UDRP Perspectives has been updated with new perspectives on the topics of Trademark Infringement and Reputation, written by Igor Motsnyi and Zak Muscovitch. UDRP Perspectives welcomes you to review current jurisprudence as it relates to these two important topics or on any of the 50 topics that it covers. The goal of UDRP Perspectives is to provide guidance in the application of the UDRP through up-to-date case law and commentaries. Whether you are a UDRP Panelist looking for inspiration and guidance, counsel looking for helpful case citations and insight, or a party looking to better understand the nature and scope of UDRP, UDRP Perspectives can be a useful resource. If you are a Panelist and you share a perspective with the authors, you are welcome to join the growing ranks of Panelists who cite UDRP Perspectives in their decisions.
Four explanations for the nature of names by Mr. Sten Lillieström, Next Venture (LinkedIn)
For the duration of the existence of domain registrant rights, a common argument for good faith in the face of existing trademark rights has been whether the contested string is a dictionary entry. Is this an appropriate measure for a domain arbitration panel or court?
Even though no mention of the dictionary word “dictionary” is present in any guiding statute related to trademarks and domains, it is nevertheless everpresent in actual practice related to cybersquatting. UDRP decisions for example are littered with the term, and it is commonly invoked for much of the same reason. (Ironically on both sides of the aisle, albeit with different aims.) Continue Reading here.
We hope you will enjoy this edition of the Digest (vol. 5.4) as we review these noteworthy recent decisions with expert commentary. (We invite guest commenters to contact us):
‣ Reputation is Everything (metarisk .com *with commentary)
‣ Panel: Not a “Scintilla of Evidence” that Complainant is Well-Known Globally (hive-pt .com *with commentary)
‣ “Schrödinger’s Jurisdiction” Issue in Crypto .com v. Cripto .com (cripto .com *with commentary)
‣ Asking Price Alone Cannot be the Basis for a Finding of Bad Faith (silentnights .org *with commentary)
‣ Domain Name Use for Online Casino Since March 2020, Establishes Legitimate Interests (spinzcasino .com)
Reputation is Everything
Guy Carpenter & Company, LLC v. Chun Xie, WIPO Case No. D2024-4353
<metarisk .com>
Panelists: Mr. Jeremy Speres (Presiding), Mr. Evan D. Brown and Mr. David E. Sorkin
Brief Facts: The US-based Complainant company claims to provide “risk and reinsurance intermediary services” and has since 2011, offered a risk and capital management decision-making tool under its METARISK mark, apparently “worldwide, including Singapore.” It owns a trademark registration for its METARISK mark covering financial, insurance, and reinsurance services in various jurisdictions, including the United States (registered: March 26, 2002; first use: 1995); and Singapore (January 11, 2024). The Respondent is a shareholder and director of MTR Labs PTE Ltd. (2020 in Singapore) and also of MTR Labs Limited, (2021 in the British Virgin Islands). These two entities operate a risk financing start-up business under the METARISK mark specializing in digital assets and Web3 technology. The disputed Domain Name was acquired by the Respondent on February 20, 2023, for SGD 33,409 and currently resolves to a website for the Respondent’s METARISK business.
The Complainant alleges that the disputed Domain Name was registered after the Complainant’s United States trademark was registered, which constitutes constructive notice of the Complainant’s rights; and that it is used to offer services similar to those covered by the Complainant’s trademarks and Internet users are likely to be confused, thus constituting trademark infringement. The Respondent contends that the disputed Domain Name consists of two dictionary words that describe the Respondent’s business and that the Complainant has provided no evidence of a reputation in its mark, and no evidence showing that the Respondent, based in Singapore, was or should have been aware of the Complainant’s mark. The Complainant’s case is one of trademark infringement, which is beyond the scope of the Policy.
Held: The Panel’s limited Internet searches show that the Complainant’s mark does appear to be in use, but it is not clear that the Complainant’s mark has at any point enjoyed a reputation anywhere, including in Singapore, or that the mark was in use in Singapore before the Respondent acquired the disputed Domain Name. There is no direct evidence in the record showing the Respondent’s knowledge or targeting of the Complainant, and there are no other clear indicia of cybersquatting. Moreover, the Respondent has presented evidence of various third parties using the mark, pre-dating any of the Complainant’s trademark registrations. The fact that the mark has been used by various third parties does not ultimately vest the Respondent with a right or legitimate interest in the disputed Domain Name as such, but it does lend credence to the Respondent’s assertion that the disputed Domain Name is attractive for its semantic value which is descriptive of the Respondent’s business and was chosen for this reason.
