ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Logrand Brands, S.A. de C.V. v. Jeff Hill Case No. D2024-2256 1. The Parties The Complainant is Logrand Brands, S.A. de C.V., Mexico, represented by Arochi & Lindner, Mexico. The Respondent is Jeff Hill, United Kingdom. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2024. On June 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Registrante Privado) and contact information in the Complaint. The Center sent an email communication in English and Spanish to the parties on June 4, 2024 regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. Additionally, the Center sent an email communication to the Complainant on June 4, 2024 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 in English, on June 7, 2024. 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 June 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2024.
page 2 The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on July 10, 2024. 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 Complainant is LOGRAND BRANDS, S.A. DE C.V., a Mexican corporation with its registered office in Monterrey, Nuevo León, Mexico. The Complainant is the gaming business for over 19 years, at least five of which using the STRENDUS trademark. Trademark STRENDUS is known in Mexico, particularly in the entertainment and gambling industry. STRENDUS is an online casino platform that emerged in 2018 and presents its users with more than 4,000 games grouped under the categories of Casino, Slots, Sportsbooks, Lottery, Bingo and Virtual Games. Evidence of the renown of the mark is presented as Annexes 6.1 to 6.10 to the Complaint. The Complainant owns several Mexican registrations for trademark STRENDUS, inter alia: - Registration number 1809951 registered on October 16, 2017 covering “telecommunications” from class 38; - Registration number 1809952 registered on October 16, 2017 covering “Education; training; entertainment services; sporting and cultural activities” from class 41; - Registration number 1845701 registered on February 15, 2018 covering “telecommunications” from class 38; - Registration number 1845702 registered on February 15, 2018 covering “Education; training; entertainment services; sporting and cultural activities” from class 41; - Registration number 1845703 registered on February 15, 2018 covering “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment, computers; software; fire extinguishers” from class 09. Proof of these and other marks was attached to the Complaint as Annexes 9.1 to 9.10. The Complainant also holds the domain names , and , since June 20, 2014, as states Annex E of the Complaint. The disputed domain name was registered on May 5, 2023 and resolves to a website that incorporates the Complainant’s STRENDUS logo, diverting the users to different gambling sites that compete with the Complainant’s. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant states that the disputed domain name is confusingly similar to the trademark - in fact, the disputed domain name includes the trademark in its entirety, followed by the term “casino”, which
page 3 has no effect whatsoever in distancing the disputed domain name from the registered trademark – as it is obviously related to Complainant’s services. The Respondent has no rights nor legitimate interests in the disputed domain name, whereas the Respondent has not acquired any trademark rights with respect to the disputed domain name. As stated by the documents presented, the registrations and use of the trademark STRENDUS predate the registration of the disputed domain name in more than a decade. Moreover, the Respondent is not commonly known by the disputed domain name. The Respondent has also not secured a license nor any other authorization from the Complainant to use the Trademark. Lastly, the disputed domain name currently directs to a website that reproduces not only the mark STRENDUS, but also other marks registered by the Complainant, as well as the general design color combination and layout of graphic elements used in the Complainant’s official website. In sum, the Complainant alleges that it is clear that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are: 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 rights or legitimate interests in respect to 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 It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The disputed domain name is confusingly similar to the STRENDUS trademark, as the latter is entirely incorporated in the disputed domain name, with the mere addition of a hyphen and the term “casino”. The Complainant has presented consistent evidence of ownership of the trademark STRENDUS, by presenting Mexican registrations for it, as well as comprehensive evidence of the use of the trademark. The use of the trademark with the addition of an hyphen and the term “casino” in the disputed domain name does not prevent a finding of confusing similarity with the trademark. The trademark is clearly recognizable in the disputed domain name and as set out in the WIPO Overview 3.0, section 1.8, the addition of other terms would not prevent a finding that a disputed domain name is confusingly similar to the relevant mark for purposes of the first element.
page 4 Lastly, the Panel notes that, in accordance with section 1.11.1 of the WIPO Overview 3.0, the generic Top-Level Domain (“gTLD”), in this case “.com”, is in principle disregarded under the first element. Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant. B. Rights or Legitimate Interests The Panel notes that the trademark STRENDUS is widely known as identifying the Complainant’s activities, and that the Complainant did not license this to the Respondent. Furthermore, the Respondent does not appear to be commonly known by the disputed domain name. The Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case. The disputed domain name reproduces the Complainant’s mark STRENDUS in its entirety, with the addition of the term “casino”, which carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. In addition, the disputed domain name has been used to resolve to a website impersonating the Complainant, without any consent or approval or statement clarifying such, and used to divert the Complainant’s clients to their competitors. Previous UDRP panels have established that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith The Panel finds that the Respondent has probably registered the disputed domain name with the purpose of taking unfair advantage of the Complainant’s mark. The composition of the disputed domain name points towards the Respondent’s likely intent to give an impression that the disputed domain name is associated with the Complainant. In the absence of any reasonable explanation for the selection of the disputed domain name by the Respondent, and in the circumstances of this case, the Panel finds that, it is more likely than not, that the disputed domain name has been registered to take unfair advantage due to its value as a trademark owned by the Complainant. According to the evidence provided in Annexes 10, 11.1 and 11.2 to the Complaint, and unrefuted by the Respondent, prior to the present proceeding, the disputed domain name was used in connection with a website impersonating the Complainant’s one, using the same marks and color schemes, but redirecting the users to different gambling pages, of competitors of the Complainant. Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith. Here, the Panel additionally notes the distinctive nature of the Complainant’s trademark STRENDUS, and the failure of the Respondent to submit a Response.
page 5 In the totality of the circumstances, the Panel finds the Respondent has registered and is using the disputed domain name 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 disputed domain name be transferred to the Complainant. /Alvaro Loureiro Oliveira/ Alvaro Loureiro Oliveira Sole Panelist Date: July 27, 2024
Full & Egal Universal Law Academy