WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Joelsson Media Group AB v. Registration Private, Domains By Proxy LLC / Mattias Kaneteg
Case No. D2019-3088
1. The Parties
The Complainant is Joelsson Media Group AB, Sweden, represented by Varumärkesombudet AB, Sweden.
The Respondent is Registration Private, Domains By Proxy LLC, United States of America (“United States”) / Mattias Kaneteg, United States, represented by ESQwire.com PC, United States.
2. The Domain Name and Registrar
The disputed domain name <casinodaddy.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 3, 2020.
The Center verified that the Complaint, together with the amendment to the 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 the Respondent of the Complaint, and the proceedings commenced on January 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2020. On January 24, 2020, the Center received an email communication from the Respondent asking for a four day extension to the Response filing period. On January 27, 2020, pursuant to paragraph 5(b) of the Rules, the Response due date was extended until January 31, 2020. The Response was filed with the Center on January 31, 2020.
The Center appointed Steven A. Maier, Anders Janson, and The Hon Neil Brown QC as panelists in this matter on February 26, 2020. The Panel finds that it was properly constituted. Each member of 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.
On March 9, 2020, the Panel issued Procedural Order No. 1, directing that the Complainant clarify its case concerning any alleged connection between the Respondent and the previous owner of the disputed domain name, and/or any actual knowledge on the part of the Respondent of the Complainant and/or its business at the date it registered the disputed domain name, and permitting the Respondent to reply to the Complainant’s further submission. The Complainant filed a further submission accordingly on March 13, 2020, and the Respondent filed a reply on March 18, 2020.
4. Factual Background
The Complainant is a company registered in Sweden. It has operated an online business under the name Casino Daddy since 2016, including the promotion of casino-related affiliate products and services from a website at “www.casinodaddy.net” and the operation of video channels on social media.
The Complainant is the owner of European Union Trade Mark (“EUTM”) number 018063606 for a figurative trademark including the name CASINO DADDY, registered on September 17, 2019 in Classes 35, 41. The Complainant’s application for that mark was filed on May 10, 2019.
The Complainant is also the owner of EUTM number 018140055 for the word mark CASINODADDY, registered on March 4, 2020 in Classes 35 and 41. The Complainant’s application for that mark was filed on October 18, 2019.
The disputed domain name was originally registered on July 16, 2009. It was acquired by the Respondent on a date in April or May 2020.
The Respondent has used the disputed domain name for a website at “www.casinodaddy.com” offering casino-related affiliate products and services.
5. Parties’ Contentions
A. The Complaint
The Complainant submits that the disputed domain name is identical or confusingly similar to both of its EUTMs referred to above, and also to its domain name <casinodaddy.net> which it has used since 2016. The Complainant states that it has, in particular, operated channels on YouTube and Twitch where it has received 38 million views and 22 million views respectively. It contends that, accordingly, its name is well known in the gambling industry.
The Complaint submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent acquired and has used the disputed domain name in bad faith.
The Complainant states that it contacted the previous owner of the disputed domain name in April 2019 and attempted to purchase the disputed domain name. The Complainant exhibits the relevant email exchanges, from which it appears that there had been earlier negotiations between these parties in 2017. On March 11, 2019, the Complainant offered EUR 1,000 for the disputed domain name, which the previous owner rejected, stating: “No thanks…Launching a casino affiliate site on it.” The exchanges continued until April 2, 2019 without agreement being reached, although at one point the Complainant was offering EUR 2,000 for the disputed domain name and the previous owner requesting EUR 2,750.
The Complainant relies on the fact that, in one email during the 2017 discussions, the previous owner’s representative stated: “He said he would rather keep it, he did say the price would go up exuberantly once a simple affiliate site is up & wanted to thank you for the continued traffic push!” The Complainant submits that it is obvious from this correspondence, linked with the Respondent’s use of the disputed domain name, that the disputed domain name was acquired and has been used by the Respondent in bad faith.
The Complainant contends, in summary, that the Respondent has registered and is intentionally using the disputed domain name to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website (paragraph 4(b)(iv) of the Policy).
The Complainant requests the transfer of the disputed domain name.
