Decision for dispute CAC-UDRP-108853

1) the disputed domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) the disputed domain name has been registered and is being used in bad faith.

The Panel is satisfied that the Complainant has satisfied all three elements for the principal reasons set out below.

RIGHTS IN AN IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARK

The Complainant asserts it has a German trademark registration for "WINNA". This registration predates the registration date of the disputed domain name.

To satisfy paragraph 4(a)(i) of the Policy it is enough that the Panel is satisfied that the Complainant has registered rights in a trademark that predates the registration of the disputed domain name in a single jurisdiction (even if that single jurisdiction is not one in which the Respondent resides or operates) (Koninklijke KPN N.V. v. Telepathy, Inc D2001-0217 (WIPO 7 May 2001); see also WIPO Case Nos. D2012-0141 and D2011-1436). The Complainant has satisfied such in relation to the trademark WINNA.

The next question is whether the disputed domain name is confusingly similar to the WINNA trademark.

The Panel disregards the gTLD suffix ".com" for the purpose of this comparison. Past panels have found that gTLD's are of no relevance in determining whether a domain name is identical or confusingly similar to a trademark (See F.Hoffmann-La Roche AG v. Macalve e-dominios S.A. WIPO Case No. D2006-0451). Domain names, and the format in which they appear, are globally observed by internet users and consumers every day. They are part of everyday human experience and commonly marketed via offline means (e.g. signage, branded stationery, merchandise, print advertisements, television) in addition to being observed online. Hence, the average person who is using the internet is going to clearly understand that in the format of a domain name, the gTLD at the end of the domain name is not commonly an element that identifies one particular trader, but rather is used generically by multiple traders. This understanding remains so for common gTLDs like ".com", ".net" and ".org" and for less common gTLDs. This common format of domain names is now well understood by the average person, and for this reason they will not see ".com" as being of any brand significance.

However, the inclusion of "casino" in the disputed domain name warrants different consideration. This word is generic and descriptive of services offered on the website to which it directs webusers. Hence it is of no brand significance in the eyes of the average web user.  However, it does convey a meaning. Namely, that the domain name relates to gambling. Given the scope of the Complainant's rights in "WINNA" relates to the provision of online gambling services, such a word only increases the likelihood of confusion.

The disputed domain name is therefore confusingly similar to the WINNA trademark.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455). Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.

The Respondent is not identified in the Whois database as having a name related to the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the owner of the disputed domain name. Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c) (ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii).”).

There are no other facts that would indicate the Respondent has any rights or legitimate interests in the disputed domain name. In such circumstances, the Complainant has made out its prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has no rights or interests in the disputed domain name.

BAD FAITH

As noted above, on the website to which the disputed domain name directs the Respondent has completely reproduced the Complainant's aforementioned distinctive graphic WINNA logo.  Further, it has reproduced the WINNA word mark.

It has engaged in all such conduct whilst offering services in exchange for cryptocurrency.

Given this conduct, it is beyond doubt that:

(1).  The Respondent registered the disputed domain name with full knowledge of the Complainant's rights and usage of WINNA; and

(2).  It engaged in such registration and use for the purposes of deceiving consumers into believing the Respondent's website was in fact the Complainant's.

It is further reasonable to infer that the only foreseeable purpose that the Respondent had to so register the domain name and direct it to a website was to opportunistically profit from such consumer deception. Such opportunism has been recognised as bad faith by numerous panels, the Panel refers to the commentary of the learned Gerald M Levine, Domain Name Arbitration, Legal Corner Press, 2nd ed. 2019, pp. 432 to 434.  

The disputed domain name has been registered and is being used in bad faith.