ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION 6805183 Canada, Inc. v. Marc Lester Kasilag, sssgame Case No. D2024-3936 1. The Parties The Complainant is 6805183 Canada, Inc., United States of America (“United States”), represented by Walters Law Group, United States. The Respondent is Marc Lester Kasilag, sssgame, Philippines. 2. The Domain Name and Registrar The disputed domain name (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 September 25, 2024. On September 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 26, 2024, 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 (Redacted for Privacy, Privacy Service Provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 30, 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 on October 1, 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 October 2, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2024.
page 2 The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on October 28, 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, 6805183 Canada, Inc., operates the domain name , and appears to use its domain name in connection with the provision of reviews of adult content. The Complainant is the owner of the following trademark: - RABBIT’S REVIEWS, United States word mark No. 3296130 registered on September 25, 2007, in class 41. The Disputed Domain Name was registered on January 21, 2024, and resolves to an online casino website displaying a logo almost identical to that of the Complainant, and which includes the Complainant’s mark. Logo displayed on the website linked to the Disputed Domain Name: Logo displayed on the website of the Complainant : 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 contends that the Disputed Domain Name is identical to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no legitimate interests in respect of the Disputed Domain Name as: - the Respondent has no connection or affiliation with Complainant and has not received any authorization, license, or consent, whether express or implied, to use the Complainant’s mark in the Disputed Domain Name or in any other manner; - the Respondent is not commonly known by the Complainant’s mark and does not hold any trademarks for the Disputed Domain Name; - the Respondent attempted to pass itself off as a website of the Complainant, which featured a logo that was similar to the Complainant’s logo; - the Disputed Domain Name is linked to a website offering illegal gambling services. Panels have categorically held that use of a domain name for illegal activity can never confer rights or legitimate
page 3 interests on respondents, particularly in the case of counterfeits, replicas, or reproductions; phishing; distribution of malware; or providing unauthorized acces; - the Respondent registered and used the Disputed Domain Name because the Disputed Domain Name is identical to the domain name and mark used by the Complainant in association with the Complainant’s services. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant: - the Respondent knew, or at least should have known, about the Complainant’s trademark rights; - the Respondent registered the Disputed Domain Name with the intention to benefit from the reputation of the Complainant and/or with the intention to selling it to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the Disputed Domain Name except for the apostrophe. In the Panel’s view, the apostrophe should not be taken into account in the assessment under this element as it is not capable of reproduction in a domain name. Accordingly, the Disputed Domain Name is virtually identical or at least confusingly similar to the Complainant’s RABBIT’S REVIEWS mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. It is well established that generic Top-Level-Domains (“gTLDs”), here “.online”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant
page 4 evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name, and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “Marc Lester Kasilag”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner. The correlation between a domain name and the complainant’s mark is often central to this inquiry. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. In this case, the Disputed Domain Name corresponds to the Complainant’s RABBIT’S REVIEWS trademark, merely adding the gTLD “.online”. In the Panel’s view, this combination may even increase the risk of confusion with the Complainant as it as it may be considered as a reference to the online content reviews business of the Complainant. Beyond looking at the domain name, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not. WIPO Overview 3.0, sections 2.5.2 and 2.5.3. According to the Complainant’s evidence, the Disputed Domain Name resolves to an online casino website displaying a logo almost identical to that of the Complainant, which also refers to the trademark of and the domain name operated by the Complainant. The Panel finds that this does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. As established above, the Disputed Domain Name resolves to an online casino website displaying a logo almost identical to that of the Complainant and which includes the Complainant’s mark. In the Panel’s view, the circumstances of this case indicate that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. WIPO Overview 3.0, section 3.2.4. Other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
page 5 In the present case, the Panel finds that the Respondent must have been aware of the Complainant and its trademark rights when it registered the Disputed Domain Name as: - the trademark invoked by the Complainant predate the registration of the Disputed Domain Name by more than 15 years; - the Disputed Domain Name resolves to a website displaying a logo almost identical to that of the Complainant; - the Respondent did not take part in the administrative proceedings. Based on the available record, the Panel finds that the Complainant has established the third element of the Policy. 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. /Flip Jan Claude Petillion/ Flip Jan Claude Petillion Sole Panelist Date: November 11, 2024
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