B. The Response
The Respondent submits that the disputed domain name comprises two descriptive words, “casino” and “daddy”. It further contends that placing the word “daddy” after another word (e.g., “Car Daddy”, “Phone Daddy”) is a common commercial convention, intended to indicate an authoritative or superior product.
The Respondent refers to various joint business interests with another individual, Veselin Lalev, including a Bulgarian company, Gamblify Ltd, owned by Mr. Lalev, in which the Respondent is a minority shareholder. The Respondent submits that Mr. Lalev discovered the disputed domain name for sale in January 2019 and requested that the Respondent attempt to purchase it, for Gamblify Ltd, through the Respondent’s hosting company, Miss Hosting, which Mr. Lalev had assisted in setting up.
The Respondent states that, since 2017, Miss Hosting has assisted Gamblify Ltd in acquiring over 250 casino-related domain names and that, as of January 2019, Gamblify had built six casino-related websites (e.g., “www.gambling.se” serving Sweden and “www.bestcasinos.no” serving Norway) and was actively looking for new domain name acquisitions. Mr. Lalev identified the disputed domain name as a descriptive, casino-related name, which he considered particularly suitable for the US market, being offered at a reasonable price via GoDaddy, and accordingly took steps to acquire it. The Respondent exhibits an email from Afternic (a long-established online marketplace for the buying and selling of domain names, which is a subsidiary of affiliate of GoDaddy) dated April 4, 2019 confirming the Respondent’s purchase of the disputed domain name. The Respondent states that it also acquired the complementary domain name <casinomamma.com>, primarily for a female US audience (although it does not make clear whether this was before or after its acquisition of the disputed domain name).
The Respondent denies that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It states that the Complainant only applied for his first EUTM on May 10, 2019, a month after the Respondent had acquired the disputed domain name. Concerning the Complainant’s business reputation, the Respondent contends that the Complainant’s activities on YouTube and Twitch are not sufficient to have given rise to common law (i.e., unregistered trademark) rights in the mark CASINO DADDY.
The Respondent submits that it has rights or legitimate interests in respect of the disputed domain name. It states that the disputed domain name is comprised of two common words, “casino” and “daddy”, that it has used the disputed domain name in a manner that is legitimate and consistent with those terms, i.e., for the promotion of affiliate gambling services, and that it acquired the disputed domain name in the open market and without any prior knowledge of the Complainant or its business. The Respondent exhibits a signed declaration from Mr. Lalev stating that he had no knowledge of the Complainant when he (Mr Lalev) purchased the disputed domain name.
The Respondent denies that it acquired or has used the disputed domain name in bad faith. It repeats that it purchased what Mr. Lalev considered to be an attractive, descriptive name in the open market when it was being offered for sale by its previous owner and that it has used it in connection with its common meaning. It denies that he has in any way targeted the Complainant or its business by acquiring or using the disputed domain name. The Respondent submits that the Complainant filed the applications for both its EUTMs after the date the Respondent acquired the disputed domain name, and that the Complainant’s claim is devoid of any evidence that the Respondent was aware of the Complainant at the date of such acquisition.
The Respondent further submits that the Complainant knew, or ought to have known, that there was no reasonable basis for bringing these proceedings and that the Panel should make a finding of Reverse Domain Name Hijacking against the Complainant. The Respondent submits, in particular, that the Complainant has suffered “buyer’s remorse” having failed to purchase the disputed domain name after lengthy correspondence with its previous owner and has employed the present proceeding as a bad-faith “Plan B” against the current, legitimate owner.
C. The Complainant’s Further Submission
The Complainant states that it does not contend that the Respondent is connected with the previous owner of the disputed domain name, as it has no knowledge of any relationship between those parties. However, it does contend that the Respondent had actual knowledge of the Complainant and its business at the date it acquired the disputed domain name.
The Complainant submits, in particular, that it has itself used the Respondent’s hosting company, Miss Hosting, since the beginning of 2017 in connection with several hundred domain names, including <casinodaddy.net>. It states that its contact at Miss Hosting is one Fredrik Björklund, with whom the Complainant had frequently discussed its future business plans. The Complainant states that, in particular, it approached Mr. Björklund on or about March 14, 2019 with specific reference to the disputed domain name, and exhibits a text chat (in Swedish) in which the disputed domain name is mentioned. The Complainant states that it also told Mr. Björklund about its first EUTM application on or around May 10, 2019, only for the Respondent to purchase the disputed domain name (according to the Complainant) a few days later.
