The Complainant is Escrow Services Overseas Limited, United Kingdom, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Ven Poolo, Veeva Ventures (Cayman) LTD, United Kingdom, represented by EIP Europe LLP, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2021, 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 February 25, 2021, 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 March 1, 2021. 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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Response was filed with the Center March 23, 2021. The Center appointed David Taylor, Isabel Davies, and Gareth Dickson as panelists in this matter on April 20, 2021. 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 Complainant is an intellectual property holding company, forming part of a group of companies engaged in the online gaming industry. The Complainant, together with its affiliated companies has been operating the online casino brand “Casino Classic” since 2005. For use in connection with its online gaming operations, the Complainant is the registrant of European Union Trade Mark No. 007161003, CASINO CLASSIC, registered on October 14, 2010. The Complainant also owns the domain names The Complainant’s parent company, Internet Traffic Solutions Limited, owned the disputed domain name from 2005 to 2016. In 2016, the disputed domain name was allowed to lapse. The Respondent purchased the disputed domain name via the domain name sales platform Afternic.com on November 29, 2017. The disputed domain name resolves to a website (the “Respondent’s website”) titled “Casinoclassic.com”. The Respondent’s website offers information about online gaming, including information about casinos in various countries throughout the world, types of online gaming, and industry news. 5. Parties’ Contentions A. Complainant The Complainant asserts rights in the CASINO CLASSIC trademark. The Complainant submits that the disputed domain name is confusingly similar to the CASINO CLASSIC trademark in that it simply omits the space between the words “casino” and “classic” making up the Complainant’s trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is not affiliated with the Complainant, nor has the Respondent been licensed or otherwise authorized to use the CASINO CLASSIC trademark. The Complainant submits that the Respondent’s website is not a genuine gaming reviews and recommendations website. The Complainant submits that the Respondent’s website hosts “generic content”, which has not been updated since 2018. The Complainant argues that the only “new content” on the Respondent’s website consists of a low volume of news items per month, which does not reflect the fast-paced environment of the gaming industry. The Complainant further notes that the Respondent’s website contains articles that refer to the Complainant’s competitors, thereby disrupting the Complainant’s business. The Complainant submits that the Respondent is not commonly known by the disputed domain name. The Complainant asserts that by using the disputed domain name, which was previously owned by the Complainant, the Respondent has made illegitimate commercial use of the disputed domain name in order to misleadingly divert consumers from the Complainant’s offering under the CASINO CLASSIC trademark. The Complainant argues that the inclusion of the statement “All marks or distinctive signs present on the site are the property of CasinoClassic.com, or have been granted to it through a use license” causes Internet users to associate the Respondent’s website with the Complainant’s brand, when there is no such connection. The Complainant submits that given that the disputed domain name is identical to the CASINO CLASSIC trademark, the general right to criticism does not apply. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant notes that its trademark was registered in 2010, prior to the Respondent’s registration of the disputed domain name. The Complainant submits that its CASINO CLASSIC trademark has become well known. The Complainant asserts that in light of the nature of the Respondent’s website, the Respondent knew or should have known about the Complainant when registering the disputed domain name. The Complainant notes that on March 14, 2018, the Respondent submitted a trademark application for “CASINOCLASSIC” before the European Union Intellectual Property Office. The application was opposed by the Complainant, and the application was subsequently withdrawn. The Complainant submits that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s CASINO CLASSIC trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainant requests transfer of the disputed domain name. B. Respondent The Respondent claims to have purchased the disputed domain name for use by the company Noodle Brush Limited of the United Kingdom. The Respondent states that Noodle Brush Limited developed and operates the Respondent’s website on the authority of the Respondent. The Respondent submits that the disputed domain name is not confusingly similar to the Complainant’s CASINO CLASSIC trademark because the trademark is descriptive. The Respondent argues that the term “casino classic” merely describes the goods and services in question. The Respondent asserts that the term “casino classic” cannot be monopolized by the Complainant and must remain available for use in relation to the relevant goods and services. The Respondent claims to have legitimate interests in the disputed domain name. The Respondent submits that the disputed domain name was purchased legitimately due to its relevance to the Respondent’s planned use for the disputed domain name, which has always been to provide casino and gambling news, information and advice, as well as being developed into a product-comparison and potentially a directory website. The Respondent submits that it has been making use of the disputed domain name since 2018, prior to any notice of the present dispute, during which time the Respondent has invested considerable time and funds into developing the Respondent’s website. The Respondent submits that it has used the disputed domain name in connection with a bona fide offering of goods and services, as contemplated by paragraph 4(c)(i) of the Policy. The Respondent further submits that it is making legitimate noncommercial and fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy, in that the Respondent offers information and news about the gambling industry on its website. The Respondent submits that its use of the disputed domain name does not divert customers away from the Complainant. The Respondent asserts that mentioning the Complainant’s competitors cannot be said to constitute bad faith where the information provided is fair and accurate. The Respondent adds that the content on its website has been regularly updated between 2018 and 2021. The Respondent submits that the disputed domain name was registered in good faith. The Respondent notes that at the time it purchased the disputed domain name, it had gone unused by the Complainant for around 18 months. The Respondent submits that the disputed domain name was selected based on the descriptive meaning of the term “casino classic” for the intended services of providing information and news services in relation to the gambling and casino industry. The Respondent submits that it is not using the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant. The Respondent notes that the Complainant did contact the Respondent with a request to purchase the disputed domain name, but that the Respondent never intended to sell the disputed domain name. The Respondent asserts that the amount requested for the sale and purchase of the disputed domain name was based on the amount spent by the Respondent to acquire the disputed domain name, and the significant amount of money that the Respondent had spent in developing the Respondent’s website. The Respondent argues that it would be unreasonable for the Respondent to sell a domain name, which it had acquired through legitimate means, in which it has made substantial investments, at a loss. The Respondent notes that various third-parties have contacted the Respondent wishing to purchase the disputed domain name, and that it has declined such offers in the past. The Respondent requests that the Panel deny the remedies requested by the Complainant. 