It is noteworthy that, at the time the Complainant secured its earliest trademark registration in the early 2000s, Web3 and its link with the term “meta” could not have been contemplated by the Complainant. This tends to show that the Complainant adopted the mark for a meaning other than that contemplated by the Respondent, which supports the contention that the mark is capable of various meanings and may be attractive to different parties for different reasons not having to do with any association of the mark with the Complainant. Although there is some commonality between the Parties’ respective businesses in the overarching risk management space, the Parties do not appear to be competitive and appear to target different sectors and clients. In addition, the Complainant’s reliance on constructive notice is misplaced. On balance, the Complainant’s case may be one of alleged trademark infringement as opposed to bad faith cybersquatting as required under the Policy and stands to be denied.
Complaint Denied
Complainant’s Counsel: Seyfarth Shaw LLP, United States
Respondent’s Counsel: MOTSNYI IP GROUP, Serbia
Case Comment by ICA General Counsel, Zak Muscovitch: The UDRP requires intent, which distinguishes it from trademark infringement cases where intent is not required (see UDRP Perspectives at 0.19). As a result, there is generally no “constructive notice” under the Policy (see UDRP Perspectives at 3.4). This means that reputation plays a crucial role, and the core focus of the UDRP is on targeting (see UDRP Perspectives at 3.3).
As the Panel observed, “it [was] not clear that the Complainant’s mark ha[d] at any point enjoyed a reputation anywhere” and that “there [was] no direct evidence in the record showing the Respondent’s knowledge or targeting of the Complainant”. Without evidence of reputation which could enable targeting of the Complainant, the Complainant could prove bad faith intentionality in registering the Disputed Domain Name. As the Panel noted, this case may be a case of “alleged trademark infringement as opposed to bad faith cybersquatting as required under the Policy” and was therefore dismissed.
One other interesting aspect of this exceptionally well-reasoned decision was the Panel’s treatment of evidence of third party usage of METARISK in connection with various goods and services in other countries, including trademark registrations that pre-dated the Complainant’s own trademark registrations. Notably, the Panel stated that logically, “even if the Respondent had conducted clearance searches prior to adopting the mark, it would not necessarily have been led to the conclusion that the disputed domain name would abuse the Complainant’s rights” [emphasis added].
This is a particularly salient point as some Panels will unfortunately end their analysis after determining that a Respondent failed to conduct a trademark clearance search before registering the Domain Name and not consider the fact that where there are multiple users of a mark, it “lends credence”, as the Panel put it, to the Respondent’s assertion that the disputed domain name was attractive for reasons that have nothing to do with the Complainant.
The point, which the Panel appreciated, is that the existence of third-party usage of the same mark does not itself mean that the Respondent automatically has a right to it as well, but rather can be weighty evidence lending support to the credibility of a Respondent’s selection of a domain name. In other words, if the Domain Name corresponds to a mark that is not exclusively associated with the Complainant, it can often mean that the Complainant was not the reason or target of the registration, but rather it was, as was the case here, a combination of two common words that are suggestive of the Respondent’s business.
Panel: Not a “Scintilla of Evidence” that Complainant is Well-Known Globally
Solar Hero GmbH v. SINCRONIELEVADA UNIPESSOAL, WIPO Case No. D2024-4861
<hive-pt .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Complainant is a limited liability company based in Germany and the owner of the EU registration for the word mark TRADINGHIVE, registered on September 9, 2023, covering financial services, banking solutions and technology-driven finance. The Complainant asserts but does not provide evidence that such a mark is ‘well-known’. The disputed Domain Name was registered on February 11, 2024. The Respondent states that it is an active proprietary or “prop trading” (PT) company incepted at the end of 2022, and operating under the disputed Domain Name since the first quarter of 2024, providing an online platform for traders at various skill levels. On November 11, 2024, the Complainant’s representative wrote a cease and desist letter to the Respondent notifying the Respondent of the Complainant’s trademark stating that the Respondent is offering trading and financial services-related services under the sign “Hive PT” to customers across Europe in violation of said mark.
