WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LeoVegas Gaming Ltd. v. 1331 Group Ltd., Companie Comercială

Case No. DRO2020-0010

1. The Parties

The Complainant is LeoVegas Gaming Ltd., Malta, represented by Ports Group AB, Sweden.

The Respondent is 1331 Group Ltd., Companie Comercială, Belize.

2. The Domain Name and Registrar

The disputed domain name <leovegas.ro> is registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2020. On October 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2020, 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2020.

The Center appointed Mihaela Maravela as the sole panelist in this matter on November 18, 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 Swedish mobile gaming company, part of the LeoVegas Group that provides online casino and sports betting services on a number of international markets. The Complainant is the owner of registered trademarks that include the words “leovegas” in various jurisdictions throughout the world, including the following:

- The European Union Trademark registration No. 014583355 for LEOVEGAS, registered as of January 18, 2016 for goods and services in Classes 9, 38, and 41, such as services related to gambling;

- The International Trademark registration No. 1291744 for LEOVEGAS, designating the United States of America, Mexico, Australia, Colombia, and Norway, registered as of February 5, 2016 for goods and services in Classes 9, 38, and 41, such as computer games entertainment software.

The Complainant is also the registrant of among others the domain name <leovegas.com> since February 12, 2011, which it uses for its official website.

The disputed domain name was registered on September 18, 2016 and it does not resolve to an active page.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical to a trademark in which the Complainant has rights, as the disputed domain name incorporates the Complainant’s trademark in its entirety, with the addition of the country-code Top-Level Domain (“ccTLD”) “.ro”. The TLD is a standard requirement and must be disregarded under the first element, the confusing similarity test.

In addition, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, as it has not been authorized by the Complainant to use its trademark and the Respondent does not have any trademark rights in the name LEOVEGAS. Also, there is no evidence that the Respondent is commonly known by the disputed domain name. Moreover, the Respondent cannot establish rights in the disputed domain name under paragraph 4(c)(ii) of the Policy as it has never made any use of, or demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name currently resolves to an inactive webpage.

The Complainant also contends that the disputed domain name has been registered in bad faith, as the Complainant’s rights in its trademark LEOVEGAS have been registered before the registration of the disputed domain name, the Complainant’s online gaming website is one of the world’s most popular online casino service and the Respondent was fully aware of the Complainant’s activity and trademark, given that the trademark is distinctive by nature and must be considered well-known. Moreover, the Complainant argues that the Respondent holds a national trademark registration containing the word “casino” for services competing with those offered by the Complainant, it is active in the same field as the Complainant and was hence undoubtedly aware of the Complainant’s earlier trademark rights in the name LEOVEGAS. The Complainant also contends that by registering the Complainant’s renowned LEOVEGAS trademark in a domain name, the Respondent was seeking to create a likelihood of confusion with the said trademark in order to intentionally attempt to attract Internet users on its website and capitalize on the Complainant’s trademark rights and reputation.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“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” paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the LEOVEGAS trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

In this case, the disputed domain name wholly incorporates the Complainant’s registered trademark LEOVEGAS. It is well accepted by UDRP panels that a ccTLD, such as “.ro”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0 and also e.g. Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001.

This Panel concludes that the disputed domain name is identical to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(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 it 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 consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has established that it is the owner of the trademark LEOVEGAS, and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the said trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “leovegas”. See ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The fact that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the said trademarks have been used since 2012, well before the registration of the disputed domain name indicate not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is in some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.

The Complainant’s LEOVEGAS trademark, included in the disputed domain name, has been used in commerce prior to the registration of the disputed domain name. Also, from the unrebutted assertions by the Complainant it appears that the Respondent holds a Czech national trademark for “MYPROFIT CASINO.COM” with design element, registered as of June 5, 2013 for goods and services in Classes 9, 35, 38, and 41, such as operation of betting games in a casino, operation of online games, internet portal providing players for partner casinos, software for betting games. The mentioned trademark includes “casino”, a term connected to the field of activity of the Complainant. Under these circumstances, it is unlikely that the Respondent was unaware of the Complainant’s rights when it registered the disputed domain name.

The Respondent provided no explanation as to why it registered the disputed domain name.

The Respondent has failed to make to date any genuine use of the disputed domain name. Passive holding of the disputed domain does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith, as it has been established in prior UDRP decisions (e.g., Koç Holding A.S. v. KEEP B.T, WIPO Case No. D2009-0938).

Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain name will be considered to be a bad faith registration: “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 following factors were considered by the Panel as indicative of bad faith registration and use of the disputed domain name:

- the Respondent’s failure to respond to the Complaint, even though awarded a possibility to do so. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN, WIPO Case No. D2013-2100.

- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy; nor did the Respondent provide an answer to the cease and desist letter sent by the Complainant;

- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.

In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain name.

Consequently, the Panel ascertains that the disputed domain name was registered and is being used in bad faith.

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 <leovegas.ro> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: December 2, 2020