The Complainant submits that, in all the circumstances, it is beyond doubt that Mr. Björklund shared his knowledge of the Complainant and its intentions with the Respondent, being his colleague at Miss Hosting.
D. The Respondent’s Further Submission
The Respondent denies the Complainant’s further claims. It states that Miss Hosting is a large ISP with over 85,000 clients and over 276,000 domain names under management, and that it is preposterous to infer, from the single text chat between the Complainant and Mr. Björklund to which the Complainant refers, that the disputed domain name was registered in bad faith. The Respondent exhibits a signed declaration from Mr. Björklund, including an English translation of the relevant exchange of texts. The Respondent submits that the exchange is primarily about another of the Complainant’s domain names, <aboutslots.com>, and that the Complainant asks during that chat whether it might be able to “claim for free” the disputed domain name, to which Mr. Björklund replies in the negative. Mr. Björklund states in his declaration that this was a routine enquiry to which he gave no further thought, and did not discuss with the Respondent at any time prior to the filing of these proceedings.
The Respondent also contends that Mr. Lalev is the actual current owner of the disputed domain name and that the WhoIs shows the domain name as registered in the Respondent’s name only because that name appears on the Afternic receipt as a representative of Miss Hosting, which acquired the domain name on Mr. Lalev’s behalf. It is further submitted that the correct WhoIs record, which would show Mr. Lalev as the registrant, has not yet been brought up to date. The Respondent exhibits an email dated February 20, 2019 from Mr. Lalev to an individual named Andreas at Miss Hosting, stating: “On another subject perhaps you can help me with the acquisition of yet another domain: casinodaddy.com – checked it out… seems available…” The Respondent points out that this email is dated a month before the text chat relied on by the Complainant. It states that the recipient of the email was an employee Andreas Linnuste, who took forward the enquiry on behalf of Mr. Lalev, including the purchase of the disputed domain name in April 2019. The Respondent submits that Mr. Björklund had nothing do with that purchase.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the 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.
A. Identical or Confusingly Similar
At the date of filing of the Complaint, the Complainant was the owner of a figurative EUTM which included the name CASINO DADDY. The Panel also finds that the Complainant has operated a website at “www.casinodaddy.net” and associated channels on YouTube and Twitch since 2016. In these circumstances, the Panel finds that the Complainant has sufficient registered trademark rights in the mark CASINO DADDY to meet the threshold test for bringing a claim under the Policy. The Panel further finds that the disputed domain name is effectively identical to that name.
While it is not as clear that a case has been made out for unregistered or common law trademark rights, it is not necessary in the circumstances for the Panel to resolve that question.
B. Rights or Legitimate Interests
The Respondent submits that the disputed domain name comprises two descriptive or dictionary words, “casino” and “daddy”, and that the latter word is commonly used to denote an authoritative or superior product. The Panel accepts these submissions and also finds that the Respondent has used the disputed domain name for the purpose of a website which reflects the disputed domain name by offering casino-related affiliate goods services.
In the circumstances described above, it may be possible for a domain name registrant to demonstrate rights or legitimate interests in a domain name which is identical or confusingly similar to another party’s mark, on condition that the domain name was not registered for the purpose of targeting that mark in the sense of taking unfair advantage of it (see, e.g., sections 2.10 and 3.2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In this case, while the Panel finds that the Complainant had traded under the names CASINO DADDY or CASINODADDY for some time prior to the Respondent’s acquisition of the disputed domain name, the Panel does not find those names to have become so distinctive of the Complainant that the Respondent must inevitably have registered the disputed domain name with the Complainant’s mark in mind. In these circumstances, the fundamental question for the Panel to determine on the evidence is whether, in fact, the Respondent registered the disputed domain name for the purposes of a bona fide website related to the disputed domain name or, alternatively, to target the Complainant’s trademark or related rights. As that question is inextricably linked to the question of registration and use of the disputed domain name in bad faith, it is considered further below.
