Complainant is Merryvale Limited, United Kingdom, represented by Herzog, Fox & Neeman, Israel.
Respondent is Dewald De Lange, South Africa.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2021. On October 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 13, 2021, 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 October 17, 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 Respondent of the Complaint, and the proceedings commenced on October 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2021.
On October 25 and October 26, 2021, Respondent sent informal emails. Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of Panel appointment process on November 9, 2021.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 19, 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 BackgroundComplainant is a member of the Betway group of companies operating in the online gaming field. The Betway group, with Complainant, operates a number of online gaming websites under the name “SpinCasino”. Complainant’s SpinCasino brand entered the online gaming market on September 22, 2014, and has been used during the last seven years via websites located at “www.spincasino.com” and “www.spincasino.se”.
Complainant is the proprietor of numerous trademark registrations for the word and figurative marks SPINCASINO. Since 2015, Complainant has submitted evidence to show it is the proprietor of trademark registrations for the word mark SPINCASINO in the European Union and Australia. In addition, since 2019, as part of the SpinCasino brand’s expansion, Complainant is the proprietor of trademark registrations for word and figurative marks in Argentina, Canada, Iceland, New Zealand, Peru, the United Kingdom, and others. Further, Complainant owns seven additional trademark applications for this mark in various countries around the world.
The SpinCasino Marks are registered, inter alia, for the following goods and services:
Class 9 - Computer programs and computer software, including software downloadable from the Internet; all relating to or featuring gambling or betting, amusement and entertainment services, games, card games, bingo games, casino games and sports betting; credit cards.
Class 41 - Entertainment; online gaming, gambling and betting services; services for the operation of computerized bingo, online bingo networks, virtual slot machines and other instant win games.
After the SpinCasino brand had 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, as part of the Betway group, has invested and continues to invest to promote the Betway group’s offerings under the SpinCasino brand around the world. In 2019, the marketing budget in connection with the SpinCasino brand was EUR 21.5 million, in 2020 it increased to EUR 31.5 million, and the projected budget for 2021 is EUR 29 million.
Complainant has submitted examples of advertisements for the SpinCasino brand. One example is the sponsorship of the Waterford Football Club during 2019, which received extensive coverage on different websites and social networks. Complainant has submitted pictures showing the Waterford players wearing SpinCasino branded shirts, and other examples of sponsored advertisements.
The SpinCasino websites average approximately 1 million visitors per month. The current monthly average revenue received by the Betway group from users for purchases on the SpinCasino websites is approximately EUR 22.8 million. The SpinCasino brand has received various positive web reviews and has been ranked among the top 10 online casinos.
The Domain Name was registered on March 24, 2020.
5. Parties’ Contentions A. Complainant (i) Identical or confusingly similarComplainant states that as a result of its investments and promotion for the SpinCasino brand, the SpinCasino websites are considered among the leading gaming websites in the world. Complainant, as part of the Betway group, claims it enjoys a substantial worldwide reputation as a market leader in the field of online gaming.
Complainant submits that the Domain Name is nearly identical and confusingly similar to the SPINCASINO marks, as it consists from the words “spin” and “casino”, with the addition of the descriptive word “group”. Complainant contends the Domain Name is designed in a way that is confusingly similar to Complainant’s SPINCASINO marks. Complainant contends that while each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or 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. Further, Complainant contends the word “group” placed in the middle of SPINCASINO mark in the Domain Name does not prevent or reduce confusing similarity between the registered mark and the Domain Name.
In light of the foregoing, Complainant submits that the Domain Name is highly and confusingly similar to the Complainant’s SPINCASINO marks.
(ii) Rights or legitimate interestsComplainant states that Respondent is not affiliated with Complainant and has never been licensed or otherwise authorized to use the SPINCASINO marks. To the best of Complainant’s knowledge, neither Respondent, nor any business operated by it, has ever been commonly known by the Domain Name.
