domain Name Hijacking. The Panel disagrees. There are three reasons for reaching this view. First, Complainant had a trade mark registration. Secondly, Respondent has conceded it did not do a trade mark search and the principal basis for finding in Respondent’s favour on this issue is that Respondent persuaded the Panel that it was not aware of Complainant’s trade mark. Thirdly, Respondent placed an arguably misleading message on its website (Respondent’s Website Message) in some countries. For these reasons, even though Complainant was ultimately unsuccessful, the Panel concludes that Complainant had proper grounds to bring its complaint. 7. Decision For the foregoing reasons, the Complaint is denied. Clive L. Elliott Q.C Antony Gold David H. Bernstein
Presiding Panelist
Panelist
Panelist
Date: November 17, 2020
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