The Complainant alleges that the Respondent knew or should have known of the Complainant’s “well-known and globally present trademark” when it registered the disputed Domain Name, that it must be assumed that the Respondent intentionally attempted to attract Internet users to its website for commercial gain and that there is a high likelihood that Internet users may be confused given the identical services offered under an identical domain name. The Respondent contends that it had no knowledge of the Complainant when it registered and used the disputed Domain Name and that “hive” is a dictionary word commonly used in various industries to represent communities, social bonding, and connections. The Respondent further contends that the Complainant is not a unique user of the terms “Hive” and “Trading” in Class 36, financial services and that numerous third parties use these terms in a crowded market, suggesting the scope of protection for the Complainant’s mark is limited.
Held: The Respondent asserts that it had no such knowledge or intent to target the Complainant’s trademark, and demonstrates by reference to multiple registered trademarks and screenshots of websites that the term “hive” (the only aspect of the Complainant’s mark that is repeated in the disputed Domain Name) is in widespread use in connection with financial services. The word “hive” does not surprise the Panel, given that it is a dictionary term that can denote a place, such as a hub, where busy people gather to perform work, as in the phrase “a hive of activity”.
In these circumstances, the Complainant’s submissions that the disputed Domain Name was chosen by the Respondent in order to impersonate the Complainant or to suggest an affiliation between the Parties where none exists, or to disrupt the business of a competitor, are not made out on the balance of probabilities. Crucially, the Complainant fails to offer any evidence to support its contention that its mark is “well-known and globally present”. The evidence in the case file, as presented, does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark.
RDNH: The Panel finds that the Complaint in this case should never have been made in the form it was filed. The Complainant, represented by counsel, makes repeated key assertions regarding the alleged well-known status and globally present nature of its trademark, of which it asserts the Respondent must have been “well aware”, without providing a scintilla of supporting evidence beyond the existence of the mark itself. The Complainant placed nothing before the Panel from which any reasonable inference could be drawn that the Respondent had any prior knowledge of and was targeting the Complainant or its mark by way of the disputed Domain Name. The citation of multiple previous cases under the Policy, in which the Complainant freely engaged, is not a substitute for the requirement to support key allegations with evidence.
In the circumstances of this particular case, the Complainant was or should have been aware that the Complaint as filed would not satisfy the burden of proof under paragraph 4 of the Policy. Furthermore, the Complainant based the Complaint “on only the barest of allegations without any supporting evidence”. WIPO Overview 3.0, section 4.16, paragraph (viii).
Complaint Denied (RDNH)
Complainant’s Counsel: Boehmert & Boehmert, Germany
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Once again, as with the above, MetaRisk case, we see the centrality of reputation to the bad faith analysis. In another well-reasoned decision, the Panel stated that “crucially, the Complainant fails to offer any evidence to support its contention that its mark is “well-known and globally present”. Without such evidence, there was no basis to conclude that the Complainant was the target of the Respondent’s Domain Name registration.
Also in a similar fashion as in the MetaRisk case, the Panel noted that the existence of third-party usage of the term, “hive” is in widespread use in connection with financial services. The Panel astutely observed that such third party usage was not surprising considering its dictionary meaning. Given that there was third-party usage of a term which appears to be a naturally apt term for use in business given its suggestive connotations, the Panel apparently found credibility in the Respondent’s assertion that the Domain Name was selected for reasons wholly apart from the Complainant. As such, it is important to bear in mind the potential import of third-party usage in UDRP proceedings. It can be important evidence going to the rationale and motivation in registering a Domain Name since it demonstrates attractiveness beyond the Complainant and thereby undermine a Complainant’s claim of targeting.
A word about the Panel’s analysis of confusing similarity. In something of a rarity for UDRP cases, the Panel concluded that “the Complaint would most likely fail on the first element assessment”. The Panel found that the using the side-by-side comparison test, “the Panel does not see the mark as recognizable in the disputed domain name” and that “to the Panel’s eyes, neither of the mark’s elements are more dominant than the other, or would be a dominant feature of the entire mark when considered on their own”. This is an important reminder that the first part of the UDRP test is not to be ignored or passed over. It is neither less nor more important than the other two parts of the test and should therefore always be carefully examined as the Panel did in this case.
