ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Escrow Services Overseas Limited v. Rui Marques Pedreiras Case No. D2022-3028 1. The Parties The Complainant is Escrow Services Overseas Limited, British Virgin Islands, United Kingdom, represented by Herzog, Fox & Neeman, Israel. The Respondent is Rui Marques Pedreiras, South Africa. 2. The Domain Name and Registrar The disputed domain name (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2022. On August 17, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 18, 2022, 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 the Complainant on August 19, 2022 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 August 22, 2022. 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 August 24, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2022. The Respondent did not submit any formal response, however, the Center received an email communication from the Respondent on September 13, 2022. Accordingly, the Center notified the commencement of panel appointment process on September 14, 2022. page 2 The Center appointed Willem J. H. Leppink as the sole panelist in this matter on September 28, 2022. 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 The following facts are undisputed. The Complainant is one of the intellectual property (IP) holding companies of a group of companies, of which the parent company is Internet Traffic Solutions Limited. The group is engaged in the online gaming industry, and through its various companies holds several gambling licenses in different jurisdictions, including Canada, Denmark, Malta, Sweden, and the United Kingdom. The group, including the Complainant, operates a number of online gaming websites under various brands, including the online casino brand "Grand Mondial" (the "Grand Mondial Brand"). The Grand Mondial Brand and the online casino service provided thereunder have been operated by the group since 2007, when the group, via its subsidiaries, had also registered the domain name , as well as the domain name (together: the "Grand Mondial Websites"). The Complainant is the owner of several trademark registrations, including, but not limited to the European Union Trade Mark GRAND MONDIAL (word mark), with registration no. 015897689 and registration date of February 9, 2017 for services in classes 36 and 41, and the United Kingdom trademark GRAND MONDIAL (word mark), with registration no. UK00915897689 and registration date of February 9, 2017 for services in classes 36 and 41. The aforementioned trademark registrations will hereinafter also jointly be referred to in singular as the "Trademark". The Domain Name was registered on August 16, 2021, and resolves to the Registrar's parked page comprising pay-per-click ("PPC") links which include hyperlinks relating to the Complainant's activity under the Trademark, namely casino and gambling activities (the "Website"). 5. Parties' Contentions A. Complainant To the extent relevant, the Complainant contends the following. The Complainant and the group to which it belongs, have continued to extensively advertise the Grand Mondial Brand as shown in advertisements submitted by the Complainant, and they have invested, and continue to invest substantial sums in order to promote the Trademark and their offering on the Grand Mondial Websites. In 2021, the relevant marketing budget in connection with the Grand Mondial Brand was USD 3.7 million, and the projected budget for 2022 is about USD 3 million. The Grand Mondial Brand has gained great reputation and success, with a current annual average of about 1 million visitors. The Domain Name is identical and confusingly similar to the Trademark as it consists of the exact words "grand" and "mondial", with the suffix ".casino", which does not create an overall different impression. To the best of the Complainant's knowledge, the Respondent nor any business operated by it, is or has ever been, commonly known by the Domain Name. The 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. The Website appears to be inactive, apart from being a parked page, which indicates that the Respondent has no intention to use the Domain Name and that it was registered in bad faith. There is also a lack of any plausible interpretation for the registration of the Domain Name by the Respondent. page 3 The Complainant had owned and used the Trademark long before the Respondent registered the Domain Name, and at the time of its registration, the Grand Mondial Brand was (and still is) a world-famous brand that had been in existence for over 15 years, with heavy traffic and a vast number of worldwide users. It is clear that the Respondent knew, or at the very least should have known, about the Trademark and the Complainant's operation, and that the registration of the Domain Name and the use thereof have been in bad faith. The Respondent intentionally attempted to attract Internet users to the Website by creating a likelihood of confusion with the Trademark as to the source of that website. The Respondent registered the Domain Name to mislead Internet users into thinking that it is some way connected, sponsored, endorsed by or affiliated with the Complainant's services. B. Respondent The Respondent did not submit any formal response, but sent to the Center on the due date for such response, an email communication stating that the Respondent was not fully aware of what the email of the Center was about, and that the Respondent was earlier contacted to sell the Domain Name. Furthermore, the Respondent did not understand why the Center was contacting the Respondent as the registration of the Domain Name has not been renewed and is no longer under the Respondent's portfolio. If the Trademark is registered, the Registrar should not allow the Respondent to obtain the Domain Name, and the Domain Name has always been dormant. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (i) the 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 rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark. The Complainant has shown that it has rights in the Trademark. The Domain Name is comprised of the Trademark in its entirety, albeit with the exception of the space in the Trademark between the elements "grand" and "mondial". The Panel, therefore, finds that the Domain Name is identical to the relevant Trademark. The use of the generic Top-Level Domain ".casino" does not lead to any other conclusion. In accordance with section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the Top-Level Domain is in principle disregarded under the first element. With respect to the lack of space between the words in the Domain Name, the Panel refers to Owens Corning v. NA, WIPO Case No. D2007-1143, which held that: "It is not possible to include a space in a domain name and therefore it is common practice when representing more than word in a domain name either to omit the spaces between the words or to replace them with some other suitable character." In light of the foregoing, the Panel finds that the Domain Name is identical to the Trademark. Therefore, the Panel is satisfied that the first element of the Policy is met. page 4 B. Rights or Legitimate Interests The Panel has carefully considered the factual allegations that have been made by the Complainant, including the submitted evidence. In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as: (i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or (ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or (iii) making 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 Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that Grand Mondial is the Respondent's name or that the Respondent is commonly known under this name. According to the evidence submitted by the Complainant, the Website is a parked page comprising PPC links such as "Play Casino Online" and "Online Casino Bonus", which compete with or capitalize on the reputation and goodwill of the Trademark (WIPO Overview 3.0, section 2.9). Noting that the Domain Name incorporates the Trademark in its entirety, the Panel finds that such use does not represent a bona fide offering of goods and/or services. It is also clear from the facts presented in this case that the Respondent is not making any legitimate noncommercial use or fair use of the Domain Name. The Panel further notes that the Respondent has clearly received the Complaint from the Center, but has chosen not to submit a substantive Response and thus to rebut any of the Complainant's arguments, other than just stating that the Domain Name has always been "dormant". Therefore, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith The Panel finds that the Domain Name was registered and is being used in bad faith. The Panel refers to its considerations under section 6.B and adds the following. In light of the evidence filed by the Complainant, and the lack of a rebuttal by the Respondent, the Panel finds that the Trademark and the Complainant's activities enjoy a certain notoriety. Accordingly, in the Panel's view, the Respondent must have been aware of the existence of the Complainant's activities and rights at the time the Respondent registered the Domain Name. In the Panel's view, there is no plausible explanation why the Respondent registered the Domain Name other than the Respondent intending to trade off the goodwill and reputation associated with the Complainant. The Panel takes into account the circumstance that the Domain Name consists of the Trademark combined with the suffix ".casino", which reflects the activities of the Complainant. Furthermore, the PPC links lead to offerings of the same activities. Therefore, the Panel finds that the Respondent has intentionally attempted to attract Internet users to his Website by creating a likelihood of confusion with the Trademark. page 5 In conclusion, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith. 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 Domain Name be transferred to the Complainant. /Willem J.H. Leppink/ Willem J. H. Leppink Sole Panelist Date: October 4, 2022
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