The Complainants are Jet Management Group Limited, Plain Support S.A. and Jackpotjoy Operations Ltd. of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Brimondo AB, Sweden.
The Respondent is Peter Smith of Douglas, Isle of Man, United Kingdom.
The disputed domain names “johnverajohn.com”, “verajohnverajohn.com”, “wwwcostabingo.co”, “wwwcostabingo.com”, “wwwjackpotjoy.co”, “wwwsingbingo.co”, “wwwsingbingo.com” and “wwwverajohn.co” (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2017. On December 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 20, 2017, 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 Complainants filed an amended Complaint on December 22, 2017.
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 January 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2018.
The Center appointed David Taylor as the sole panelist in this matter on March 15, 2018. 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.
The Complainants are subsidiaries of Jackpotjoy Group PLC which is the parent company of an online gaming group that provides entertainment to a global consumer base through the brands of its companies.
The Complainants have registered trade mark rights in connection with online bingo and casino games. As such, Jet Management Group Limited is the owner of the trade marks COSTA BINGO and SING BINGO, for instance: United Kingdom Trade mark No. 2572469, COSTA BINGO, registered on May 20, 2011 and United Kingdom Trade mark No. 2572468, SING BINGO, registered on May 20, 2011. “Costa Bingo” is an online betting platform available at “www.costabingo.com” launched in 2009. “Sing Bingo” is an online betting platform available at “www.singbingo.com” that provides casino slots and bingo.
Plain Support S.A. is the owner of, inter alia, European Union Trade mark No. 9453333, VERA&JOHN, registered on February 2, 2011 (which it licenses to the operator Dumarca Gaming Limited) in connection with online betting and gaming services. These services are provided through the website “www.verajohn.com”, which is part of a fully integrated global online casino that operates under the core brand of VERA&JOHN.
Jackpotjoy Operations Ltd is the owner of, inter alia, European Union Trade mark No. 9114166, JACKPOTJOY, registered on December 6, 2010. Jackpotjoy Operations Ltd authorizes Profitable Play Limited to use the trade mark JACKPOTJOY for use on the website “www.jackpotjoy.com” which was founded in 2001 in the UK. Jackpotjoy provides online gaming such as, bingo, casino and slots.
The Respondent is an individual based in the United Kingdom. The Respondent has been involved in at least 16 cases under the Policy. See, for instance, Tailby Limited v. Peter Smith, WIPO Case No. D2017-1281 and Virgin Enterprises Limited v. Peter Smith, WIPO Case No. D2017-0854.
The Domain Name <wwwverajohn.co” was registered on March 25, 2017.
The Domain Names <wwwcostabingo.co”, “wwwcostabingo.com>, “wwwjackpotjoy.co”, “wwwsingbingo.co”, “wwwsingbingo.com” were registered on March 27, 2017.
The Domain Names <johnverajohn.com> and <verajohnverajohn.com> were registered on September 4, 2016.
The Domain Names are redirecting to the website “www.marketsworld.com”, a binary options trading platform. The following statement appears on the website: “Markets World” is “the fastest way to earn cash in the financial markets. Your friends will thank you for introducing them to the highest profit returns online”. The website also contains the following statement: “The binary options offered by this site are games of skill licensed and regulated under fixed odds betting by the Isle of Man GSC”.
The Complainants submit that the Domain Names are confusingly similar to trade marks in which they have rights. The Complainants argue that the Domain Names <verajohnverajohn.com> and <johnverajohn.com> are confusingly similar to the VERA&JOHN trade mark as they consist of the terms “Vera” and “John”, without the ampersand, and repeat one of the terms. The Complainants further state that the Domain Names “wwwverajohn.co”, “wwwcostabingo.co”, “wwwcostabingo.com”, “wwwsingbingo.co”, “wwwsingbingo.com” and “wwwjackpotjoy.co” are confusingly similar to their VERA&JOHN, COSTA BINGO, SING BINGO and JACKPOTJOY trade marks, as the addition of the “www” without the dot and “.co” or “.com” extensions are insufficient to dispel the confusing similarity with the Complainants’ trade marks.
The Complainants further submit that the Respondent has no rights or legitimate interests in respect of the Domain Names. In this regard, the Complainants state that there is no evidence that the Respondent has used the Domain Names in connection with a bona fide offering of goods or services, as the Respondent is currently using them to redirect Internet users to a binary options trading platform available at “www.marketsworld.com”.
