Mr Green Ltd. logo.
In October, we covered the UDRP against the ultra short domain Mr.Green – the Complainant is Mr Green Ltd. of Silemma, Malta.
The decision has been rendered, on behalf of the Complainant.
Despite the Respondent’s arguments that the “Mr” part is the actual focus of any trademark claim and not the combined part, Andrew D. S. Lothian, sole panelist at the WIPO, ordered the domain to be transferred to the Complainant.
Full details of this decision follow.
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ADMINISTRATIVE PANEL DECISION
Mr Green Ltd. v. Alfred Zeiselberger, Mediapool Communications Limited
Case No. D2017-19441. The Parties
The Complainant is Mr Green Ltd. of Silemma, Malta, represented by Ports Group AB, Sweden.
The Respondent is Alfred Zeiselberger, Mediapool Communications Limited of Nicosia, Cyprus, represented by Rickert Rechtsanwaltsgesellschaft mbH, Germany.
2. The Domain Name and Registrar
The disputed domain name <mr.green> is registered with 101domain GRS Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2017. On October 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 October 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2017. The Response was filed with the Center on November 2, 2017.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 16, 2017. The Panel finds that it was properly constituted. 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.
4. Factual Background
The Panel has drawn details of the Complainant’s history and activities both from its submissions within the Complaint and also from the Complainant’s “About Mr Green” pages on its corporate website at “www.mrg.se”, the URL of which was specifically cited by the Complainant as supporting evidence.
The Complainant is an online casino company, with operations in Malta and Sweden, which states that it was founded in 2007. It operates an online casino for the mass market featuring almost 1,000 games from different providers together with a seamless payment solution. The Complainant’s “Mr Green” brand and its corresponding trademarks are based on an eponymous gentleman character which it has created and which appears in silhouette within the Complainant’s various figurative trademarks along with the lowercase words “mr green”. The Complainant is the owner of a variety of registered trademarks, both figurative and word marks, including international registered trademark no. 1210675 for the word mark MR GREEN, registered on February 24, 2014 and designated in respect of Austria, Switzerland, Norway, and the United States of America.
The Respondent is an entity with an address in Nicosia, Cyprus. The disputed domain name was registered on December 28, 2015. The Respondent says that it participated in an affiliate scheme operated by the Complainant and that for this purpose it linked the disputed domain name exclusively to the Complainant’s website at “www.mrgreen.com” between December 2015 and April 2016.
On July 4, 2017, the Complainant’s representative sent a cease and desist notice to the Respondent. The notice stated that visitors to the site associated with the disputed domain name were being redirected to a website using the domain name <megarewards.net> which consisted of links to other online casino suppliers, evidenced via source code and screenshots. On July 13, 2017, representatives of the Respondent replied to the Complainant’s representatives stating that no infringement was taking place via the disputed domain name due to the fact that only the second-level domain was relevant to this question. The Respondent’s representatives added that the Respondent had been in a business relationship with the Complainant for several years whereby the Complainant had knowledge of the disputed domain name and permitted the Respondent to “realize keyword advertising” with the Complainant’s trademark. They further noted that the Respondent would no longer use the disputed domain name in the area of online casinos and had initiated measures to change its use.
At some point following the exchange of correspondence between the Parties, the use of the disputed domain name was changed to point to an entry for “MR” in the online encyclopedia at “www.wikipedia.org”.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the generic Top-Level Domain (“gTLD”) “.green” is not irrelevant for the assessment of confusing similarity because the disputed domain name as a whole is used to profit commercially from visitors searching for the MR GREEN trademark. The Complainant notes that the Respondent does not have any rights in the MR GREEN trademark, nor is the Respondent a licensee of the Complainant, nor has the Complainant given the Respondent any authorization to register the MR GREEN trademark as a domain name. The Complainant submits that there is no evidence of any legitimate use of the disputed domain name for any activity or business related to “mr green” and no evidence that the Respondent has been commonly known by or is making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has used the logotype of the Complainant which has the following appearance:
logo
in an unauthorized form by way of its “MEGA REWARDS [dot] GREEN” logo with the following appearance.
logo
The Complainant submits that the Respondent was well aware of the Complainant’s rights given the content on the website associated with the disputed domain name before the Complainant’s cease and desist letter was sent. With regard to the Respondent’s reply to its cease and desist letter, the Complainant denies that the Parties have been in a business relationship whereby the Complainant knew about the disputed domain name. The Complainant states that it would never have accepted the content on the website associated with the disputed domain name had it been aware of this. The Complainant asserts that even though the content of the website has changed, the disputed domain name continues to be used in bad faith because it “consciously disturbs and hinder [sic] the business of the Complainant”.
