{
    "case_number": "CAC-UDRP-104388",
    "time_of_filling": "2022-03-01 08:57:32",
    "domain_names": [
        "grandduke.com"
    ],
    "case_administrator": "Denisa Bilík (CAC) (Case admin)",
    "complainant": [
        "Mindaugas Vaitkunas"
    ],
    "complainant_representative": "Dr. Daniel Dimov (Dimov Internet Law Consulting)",
    "respondent": [
        "Henrik Pisky"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nTHE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS.\r\n\r\nThe Complainant is the owner of the UK company GRAND DUKE GLOBAL LIMITED and the US company GRAND DUKE GLOBAL, INC. The Complainant has granted licenses to those companies to use the Complainant’s trademarks. The Complainant’s trademarks are protected for certain goods in classes 3, 5, 30, 32 and 34, including “soaps”, “cosmetics” and “dentifrices”. \r\nThe exact date of registration of the disputed domain name is unknown. The disputed domain name was initially registered in 2002 and the Complainant asserts that the Respondent registered the disputed domain name in 2012 or later. The Complainant claims that it extended its operations to Japan by recently purchasing the Japanese trademark “GRANDDUKE”. The Complainant states that the disputed domain name is confusingly similar to the registered trademarks and the pending applications of the Complainant because the disputed domain name consists of the following three elements: (i) “grand”; (ii) “duke”; and (iii) “.com”. \r\nThe first two elements of the disputed domain name (i.e., the elements “GRAND” and “DUKE”) are identical to the trademarks of the Complainant. In the view of the Complainant, this clearly indicates confusing similarity between the disputed domain name and the Complainant’s trademarks. \r\n\r\nTHE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME.\r\n\r\nThe Complainant’s submissions on the second element can be summarized as follows. According to the Complainant, the disputed domain name has not been used in connection with a bona fide offering of goods and services. The Complainant states that the website by the disputed domain name has been used for providing gambling services and services of online casino and the license of the operator has been suspended by the UK Gambling Commission. \r\nThe Complainant concludes that the use of the website by the disputed domain name to host an inactive online casino while falsely alleging that the operator is licensed to provide gambling services cannot be regarded as a use in connection with bona fide offering of goods and services. \r\nThe Complainant also claims that the Respondent has been engaged in unfair commercial practices. In particular, the Complainant refers to complaints by customers about the website by the disputed domain name and about its online casino. It also refers to violation of Google’s Webmaster Guidelines (e.g. “cloaking”- the practice of presenting different content or URLs to human users and search engines), “black hat advertising” and advertising in jurisdictions where gambling is regulated (thus violating laws in these jurisdictions).\r\n\r\nBased on the above, the Complainant claims that the Respondent is not engaged in a bona fide offering of goods or services.\r\nThe Complainant contends that the Respondent does not have any trademarks corresponding to the disputed domain name and the Respondent is not otherwise commonly known by the disputed domain name.\r\n\r\nThe Complainant alleges that the Respondent does not make a legitimate non-commercial or fair use of the disputed domain name because the website was used for commercial purposes and the use of the website may tarnish the trademarks of the Complainant due to the association with a highly-criticized unlicensed and inactive casino.\r\n\r\nTHE DISPUTED DOMAIN NAME WAS REGISTERED AND BEING USED IN BAD FAITH.\r\n\r\nIn respect of the bad faith element, the Complainant alleges that the disputed domain name “was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct”. \r\nThe Complainant claims that the disputed domain name was registered by the Respondent in 2012 or later. The Complainant provides information and evidence about previous registrants of the disputed domain name.\r\nThe initial registration date of the disputed domain name is December 31, 2002 and the disputed domain name changed various registrants. The Complainant notes that the initial registration date was after the date of the Japanese trademark registration.