C. Registered and Used in Bad Faith
The requirements of paragraph 4(a)(iii) of the Policy are conjunctive, in that the Complainant must show both that the disputed domain name was registered in bad faith and that it has been used in bad faith. In relation to the first of these requirements, it is well established that the Complaint will be unable to demonstrate registration in bad faith unless it can show that the Respondent was aware of its use of the mark in question and registered the disputed domain name for the purpose of taking unfair advantage of that mark.
In this case, the Complainant says that the Respondent must have been aware of its business under the CASINODADDY name, because the Respondent’s company, Miss Hosting, had hosted another domain name of the Complainant’s, namely <casinodaddy.net>, which operates a casino-related website under the name Casino Daddy, and the Complainant had periodically discussed its business plans with Mr. Björklund of that company. Specifically, the Complainant provides evidence that it raised an enquiry with Mr. Björklund about the disputed domain name on or about March 14, 2019 and subsequently told Mr. Björklund, on or about May 10, 2019, that it had applied for an EUTM. The Complainant contends that it is too much of a coincidence that the Respondent, being the owner of Miss Hosting, bought the disputed domain name a few days afterwards and is now using it for the purpose of an affiliate website, offering reviews of and access to other online casinos, particularly as this is what the previous owner of the disputed domain name had threatened to do in the course of the Complainant’s unsuccessful negotiations with that previous owner.
The Respondent has put forward an explanation for its registration and use of the disputed domain name which the Panel considers at least to be plausible. Further, the Respondent denies that it was aware of the Complainant or its business at the date it acquired the disputed domain name. It states that the Respondent’s company, Miss Hosting, manages over 276,000 domain names and had no reason to take particular notice of the Complainant’s existing name. It denies that the Complainant’s contact at Miss Hosting, Mr. Björklund, had any reason to remember the Complainant’s enquiry for the disputed domain name made on or about March 14, 2019, or that he otherwise discussed the Complainant’s interests with anyone else at Miss Hosting. The Respondent says that Mr. Lalev was the underlying purchaser of the disputed domain name and progressed his purchase through a different member of Miss Hosting’s staff, Mr. Linnuste. The Respondent exhibits an email from Mr. Lalev to Mr. Linnuste dated February 20, 2019 raising an initial enquiry about the disputed domain name, which pre-dates the Complainant’s enquiry dated March 14, 2019. The Respondent also provides an Afternic receipt for the purchase of the disputed domain name dated April 4, 2019, which is a date some weeks before the conversation on or about May 10, 2019 on which the Complainant also relies.
While on its face the Respondent’s evidence, including the exhibits referred to above, has the effect of undermining the Complainant’s case, the Panel’s overall assessment of this dispute is that it does not find the case presented by either of the parties to be factually comprehensive or entirely satisfactory, which was always possible in view of the many disputed allegations of fact in the proceedings. In such circumstances, a panel under the UDRP is not the ideal forum to examine disputed allegations of fact since, unlike a court of law, it is unable, for example, to assess the veracity of the parties under cross-examination, forensically examine the authenticity of documents exhibited, or use other forensic tools such as discovery, which are available in court proceedings. The Panel can only consider, therefore, whether on the basis of the evidence put before it by the parties and available to it, the Complainant has met the burden of proving, on the balance of probabilities, that the Respondent registered the disputed domain name in the knowledge of the Complainant and for the purpose of taking unfair advantage of the Complainant’s rights. The Panel does not consider that the Complainant has met that burden in this case and does not find, therefore, that the disputed domain name was registered in bad faith.
In these circumstances the Complaint must fail.
With regard to the Respondent’s request for a finding of Reverse Domain Name Hijacking, the Panel notes that the Complainant has brought this proceeding after failing (in the course of somewhat contentious negotiations) to secure a purchase of the disputed domain name from its previous owner. However, in the light of the Panel’s residual misgivings about the evidence of both of the parties, the Panel does not conclude on the balance of probabilities that the proceedings were brought in bad faith and does not therefore make any finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Steven A. Maier
The Hon Neil Brown QCPanelist
Date: March 25, 2020