WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tailby Limited v. Peter Smith
Case No. D2017-1281
1. The Parties
The Complainant is Tailby Limited of Belize City, Belize, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Peter Smith of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and Villejuif, France.
2. The Domain Names and Registrar
The disputed domain names <casinoroyalvegascasino.com>, <oroyalvegascasino.com>, <roalvegascasino.com>, <roayalvegascasino.com>, <roaylvegascasino.com>, <rooyalvegascasino.com>, <roryalvegascasino.com>, <royaalvegascasino.com>, <royalavegascasino.com>, <royalegascasino.com>, <royalevgascasino.com>, <royallvegascasino.com>, <royalsvegascasino.com>, <royalveagascasino.com>, <royalveagscasino.com>, <royalveascasino.com>, <royalveegascasino.com>, <royalvegaascasino.com>, <royalvegacasino.com>, <royalvegacsasino.com>, <royalvegacscasino.com>, <royalvegagscasino.com>, <royalvegasacasino.com>, <royalvegasacsino.com>, <royalvegasasino.com>, <royalvegascaasino.com>, <royalvegascacsino.com>, <royalvegascaino.com>, <royalvegascaisino.com>, <royalvegascaisno.com>, <royalvegascasaino.com>, <royalvegascasiino.com>, <royalvegascasimo.com>, <royalvegascasin.com>, <royalvegascasinio.com>, <royalvegascasinmo.com>, <royalvegascasinno.com>, <royalvegascasino.co>, <royalvegascasinoroyalvegascasino.com>, <royalvegascasino9.com>, <royalvegascasio.com>, <royalvegascasion.co>, <royalvegascasiono.com>, <royalvegascasisno.com>, <royalvegascasiuno.com>, <royalvegascasnino.com>, <royalvegascasnio.com>, <royalvegascasno.com>, <royalvegascaszino.com>, <royalvegasccasino.com>, <royalvegascsaino.com>, <royalvegascsasino.com>, <royalvegascsino.com>, <royalvegasscasino.com>, <royalvegeascasino.com>, <royalveggascasino.com>, <royalvegsacasino.com>, <royalvegsascasino.com>, <royalvegscasino.com>, <royalvevgascasino.com>, <royalvgascasino.com>, <royalvgeascasino.com>, <royalvgegascasino.com>, <royalvlegascasino.com>, <royalvvegascasino.com>, <royavegascasino.com>, <royavlegascasino.com>, <royavlvegascasino.com>, <royaylvegascasino.com>, <roylalvegascasino.com>, <roylavegascasino.com>, <roylvegascasino.com>, <royoalvegascasino.com>, <royyalvegascasino.com>, <rroyalvegascasino.com>, <wwwroyalvegascasino.co>, <wwwroyalvegascasino.com>, and <wwwroyalvegascasion.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2017. On July 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 5, 2017, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on August 7, 2017. 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, headquartered in Belize and founded in 1999, is a provider of online casino, gambling, and gaming services. The Complainant offers such services under the ROYAL VEGAS and ROYAL VEGAS ONLINE CASINO marks. The Complainant owns trademark registrations for the ROYAL VEGAS mark in the European Union, Australia, and Canada, the earliest date of registration being in Australia on July 12, 2002. The Complainant also owns trademark registrations in the European Union, Australia, and Canada for its ROYAL VEGAS ONLINE CASINO mark (figurative), the earliest date of registration being in the European Union on July 2, 2015.
This proceeding concerns 78 disputed domain names, all of which were registered by the Respondent on various dates between April 17, 2016, and March 27, 2017. All but five of the disputed domain names were registered on September 4, 2016, and December 4, 2016. The Respondent has redirected the disputed domain names to a website at “www.marketsworld.com” (“MarketsWorld website”), which by all appearances is a binary options trading platform. The following statement appears on the website: “The binary options offered by this site are games of skill licensed and regulated under fixed odds betting by the Isle of Man GSC.”
Upon becoming aware of the Respondent’s registration of the disputed domain names, the Complainant’s representative by email sent a demand letter to the Respondent on May 23, 2017, seeking the transfer of the dispute domain names. The Respondent in an email reply on May 30, 2017, did not comply with the Complainant’s request, but stated “we would be prepared to transfer all 78 domains to your client for $10,000 and thereby avoid the necessity for protracted litigation over it.” The Complainant’s representative by email on June 4, 2017, declined the Respondent’s proposal and demanded the immediate transfer of the disputed domain names, to which the Respondent did not reply.
