The Complainant is Greentube Malta Limited, Malta, represented by Fenech & Fenech Advocates, Malta.
The Respondent is Ozren Tomic, Malta, represented by BDO Malta, Malta. 2. The Domain Name and Registrar
The disputed domain name <4starsgames.com> (the “Disputed Domain Name”) is registered with Register.com (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 8, 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 April 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 12, 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 April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. The Response was filed with the Center on May 3, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 6, 2021. 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
This proceeding involves two providers of online gaming facilities. A significant amount of material has been filed by each party about the corporate structure of each of the parties and as to the regulatory background in which they operate. The Panel considers this material to be of little relevance to the issues it has to decide and does not propose to repeat it here. The relevant facts are as follows.
The Complainant provides online gambling facilities via a website (the “Complainant’s Website”) linked to the domain name The Disputed Domain Name was registered on May 8, 2015. It is linked to a website (the “Respondent’s Website”) which provides online gambling facilities. The Respondent’s Website states it is operated by a company called “Soar Malta Limited”, and it appears to be common ground that this company is controlled by the Respondent and nothing turns on the distinction between the company and the Respondent. Textual elements contained within both the Respondent’s Website and the Complainant’s Website are in English. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows. It says it has operated its business since 2010. It says it is directed at European and South American countries with a focus on Germany. It says it has generated more than 350,000 customer contacts over the years and the “stargames” term has generated on average, 250 clicks daily on Google search. It says the STARGAMES brand has also generated almost 100,000 impressions in Google throughout the year 2020 with more than 90,000 clicks. The Complainant says the Disputed Domain Name is confusingly similar to the STARGAMES Trademark. The Complainant says the Respondent has no rights or legitimate interests in the term “stargames”. In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. It says the Disputed Domain Name is confusing to customers and the Respondent’s Website is intended to divert business from the Complainant’s Website. The Complainant says the Respondent’s Website clearly copies the Complainant’s Website and is evidence of bad faith. B. Respondent The Respondent’s contentions can be summarized as follows. The Respondent denies the Disputed Domain Name is similar to the STARGAMES Trademark. It says the STARGAMES Trademark is inherently non-distinctive and the addition of the figure 4 and the pluralisation of “star” produces a term which is aurally and visually different. It says it independently derived the name 4 stars games, saying as follows: “The term ‘4 stars games’ is an abbreviation of four stars games which originated from an imaginative story regarding the M73, an asterism of four stars in the constellation of Aquarius that was produced in order to support the 4StarsCasino product and website. The space travel and space entertainment theme is evident from the design of the website, whereas no such theme is present in the Complainant’s website. This clearly shows that there is no conceptual similarity between the disputed domain name and the Complainant’s trademark.” The Respondent says it has rights and legitimate interests in the term “4starsgame”. It says it has been in business since 2015 and provides detail of its regulatory approval in 2015, which shows the use of the Disputed Domain Name. It also provides evidence that it made available a “4 Stars Casino” app with effect from 2015. It says it is clear that before any notice to the Respondent of the dispute, the Respondent has used the Disputed Domain Name is in connection with a bona fide offering of its services and that Respondent’s company has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights. It also says that until 2021 the Complaint had no regulatory approval to offer “real money gaming” and had only offered a “social casino” and could not have used its trademark for real money gambling before 2021. It accordingly says the Respondent’s business of real money gambling, with effect from 2015, predates the Complainant’s business in this regard. It says there cannot have been any customer confusion prior to 2021 as a result of the Complainant and Respondent being in different areas of business. In consequence the Respondent denies that the Disputed Domain Name was registered and is being used in bad faith. 6. Discussion and Findings 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; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (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 STARGAMES trademark. The question of whether the Disputed Domain Name is confusingly similar to this trademark is not, in the Panel’s opinion, immediately straightforward. Cleary the trademark is reproduced in its entirety within the Disputed Domain Name and the additions are in one sense very minor changes (a figure “4” and a letter “s”). However as the Respondent notes the term “stargames” is not particularly distinctive and the Disputed Domain Name produces a term which is at least aurally somewhat different. However the Panel does not consider it is necessary to reach a conclusion on this issue given its finding below as to legitimate interests. Accordingly the Panel does not need to consider the Respondent’s account of how it says it independently derived the term “4 stars games”. 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 evidence in the case file clearly establishes that (i) above applies. The Respondent has produced a licence issued by the Malta Gaming authority issued in 2014 permitting gaming services and expressly referring to the “website URLS’ s being http://www.4starsgames.com”. The licence is issued to Soar Malta Limited but as discussed above nothing turns on the distinction between this company and the Respondent. In fact the Complainant has also exhibited this licence saying it had been “generated on 27th March 2021” – which the Panel assumes refers to the date the exhibited copy was downloaded or printed rather than the date of the licence itself. The Respondent has also produced evidence showing its app under the name “4starscasino” was available on Apple’s App Store from 2015. This evidence in the Panel’s opinion confirms that it is more likely than not that the Respondent has, as it claims, been engaged in a bona fide offering of services using the Disputed Domain Name since 2015. That being so the Complaint cannot succeed. In the light of this finding the Panel does not need to consider the Respondent’s alternative argument that it is commonly known by the Disputed Domain Name. C. Registered and Used in Bad Faith In the light of the Panel’s finding above as to legitimate interests, the Panel does not need to address this issue. The Panel accordingly does not need to consider the issues raised by the Respondent as to the Complainant only recently having obtained regulatory approval to offer “real money” gambling. The Panel would however observe that it is doubtful that the Complainant’s argument that the Respondent’s Website copies the Complainant’s Website is correct. It manifestly is not an identical or near-identical copy. Many design elements seem to derive from the content of the respective sites as online gambling facilities and whilst some similarities can be seen (for example the use of a background with stars against a purple sky) the Panel doubts that these on their own support a finding of bad faith. However as stated above the Panel does not need to reach a conclusion on this issue. 7. Decision For the foregoing reasons, the Complaint is denied. Nick J. Gardner
Sole Panelist
Date: May 21, 2021
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