B. Respondent
The Respondent requests that the Complaint be denied. The Respondent states that it is generally accepted under the Policy that only the second-level domain name will be considered relevant on a comparison between a trademark and a domain name, noting that in exceptional cases where a panel has decided to include the gTLD the trademark has generally included the dot and the top-level domain in the trademark itself. The Respondent points out that the Complainant has only registered a trademark including the dot after the dispute arose, adding that the second-level domain of the disputed domain name consists only of “mr” which is neither identical nor confusingly similar to the Complainant’s trademarks. The Respondent submits that the Complainant’s trademarks are very descriptive and consist only of parts which can be found in common dictionaries.
The Respondent states that the disputed domain name was registered for a bona fide offering of goods and services before the Complainant approached the Respondent. The Respondent asserts that the disputed domain name was registered in the knowledge of and tolerated by the Complainant, and was linked exclusively to the Complainant’s offers as an affiliate link. The Respondent notes that it later used the disputed domain name for its “Mega Rewards” service offering, which it states is a service for casinos and bet providers. The Respondent notes that it currently offers this service only at the domain name <megarewards.green> but wishes to use the disputed domain name for the same purpose in future, adding that it uses <megarewards.blue> for sport bet providers and <megarewards.red> for online trading providers as part of an overall concept.
The Respondent notes that the disputed domain name is an abbreviation of <megarewards.green> and is intended to round off the Respondent’s portfolio of domain names, adding that it had intended to acquire <mr.blue> and <mr.red> but that these acquisitions have been postponed due to the cost of acquiring the disputed domain name. The Respondent denies that it has used the logotype of the Complainant arguing that the “MEGA REWARDS [dot] GREEN” logo is well differentiated. The Respondent explains that the present use of the website associated with the disputed domain name to point to “www.wikipedia.com” is implemented because of the Complainant’s actions and as a sign of goodwill by the Respondent. The Respondent adds that this should not be misinterpreted as any sign of acceptance of the Complainant’s claims or waiver of the Respondent’s plans for the disputed domain name.
The Respondent asserts that it has not registered or used the disputed domain name in bad faith and that none of the circumstances described in paragraph 4(b) of the Policy apply. The Respondent states that it declined an offer to sell or rent the disputed domain name to the Complainant which had been proposed by a high ranking affiliate manager of the Complainant. The Respondent produces a “message protocol” showing an exchange of messages on July 16, 2016 in German between an unnamed person and “Alfred” which appears to be an inquiry from the unnamed person as to whether the disputed domain name is for sale or is available for six months rental. A reply message on the same date appears to propose a telephone call to discuss. The Respondent states that the unnamed person is “a high ranking affiliate manager of the Complainant” but provides no further identification.
The Respondent argues that it is questionable that the Respondent is a competitor of the Complainant as the Respondent does not provide online casino services. The Respondent notes that disrupting the Complainant’s business would make no sense from the Respondent’s point of view and that this is relevant to the question of whether the Parties are competitors.
The Respondent notes that the Complainant uses <mrgreen.com> for its services, being a strong domain name which is directly linked and associated with their service. The Respondent argues that there can be no “real hindering” when the Complainant cannot use the disputed domain name to link to its service as the Complainant is not dependent on the use of the disputed domain name. The Respondent adds that from December 2015 to April 2016 the disputed domain name linked exclusively to the Complainant’s own domain name and therefore the Complainant gained from the Respondent’s services as the Respondent generated further clicks for the Complainant. The Respondent notes that payment was issued by the Complainant’s payment partner in this respect and produces a redacted version of its bank statement showing that “Worldpay AP Ltd” made payment of EUR 637.45 and EUR 4,278.93 on September 11, 2017.
The Respondent notes that after the Complainant approached the Respondent to say that the link to the Complainant’s domain name was no longer wanted, the Respondent changed the linking of the disputed domain name to the “Mega Rewards” offer as it did not want further dispute with the Complainant, adding that this situation was tolerated by the Complainant between April and November 2016.
The Respondent concludes that the disputed domain name was used to enhance the Respondent’s “Mega Rewards” business and had no negative influence on the Complainant’s services. The Respondent notes that since it changed the use of the disputed domain name to “Mega Rewards” the Complainant’s trademark has not been included or used in any way on the corresponding website.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no dispute between the Parties regarding the existence of the Complainant’s rights in its MR GREEN registered trademark. The test under paragraph 4(a)(i) of the Policy requires a comparison of the Complainant’s trademark with the disputed domain name. However, the Parties disagree as to the nature of the comparison to be made. The Complainant submits that the entire disputed domain name is relevant for the comparison while the Respondent disagrees, stating that only the second-level domain, in this case “mr”, should be compared with the Complainant’s trademark. The Respondent goes on to argue (incorrectly) that while an entire domain name has been compared with a trademark in exceptional cases under the Policy this has only been held to be relevant where the trademark also contains a dot, which is present for technical reasons between a top-level and second-level domain name.
