Rootz LTD v Francois Matten

WIPO Case No. D2024-4953

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Rootz LTD v. Francois Matten

Case No. D2024-4953

1. The Parties

The Complainant is Rootz LTD, Malta, represented by Wilmark Oy, Finland.

The Respondent is Francois Matten, France.

2. The Domain Name and Registrar

The disputed domain name <caxino-nz.bet> is registered with URL Solutions, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2024. On December 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

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 December 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2025.

The Center appointed Karen Fong as the sole panelist in this matter on January 14, 2025. 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.

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4. Factual Background

The Complainant is an igaming company based in Malta. It provides online casino services under the brand CAXINO through a website at the domain name <caxino.com>. The CAXINO trade mark is registered in the following territories:

- European Union Trade Mark Registration No. 018017682 for CAXINO registered on October 7, 2020;
- European Union Trade Mark Registration No. 018211738 for CAXINO (stylized) registered on July 7, 2020;
- International Trade Mark Registration No. 1552795 for CAXINO designating numerous countries including

United States of America, Japan, and Singapore registered on February 19, 2020.

(individually and collectively referred to as the “Trade Mark”).

The Respondent who is based in France registered the disputed domain name on October 21, 2024. The Complainant alleged that the disputed domain name resolved to a website which opens an advert for a competing online casino called Spinstralia Casino and also includes links to the same competing casino. No evidence was submitted to substantiate the allegation. The disputed domain name is now inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for identity or confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s Trade Mark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the Trade Mark is reproduced within the disputed domain name. Accordingly,
the disputed domain name is confusingly similar to the Trade Mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

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While the addition of the geographical term “-nz” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.8.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Moreover, the nature of the disputed domain name that consists of the Complainant’s trademark in its entirety and registered in the “.bet” Top-Level Domain (“TLD”) descriptive of the Complainant’s services, is likely to mislead Internet users expecting to find the Complainant as it effectively impersonates or suggests sponsorship or endorsement by the Complainant.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name fully incorporates the Trade Mark and its Top-Level Domain “.bet” describes the Complainant’s business, indicating that the Respondent likely had actual knowledge of and was targeting the Complainant and the Trade Mark when registering the disputed domain name.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s
mark.”

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The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice
of the disputed domain name without any explanation is also a significant factor to consider (as stated in
WIPO Overview 3.0, section 3.2.1). The disputed domain name falls into the category stated above and the
Panel finds that registration is in bad faith.

The Complainant has alleged in the Complaint that the disputed domain name was being used in bad faith because it resolved to a website with links to a competing online gaming website. However, copies of the webpages were not submitted in evidence and the Wayback Machine does not have copies of these pages.

The Panel notes that the disputed domain name is inactive. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the
doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the
disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding.
Although panelists will look at the totality of the circumstances in each case, factors that have been
considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or
reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any
evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of
false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any
good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the distinctiveness of the Trade Mark in the field of online gaming, the misleading composition of the disputed domain name, the incomplete or false address provided by the Respondent when registering the disputed domain name (the Written Notice was not able to

be delivered by the courier service as further information was required), and lack of a response from the Respondent, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

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 <caxino-nz.bet> be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: January 23, 2025