The Complainant is Mr. Green Limited of Sliema, Malta, represented by WH Partners, Malta.
The Respondent is ido raviv of West Byfleet, United Kingdom of Great Britain and Northern Ireland (with Domains By Proxy, LLC of Scottsdale, Arizona, United States of America, as second-named Respondent).
The Disputed Domain Name <mrgreenslots.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2013. On November 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2013, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the original Complaint. The Center sent an email communication to the Complainant on November 12, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the original Complaint. The Complainant filed an amended Complaint on November 14, 2013, the latter document being treated by the Panel as the Complaint herein.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2013.
The Center appointed Philip N. Argy as the sole panelist in this matter on January 6, 2014. 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.
All other administrative requirements appear to have been satisfied.
The following facts, taken from the Complaint, remain uncontested.
The Disputed Domain Name was originally registered on June 26, 2012 in the name of the first-named Respondent. After he had received the original cease and desist letters from the Complainant’s legal representatives the Disputed Domain Name was transferred to the second-named Respondent in whose name the registration remained until the original notification of these proceedings was made. The registration particulars were then amended to show the first-named Respondent as the sole registrant of the disputed domain name and, so far as the Panel is concerned, the first-named Respondent is the sole proper respondent to these proceedings.
The Complainant has provided entertainment services and, in particular, gaming, betting and gambling services, throughout Europe since January 2008. It operates through a number of websites, including “www.mrgreen.com”, which has been the highest ranked online casino for five years in the Swedish magazine Internet world’s ranking of Sweden’s top 100 sites. The Complainant’s group of companies has posted annual growth in excess of 70%.
Complainant holds the Community Trademark MR GREEN in a number of classes covering automatic gaming machines, gambling, casino facilities, entertainment and wagering services, and the like. The Complainant’s application for this CTM was filed on February 8, 2008 and registered on February 19, 2009.
The Complainant relies upon the three grounds of the Policy, namely, that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that the Disputed Domain Name was registered and is being used in bad faith.
In support of the first ground, Complainant submits that the Disputed Domain Name comprises the entirety of the Complainant’s CTM MR GREEN, which is valid and distinctive, together with the word element “slots” which refers to the fact that the Respondent’s website is being used to provide gambling services including slot machines, and to link to other websites providing such services in direct competition with the Complainant. The services being provided under the Disputed Domain Name are identical or at least highly similar to those in relation to which the Complainant’s Mark is registered and which the Complainant offers through its own websites.
In support of the second ground, the Complainant notes that the Respondent has not been authorised or licensed by the Complainant to use its trademark and nor is he or any entity or business he is involved in commonly known by the Disputed Domain Name or a name corresponding to that. The Complainant notes that the Complainant’s trademark was registered long before the Disputed Domain Name was acquired by the Respondent and that the Respondent has not applied for nor registered a Mark identical or similar to the Disputed Domain Name. Moreover, the Disputed Domain Name is being used to provide gambling services, including slot machines, to provide entertainment information services, and to link to the Respondent’s own site known as 7RED. The fact that a domain name comprising the Complainant’s Mark is being used to provide services in direct competition with those offered by the Complainant, and also to link Internet visitors to direct competitors of the Complainant, means that the Respondent is not making a legitimate, noncommercial use of the Disputed Domain Name and/or using it in connection with a bona fide offering of goods or services, and is in fact using the Disputed Domain Name and the Complainant’s Mark to mislead and direct Internet users to competitors of the Complainant. The fact that the Respondent transferred the Disputed Domain Name to privacy shield entity immediately after cease and desist letters were served on it by the Complainant illustrates that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and only intends to use it to mislead Internet users searching for the Complainant’s websites.
The Complainant supports its third ground by repeating the submissions made in support of the second ground and submits that the Respondent’s registration and use of the Disputed Domain Name is an opportunistic endeavour to cash in on the Complainant’s goodwill, and to attract for commercial gain Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s trade Mark. The Complainant also relies on the Respondent’s transfer of the Disputed Domain Name to the privacy shield immediately after cease and desist letters were served on him by the Complainant as support for a finding of bad faith.