The Complainants further state that the Respondent is not commonly known by the Domain Names and does not own any trade mark in the terms VERA&JOHN, JACKPOTJOY, SING BINGO, and COSTA BINGO. The Complainants further submit that the Respondent is not sponsored by or legitimately affiliated with any of the Complainants in any way and has not been authorised by any of the Complainants to register or use domain names that are identical or confusingly similar to the Complainants’ trade marks. None of the Complainants have a relationship with the Respondent.
The Complainants assert that the Domain Names were registered and are being used in bad faith. The Complainants state that there is no doubt that the Respondent was aware of the fame of the trade marks of the Complainants at the time of registration, especially as all these trade marks are not only registered but are also famous and well-known as in United Kingdom, where the Respondent resides, and the Domain Names are misspelled versions of the Complainants’ trade marks. The Complainants further argue that the Respondent’s use of the Domain Names to mislead Internet users and redirect them to the website “www.marketsworld.com”, an online binary options trading platform, is evidence of the Respondent’s awareness and knowledge of the Complainants’ trade marks. The Complainants also submit that the Respondent’s behavior of registering typosquatted Domain Names is in and of itself evidence of bad faith registration and use.
The Complainants further highlight that the Respondent has engaged in a pattern of registering over 3,000 domain names, most of which consisting of misspelled versions of well-known trade marks of online betting and gambling companies (for instance, “wwwbetsson.co”, <europe-betr.com”, <betfairir.com>, <safebetsafe.com>), and using them to mislead Internet users and redirect them to the website “www.marketsworld.com”.
The Complainants further highlight that the Respondent has been involved in at least 16 cases under the Policy involving domain names reproducing well-known online betting companies and some of them were also being used to redirect Internet users to the website “www.marketsworld.com”. See, Tailby Limited v. Peter Smith, WIPO Case No. D2017-1281 (involving more than 70 misspelled domain names) and Virgin Enterprises Limited v. Peter Smith, WIPO Case No. D2017-0854.
The Complainants further submit that they contacted the Respondent to assert their trade mark rights, first in August 8, 2017 and then a second time with a cease & desist letter in August 17, 2017. However, the Respondent failed to respond to the Complainants’ email messages, and did not cease to use the Domain Names.
The Respondent did not reply to the Complainants’ contentions.
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Names, the Complainants must prove the following three elements:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainants’ contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainants, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the above into consideration the Panel finds as follows:
The Complainants have jointly filed the Complaint on the basis that they are subsidiaries of Jackpotjoy Group PLC, the parent company of an online gaming group.
Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
Section 4.11.1 of the WIPO Overview 3.0 provides as follows regarding multiple complainants filing against a single respondent: “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
The Complainants assert, but have not submitted evidence, that they are subsidiaries of the same parent company. However, a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case. Section 4.8 of the WIPO Overview 3.0. Accordingly, the panel has visited the website “www.jackpotjoyplc.com” and has found evidence showing that the Complainants are indeed subsidiaries of Jackpotjoy Group PLC. The Panel therefore accepts that the Complainants are subsidiaries of the same parent company.
Based on the Panel’s findings and on the record, the Panel accepts the Complainants’ request for consolidation on the basis that (i) the Complainants are subsidiaries of Jackpotjoy Group PLC and are the target of common conduct by the Respondent, consisting of a pattern of registering domain names that are confusingly similar to the Complainants’ respective trade marks, and which clearly affects their individual rights and interests in a similar fashion and (ii) allowing the Complainants to bring a single Complaint against the Respondent would be appropriate and balanced as well as consistent with the aim of the Policy to combat cybersquatting in as efficient and cost effective a manner as is fairly possible.