6. Discussion and Findings In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy: (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 right or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights in the trademark CASINO CLASSIC, the registration details of which are provided in the factual background section above. The disputed domain name comprises the Complainant’s CASINO CLASSIC trademark in its entirety, altered only by the omission of a space, a space being incapable of representation in a domain name. The Panel is unpersuaded by the Respondent’s argument that the disputed domain name is not confusingly similar to the Complainant’s trademark on the grounds that the trademark is descriptive (the Respondent’s submission of a trademark application (subsequently opposed by the Complainant and withdrawn by the Respondent) for the same undercuts its own argument here). The Panel finds the Complainant’s CASINO CLASSIC trademark to be immediately recognizable in the disputed domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s CASINO CLASSIC trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Respondent’s website includes information about the functionality of online casinos, information about casinos in various locations throughout the world, and news articles about the online gaming industry. The Respondent asserts that it acquired the disputed domain name in light of its descriptive value, and that it has made both a bona fide offering of goods and services using the disputed domain name (by providing news and information services) in accordance with paragraph 4(c)(i) of the Policy, and that it has made legitimate noncommercial fair use of the disputed domain name, as contemplated by paragraph 4(c)(iii) of the Policy. Prior UDRP panels have recognized that merely registering a domain name comprised of a dictionary word or phrase – such as “casino classic” can be said to be – does not by itself automatically confer rights or legitimate interests on the respondent. In order to find rights or legitimate interests in a domain name based on a claimed dictionary meaning, the domain name should genuinely be used, or at least demonstrably intended for use, in connection with the relied-upon meaning and not to trade off third-party trademark rights; see WIPO Overview 3.0, section 2.10. In the present case, while the Panel acknowledges that the disputed domain name is composed of two dictionary terms, i.e., “casino” and “classic”, in the eyes of the Panel, the two words in combination are not of a nature that inherently suggests a connection with a website that provides information and news about casinos. At the same time, one may at least expect to find information in some way related to casinos. Despite the Complainant’s allegations that the Respondent’s website has not been updated since its launch in 2018, the Panel notes that the Respondent has published articles and news items on its website relating to the online gaming industry with somewhat regular frequency. There is no suggestion that the information published on the Respondent’s website is the product of automated aggregation of third-party articles from other websites, and in any event, in light of the expedited nature of UDRP proceedings, the Panel is not in a position to further evaluate the genuineness of the content of the Respondent’s website. The Respondent’s website does not resemble the Complainant’s website in any way, and there is no evidence of the Respondent having engaged in a pattern of abusive domain name registration targeting the Complainant’s trademark, or the trademarks of third-parties. The Panel further notes that the Respondent has produced evidence that it purchased the disputed domain name for a reasonable sum of money from a third-party, some 18 months after the Complainant had allowed the disputed domain name to lapse and become re-registered by a third-party, and subsequently made use of the disputed domain name in connection with a website that, on the face of it, does not overtly appear to target the Complainant. As such, considerations that typically apply to fan sites do not appear to apply in the present case, as the Respondent’s website does not present itself as a fan site in relation to the Complainant; see WIPO Overview 3.0, section 2.7. The Panel has duly considered the evidence provided by both Parties and finds that the Complainant has failed, on the balance of probabilities, to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel cannot ignore the fact that the Respondent has registered and is making use of a domain name that affects the Complainant’s rights, nor can the Panel ignore the prior trademark dispute between the Parties, falling outside of the scope of the UDRP. Although the Panel has found that the evidence put forward by the Respondent is sufficient to rebut the evidence put forward by the Complainant to establish a prima facie case that the Respondent has no rights or legitimate interests (see WIPO Overview 3.0, section 2.1), this finding is limited to its assessment of the evidence put forward by the Complainant in this Complaint and should not therefore be interpreted as a positive finding that the Respondent does in fact have rights or legitimate interests in the disputed domain name (pursuant to paragraph 4(c)(i) or 4(c)(iii) of the Policy), but merely that the Panel is unable to find otherwise under paragraph 4(a)(ii) of the Policy on the basis of the evidence on record. The Panel notes in this regard that the Complainant is not prevented from bringing proceedings in a court of competent jurisdiction, which would be better equipped through the benefit of discovery, interrogatories, and witness testimony, to test the Respondent’s evidence and to determine the present dispute. The Panel finds that the Complainant has failed to establish the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In light of the Panel’s findings under the preceding element, the Panel need not opine on the third element of the Policy. The Panel merely reiterates that the Parties have a history of trademark-based legal interactions (in which the Complainant seems to have prevailed) and they are free to pursue their dispute in other fora. 7. Decision For the foregoing reasons, the Complaint is denied. David Taylor Isabel Davies Gareth Dickson
Presiding Panelist
Panelist
Panelist
Date: May 25, 2021
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