WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LeoVegas Gaming Ltd. v. OS Media (Ocana Patrick)

Case No. D2015-1134

1. The Parties

The Complainant is LeoVegas Gaming Ltd. of Sliema, Malta, represented by Baker & McKenzie, Sweden.

The Respondent is OS Media (Ocana Patrick) of Clermont-Ferrand, France.

2. The Domain Name and Registrar

The disputed domain name <leovegascasino.net> is registered with OVH (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2015. On July 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

According to information the Center received from the concerned registrar, the language of the registration agreement for the disputed domain name is French. Accordingly, the Complainant is requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into French; or 3) submit a request for English to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English. The Complainant submitted a request that English be the language of the proceedings, to which the Respondent did not reply.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2015.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on August 24, 2015. 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 a Maltese company with registration number C59314.

The Complainant’s business operations consist of providing online betting and casino services at the website “www.leovegas.com”. The latter website was launched in January 2012.

Currently, over 350 different games and gaming types are offered on “www.leovegas.com”, which have become very popular.

The Complainant is regarded as one of the leaders and innovators in the mobile and online gaming and casino industry. The Complainant submitted that it is subject to British license issued by the Gambling Commission.

The Complainant has registered the Community trademark LEOVEGAS on July 23, 2013 (the “Trademark” and the “Complainant’s Trademark”).

The Complainant has also registered “leovegas” as domain names worldwide, including, amongst others, <leovegas.com>, registered on February 12, 2011, <leovegas.se> registered on March 3, 2011, and <leovegas.nu>, registered on August 18, 2011.

The Complainant further submitted that its business along with its corresponding trademark LEOVEGAS and its “www.leovegas.com” website, has grown rapidly since it was launched in 2012. Furthermore, it has become popular among consumers in Sweden and around the world, especially when it comes to gambling and mobile casino services.

Finally, the Complainant submitted evidence that it has won several awards and honors, including the “Best Gaming Operator of the Year” in 2013, “Best Casino 2013”, and the "most interesting and high performing company in Europe” in 2015.

The disputed domain name <leovegascasino.net> was registered on January 15, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name is confusingly similar to the registered rights in which the Complainant has rights. The dominant part of the disputed domain name consists of the word ”leovegas”, which is identical to the Community trademark LEOVEGAS (the “Trademark”) of which the Complainant is the right holder.

The Complainant argues that the addition of the word “casino” in the disputed domain name increases the likelihood of confusion since gaming and casino services are the Complainant's core business. Further, the Complainant’s Trademark is protected for casino services in class 41.

The Complainant further submits that the addition of a generic Top Level Domain (“gTLD”), such as “.net” in the disputed domain name does not affect the domain name for the purpose of determining if the disputed domain name is confusingly similar.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has trademark rights for LEOVEGAS and a license or authorization was not granted to the Respondent to use the Trademark in the disputed domain name or in any other manner; nor does the Respondent hold any registered trademarks or rights of its own pertaining to the disputed domain name.

Furthermore, the Complainant submits that the website corresponding to the disputed domain name provides unauthorized and inaccurate information about the Complainant’s business, in the three languages that correspond to the Complainant’s largest markets.

The Complainant also alleges that the Respondent infringes its Trademark by using it without authorization on the website corresponding to the disputed domain name.

Accordingly, the Complainant contends that the Respondent is using the disputed domain name with the purpose of attracting and reaching the customers of the Complainant and the use of the Respondent’s registration and use of the disputed domain name damages the Trademark including its dilution and damaging of its goodwill.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name was registered and is being used in bad faith by the Respondent.

First the Complainant contends that the Respondent has registered the disputed domain name with knowledge of the Complainant's business. The addition of “casino” represents the service the Complainant is known for and the disputed domain name was registered at the time the Complainant’s business gained more attention.

Second, the Complainant asserts that the Respondent has acquired the disputed domain name primarily to sell, rent, or transfer the disputed domain name to the Complainant or to use the Complainant’s reputation to drive traffic to its own website corresponding to the disputed domain name and to increase its income.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the proceeding

In accordance with the Rules, paragraph 11(a), “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Complainant requested in the Complaint for English to be the language of the proceedings. In support of its request, the Complainant evidenced that the Registration Agreement is in English.