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainants have established relevant trade mark rights. The Complainants have supplied evidence that they have registered trade mark rights in VERA&JOHN, COSTA BINGO, SING BINGO and JACKPOTJOY in connection with online betting and gaming services. The Panel is therefore satisfied that the Complainants have established relevant trade mark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Names are identical or confusingly similar to the Complainants’ trade marks. The Domain Names <verajohnverajohn.com> and <johnverajohn.com> reproduce the Complainants’ VERA & JOHN trade mark without the ampersand, and repeat one or both of these terms. The Domain Names “wwwverajohn.co”, “wwwcostabingo.co”, “wwwcostabingo.com”, “wwwsingbingo.co”, “wwwsingbingo.com” and “wwwjackpotjoy.co” also reproduce the Complainants’ VERA&JOHN (albeit without the ampersand), COSTA BINGO, SING BINGO and JACKPOTJOY trade marks. The addition of the letters “www” without the dot is insufficient to dispel the confusing similarity with the Complainants’ trade marks.
The Top-Level Domain, such as “.co” and “.com”, is generally disregarded under the identity or confusing similarity test as it is a functional element. See section 1.11 of the WIPO Overview 3.0.
The Panel therefore finds that the Domain Names are confusingly similar to the Complainants’ trade marks.
Accordingly, the Complainants have satisfied paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires the Complainants to demonstrate that the Respondent has no rights or legitimate interests in the Domain Names. Paragraph 4(c) of the Policy sets out the following non-exhaustive list of circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
A complainant is required to establish a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel has considered the evidence put forward by the Complainants and considers that the Complainants have made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Names and that, as a result of his default, the Respondent has failed to rebut such a showing.
The Complainants have stated that the Respondent has not been authorised to make any use of their trade marks. Neither is there any evidence that the Respondent has ever been commonly known by the Domain Names, in accordance with paragraph 4(c)(ii) of the Policy, or ever been associated or affiliated with the Complainants.
The Respondent’s use of the Domain Names, which are confusingly similar to the Complainants’ trade marks, to redirect to the website “www.marketsworld.com”, a binary options trading platform, cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as the Respondent is seeking to take advantage of the Complainants’ rights by diverting customers searching for the Complainants to the Respondent’s own website, which is clearly commercial in nature.
Finally, the Respondent’s lack of rights or legitimate interests in the Domain Names may be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Names.
Accordingly, the Complainants have satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainants to demonstrate that the Domain Names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The Complainants have trade mark rights in VERA&JOHN, COSTA BINGO, SING BINGO and JACKPOTJOY in connection with online betting and gaming services that predate the registration date of the Domain Names. The Complainants’ trade marks are neither generic nor descriptive but rather highly distinctive. Given the nature of the Domain Names, which are confusingly similar to the Complainants’ trade marks, and the fact that both Parties are based in the United Kingdom, the Panel is convinced that, on balance, the Respondent had the Complainants in mind at the time of registration of the Domain Names. Furthermore, the Panel is also of the view that the inclusion of the “www” prefix in the Domain Names “wwwverajohn.co”, “wwwcostabingo.co”, “wwwcostabingo.com”, “wwwsingbingo.co”, “wwwsingbingo.com” and “wwwjackpotjoy.co” has been a deliberate attempt by the Respondent to take advantage of a common mistake made by Internet users searching for the Complainants’ official websites and is also strongly indicative of awareness of the Complainants’ rights. Therefore, the Panel finds the Respondent registered the Domain Names in bad faith seeking to profit from the Complainants’ rights as shown by the Respondent’s subsequent use of the Domain Names.
The Panel further finds that the Respondent’s use of the Domain Names, which are confusingly similar to the Complainants’ trade marks, to redirect Internet users to a binary options trading platform demonstrates that the Respondent was intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainants’ trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.
Finally, the Panel draws an adverse inference from the Respondent’s failure to respond to the Complainants cease and desist letter, his failure to take part in the present proceedings and his prior history of cybersquatting. See Tailby Limited v. Peter Smith, WIPO Case No. D2017-1281 (involving more than 70 misspelled domain names) and Virgin Enterprises Limited v. Peter Smith, WIPO Case No. D2017-0854.
The Panel finds that the Domain Names were registered and are being used in bad faith.
Accordingly, the Complainants have satisfied paragraph 4(a)(iii) of the Policy.
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, <johnverajohn.com>, <verajohnverajohn.com>, “wwwcostabingo.co”, “wwwcostabingo.com”, “wwwjackpotjoy.co”, “wwwsingbingo.co”, “wwwsingbingo.com”, “wwwverajohn.co” be transferred to the Complainants.
David Taylor
Sole Panelist
Date: March 27, 2018