The Panel considers that the Respondent’s view on this topic is misconceived. Section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that the applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark. It does so in the present case. No qualification is added to this general consensus view regarding any necessity for the dot to form part of the trademark.
This has likewise been the approach of panels under the Policy in both country code top-level domain cases and gTLD cases where the complainant’s trademark “spans the dot” in the domain name concerned, see for example Tesco Stores Limited v. Mat Feakins, WIPO Case No. DCO2013-0017 (<tes.co> compared to TESCO trademark); Bayerische Motoren Werke AG v. Masakazu/Living By Blue Co., Ltd., WIPO Case No. DMW2015-0001 (<b.mw> compared to BMW trademark); Swarovski Aktiengesellschaft v. Aprensa UG haftungsbeschraenkt, Mike Koefer, WIPO Case No. D2016-2036 (<swarov.ski> compared to SWAROVSKI trademark); and WeWork Companies, Inc. v. Michael Chiriac, Various Concepts Inc., WIPO Case No. D2016-1817 (<joinwe.work>, <nycwe.work>, and <rentmywe.work> compared to WE WORK trademark).
In these circumstances, the Panel will compare the Complainant’s trademark MR GREEN to the entirety of the disputed domain name <mr.green> in the assessment of confusing similarity. In so doing, the Panel finds that the Complainant’s mark is readily identifiable in the disputed domain name, taken as a whole. It should be noted that the disputed domain name is alphanumerically identical to the trademark with the exception of the addition of the dot which does nothing in the Panel’s view to distinguish the mark from the disputed domain name. In the Panel’s view, this leads to a finding of confusing similarity.
The panels in the cases cited above likewise considered the dot in the applicable domain names to be of no special significance or distinguishing value when compared to the complainant’s mark. The Respondent in the present case argues that the dot in the disputed domain name should be held to serve just such a distinguishing role. The Panel does not agree. On the contrary, if the dot were treated as having any relevance by the Panel in this case it could only be that this acts to enhance confusion with the Complainant’s mark as discussed below.
Conventionally the word “Mister” is abbreviated to “Mr” in standard English usage. Some forms of the English language combine this abbreviation with a following period or full stop, in order to denote that the abbreviation has been made, while others including contemporary British English typically dispense with this feature. In the Panel’s experience, English speakers are familiar with both the forms “Mr” and “Mr.” They would read either or both of these as “Mister”. Accordingly, whether or not the dot is brought into the comparison in the present case, the disputed domain name is more likely than not to be read by English speaking Internet users as “Mister [abbreviated] Green” in exactly the same way as would the Complainant’s trademark. This is sufficient to dispose of the Respondent’s argument on this topic. The Panel adds for completeness that the fact that the Complainant’s mark may consist of common dictionary words as the Respondent contends is not relevant for the purpose of the assessment under paragraph 4(a)(i) of the Policy, although it may be a relevant factor to the assessment or the Respondent’s rights and legitimate interests and/or registration and use in bad faith under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy respectively.
In all of these circumstances, the Panel finds that the Complainant has rights in a trademark and that the disputed domain name is confusingly similar to such mark. The requirements of paragraph 4(a)(i) of the Policy have therefore been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
The Panel is of the view that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name on the basis of its submissions that the Respondent has no rights in the MR GREEN trademark, is not a licensee of the Complainant, nor is in possession of any authorization from the Complainant to register its trademark as a domain name. Accordingly, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain name.
The Respondent does not claim to be commonly known by the disputed domain name and it is a matter of admission that the Respondent has used the disputed domain name with intent for commercial gain. The essence of the Respondent’s case on this topic is that it has made two principal uses of the disputed domain name, each of which are alleged to constitute a bona fide offering of goods and services, namely first, between December 2015 and April 2016 the disputed domain name was pointed to the Complainant’s own website while the Respondent participated in the Complainant’s affiliate scheme and secondly (presumably between April 2016 until about July 2017 when the Complainant wrote to the Respondent) it was used to point to the Respondent’s website at “www.megarewards.net”. The Panel disregards the present use of the disputed domain name to point to a page at “www.wikipedia.com” in light of the fact that the Respondent specifically notes that this is merely a holding position and submits that it should not be considered to have abandoned its plans in respect of the disputed domain name.