The Complainant submits that the Respondent is engaging in or has authorised others to engage in, typosquatting. This submission is supported by reference to four other domain names registered in the name of the Respondent:
<mrggreen.com>
<mrgrreen.com>
<mrgreem.com>
<mrgreenn.com>
The Complainant also notes that the Respondent has failed to respond to the Complainant’s cease-and-desist letters and argues that this is evidence of bad faith in accordance with well-established UDRP authority.
The Respondent did not reply to the Complainant’s contentions.
Despite the Respondent’s failure to file a Response in the proceedings, the Complainant bears the onus of making good its submissions and persuading the Panel that the three grounds of its Complainant are established, at least on the balance of probabilities.
The test under this ground of the Policy is quite narrow. It involves no more than a comparison of the character string comprising the Disputed Domain Name with the trademark relied upon by the Complainant. In particular, the contents of the website to which the Disputed Domain Name resolves is not relevant under this ground of the Policy.
The Panel is entirely satisfied that the Disputed Domain Name embeds the whole of the Complainant’s registered trademark MR GREEN. The main question is whether the addition of the word “slots” is sufficient to differentiate the Disputed Domain Name from the Complainant’s trademark. Like many other UDRP panels, this Panel has long expressed the view that where the only additional matter added to a trademark denotes or connotes the goods or services in respect of which a complainant’s Mark is registered, it is incapable of preventing the Disputed Domain Name from at least being confusingly similar to that trademark. In this case, the Panel is entirely satisfied that the word “slots “is the term commonly used to describe slot machines of the kind found in a physical casino as well as of the virtual kind found in online casinos operated by both the Complainant and the Respondent and in respect of which the Complainant’s trademark is registered.
Accordingly, the Panel is comfortably satisfied that the Disputed Domain Name is confusingly similar to the Complainant’s Community trademark MR GREEN.
Where the trademark rights relied upon by a complainant are not particularly strong, there is scope for a respondent to persuade a panel that the use of identical or similar words is legitimate. In this case, the Complainant’s trademark MR GREEN, particularly in view of its extensive use and reputation in the field of online gambling, including virtual slot machines, is almost impossible for anyone else legitimately to approbate. In the view of the Panel, the Respondent might plausibly have argued that its products or services possessed some environmentally-friendly attributes but, by remaining silent, it has deprived herself of any such opportunity.
In the circumstances, the Panel has been unable to identify any legitimate interests the Respondent might be able to demonstrate in respect of the Disputed Domain Name, nor any rights that might support his position. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
When taken as a whole, in the context of the Complainant’s extensive reputation in Europe, the Respondent’s registration of the Disputed Domain Name can only have been in bad faith. His use of the “slots” suffix demonstrates beyond doubt his awareness of the Complainant and the nature of the Complainant’s business so that, when added to the Complainant’s MR GREEN trademark, its seals his fate so far as the third ground of the Policy is concerned. Furthermore, whilst there have been no findings against the Respondent cited to the Panel in relation to the four alleged instances of typosquatting, the Panel can certainly take them into account in fortifying its view of the Respondent’s bad faith.
The Respondent’s conduct has a degree of flagrancy about it that is consistent only with bad faith. His cyberflight of the Disputed Domain Name to the privacy shield upon receipt of the Complainant’s cease and desist letters can only have been calculated to impede the Complainant’s legitimate attempts to enforce its rights and his role as chief executive of 7RED, a leading competitor of the Complainant, just adds insult to injury.
The Panel is entirely satisfied that the Disputed Domain Name was both registered in bad faith and continues to be used in bad faith.
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 <mrgreenslots.com> be transferred to the Complainant.
Philip N. Argy
Sole Panelist
Date: January 20, 2014