Lastly, regarding the Panel’s finding of RDNH, we see that the absence of supporting evidence for reputation is not only fatal to a Complaint, but can also result in RDNH. The Panel rightly noted: “The Complainant, represented by counsel, repeatedly asserts the alleged well-known status and global presence of its trademark, claiming the Respondent must have been “well aware,” yet provides no supporting evidence beyond the existence of the mark itself”. The Panel correctly rejected these arguments and deemed it a case of Reverse Domain Name Hijacking. Well done.
“Schrödinger’s Jurisdiction” Issue in Crypto .com v. Cripto .com
Foris Limited v. Edmunds Gaidis, Domdevelo OU, WIPO Case No. D2024-4704
<cripto .com>
Panelist: Ms. Stephanie G. Hartung (Presiding), Mr. Chiang Ling Li and Mr. Nick J. Gardner
Brief Facts: The Complainant is a company organized under the laws of Hong Kong, China, that is active in the cryptocurrency business. It contends that it is one of the world’s most prominent companies providing cryptocurrency exchange and related services. The Complainant enjoys rights in several registered trademarks relating to the CRYPTO .COM brand, and since 2018, has used the domain name <crypto .com> to promote the Complainant’s services in the cryptocurrency business internationally. The Respondent is active in the web portal and domain trading industry. The disputed Domain Name was acquired by the Respondent on November 24, 2021, for a purchase price of US $74,000. At the time of the filing of the Complaint, the disputed Domain Name resolved to a website where it was offered for sale at a “Buy now” price of no less than US $2,850,000.
The Complainant alleges that the Respondent owns no registered trademarks relating to the disputed Domain Name and the applications that it has filed in that respect were merely filed to circumvent and frustrate the application of the Policy and that the sole shareholder in Respondent has clearly engaged in a pattern of bad faith conduct and seems to make a profession out of domain name squatting. The Respondent contends that the term “cripto” is a generic word in the Italian language and is the generic reference to cryptocurrency in both Spanish and Portuguese in the same sense as “crypto” is used in common English parlance, and that the Respondent is chartered for business relating to web portals and has acquired, for future development or sale, various domain names which have obvious commercial utility due to the generic, dictionary-word terms embodied within them.
On December 20, 2024, the Respondent filed a civil action against the Complainant with the US District Court, District of Arizona, for Declaratory Judgment under the Lanham Act, 15 U.S.C. §§ 1114(a) and 1125(a), and reverse domain name hijacking in violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1114(2)(D)(v), concerning the disputed Domain Name. The Respondent requests that the Complaint not only be denied on the substance of this matter but that this proceeding should be terminated for procedural reasons under paragraph 18(a) of the Rules. The Complainant, in turn, requests the Panel to continue this proceeding and not to terminate it, nor suspend it.
Held: The proceedings initiated by the Respondent in the US District Court, District of Arizona, amount to proceedings as envisaged by paragraph 18(a) of the Rules and the Panel has the discretion to decide whether to suspend or terminate the present UDRP proceeding. In assessing how to proceed, the Panel has considered whether the Respondent is correct to say that the Complainant has consented to the jurisdiction of the US District Court, District of Arizona. The relevant consent to jurisdiction as set out in the Complaint is in accordance with paragraph 3(b)(xii) of the Rules, which is only applicable if and when the Panel has decided to cancel or transfer the disputed Domain Name, which of course has not occurred. The Respondent acknowledges this difficulty with the interaction between paragraphs 18(a) and 3(b)(xii) of the Rules which it describes as a “Schrödinger’s Jurisdiction” problem. It says that if the Panel exercises its discretion to terminate the proceeding now, that preserves the Complainant’s ability to argue in due course that it has not consented to the jurisdiction of the US District Court, District of Arizona. The Panel acknowledges such argumentation as correct and further considers that this is then a matter for the Arizona court to determine.