As mentioned above, the SpinCasino brand entered the online sphere in 2014 and has been continuously offered during the last seven years. Respondent’s uses of SPIN CASINO marks as part of the Domain Name, and the extensive use only recently for the website linked to the Domain Name, are conclusive indications that such trademark infringement cannot be interpreted as a legitimate interest or a bone fide offering of goods or services. In addition, because the website linked to the Domain Name offers content related to online gaming and gambling, which is associated with Complainant, Internet users who access Respondent’s site will not necessarily realize they are not accessing Complainant’s SpinCasino sites. Hence, Complainant submits Respondent is using the Domain Name to unlawfully benefit from the SpinCasino marks’ reputation and in order to attract SpinCasino’s customers or potential customers to Respondent’s website. Moreover, by luring Internet users to the website, Respondent is disrupting Complainant’s business and causing losses that are impossible to assess at this point.
In light of these circumstances, Complainant states it is difficult to fathom how Respondent’s actions could be interpreted as a legitimate interest or bone fide offering of goods or services.
(iii) Registered and used in bad faithComplainant states that it owned and used the SPINCASINO marks long before Respondent registered the Domain Name, and that at the time the Domain Name was registered, the SPINCASINO mark were (and still are) a world-famous brand, with millions of users worldwide. Therefore, it is clear that Respondent knew, or at the very least should have known, about Complainant’s marks and operation.
Complainant submits that the use of a Domain Name, which is at least confusingly similar to Complainant’s SPINCASINO marks, is clear evidence that Respondent intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the SPINCASINO marks as to the source, sponsorship, affiliation, or endorsement of that website.
In this regard, Complainant refers to the case of Merryvale Limited v. WhoisGuard Protected, WhoisGuard, Inc. I Elias Kuismanen,WIPO Case No. D2020-2381, in which the panel stated that:
“Respondent registered the disputed domain name well after Complainant has established rights in the SPIN CASINO mark in connection with its online gaming website. Given that Respondent used the entire SPIN CASINO mark in the disputed domain name to offer competing gaming services, it appears more probable than not that Respondent was fully aware of Complainant and its SPIN CASINO services and mark when Respondent registered the disputed domain name. As such, Respondent’s actions were in bad faith and knowingly meant to take advantage of the goodwill associated with Complainant’s SPIN CASINO mark.”
Having regard to the foregoing and to the considerable worldwide reputation of the SPINCASINO marks, Complainant contends that Internet users would inevitably be confused into thinking that the Domain Name is connected with Complainant.
In addition, the fact that Complainant made attempts to inform Respondent of the misuse of the SPINCASINO marks through cease and desist letters, but no responses having ever been received by Complainant, is another indication of bad faith. The fact that Respondent registered a Domain Name that consists of such well-known marks for use in connection to online casino and betting as the SPINCASINO marks is in and of itself indicative of bad faith. Accordingly, Respondent has clearly acted in bad faith in the registration and use of the Domain Name.
B. RespondentRespondent did not submit a formal Response. In two nearly identical email communications from October 25 and 26, 2021, Respondent denied any awareness of Complainant, refuted any similarities between Respondent’s website and logo and Complainant’s, and stated that Respondent’s operations were limited to South Africa and could not interfere with Complainant’s services outside of South Africa. In both emails, Respondent offers the Domain Name for purchase, stating “[w]e are open to any reasonable offer”.
6. Discussion and FindingsIn order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
Complainant has demonstrated that it has well-established rights in its SPINCASINO trademark, both through registration and widespread use around the world. The Panel finds that the Domain Name incorporates the SPINCASINO mark in its entirety, while adding the term “group” between the terms “spin” and “casino”. Numerous UDRP decisions have found that the addition of terms – whether descriptive, geographical, pejorative, meaningless, or otherwise – will not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds the word “group” placed in the middle of SPINCASINO mark in the Domain Name does not avoid confusing similarity between the mark and the Domain Name. See BKS Bank AG v. WhoisGuard Protected, WhoisGuard, Inc. I Mikell Karo, dineroQ I Mack John, wikina I JohnTerry, Georgia Group of Company,WIPO Case No. D2021-0538 (disputed domain name
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsRegarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case. The Panel finds that Complainant has not authorized Respondent to use Complainant’s SPINCASINO trademarks; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name is used to impersonate or suggest sponsorship or endorsement by Complainant by including the entirety of Complainant’s SPINCASINO trademark, adding the additional word “group”, which could be used to imply that Respondent is part of Betway group, and then using the Domain Name for a gaming website in direct competition with Complainant. This is not a legitimate use.