With regard to the use of the disputed domain name in connection with the Complainant’s affiliate scheme, the Respondent asserts that this was done with the Complainant’s knowledge and acceptance. The Complainant denies this. Clearly, if this had been done on the Complainant’s instructions, with the Complainant’s express permission or possibly even with the Complainant’s demonstrable tacit consent this could potentially give rise to rights and legitimate interests on the Respondent’s part. However, the record does not demonstrate the existence of any such consent or permission, whether tacit or express. The evidence supplied by the Respondent in support of its assertion on this topic is restricted to its bank statement allegedly showing payments from the Complainant’s payment provider and a “message protocol” showing an exchange of messages between the Respondent and a person whom the Respondent states is “a high ranking affiliate manager of the Complainant”.
Dealing first with the “message protocol”, this appears to contain an exchange dated July 16, 2016 in the German language between persons who are not specifically identified by the Respondent, although the Panel assumes that one is the Respondent himself as he is addressed as “Alfred” by the other. The Respondent did not provide an English language translation of the messages despite the language of the proceeding being English. The Panel has limited German but is able to make out the messages as follows. The sender identifies that the disputed domain name is “top” and asks whether the other party would want to sell it or lease it for six months. The recipient of that message proposes a time when this could be discussed.
The Panel finds nothing in the exchange of messages produced by the Respondent which demonstrates either that the sender is connected in any way to the Complainant or that this constitutes permission by the Complainant or demonstrates the Complainant’s knowledge that the Respondent is using the disputed domain name in connection with the Complainant’s affiliate scheme. Importantly, the messages post-date the registration of the disputed domain name and alleged commencement of the Respondent’s use of the scheme by around seven months. In these circumstances, even if the messages had adequately demonstrated the Complainant’s knowledge of the Respondent’s use of the disputed domain name, they could only have done so as at July 2016. They could not therefore be evidence of any such knowledge and/or consent at the point when the disputed domain name was registered and when, on the Respondent’s own submission, such use allegedly commenced. The Panel also observes that on the Respondent’s account, it had ceased to use the disputed domain name for the Complainant’s affiliate scheme in April 2016 and had begun use in connection with its “Mega Rewards” site. This begs the question as to why “a high ranking affiliate manager of the Complainant” would be contacting the Respondent and commenting on the disputed domain name in July 2016. In the absence of any explanation from the Respondent the Panel does not know and cannot reasonably anticipate the answer.
Secondly, dealing with the Respondent’s bank statement, the unredacted portion of this document shows two payments from Worldpay AP dated September 11, 2017 to the Respondent. There is no evidence before the Panel that such payment was made by or on behalf of the Complainant in connection with the affiliate scheme or otherwise. Even if such evidence were available, this would not serve to demonstrate the Complainant’s knowledge or consent to the use of the disputed domain name for the purpose contended. In other words, it is equally likely on the present record that the disputed domain name was used by the Respondent in connection with the Complainant’s affiliate scheme and that the Complainant engaged with the Respondent to pay commissions but that throughout such engagement the Complainant remained entirely unaware that any commission-generating outcome was achieved via the disputed domain name.
In these circumstances and on the present record, the Respondent cannot derive any rights or legitimate interests from the original use of the disputed domain name. With regard to the later use to point to the “Mega Rewards” site, the Panel does not consider that this could be regarded as conferring rights or legitimate interests on the Respondent either. Essentially, the record shows that the Respondent used the disputed domain name, being almost identical to the Complainant’s trademark, in order to divert traffic to a site featuring substantially the same offering as that which the Complainant provides, namely online casino games. This is clearly a commercial use, as was the prior use in connection with the affiliate scheme, but it can in no way be considered to be a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy since it relies upon and benefits from the confusing similarity between the Complainant’s trademark and the disputed domain name.
The Respondent’s argument that the “mr” in the disputed domain name was intended to be an abbreviation for “Mega Rewards” simply does not hold water. In the first place, this assertion does not sit well with the Respondent’s admitted original intent to use the disputed domain name from its initial registration in a manner directly connected with the Complainant and its MR GREEN trademark, until, as the Respondent puts it, the Complainant told it that this “is no longer wanted”. In the second place, substituting “Mega Rewards” with “mr” does not amount to a natural abbreviation which serves to distinguish the Respondent’s offering from that of the Complainant. On the contrary, the risk of confusion remains because the disputed domain name will be read by the majority of Internet users as “Mr. Green” for the reasons discussed above. Thirdly, while the Panel does not consider that the Respondent’s logotype is of striking similarity to that of the Complainant, it nevertheless appears to be calculated to ensure that the Complainant’s MR GREEN trademark appears prominently contained within, in the sense that the letters “M” and “R” of “Mega Rewards”, which are set apart from the remaining text and spaced downward in a 45 degree angle, are exceptionally prominent and colored in the same color of green as the element “.GREEN” while the remaining elements are in black and thus of lesser prominence. The downward diagonal or 45 degree positioning of the letters “M” and “R” mirrors the similar upward 45 degree angle of the Complainant’s logo.