The Respondent is not a stranger to the UDRP, having been a respondent in prior proceedings under the Policy.1 In a number of these cases UDRP panels found the Respondent to have engaged in the bad faith practice of typosquatting. In at least six of these prior cases the Respondent upon registering the domain names at issue redirected them to the MarketsWorld website. 2 The Respondent is the holder of a large portfolio of domain names, estimated at around 20,000 in several of the cases referred to above.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to its ROYAL VEGAS and ROYAL VEGAS ONLINE CASINO marks, which the Complainant maintains are very well known within the gaming industry. The Complainant asserts that the addition of the word “casino” in the disputed domain names does not dispel the confusing similarity of the disputed domain name to the Complainant’s marks, asserting that the ROYAL VEGAS mark is the dominant component of the disputed domain names. The Complainant further asserts that the Complainant’s marks are recognizable notwithstanding the intentional misspelling of the Complainant’s mark or other typographical errors in the disputed domain names.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain names. According to the Complainant, the Respondent is not affiliated with the Complainant and has not been licensed or otherwise authorized to use the Complainant’s marks. The Complainant submits that the Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, has made no legitimate noncommercial or fair use of the disputed domain names, and has not been commonly known by the disputed domain names.
The Complainant asserts that the Respondent registered and is using the disputed domain names in bad faith. The Complainant submits that, as the ROYAL VEGAS mark has been continuously used for almost fifteen years and is very well known within the gaming industry, the Respondent would have been aware of the Complainant’s marks when registering the disputed domain names. According to the Complainant, Internet users diverted to the MarketsWorld website, which offers binary trading options, are likely to believe that the website is affiliated with or sponsored by the Complainant. Thus, the Complainant submits that the Respondent is attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s ROYAL VEGAS and ROYAL VEGAS ONLINE CASINO marks, in which the Complainant has demonstrated rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the ROYAL VEGAS mark is recognizable in the disputed domain names, and ROYAL VEGAS also is the dominant portion of the Complainant’s ROYAL VEGAS ONLINE CASINO mark.
The Respondent has engaged in an unmistakable pattern of typosquatting. As was noted by the panel in Vivid Seats LLC v. Peter Smith and Maria da Silva,
WIPO Case No. D2017-1083, typosquatting is characterized by insignificant modifications to a trademark through which a respondent with male fide intent seeks to take advantage of errors by Internet users in typing domain names into their web browser’s location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk,
WIPO Case No. D2003-0161. Typosquatting in this case is clearly exemplified by the Respondent’s registration of numerous domain names consisting of slight misspellings of “royal”, “vegas”, or “casino.” The addition of the term “www” in several of the disputed domain names does not dispel the confusing similarity of these domain names to the Complainant’s marks.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s ROYAL VEGAS or ROYAL VEGAS ONLINE CASINO marks. Regardless, the Respondent has registered 78 disputed domain names that are confusingly similar to the Complainant’s marks, engaging in typosquatting, and redirected the disputed domain names to the MarketsWorld website, where binary option trading competitive with online gaming services provided by the Complainant is offered. Further, the Respondent attempted to sell the disputed domain names to the Complainant for “$10,000”.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the attendant facts and circumstances that the Respondent unquestionably was aware of the Complainant’s rights in the ROYAL VEGAS and ROYAL VEGAS ONLINE CASINO marks when registering the disputed domain names. The Respondent engaged in typosquatting when registering the disputed domain names, such that Internet visitors diverted to the MarketsWorld website could be misled into believing that the MarketsWorld website is affiliated with, sponsored or endorsed by the Complainant.