The US court proceedings taking place at the very same time have exactly the same subject matter as the UDRP proceedings at hand but may exercise a large number of additional judicial measures that are not provided for in proceedings under the UDRP which was explicitly designed to address a narrow form of disputes, namely typical cases of cybersquatting. This here, however, does not appear to the Panel to be such a case. Taking the Parties’ comprehensive opposing contentions, the Panel has been presented with a complex dispute between the Parties both on a procedural and a substantive level, which e.g., includes a number of sophisticated trademark matters. The Panel, therefore, finds that this specific domain name dispute between the Parties is far better suited to be handled before the competent US courts and, therefore, decides to exercise its discretion to terminate this UDRP proceeding. In doing so, the Panel is aware of the possibility (for the reasons discussed above) that the US District Court, District of Arizona, might conclude that the Complainant has not consented to its jurisdiction. The Panel will, therefore, provide that the Complainant may file a future UDRP complaint in respect of the disputed Domain Name against the Respondent after resolution or discontinuation of the United States court proceedings.
Terminated
Complainant’s Counsel: DeLab Consulting Limited, Hong Kong, China
Respondent’s Counsel: John Berryhill, United States of America
Case Comment by ICA General Counsel, Zak Muscovitch: For those particularly interested in jurisdictional issues and the interplay between the UDRP and courts, this case is fascinating. I encourage all to read it.
Read related article at DNW here.
Asking Price Alone Cannot be the Basis for a Finding of Bad Faith
SoletLuna Holdings, Inc., Lifewave, Inc. v. Bahl Co, WIPO Case No. D2024-5115
<silentnights .org>
Panelist: Mr. Lawrence K. Nodine
Preliminary Issue – Withdrawal of Complaint: On January 2, 2025, the Complainants unilaterally requested that the proceedings be suspended to allow for settlement discussions. The Respondent replied on the same day and objected to the suspension, asserting that it sought a decision on the merits, as it had incurred considerable expenses preparing a response. On January 6, 2025, the Complainants requested leave to withdraw its Complaint with prejudice concerning the Respondent.
In the alternative, the Complainant requested that the Panel not find RDNH, asserting that the Complainants were unaware of the Respondent’s legitimate use of the disputed Domain Name for a Domain Investment Business before the Response was filed. The Respondent immediately objected to the Complainants’ request that the Complaint be withdrawn, again emphasizing the expense it had incurred preparing a response and its request for a finding of RDNH. The Panel finds that the Respondent “raises justifiable grounds for objection” under Rules paragraph 17(b) and denies the request that the case be terminated.
Brief Facts: The Complainant owns trademark registrations in several jurisdictions for the ‘Silent Nights’ mark, including Canada (March 27, 2024); and the United States (May 9, 2017). The Complaint owns the matching .com domain name, which redirects to <lifewave .com>, where one finds images of packaging for the Complainant’s SILENT NIGHTS patches. The Respondent is a domain name investor who registered the disputed Domain Name on October 23, 2024, and listed it for sale on the Registrar’s website for US $4,888.
The Complainant alleges that “this is a substantial amount to pay for a domain name when, on the Registrar’s website, other domain names that include the SILENT NIGHTS Marks are not more than US $300.00. The high cost of the Domain Name shows how the Registrant is targeting the Complainants because of the worldwide recognition of the SILENT NIGHTS marks.” The Respondent contests the Complainant’s assertion that targeting may be inferred from the US $4,888 price, observing that the price is not exorbitant or unusual compared to other domain names available in the resale market.
The Respondent further contends with supporting citations as evidence that “silent nights” is a common widely used phrase and that numerous third parties use the phrase in diverse ways, including many coexisting trademarks, business names and domain names. The Respondent declares that it did not know of the Complainant’s trademark when it purchased the disputed Domain Name and that the domain name investing has been recognized as a legitimate business under the second element of the Policy.
Held: The Respondent denies that it had any knowledge of the Complainant’s trademark ‘Silent Nights’ when it purchased the disputed Domain Name and the Complainant has not offered any evidence to support its allegation that its mark is well-known. The Complainant contends that bad faith may be inferred from the US $4,888 asking price that the Respondent set for the sale of the disputed Domain Name. However, the Respondent persuasively argues that the US $4,888 asking price is not unreasonable. There is no need to reach this question because the Complainant has not made the predicate showing that the Respondent was aware of the Complainant’s rights when it acquired the disputed Domain Name or set the price. The Complainant offers no evidence that its mark is well known, and the Respondent has denied any knowledge of the Complainant’s Mark prior to these proceedings.