\r\nThe Complainant claims that when the Respondent registered the disputed domain name, the Japanese trademark “GRANDDUKE” was registered and publicly available for inspection. According to the Complainant, the Japanese trademark “GRANDDUKE” owned by the Complainant has been consistently in use at least since 1977 in relation to the sale of goods. Taking into account the global nature of Respondent’s business (online gambling services provided internationally), at the time when the disputed domain name was registered, the Respondent knew or should have known about the Japanese trademark of the Complainant. \r\nA global trademark search would have revealed that the trademark “GRANDDUKE” is registered. The Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in the disputed domain name. The current use of the disputed domain name leads to tarnishing to Complainant’s trademarks, thus harming the reputation of the Complainant. The Complainant again refers to unfair commercial practices of the Respondent (e.g. “cloaking”).\r\nThe Complainant also states that some of the previous registrants of the disputed domain name and their related businesses were engaged in unlawful activities, i.e. referring to a decision of the Maltese court against one of the Respondent’s companies and referring to unlawful activities of a previous registrant in Israel. The Complainant indicates that frequent changes of IP address is also an indicator of changes of ownership of the disputed domain name. The Complainant highlights that the fact that 10 years passed since the registration of the disputed domain name does not prejudice the Complainant from submitting and a winning a UDRP claim. \r\nThe first registrant of the disputed domain name, “WebRe”, according to the Complainant, “had a history of bad behavior” and the Complainant refers to some of the previous UDRP decisions against “WebRe”. \r\nThe Complainant further cites some of these decisions where “WebRe” was the respondent.\r\n\r\nThe Complainant concludes that the disputed domain name had a long chain of owners who were engaged in illicit activities.",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.",
    "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.",
    "rights": "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).",
    "no_rights_or_legitimate_interests": "In the view of the Panel, taking into account findings in respect of bad faith, there is no need to consider this element for the purpose of this proceeding.",
    "bad_faith": "The Complainant has not, 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).",
    "procedural_factors": "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.\r\n\r\nUnsolicited submission of the Complainant. \r\n\r\nAfter beginning of the dispute, the Complainant submitted supplemental filing informing the Panel that after the submission of the complaint, the Respondent has shut down the website associated with the disputed domain name. The Complainant claims that this submission contains information which the Complainant could not have known before filing the complaint. \r\nIn the view of the Complainant, this indicates that: (i) the website is not currently used in relation to the legitimate provision of any goods and services; and (ii) the respondent has shut down the website in order to hide the evidence available.\r\nAs the Rules stipulate under par. 10:\r\n\r\n(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.\r\n\r\n(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.\r\n\r\nAs confirmed by WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), par. 4.6 in all such cases, panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance).\r\n\r\nThe Panel takes note of the Complainant’s additional submissions regarding content of the website by the disputed domain name after submitting of the complaint and is willing to accept them for the sake of completeness. \r\nHowever, the Panel finds them irrelevant for the purpose of the decision in this dispute. ",
    "decision": "Rejected",
    "panelists": [
        "Igor Motsnyi \/ Mocni Konsalting doo"
    ],
    "date_of_panel_decision": "2022-04-05 00:00:00",
    "informal_english_translation": "In this proceeding the Complainant relies on the following trademarks with the “GRAND DUKE” word element:\r\n- the Japanese word trademark “GRANDDUKE” No. 1248195, registered on February 10, 1977, registered for goods in class 3;\r\n- the UK word trademark “GRAND DUKE” No. UK00003505735, registered on October 9, 2020, registered for goods in classes 3, 5, 30, 32 and 34;\r\n- the Swiss word trademark No. 759215 “GRAND DUKE”, registered on February 11, 2021, registered for goods in classes 3, 5, 30, 32 and 34;\r\n- the EU figurative trademark No. 018179583 “GRAND DUKE”, registered on June 6, 2020, registered for goods in classes 3, 5, 30, 32 and 34; and\r\n- the EU word trademark No. 018500786 “GRAND DUKE”, registered on December 14, 2021, registered for goods in classes 3, 5, 30, 32 and 34.\r\nThe Complainant also refers to its various US, Canadian and Australian trademark applications with the “Grand Duke” word elements.",
    "decision_domains": {
        "GRANDDUKE.COM": "REJECTED"
    },
    "panelist": null,
    "panellists_text": null
}