Complainant is Holland Casino N.V. of Hoofddorp, the Netherlands, represented by Novagraaf Nederland B.V., the Netherlands.
Respondent is David Dobric of Weiterstadt, Germany. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through Mesh Digital Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On October 8, 2018, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 15, 2018. In accordance with the Regulations, article 7.1, the due date for Response was November 4, 2018. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on November 6, 2018.
The Center appointed Gregor Vos as the panelist in this matter on November 19, 2018. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainant offers live casino games. It is the only gambling provider licensed by the Dutch government to operate casino games in the Netherlands.
Complainant is the owner of the following trademark registrations (hereafter: the “Trademarks”):
- Benelux trademark registration No. 0753539 for HC, registered on August 11, 2004; and
- Benelux trademark registration No. 0607057 for HOLLAND CASINO, filed on January 24, 1997.
The Domain Name was first registered on January 24, 2017, and resolves to a webpage offering online gambling services. 5. Parties’ Contentions A. Complainant
Complainant asserts that the Domain Name is confusingly similar to the trademark HC as the Domain Name fully incorporates this trademark and the Domain Name is used to provide services which are identical or at least similar to the services offered by Complainant under the Trademarks. According to Complainant, the additional element “online” is descriptive as Respondent is offering online gambling services through the Domain Name. As a result, the element “online” does not prevent likelihood of confusion.
Furthermore, Complainant states that Respondent has no rights in the Domain Name. Respondent does not own registered trademarks and/or trade names that are identical or similar to the Trademarks. According to Complainant, Respondent has no rights or legitimate interests in de Domain Name. Respondent is not commonly known under the Domain Name and is not affiliated with Complainant in any way. In addition, Complainant asserts that online gambling is still prohibited in the Netherlands. Therefore, the use of the Domain Name cannot be described as legitimate use of the Domain Name.
Finally, Complainant asserts that the Domain Name has been registered in bad faith. Respondent was or should have been aware of Complainant’s trademark rights. According to Complainant, the fact that Respondent offers the same services as Complainant through the Domain Name is not a coincidence. Respondent’s knowledge of the Trademarks would also be evidenced by the fact that Respondent had previously registered the domain names and in bad faith. See, Nationale Stichting tot Exploitatie van Casinospelen v. David Dobric,WIPO Case No. DNL2013‑0038; and Nationale Stichting tot Exploitatie van Casinospelen v. David Dobric,WIPO Case No. DNL2016-0029. Complainant further contends that by registering and using the Domain Name, Respondent intentionally attempts to attract customers by creating a likelihood of confusion between the Domain Name and the Trademarks. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Based on Article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
(a) the domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the complainant has rights; or
II. a personal name registered in the General Municipal Register (‘gemeentelijke basisadministratie’) of a municipality in The Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in The Netherlands under which complainant undertakes public activities on a permanent basis; and
(b) respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
Only if all three elements are fulfilled can the Panel grant the remedies requested by Complainant.
Even though the Complaint has been filed under the Regulations and not under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel will, in view of similarities between the respective policies, refer to UDRP precedent to the extent applicable. A. Identical or Confusingly Similar
Article 2.1(a) of the Regulation requires two elements to be proven. A disputed domain name should be (i) identical or confusingly similar to a trademark or trade name (ii) in which a complainant has rights.
The Panel finds that Complainant has proven that it has rights in the Trademarks by virtue of its Benelux trademark registrations, protected under Dutch law.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Here, it is evident that the Domain Name is not as such identical to the Trademarks, as it includes the additional wording “online”, not present in any of the Trademarks. The addition of a descriptive term, however, does not prevent a finding of confusing similarity nor does it change the overall impression of the Domain Name being connected to the Trademarks (see The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314,WIPO Case No. D2016-1671). The Panel therefore finds that the Domain Name is confusingly similar to the Trademarks.
The Panel concludes that the requirement under Article 2.1(a) of the Regulation has been fulfilled. B. Rights or Legitimate Interests
In order to meet the requirement of Article 2.1(b), a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of proof shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see Auto 5 v. E. Shiripour,WIPO Case No. DNL2008-0027).
In the present case, Complainant argues that Respondent lacks rights in the Domain Name and does not own registered trademarks and/or trade names identical or similar to the Trademarks. In addition, Complainant argues that Respondent does not have a legitimate interest in the Domain Name as Respondent is not commonly known by the Domain Name and is not affiliated with Complainant in any way. In this regard, Complainant also notes that Respondent could not make legitimate noncommercial use of the Domain Name as its activities under the Domain Name (i.e. offering online gambling services) are illegal in the Netherlands. Based on the above, the Panel finds that Complainant has sufficiently set out its prima facie case.
As Respondent has not replied to this case, the Panel finds that the requirement under Article 2.1(b) of the Regulations is also fulfilled. C. Registered or Used in Bad Faith
Under Article 2.1(c) of the Regulations, a complainant must show that the domain name has been registered or is being used in bad faith. This rule differs from the UDRP in the sense that a UDRP complainant must cumulatively show that the domain name has been registered and is being used in bad faith. Article 3.2 of the Regulations provides a non-limitative list of circumstances which, if present, shall be evidence of the registration or use of a domain name in bad faith.
In particular, Article 3.2 (d) of Regulations provides that if the panel finds that the respondent has used the disputed domain name for commercial gain, by attracting Internet users to its website by creating a likelihood of confusion with the complainant’s trademarks as to, for example, the source, sponsorship, affiliation or endorsement of its website or of the products or services on its website, it should be taken as evidence of the registration and use of the disputed domain name in bath faith.
The Panel finds that the evidence submitted by Complainant supports a finding of bad faith in this sense under article 3.2 (d) of the Regulations. The fact that Respondent uses the Domain Name to offer services which are highly similar to the services offered by Complainant under the Trademarks, combined with the fact that Respondent also uses the Trademarks on the website to which the Domain Name resolves, shows that Respondent knew or at least should have known of the Trademarks. In addition, Complainant has drawn the Panel’s attention to the fact that Respondent engages in a pattern of registering domain names corresponding to trademarks held by Complainant. Previous panels appointed under the Regulations have held that Respondent has registered in bad faith domain names which incorporated the Trademarks. Noting these circumstances the Panel concludes that Respondent uses the Domain Name for commercial gain in order to attract Internet users to its website by creating a likelihood of confusion with the Trademarks.
The Panel finds that the requirement under article 2.1(c) of the Regulations has also been met. 7. Decision
For the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to Complainant.
Gregor Vos
Panelist
Date: December 3, 2018
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