In Respondent’s informal communications, no evidence was provided to demonstrate rights or legitimate interests pursuant to paragraph 4(c) of the Policy. The Panel notes that in the Complaint, Complainant has provided evidence of a Facebook page operating under “SpinGroup Casino” that features the same stylized logo as the Domain Name, nearly identical websites at “www.africanstarcasino.bet” and “ggslots.bet” that either refer to “SpinGroup Gaming (Pty) Ltd.” or feature the same stylized logo as that found on the Domain Name and Facebook page, and these affiliated sites offer competing services to Complainant in the same industry.
Considering the notoriety of Complainant; that the Domain Name, Respondent’s Facebook page, and affiliated websites all post-date Complainant’s use and registration of the SPINCASINO trademarks; that Respondent’s Facebook page has since been updated to reflect “SpinGroup Online Gaming” and now omits “casino”; and, that Respondent has offered the Domain Name for sale, strongly suggests to the Panel that Respondent does not provide a bona fide offering of services via the Domain Name, but merely intends to commercially benefit from the recognition of Complainant’s SPINCASINO trademark1 . The Panel’s finding is reinforced given the strong similarities in design between Complainant’s and Respondent’s logos incorporating the terms “spin” and “casino”, wherein the “spin” element remains dominant and removed from the other elements.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been overcome by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. There is little doubt that Respondent, when registering the Domain Name, was aware of Complainant and its SPINCASINO marks, and intentionally targeted them, when registering the Domain Name. Complainant’s trademark registrations and use of its marks predate registration of the Domain Name by approximately seven years. Further, noting Respondent’s alleged operation of services in the same industry as Complainant and Complainant’s well-known status in this industry, it stretches credulity that Respondent was unaware when registering the confusingly similar Domain Name that incorporates the entirety of Complainant’s SPINCASINO mark and also features a similar logo. Coupled together with the Panel’s consideration in Section B above, it is clear that Respondent has used the Domain Name to impersonate Complainant in what appears to be an effort to pass off as affiliated with Complainant in the gaming industry. Given these facts, the Panel considers that the only logical conclusion is Respondent targeted Complainant and its marks when registering the Domain Name. See Parfums Christian Dior v. Javier Garcia Quintas,WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith”).
This point is further confirmed by Respondent’s use of the Domain Name. The evidence indicates that Respondent has used the Domain Name to directly compete with Complainant in the gaming industry. Respondent is using the fame of Complainant’s SPINCASINO mark to improperly increase traffic to the site linked to this Domain Name for Respondent’s own commercial gain, possibly for purposes of defrauding users. The Panel finds that Respondent, through this scheme, has intentionally attempted to attract for commercial gain Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s SPINCASINO marks as to the source, sponsorship, affiliation, and endorsement of Respondent’s site.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Christopher S. Gibson
Sole Panelist
Date: December 17, 2021
1 Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8. In this instance, the Panel notes that Complainant’s annexed captures of Respondent’s Facebook page were sent with Complainant’s June 22, 2021 cease-and-desist letter, whereas the Complaint was filed with the Center four months later in October, suggesting that Respondent has changed its name on Facebook in response to the filing of this Complaint, further undercutting any notion that Respondent may be commonly known by the Domain Name. Furthermore, the Panel has used a general WhoIs search to determine that Respondent’s affiliated websites at the domains