This Panel decides that it will accept the Complaint as filed in English and issue a decision in English.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraphs 2.1 and 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a), of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

As a result, asserted facts that are not unreasonable will be taken as true by this Panel.

Finally, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:

(i) the disputed domain name registered by the Respondent 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Consequently, this Panel shall further analyse the eventual concurrence of these three grounds in the present case.

C. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has evidenced that it has registered trademark rights in LEOVEGAS.

Secondly, the disputed domain name fully incorporates the Complainant’s distinctive LEOVEGAS Trademark in which the Complainant has exclusive rights. This Panel finds, similarly to other UDRP panels, that where the domain name incorporates a complainant’s registered trademark, as the dominant element, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. (Aktiebolaget Electrolux v. Diana Virginina Rodríguez Cazorla, Govone Develops, S.L., WIPO Case No. D2014-0940; Nokia Corporation v. Jameela Seif, WIPO Case No. D2009-1665; Société Nationale des Chemins de Fer Français SNCF v. Assane Amadou, WIPO Case No. D2012-0714).

This Panel finds that the addition of merely generic and descriptive wording to a trademark, in this case the word “casino”, is insufficient in itself to avoid a finding of confusing similarity. Such conclusion is further reinforced by the fact that the word “casino” refers to the Complainant’s core business as sufficiently established by the Complainant. The Trademark is therefore not subsumed and remains the dominant component of the disputed domain name. This Panel further finds that the addition of the generic and descriptive word "casino" is likely to increase the likelihood of confusion.

Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of a gTLD to the disputed domain name, in casu “.net”, does not constitute an element so as to avoid confusing similarity for purposes of the Policy.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s LEOVEGAS Trademark.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a 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”.

This Panel finds in light of the Complainant’s asserted facts, that no license, permission, or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. Thus, the Respondent has no rights in the term “leovegas”.

An examination of the website operating under the disputed domain name shows no evidence that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services since the website corresponding to the disputed domain name offers unauthorized and inaccurate information about the Complainant's business in combination with the automated advertisement for “online and mobile casino services”.

Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name.

This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Rather, the website corresponding to the disputed domain name provides automated advertisement for "online and mobile casino services".

In fact, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name, and finds after reviewing the website as evidenced by the Complainant, and as it appears following this Panel’s independent research, that the Respondent had or should have had full knowledge of the Trademark and that its only intention in registering the disputed domain name is for commercial gain by depriving the Complainant from a strategic domain name or to offer the disputed domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of th:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would evidence an instance of “registration and use of a domain name in bad faith”.

First of all, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name.

This Panel believes, after reviewing the website as evidenced by the Complainant that the Respondent must have known and been aware of the rights on the prior LEOVEGAS Trademark and the associated services at the time of the registration of the disputed domain name which was registered after the Trademark was registered and after the Complainant’s business had gained a lot of media attention.

Such conclusion is particularly true as the word “casino” represents the services for which the Complainant registered its Trademark and is further evidenced by the fact that the Respondent provides information on the Complainant’s business and reproduces the Complainant’s Trademark on the corresponding website of the disputed domain name.

Secondly, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name.

This Panel finds that the Respondent used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademark. In this respect, this Panel believes after reviewing the website at the disputed domain name and its content as evidenced by the Complainant that the Respondent registered and uses the disputed domain name to promote services similar to those of the Complainant and thus to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website. This is further reinforced by the fact that the corresponding website of the disputed domain name provides automated advertisements to “online and mobile casino services” and that it is displayed in the languages of the three largest markets of the Complainant’s business, attempting therefore to attract Internet users looking for the Complainant.

Furthermore, this Panel believes that the Respondent may have registered and uses the disputed domain name for the purpose of selling, renting, or otherwise transferring it.

Such behaviors are indicative of bad faith within the meaning of paragraph 4(b) of the Policy, on the part of the Respondent.

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 <leovegascasino.net> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: September 9, 2015