WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merryvale Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Elias Kuismanen

Case No. D2020-2381

1. The Parties

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

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Elias Kuismanen, Australia.

2. The Domain Name and Registrar

The disputed domain name <spin-casino.net> 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 14, 2020. On September 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2020, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on September 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 22, 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 Respondent of the Complaint, and the proceedings commenced on October 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2020. Respondent contacted the Center on September 24, 2020, but did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment on October 30, 2020.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 4, 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

Complainant, Merryvale Limited, is a member of the Betway group of companies and operates online gaming websites using the name and marks SPINCASINO and SPIN CASINO (hereinafter collectively referred to as the SPIN CASINO mark). Complainant owns several trademark registrations and applications for the SPIN CASINO mark, both as a word and figurative mark, in connection with its services in the European Union, Australia and other jurisdictions. The earliest application filed for the SPIN CASINO mark was in October 3, 2014 (Australian trademark No. 1650645, registered on November 18, 2015) and the earliest registration issued on February 18, 2015 (European Union Trade Mark No. 013335427). Complainant also owns and uses the domain names <spincasino.com>, <spincasino.co.uk>, and <spincasino.se> in connection with its online gaming websites. Complainant has used the domain name <spincasino.com> since at least 2004 in connection with its online gaming website.

Respondent registered the disputed domain name on September 26, 2014. The disputed domain has been used in connection with an online gaming website that featured the name SPIN CASINO, and/or as a redirect to a competing online gaming website.

Complainant sent Respondent demand letters regarding the disputed domain name on August 12, 2015 and July 22, 2020. Respondent apparently did not respond to either letter. Currently there is no active website or page at the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has used the name and mark SPIN CASINO in connection with its online gaming websites since 2004, and that on account of the use and advertising of the SPIN CASINO mark for many years Complainant has developed strong rights in the SPIN CASINO mark that predate Respondent’s registration and use of the disputed domain name.

Complainant asserts that the disputed domain name is identical and confusingly similar to Complainant’s SPIN CASINO mark as it fully and solely consists of the words “spin” and “casino” separated by a hyphen.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has made not made a bona fide offering goods or services with the disputed domain name, (ii) has used the disputed domain name to mislead and redirect consumers to Respondent’s website, and (iii) is not commonly known by the disputed domain name and has not been authorized by Complainant to use the name and mark SPIN CASINO.

Lastly, Complainant contends that Respondent has registered and is using the disputed domain name in bad faith, as Respondent registered the disputed domain name many years after Complainant developed rights in its SPIN CASINO name and mark in connection with its online gaming websites and has done so in order to attract and redirect Internet users to Respondent’s website. Complainant also contends that Respondent’s bad faith is further established by Respondent’s failure to respond to demand letters sent to Respondent in 2015 and 2020.

B. Respondent

Respondent did not reply to Complainant’s contentions. In an email sent to the Center by Respondent on September 24, 2020, Respondent simply advised “that we have now taken the site down while we review the situation.” No further communication was received from the Respondent.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

(ii) 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.

A. Identical or Confusingly Similar

Complainant claims to own rights in the mark SPIN CASINO by virtue of Complainant’s use of the SPIN CASINO mark since 2004 with an online gaming website and by virtue of Complainant’s trademark registrations for SPINCASINO and a figurative version of SPIN CASINO. While Complainant’s trademark registrations and applications were filed or issued to registration after the disputed domain name was registered by Respondent, the Panel is satisfied based on the evidence submitted that Complainant had common law or unregistered rights in the SPIN CASINO mark going back to 2004, Complainant’s evidence in this regard, none of which is contested by Respondent, consists of archival website printouts showing continued use of the SPIN CASINO mark on Complainant’s website at <spincasino.com> since 2004, examples of advertising and promotional efforts for Complainant’s SPIN CASINO websites, and examples of third party recognition of Complainant’s online gaming websites.

With Complainant’s rights in the SPIN CASINO mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top‑Level Domain (“gTLD”) such as “.net”) is identical or confusingly similar with Complainant’s marks. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low, and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain name is identical to Complainant’s SPIN CASINO mark as it fully and solely consists of the SPIN CASINO mark. The mere use of a hyphen to separate the words “spin” and “casino” is irrelevant as the disputed domain name fully incorporates the recognizable combination SPIN CASINO. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s SPIN CASINO mark and in showing that the disputed domain name is identical to that mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Based on the evidence submitted in this proceeding, and Respondent’s failure to file a response, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name. Since registering the disputed domain name, which was on a date well after Complainant had secured rights in the SPIN CASINO mark in connection with online gaming services, Respondent has used the disputed domain name to attract web users to its website for purposes of offering competing online gaming services. Such use of the disputed domain name does not constitute a legitimate use and is opportunistic. This is particularly so given that the disputed domain name, which fully and solely consists of the SPIN CASINO mark, is likely to be seen by consumers as referring to Complainant and/or a service offered by Complainant.

Given that Complainant has established with sufficient evidence that it owns rights in the SPIN CASINO mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

In view of Respondent’s actions, and failure to appear in this proceeding, it is easy to infer that Respondent’s registration and use of the disputed domain name, which consists of Complainant’s SPIN CASINO mark, has been done opportunistically and in bad faith for purposes of attracting web users to Respondent’s website to offer competing online gaming services. Respondent registered the disputed domain name well after Complainant has established rights in the SPIN CASINO mark in connection with its online gaming website. Given that Respondent used the entire SPIN CASINO mark in the disputed domain name to offer competing gaming services, it appears more probable than not that Respondent was fully aware of Complainant and its SPIN CASINO services and mark when Respondent registered the disputed domain name. As such, Respondent’s actions were in bad faith and knowingly meant to take advantage of the goodwill associated with Complainant’s SPIN CASINO mark.

Additionally, the fact that Respondent failed to respond to at least two demand letters sent by Complainant’s representative regarding the registration and use of the disputed domain name, and thereafter continued using the disputed domain name to offer competing online gaming services, further underscores Respondent’s bad faith in this matter.

The Panel thus finds that Complainant succeeds under this 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, <spin-casino.net> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: November 17, 2020