WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merryvale Ltd. v. Sergei

Case No. D2020-2185

1. The Parties

The Complainant is Merryvale Ltd., Guernsey, represented by Herzog, Fox & Neeman, Israel.

The Respondent is Sergei, Russian Federation.

2. The Domain Names and Registrars

The disputed domain names <spin-casino.site> and <spin-casinos.site> (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2020. On August 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on August 31, 2020 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 September 2, 2020.

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 September 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 2, 2020. 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 limited company registered and headquartered in Guernsey (formerly it was headquartered in Belize). The Complainant is a member of the Betway group of companies (the “Betway Group”), a leading operator of online gambling websites, including those using the brand name SPINCASINO. These became popular in the Australian, Canadian, and European markets and then expanded globally from 2014, as illustrated by screenshots from the Internet Archive’s Wayback Machine attached to the Complaint.

In 2019 the marketing budget for the SPINCASINO brand was USD 21 million; it is projected to be USD 32 million in 2020. Copies of advertising with the SPINCASINO mark are included with the Complaint, as well as examples of its use in promoting the Waterford Football Club. The SPINCASINO websites, “www.spincasino.com”, “www.spincasino.co.uk”, and “www.spincasino.se”, offered in multiple languages including Russian, attract an average of 530,000 visitors per month. These visitors make purchases averaging EUR 1.3 million monthly. The record includes reviews ranking the SPINCASINO websites among the top ten online casinos.

The Complainant holds numerous trademark registrations for the word and figurative marks SPINCASINO, including the following:

According to the Registrar, both Domain Names were created on September 9, 2019 and are registered in the name of the Respondent “Sergei”, showing a postal address in the Russian Federation, with no organization listed. The Complaint attaches screenshots of the websites formerly associated with the Domain Names (the “Respondent’s websites”). These featured online casino games and reviews and links to other online gambling sites. Most of the working links connected to online casino websites at “www.casinoirishlucknew.com” and “www.cherrygoldcasinogo.com”, gaming sites that compete with the Complainant’s SPINCASINO websites. At the time of this Decision, neither Domain Name resolves to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Names are identical or confusingly similar to its SPINCASINO marks and that the Respondent has no permission to use its marks or other rights or legitimate interests in the deceptive Domain Names. “As the Linked Websites offer online gaming services, same as the Complainant, the Respondent clearly uses the Disputed Domain Name to unlawfully benefit from SpinCasino Marks’ reputation in order to attract the Complainant’s customers, or potential customers to enter the Linked Websites via the Disputed Websites,” which is not a legitimate, fair use.

The Complainant contends that the Respondent must have been aware of its marks. “SpinCasino was (and still is) a world-famous brand that had been in the existence for a long time, with millions of users worldwide.” The Complainant concludes that the registration of the Domain Names, and their subsequent use for gaming sites and links, clearly represents “opportunistic bad faith”.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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 in respect of the domain name; and

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

Under paragraph 15(a) of the Rules, “[a] Panel shall 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”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant holds registered SPINCASINO trademarks. The Domain Names are nearly identical to this mark, apart from the unpronounced hyphen and a plural “s” at the end of one Domain Name. As usual, the generic Top-Level Domain (“gTLD”) “.site” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2.

The Panel concludes that the Domain Names are confusingly similar to the Complainant’s registered SPINCASINO marks for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s marks in the Domain Names or evident rights or legitimate interests on the part of the Respondent.

The Respondent has not claimed relevant trademark rights or advanced other relevant rights or legitimate interests in the Domain Names. None are evident in examining the Respondent’s former websites, which offered or linked to services competing with the Complainant. The Panel concludes that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(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.”

The record establishes that the distinctive SPINCASINO mark was well established internationally in association with online gambling by the time the Domain Names were registered. The Respondent used the Domain Names in precisely that field of business, advertising online gaming and providing links to the Complainant’s competitors while obscuring the Respondent’s identity. This course of conduct appears manifestly to comport with the illustration of bad faith found in the Policy, paragraph 4(b)(iv), misdirecting Internet users for commercial gain. The Respondent has not come forward to offer an alternative explanation, and the Panel concludes on this record that the Respondent registered and used the Domain Names in bad faith within the meaning of the Policy. The fact that neither Domain Name currently resolves to an active website does not affect the Panel’s findings.

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 Domain Names <spin-casino.site> and <spin-casinos.site>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: October 16, 2020