Having regard to the foregoing, there Panel finds the Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Further, the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain names, has not been commonly known by the disputed domain names, and as noted above has not been authorized to use the Complainant’s marks.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the Respondent registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. It is abundantly clear from the record that the Respondent was aware of the Complainant’s ROYAL VEGAS and ROYAL VEGAS ONLINE CASINO marks when registering the disputed domain names. As noted above, the Respondent has engaged in a pattern of bad faith cybersquatting, and by the totality of his actions has demonstrated that his primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights for commercial gain.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 names, <casinoroyalvegascasino.com>, <oroyalvegascasino.com>, <roalvegascasino.com>, <oayalvegascasino.com>, <roaylvegascasino.com>, <rooyalvegascasino.com>, <roryalvegascasino.com>, <royaalvegascasino.com>, <royalavegascasino.com>, <royalegascasino.com>, <royalevgascasino.com>, <royallvegascasino.com>, <royalsvegascasino.com>, <royalveagascasino.com>, <royalveagscasino.com>, <royalveascasino.com>, <royalveegascasino.com>, <royalvegaascasino.com>, <royalvegacasino.com>, <royalvegacsasino.com>, <royalvegacscasino.com>, <royalvegagscasino.com>, <royalvegasacasino.com>, <royalvegasacsino.com>, <royalvegasasino.com>, <royalvegascaasino.com>, <royalvegascacsino.com>, <royalvegascaino.com>, <royalvegascaisino.com>, <royalvegascaisno.com>, <royalvegascasaino.com>, <royalvegascasiino.com>, <royalvegascasimo.com>, <royalvegascasin.com>, <royalvegascasinio.com>, <royalvegascasinmo.com>, <royalvegascasinno.com>, <royalvegascasino.co>, <royalvegascasinoroyalvegascasino.com>, <royalvegascasino9.com>, <royalvegascasio.com>, <royalvegascasion.co>, <royalvegascasiono.com>, <royalvegascasisno.com>, <royalvegascasiuno.com>, <royalvegascasnino.com>, <royalvegascasnio.com>, <royalvegascasno.com>, <royalvegascaszino.com>, <royalvegasccasino.com>, <royalvegascsaino.com>, <royalvegascsasino.com>, <royalvegascsino.com>, <royalvegasscasino.com>, <royalvegeascasino.com>, <royalveggascasino.com>, <royalvegsacasino.com>, <royalvegsascasino.com>, <royalvegscasino.com>, <royalvevgascasino.com>, <royalvgascasino.com>, <royalvgeascasino.com>, <royalvgegascasino.com>, <royalvlegascasino.com>, <royalvvegascasino.com>, <royavegascasino.com>, <royavlegascasino.com>, <royavlvegascasino.com>, <royaylvegascasino.com>, <roylalvegascasino.com>, <roylavegascasino.com>, <roylvegascasino.com>, <royoalvegascasino.com>, <royyalvegascasino.com>, <rroyalvegascasino.com>, <wwwroyalvegascasino.co>, <wwwroyalvegascasino.com>, and <wwwroyalvegascasion.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: August 16, 2017
1 See, e.g., Vivid Seats LLC v. Peter Smith and Maria da Silva,
WIPO Case No. D2017-1083; Virgin Enterprises Limited v. Peter Smith,
WIPO Case No. D2017-0854; Vivid Seats LLC v. Domain Administrator, Domains by Proxy, LLC / Peter Smith,
WIPO Case No. D2017-0109; Vivid Seats LLC v. Peter Smith / Domain Administrator, Domains by Proxy, LLC,
WIPO Case No. D2016-1784; Bank of America Corporation v. Domains By Proxy, LLC / Peter Smith,
WIPO Case No. D2016-1223; Vivid Seats Limited v. Domain Administrator, Domains by Proxy, LLC / Peter Smith,
WIPO Case No. D2016-1125; IronFX Global Limited v. Peter Smith,
WIPO Case No. D2015-0233; IronFX Global Limited v. Bobs Limited, Peter Smith,
WIPO Case No. D2014-1703; Forextime IP Holdings Ltd. v. Markets World / Peter Smith, Bobs Limited,
WIPO Case No. D2014-0422.
2Vivid Seats LLC v. Peter Smith and Maria da Silva,
WIPO Case No. D2017-1083; Virgin Enterprises Limited v. Peter Smith,
WIPO Case No. D2017-0854; Bank of America Corporation v. Domains By Proxy, LLC / Peter Smith,
WIPO Case No. D2016-1223; IronFX Global Limited v. Peter Smith,
WIPO Case No. D2015-0233; IronFX Global Limited v. Bobs Limited, Peter Smith,
WIPO Case No. D2014-1703; Forextime IP Holdings Ltd. v. Markets World / Peter Smith, Bobs Limited,
WIPO Case No. D2014-0422.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