Although some cases have considered whether a particular (allegedly high) asking price could serve as evidence that, when combined with other evidence, supports a finding of targeting, these cases do not support inferring targeting from the (high) price alone. There must first be some basis for finding that a respondent knew of the complainant’s rights. Compare Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO Case No. DAI2023-0010 with All Star C.V., Converse, Inc. v. Narendra Ghimire, WIPO Case No. DCO2024-0014. Because there is no evidence that the Respondent knew of the Complainant’s rights in the trademark, there is no basis for drawing an adverse inference of bad faith targeting from the allegedly high price that the Respondent set for the sale of the disputed Domain Name.
RDNH: Although the Complainant failed to prove that its trademark is well known, such a failure is not uncommon in UDRP proceedings and does not necessarily evidence bad faith. On the other hand, when the Complainant requested leave to withdraw its Complaint, it did not explain why it ignored the holding in Soletluna Holdings. This failure supports a finding of RDNH, but the Complainant’s request that its Complaint be withdrawn is evidence of good faith.
The Panel finds that, although this is a close case, a finding of RDNH is not warranted. The Panel also considers that it is good policy to encourage parties to seek termination of proceedings when it becomes apparent that they will not succeed. A finding of RDNH in these circumstances would discourage future litigants from seeking to terminate claims for fear that doing so would be seen as an admission. For these reasons, the Panel does not find RDNH.
Complaint Denied
Complainant’s Counsel: ARC IP Law, P.C., United States
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: To the Panel’s credit, it crafted a simple yet important yardstick by which to consider “asking prices”. As is fairly common in UDRP cases, “the Complainant contend[ed] that bad faith may be inferred from the USD $4,888 asking price that Respondent set for sale of the Disputed Domain Name, asserting that [t]he high cost of the [Disputed] Domain Name shows how the Registrant is targeting Complainants because of the worldwide recognition of the SILENT NIGHTS Marks.”
Astutely, the Panel observed that “although Respondent persuasively argues that the USD $4,888 asking price is not unreasonable, there is no need to reach this question because Complainant has not made the predicate showing that Respondent was aware of Complainant’s rights when it acquired the Disputed Domain Name or set the price” [emphasis added]. The Panel succinctly and accurately stated that, “there must first be some basis for finding that a respondent knew of complainant’s rights”. This is a crucial reminder that asking price alone is insufficient. There must first be an underlying predicate, i.e. evidence of targeting beyond and independent of an asking price. Asking prices alone cannot be the basis for a finding of bad faith.
A word also about the Complainant’s attempt to withdraw its Complaint after the Response was filed. The Panel “conclude[d] that termination is not appropriate here as Respondent objects to the dismissal on the grounds that it has already incurred considerable expense to prepare its response and wants a decision on the merits vindicating its rights and good faith and a ruling on its request for a finding of RDNH”. Indeed.
It is now well-established that withdrawing a Complaint after a Response is filed, is not always permitted (See UDRP Perspectives At 0.4). Complainants sometimes want to withdraw their Complaint after receiving a Response that disproves a Complainant’s allegations of cybersquatting and requests a finding that the Complaint was brought in bad faith, i.e. Reverse Domain Name Hijacking. Respondents in such circumstances may want to see a Complaint proceed to a final determination on the merits and particularly on the request for a finding of RDNH, as was the case here.
Permitting a Complainant to simply withdraw a Complaint in such circumstances puts the Respondent to considerable effort and expense and can encourage Complainants to try their luck with an abusive Complaint, knowing that if they are called out for it by a defending Respondent, that they can simply withdraw and even try again later with no repercussions.
Domain Name Use for Online Casino Since March 2020, Establishes Legitimate Interests
Rootz LTD v. 26 Technology LTD, WIPO Case No. D2024-4614
<spinzcasino .com>
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainant is an online gaming business based in Malta, offering a number of online casinos which are licensed and regulated by the Malta Gaming Authority. One of the Complainant’s online casinos is operated under the brand name SPINZ which the Complainant appears to operate from a website <spinz .com>, launched on March 25, 2022. The Complainant owns registered trademarks for or including SPINZ and the figurative version of SPINZ including EU Trademark (registered: June 12, 2021; first use: February 18, 2021); and International Registration (registered: August 9, 2021) in respect of those class 41 services and designating Switzerland, the United Kingdom, India, Japan, Norway and New Zealand. The Complainant’s website features prominently a figurative version of the Complainant’s trademark with a stylized representation of the letter “S”.
