WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

High End Entertainment Marketing Ltd v. Domain Administrator, See PrivacyGuardian.org

Case No. D2020-3028

1. The Parties

The Complainant is High End Entertainment Marketing Ltd, Cyprus, internally represented.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bacanaplay-casino.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 13, 2021, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 13, 2021.

The Center verified that the Complaint, together with the amendment to 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 February 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2021.

The Center appointed John Swinson as the sole panelist in this matter on March 9, 2021. 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 High End Entertainment Marketing Ltd, a company incorporated in Cyprus. According to the Complainant, the Complainant operates an online casino business via the website at the domain name <bacanaplay.com>.

According to the Complaint, the Complainant’s “sister company” Skill On Net Ltd owns the domain name <bacanaplay.com> and is the license holder for the Complainant’s online casino activities. The Complainant is the owner of European Union registered trade mark number 018160242 for BACANAPLAY, registered on May 22, 2020 (the “Trade Mark”).

The Disputed Domain Name was registered on December 3, 2019. The Disputed Domain Name does not currently resolve to an active website.

The Respondent is Domain Administrator, See PrivacyGuardian.org, an organisation based in the United States. The Respondent did not submit a Response so little information is known about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.

Identical or Confusingly Similar

The Disputed Domain Name is very similar to the Trade Mark and the Complainant’s domain name <bacanaplay.com>.

Rights or Legitimate Interests

There is no licensing agreement in place between the Complainant and Respondent. The Respondent has not contacted the Complainant regarding its intention to use the Trade Mark.

Registered and Used in Bad Faith

The Complainant operates in a heavily regulated industry. It appears that the Respondent is not subject to this regulation. If the Respondent continues to exploit the Trade Mark through its use of the Disputed Domain Name, the Complainant’s brand and its customers will be under threat.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a Response.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the first element (WIPO Overview of WIPO Panel Views on Select UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.

The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of “-casino”. The Complainant operates an online casino business. The addition of “-casino” does not prevent the Trade Mark from being recognisable in the Disputed Domain Name.

The Panel considers the Disputed Domain Name to be confusingly similar to the Trade Mark.

The fact that the Disputed Domain Name was registered before the Complainant registered the Trade Mark does not by itself preclude the Complainant’s standing to file a UDRP case, nor the Panel’s finding of identity or confusing similarity under the first element (section 1.1.3 of WIPO Overview 3.0).

The Complainant succeeds on the first element of the Policy.

For completeness, the Panel notes that the Complainant also claims to be the owner of European Union registered trade mark number 017566373 for BACANA, registered on March 26, 2018. This trade mark was registered prior to the registration of the Disputed Domain Name, and is registered in the name of Moreton Marketing Ltd. The Complainant has provided no evidence or submissions on what relationship, if any, the Complainant has with Moreton Marketing Ltd. In any event, the ownership of this trade mark does not affect the Panel’s decision.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests.

According to the Complainant, it has no licensing agreement in place with the Respondent and the Respondent has not contacted the Complainant regarding its intention to use the Trade Mark.

In the absence of a Response, there is no evidence to demonstrate that the Respondent is commonly known by the Disputed Domain Name. The Disputed Domain Name does not currently resolve to an active website. As a result, there is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, or using the Disputed Domain Name in connection with a bona fide offering of goods or services.

Further, the Disputed Domain Name is identical to the Complainant’s Trade Mark, save for the addition of “-casino”, an additional term within the Complainant’s field of commerce. Prior panels have held that the addition of terms within a trademark owner’s field of commerce or indicative of services related to the brand may by themselves trigger an inference of affiliation and such composition cannot constitute fair use.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

Registered in bad faith

The Trade Mark was not registered until March 22, 2020. However, the Complainant filed the Trade Mark on December 2, 2019. The Disputed Domain Name was registered one day later, on December 3, 2019.

In certain circumstances, where the facts of a case establish that a respondent’s intent in registering a domain name was to unfairly capitalise on a complainant’s nascent trade mark rights, panels have been prepared to find that the respondent has acted in bad faith. Such circumstances include where the registration of a domain name follows the complainant’s filing of a trade mark application (section 3.8.2 of WIPO Overview 3.0).

For the following reasons, the Panel considers that the Respondent likely registered the Disputed Domain Name in anticipation of the Complainant’s rights in the Trade Mark:

- The Trade Mark is distinctive, featuring the term “bacana”, a Portuguese word for “cool” or “great”, and the English word “play”, which pertains to the Complainant’s use of the Trade Mark in connection with its online casino business.

- The Disputed Domain Name incorporates the Trade Mark in its entirety plus the term “-casino”, which is descriptive of the Complainant’s business.

- The Disputed Domain Name was registered one day after the Complainant filed the Trade Mark.

In light of the above, it appears to the Panel that this is a clear case of cybersquatting. The Panel is satisfied that the Disputed Domain Name was registered in bad faith.

Used in bad faith

The Disputed Domain Name does not currently resolve to an active website. The fact that the Disputed Domain Name is not currently being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that:

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good-faith use to which the domain name may be put.

The particular circumstances of this case which lead to a conclusion in the Complainant’s favour are:

- The Trade Mark is relatively distinctive (as discussed above).
- The Respondent has not submitted a Response or provided any evidence of actual or contemplated good-faith use.
- The Respondent used a privacy service to conceal its identity when registering the Disputed Domain Name.
- It is difficult to conceive of any good-faith use to which the Disputed Domain Name could be put, given its degree of similarity to the Complainant’s Trade Mark and the fact that it was registered one day after the Complainant filed the Trade Mark by an entity which is not associated with the Complainant.

The Respondent had the opportunity to present evidence that the Disputed Domain Name was not registered to target the Complainant’s Trade Mark but did not do so.

In light of the above, the Panel finds that the Complainant has succeeded on the third 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 <bacanaplay-casino.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: March 23, 2021