Complainants are Jackpotjoy Operations Ltd of Nassau, Bahamas (“Complainant No. 1”) and Dumarca Holding Limited of Sliema, Malta (“Complainant No. 2”), represented by Brimondo AB, Sweden.
Respondent is On behalf of jakcpotjoy.com OWNER c/o whoisproxy.com of Alexandria, Virginia, United States of America / Tulip Trading Company of Charlestown, Saint Kitts and Nevis.1
The disputed domain name <jakcpotjoy.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2018. On June 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 5, 2018, 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 June 5, 2018.
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 June 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2018.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on July 9, 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.
Complainant No. 1 is a company domiciled in the Bahamas while Complainant No. 2 is domiciled in Malta. Complainants are subsidiaries of the Jackpotjoy Group PLC which is active in the online gaming industry through a variety of brands, inter alia, “Jackpotjoy”.
Complainants have provided evidence that they are the registered owners of numerous trademarks relating to the designation “jackpotjoy”, including, inter alia:
- Word mark JACKPOTJOY, European Intellectual Property Office (EUIPO), Registration No.: 009114166, Registration Date: December 6, 2010, Owner: Complainant No. 1, Status: active;
- Word-/device mark JACKPOTJOY, EUIPO, Registration No.: 011729134, Registration Date: September 25, 2013, Owner: Complainant No. 1, Status: active;
- Word mark JACKPOTJOY, World Intellectual Property Organization (WIPO), Registration No.: 1119151, Registration Date: November 15, 2011, Owner: Complainant No. 2, Status: active;
- Word-/device mark JACKPOTJOY, WIPO, Registration No.: 1172760, Registration Date: May 29, 2013, Owner: Complainant No. 2, Status: Active.
Respondent, a company residing in St. Kitts and Nevis, registered the disputed domain name on May 17, 2017. As of the time of the rendering of this decision, the disputed domain name resolves to a standardized Pay-Per-Click (“PPC”) website with hyperlinks to a variety of third parties’ websites in the online gaming industry.
Complainants contacted Respondent by cease-and-desist notices of April 24, 2018 and May 15, 2018 to which Respondent did not reply.
Complainants request that the disputed domain name be transferred to Complainant No.1.
Complainants contend to have authorized a company Profitable Play Limited to use their JACKPOTJOY trademark to run a website at “www.jackpotjoy.com” offering online betting and gaming services. This website was founded in 2001 in the United Kingdom of Great Britain and Northern Ireland and has meanwhile 4 million members. During the 12 months until April 2018, the website had over 7 million users with over 50 million sessions; it has won several awards since 2007, including the EGR Operator Awards in 2010, 2011, 2012, 2013, and 2015 in various categories.
Complainants submit that the disputed domain name is confusingly similar to Complainants’ JACKPOTJOY trademark as it differs therefrom only by the switched letters “ck” in “jack”, thus creating a typical typo-squatted domain name. Moreover, Complainants assert that Respondent has no rights or legitimate interests in respect of the disputed domain name since: (1) Respondent is not sponsored by or legitimately affiliated with Complainants and has not been given permission by them to use their JACKPOTJOY trademark in any way; (2) Respondent apparently owns no trademark rights that reflect the disputed domain name; and (3) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, but on the contrary to run a revenue website containing hyperlinks that divert Internet users to Complainants’ competitors in the online gaming industry. Finally, Complainants argue that Respondent registered and is using the disputed domain name in bad faith since: (1) Complainants’ JACKPOTJOY trademark has received over the years a good reputation and a well-known status so that it is hard to believe that Respondent was not aware of the value of Complainants’ JACKPOTJOY trademark when registering the disputed domain name; (2) Respondent uses the disputed domain name to run a revenue website containing hyperlinks that divert Internet users to Complainants’ competitors in the online gaming industry; and (3) Respondent apparently has set up an email address including the disputed domain name which can be used e.g., for phishing activities.
Respondent did not reply to Complainants’ contentions.
Under paragraph 4(a) of the Policy, Complainants carry the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainants, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.
As a procedural comment, Complainants, belonging to the same group of companies, both enjoy trademark rights in the JACKPOTJOY trademark and, therefore, have a specific common grievance against Respondent why it is appropriate in the case at hand and in line with the UDRP Panelists’ majority view to accept this Complaint filed by multiple complainants against a single respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).
Having said so, the Panel comes to the following decision:
The Panel concludes that the disputed domain name <jakcpotjoy.com> is confusingly similar to the JACKPOTJOY trademark in which Complainants have rights.
The disputed domain name incorporates the JACKPOTJOY trademark in its entirety with the simple misspelling of switching the letters “c” and “k” in the term “jack”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). The fact that the disputed domain name obviously includes a simple misspelling of Complainants’ JACKPOT trademark is not at all inconsistent with such finding of confusing similarity. Typo-squatted domain names are, on the contrary, intended to be confusing so that Internet users, who unwittingly make common type errors, will enter the typo-squatted domain name instead of the correct spelled trademark (see e.g. National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).
Therefore, Complainants have established the first element under the Policy as set forth by paragraph 4(a)(i).
The Panel is further convinced on the basis of Complainants’ undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent obviously has not been authorized to use Complainants’ JACKPOTJOY trademark, either as domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “jackpotjoy”. Finally, Respondent obviously has neither used the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, the disputed domain name obviously resolves to a typical PPC website showing a variety of hyperlinks which redirect to numerous of Complainants’ competitors in the online gaming business. UDRP panels agree that using a domain name to host a PPC website does not present a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s trademark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9).
Accordingly, Complainants have established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating such rights or legitimate interest (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.
Therefore, the Panel finds that Complainants have also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The fact that the disputed domain name is an obvious typo-squatted version of Complainants’ JACKPOTJOY trademark by switching the letters “c” and “k” in the term “jack” is a clear indication that Respondent registered the disputed domain name in full knowledge said trademark. Furthermore, redirecting the disputed domain name to a typical PPC website which shows a variety of hyperlinks redirecting, in turn, to numerous of Complainants’ competitors in the online gaming business for the purpose of generating PPC revenues, therefore, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainants’ JACKPOTJOY trademark as to the source, sponsorship, affiliation or endorsement of this website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent made use of a WhoIs privacy shield, apparently in an attempt to conceal its true identity. This fact at least throws a light on Respondent’s behavior which supports the conclusion of a bad faith registration and use of the disputed domain name.
Therefore, the Panel finds that Complainants have also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <jakcpotjoy.com> be transferred to Complainant No. 1.
Stephanie G. Hartung
Sole Panelist
Date: July 18, 2018
1 It is evident from the case file that whoisproxy.com is a privacy protection service and that Tulip Trading Company of Charlestown, Saint Kitts and Nevis, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.