Decision for dispute CAC-UDRP-105553

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant has provided evidence of ownership of the following trademarks:

• Finnish trademark VEIKKAUS n. 248158 registered on 15 February 2010;
• Finnish trademark VEIKKAUS n. 266351 registered on 8 April 2016;

The Complainant, Veikkaus Oy is a lottery, gambling and betting service provider operating in Finland.

The disputed domain name was registered on 20 October 2021.

Parties Contentions

COMPLAINANT:

1. THE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS

The Complainant states that the disputed domain name is identical or confusingly similar to its trademark VEIKKAUS.  

2. THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

The Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark or to use the disputed domain name. The Respondent’s use of the VEIKKAUS mark on the website attached to the disputed domain name shows knowledge of the Complainant’s trademark rights.

The website also contains links to third party gambling services. The Complainant submits that the Respondent is seeking commercial benefit from directing the consumers to such gambling pages that are prohibited in Finland.

3. THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH
   
   The Complainant states that the disputed domain name is confusingly similar to its trademark VEIKKAUS. The trademarks were registered several years before the registration of the disputed domain name. Given the reputation of the Complainant's trademarks, it is reasonable to infer that the Respondent has registered the domain name with full knowledge of the Complainant's trademarks.
   
   The Complainant submits that, being the only entity allowed under Finnish law to provide gambling services, the use of the domain name, associated with external links to gambling website, is perpetrated in bad faith.

RESPONDENT:

The Respondent’s Response is reproduced in its entirety: “The domain is .net and not under Finnish jurisdiction - the words in the domain er clearly common Finnish words and are used in everyday life in Finland. So we politely refues all claims. Have a nice day.”

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant, and the Respondent.

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.

1. 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 to succeed.

The Complainant, Veikkaus Oy is a lottery, gambling and betting service provider operating in Finland. The Complainant has provided evidence of ownership of trademarks in the term “VEIKKAUS” for more than 20 years.

The disputed domain name is <veikkauslotto.net>.

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”.

Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

The disputed domain name wholly incorporates the Complainant’s trademark "VEIKKAUS”. The fact that a domain name wholly incorporates the Complainant’s trademark is sufficient for this Panel to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.net”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark.

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

2. 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 non-commercial 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.”

The Panel finds that the Respondent is not commonly known by the disputed domain name.

The Complainant has not at any time authorised or licensed the Respondent to use “VEIKKAUS” as a domain name, business or trading name, trade mark or in any other way.

In addition, nothing in the record shows any bona fide offering of goods or services from the disputed domain name on the part on the Respondent before the submission of the Complaint. Quite to the contrary, the Panel accepts the Complainant’s argumentation that it is the only entity legally allowed to offer betting and gambling games services under Finnish law, in the absence of aby rebuttal from the Respondent. The website associated with the disputed domain name contains material in the Finnish language, which evidences that the domain name and associated website are used to target the Finnish public, where the Respondent is not authorized to provide such gambling and betting services under local regulations.

The Respondent submits that the domain name comprises Finnish dictionary terms, which is accepted by the Panel. However, the Panel finds that the term VEIKKAUS is protected by trademark rights held by the Respondent. The term “lotto” is extremely closely connected to the Complainant’s business, and the user of average attention will likely believe that the disputed domain name is associated with, or endorsed by the Complainant.

Nothing on the record shows that the Respondent is making a bona fide or legitimate non-commercial use of the domain name at dispute. Indeed, it is clear to the Panel that the Respondent is using the domain name to try and benefit from the Complainant’s reputation, at least in Finland, to make commercial gains.

The Panel concludes that the Respondent has no right or legitimate interests in the disputed domain name and therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

3. Registration and Use in Bad faith

For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holders documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the holder has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online 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 the holder's website or location.

The evidence on the record shows that the Respondent was certainly aware of the existence of the Complainant and of the rights of the Complainant, and that the Respondent, by registering and using the disputed domain name has intentionally attracted internet users by creating a likelihood of confusion with the Complainant's trademark.

As stated above, the current use of the domain name, impersonating the Complainant and offering similar services on an active website, demonstrates clearly the Respondent’s willingness to benefit from the considerable reputation of the Complainant in Finland. The fast that the domain name consists of dictionary terms, per the Respondent’s submission, does not discard a finding of bad faith use.

Moreover, the Panel notes that the Respondent is concealing his or hers identity behind fanciful WHOIS data. It being mandatory to register and maintain domains under correct WHOIS information, the Panel finds that this is a further element demonstrating the Respondent’s bad faith in registering and using the disputed domain name.

The Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith, and therefore finds that the requirement of paragraph 4(a)(iii) of the Policy is satisfied.