In all of these circumstances, the Panel finds that the Respondent has failed to bring forward evidence of its rights and legitimate interests in the disputed domain name sufficient to displace the Complainant’s prima facie case outlined above. The Panel therefore holds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.
On this topic, the Panel again focuses on the registration and use of the disputed domain name initially for the Complainant’s affiliate scheme as admitted by the Respondent and its subsequent use for the “Mega Rewards” site. It should be noted that there is no direct evidence before the Panel that the Respondent ever used the disputed domain name in connection with the Complainant’s affiliate scheme. There is equally no evidence that, if it did so, it had the Complainant’s permission to make such use. In these circumstances, both this and the “Mega Rewards” use can be taken together as evidence of registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy as discussed below.
On the Respondent’s own account, it registered and used the disputed domain name in order to engage in the Complainant’s affiliate scheme whereby it obtained commission from the Complainant. It is unclear whether such commission would have been generated in respect of traffic or sales conversions but in any event the admission amounts to evidence of an intent for commercial gain on the Respondent’s part. If the Respondent’s account is to be believed, the consequence for the Panel is that the Respondent selected a domain name which would inevitably cause confusion as to source or sponsorship, given that it contains a near exact representation of the Complainant’s MR GREEN mark, in order to maximize traffic or sales and thus commission. The fact that such traffic or sales might also have partially benefitted the Complainant is neither here nor there. It does not entitle a third party such as the Respondent effectively to cloak itself in the style of the Complainant in order to make commercial gain from the resulting confusion. For the reasons discussed in the preceding section, the Panel does not accept the Respondent’s contention that the Complainant was aware of and consented to the Respondent’s actions. The Respondent has produced no evidence which adequately vouches for any such knowledge or consent. In these circumstances, this amounts to an intentional attempt to attract Internet users to an online location by creating a likelihood of confusion with the Complainant’s mark for commercial gain and thus is evidence of registration and use in bad faith. The Panel finds that the Respondent’s argument that the Complainant’s mark is weak because it consists of dictionary words does not assist its case. On the Respondent’s own account, its registration and use of the disputed domain name in connection with the Complainant’s affiliate scheme was predicated on the Complainant’s mark itself and not on any unrelated dictionary meaning.
Secondly, the Panel turns to consider the Respondent’s “Mega Rewards” use of the disputed domain name. This is in fact the only use for which there is direct evidence on the record. It strikes the Panel as prototypical cybersquatting relative to the Complainant’s trademark. As discussed in the previous section, the Panel considers that the Respondent’s argument that the disputed domain name can be seen as “Mega Rewards [dot] Green” with the “Mega Rewards” component abbreviated to “mr” is wholly unconvincing, particularly given the use of the disputed domain name in connection with online casino gaming which corresponds to the use to which the Complainant has put its MR GREEN trademark for the past decade. This also serves to dispose of the Respondent’s argument relating to the alleged weakness of the Complainant’s mark due to the combination of dictionary words. The Complainant’s mark is not descriptive of services relating to casino gaming. Both uses of the disputed domain name which the Respondent describes have nothing to do with any dictionary meaning and everything to do with the Complainant’s mark.
The Respondent’s attempt to distinguish the services which it provides from those of the Complainant is equally lacking in merit. As far as the Panel can see, the Respondent provides links to online casino games, albeit that it perhaps does not operate such games directly. In any event, from the appearance of the site to consumers this amounts to the same business in which the Complainant is engaged. Accordingly, on the balance of probabilities, the Panel finds that the “Mega Rewards” use also constitutes an intentional attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation of such website. Likewise, this is evidence of registration and use in bad faith.
For completeness, the Panel notes that it has not given any weight to the present use of the disputed domain name in the assessment of registration and use in bad faith. This use commenced only after the Complainant sent its cease and desist letter and it does not provide any assistance on the issue of the intent with which the Respondent registered the disputed domain name nor does it provide any appearance of good faith as regards the use to which the disputed domain name has been put.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mr.green> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: November 30, 2017