The Respondent claims to be a United Kingdom company and to have been operating the SPINZ CASINO website continuously since 2019, however as per the additional submission, the Respondent is incorporated in Cyprus. Further, the Respondent points out that the disputed Domain Name was formally transferred into the Respondent’s name on December 30, 2021, which was before the Complainant’s website became active. In response to Panel Order No. 1, the Respondent shared a copy of the decision in Merryvale Limited, WIPO Case No. D2020-2187, which involved the disputed Domain Name. However, the parties, or at least the complainant, were different and the Complainant in this case relies on different rights to those relied on by the complainant in the earlier case. The Respondent says that it and Twenty Two Solutions Ltd are related companies with the same ownership and management.
According to the Complaint, in Canada and New Zealand, the disputed Domain Name redirects to an online casino on the website at <infinty-casino .com> but is blocked in other countries. The Panel has not been able to access the Respondent’s website from his location (outside Canada and New Zealand). The Complainant further contends that the redirection of the disputed Domain Name to the “Infinity Casino” website in Canada and New Zealand breaches the Complainant’s trademark rights and is an attempt to generate profits by misleadingly diverting the Complainant’s customers in those countries to the Respondent’s website. The Respondent in effect contends, however, that it is using the disputed Domain Name in connection with a good faith offering of services and its casino business has been commonly known as SPINZ CASINO since 2019.
Held: The Panel notes that the date of the transfer to the Respondent occurred several months after the Complainant filed and registered its trademarks. Therefore, it is possible that the Respondent had notice of the Complainant’s claimed rights when the disputed Domain Name was transferred to the Respondent even though the Complainant’s website had not launched. According to the Respondent, the casino made available from the disputed Domain Name is operated under a “White Label” arrangement with Grace Media (Gibraltar) Limited. Information from the United Kingdom Gambling Commission’s website at <gamblingcommission .gov .uk> confirms that Grace Media formerly held such a licence and Grace Media (Gibraltar) currently holds a remote gambling software licence. On the limited materials before the Panel, therefore, it appears that the disputed Domain Name has been continuously in use for an online casino since at least March 2020, given the Merryvale Limited case.
In these circumstances, the Panel finds that the Respondent has sufficiently demonstrated that the circumstances in either or both of paragraphs 4(c)(i) and (ii) are satisfied. It is not clear on the record in this case whether the Respondent or its associates, need licences to provide gambling services in Canada and New Zealand. On the evidence before the Panel, however, the Respondent is licensed to provide its gambling services in the United Kingdom. Accordingly, the legitimacy or otherwise of the redirection of the disputed Domain Name to an online casino in Canada and New Zealand falls to be determined as a matter of trademark infringement rather than under the Policy. Accordingly, the Panel finds that the Complainant has not established that the Respondent does not have rights or a legitimate interest in the disputed Domain Name.
RDNH: It is not clear from the information before the Panel whether the Complainant was aware of the online casino claimed to be operating under a licence from the United Kingdom authorities. The failure by the Complainant to disclose that knowledge (if it does in fact have it) would be a very serious failure. In the present case, however, the registrant of the disputed Domain Name was cloaked through a privacy protection service and, in any event, is a different entity to the named Respondent in the Merryvale Limited case, above. It is also not clear on the record in this case if the redirection of the disputed Domain Name to “Infinity Casino” in Canada and New Zealand is a new or different development since the previous decision.
Given the prior decision in the Merryvale Limited case above, there are obvious concerns about the bringing of this proceeding. The Complainant does rely on different rights than those relied on in the earlier proceeding. Most importantly, however, the different identity of the Respondent from the named respondent in the earlier proceeding (cloaked behind privacy protection) leads the Panel not to make a finding of Reverse Domain Name Hijacking.
Complaint Denied
Complainant’s Counsel: Wilmark Oy, Finland
Respondent’s Counsel: Self-represented
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings. He is the founder of Cylaw Solutions.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.