Opportunistic bad faith: Rushbet.com lost via the UDRP process

When a company’s trademark expires, there’s opportunity for mischief, according to some. In the case of the domain name Rushbet.com, the registrant took a chance with picking up the domain after Rush Street Interactive allowed its RUSHBET mark and the domain to lapse.

The Complainant called this action “opportunistic bad faith” and the Forum (NAF) panelist agreed:

[…] Complainant argues Respondent engaged in opportunistic bad faith, registering the rushbet.com domain name after Complainant’s RUSHBET mark expired. Opportunistic bad faith may be present when the respondent registers the disputed domain name after the complainant’s mark mistakenly expires. […] Here, Complainant argues it had rights in the RUSHBET mark that expired, after which Respondent registered the rushbet.com domain name. […] The Panel agrees and finds Respondent registered and uses the disputed domain name in opportunistic bad faith.

The domain Rushbet.com was sold via the GoDaddy auctions for $7,900 dollars in December 2021. Source: NameBio.

The Complainant had lots of beef in this case, as they had previously acquired Rushbet.com via the Uniregistry Market for $15,009 dollars in 2018. Source: NameBio.

Final decision: Order the transfer of Rushbet.com to the Complainant.

Rush Street Interactive, LP v. Chandika Padukka

Claim Number: FA2205001997572

PARTIES

Complainant is Rush Street Interactive, LP (“Complainant”), represented by John L Krieger of Dickinson Wright PLLC, Nevada, USA. Respondent is Chandika Padukka (“Respondent”), Sri Lanka.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with GoDaddy Online Services Cayman Islands Ltd..

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 23, 2022; the Forum received payment on May 23, 2022.

On May 24, 2022, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to the Forum that the domain name is registered with GoDaddy Online Services Cayman Islands Ltd. and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rushbet.com. Also on May 25, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on June 6, 2022.

A timely Additional Submission from Complainant was received June 10, 2022.

On June 9, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant:

1. Complainant provides a platform for legal, online casinos and sports betting. Complainant asserts rights in the RUSH mark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 5,270,596, registered on August 22, 2017). See Amend. Compl. Annex 3. Respondent’s domain name is identical or confusingly similar to Complainant’s RUSH mark, as it incorporates the mark in its entirety, only adding the “bet” generic term and the “.com” generic top-level domain (gTLD).

2. Respondent has no rights or legitimate interests in the domain name. Complainant has not authorized or licensed Respondent to use the RUSH mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent only has a passive holding of the disputed domain name.

3. Respondent registered and uses the domain name in bad faith. Respondent had actual notice of Complainant’s rights in the RUSH mark, evidenced by the fame and notoriety of the mark. Additionally, Respondent only hosts a passive website, lacking substantive content. Finally, Respondent engaged in opportunistic bad faith, as Respondent registered the domain name after Complainant’s RUSHBET mark’s registration expired.

B. Respondent:

1. Respondent submitted a response on June 5, 2022. Respondent disputes Complainant’s assertions regarding Respondent’s use of the domain name. Respondent asserts the domain name symbolizes and means the pursuit of rapid, unearned wealth.

2. Respondent also argues the disputed domain name is used in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use, including legitimate information on mental wellbeing, such as yoga’s importance to overcome anxiety and depression.

3. Additionally, Respondent contends it does not intend to commercial benefit in bad faith. In contrast, someone reached out to Respondent to buy the disputed domain name, which Respondent refused.

FINDINGS

1. Respondent’s domain name is confusingly similar to Complainant’s RUSH mark.

2. Respondent does not have any rights or legitimate interests in the domain name.

3. Respondent registered or used the domain name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

Identical and/or Confusingly Similar

Complainant asserts rights in the RUSH mark through its registration of the mark with multiple trademark agencies around the world, including the USPTO (e.g., Reg. No. 5,270,596, registered on August 22, 2017). See Amend. Compl. Annex 3. Registering a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel finds Complainant has sufficiently established rights in the RUSH mark per Policy ¶ 4(a)(i).

Complainant argues Respondent’s domain name is identical or confusingly similar to Complainant’s RUSH mark, as it incorporates the mark in its entirety, only adding the generic term “bet” and the “.com” gTLD. The simple addition of a generic term and a gTLD is not sufficient to differentiate a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). The Panel agrees with Complainant and finds the domain name is identical or confusingly similar to Complainant’s RUSH mark.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant contends Respondent lacks rights and legitimate interests in the domain name because Respondent is not authorized to use the RUSH mark, nor is Respondent commonly known by the disputed domain name. To determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii), the Panel may reference WHOIS information. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as “Chandika Padukka” and there is no evidence to suggest Complainant authorized Respondent to use the RUSH mark in any way. See Amend. Compl. Ex. 1a. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

Complainant also argues Respondent does not use the domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website lacks substantive content. Passively holding a domain name to redirect users to a website that lacks substantive content is not a bona fide offering of goods and services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). In this case, Complainant provides a screenshot of the resolving website. See Amend. Compl. Annex 5. The Panel agrees the website lacks substantive content, and the Panel finds Respondent is not using the domain name in accordance with Policy ¶¶ 4(c)(i) or (iii).

Registration and Use in Bad Faith

Complainant asserts Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). When making a determination of bad faith, the Panel may look beyond Policy ¶ 4(b) arguments to a totality of the circumstances. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

First, Complainant contends Respondent registered the domain name with actual notice of Complainant’s rights in the RUSH mark, evidenced by the fame and notoriety of the mark. When looking at a respondent’s actual notice, panels have referenced the mark’s fame and notoriety. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant argues it is a well known platform for online, legal casinos. See Amend. Compl. Annexes 3 and 4. The Panel agrees Respondent had actual notice of Complainant’s rights in the RUSH mark, and the Panel finds Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).

Similarly, Complainant states Respondent only has passive holding of the disputed domain name, resolving to a website that lacks substantive content. If a respondent uses a domain name to host an inactive or passive website, the Panel may find bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). In this case, Complainant provides a screenshot of the resolving website to show its lack of substantive content. See Amend. Compl. Annex 5. The Panel therefore finds Respondent acted in bad faith per Policy ¶ 4(a)(iii).

Finally, Complainant argues Respondent engaged in opportunistic bad faith, registering the domain name after Complainant’s RUSHBET mark expired. Opportunistic bad faith may be present when the respondent registers the disputed domain name after the complainant’s mark mistakenly expires. See Avocent Huntsville Corp. v. Taro Yamada / Personal, FA1409001582613 (Forum Nov. 25, 2014) (holding that the respondent had engaged in opportunistic bad faith pursuant to policy ¶ 4(a)(iii), when it registered the disputed domain name immediately after the complainant mistakenly allowed it to expire). Here, Complainant argues it had rights in the RUSHBET mark that expired, after which Respondent registered the domain name. See Amend. Compl. Annexes 1-4. The Panel agrees and finds Respondent registered and uses the disputed domain name in opportunistic bad faith.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: June 23, 2022

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