Veikkaus Oy v Redacted for Privacy, Privacy service provided by Withheld

WIPO Case No. DIO2024-0004

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Veikkaus Oy v. Redacted for Privacy, Privacy service provided by Withheld
for Privacy ehf

Case No. DIO2024-0004

1. The Parties

The Complainant is Veikkaus Oy, Finland, represented Berggren Oy Ab, Finland.

The Respondent is Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf, Iceland.

2. The Domain Name and Registrar

The disputed domain name <veikkausbonukset.io> (the “Disputed Domain Name”) is registered with

Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2024. On February 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 21, 2024, the Registrar transmitted by email to the Center its verification response listing the Respondent as the registrant and providing the contact details for the Disputed Domain Name.

The Center verified that the Complaint satisfied the formal requirements of the .IO Domain Name Dispute the WIPO Supplemental Rules for .IO 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 March 14, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2024. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 9, 2024.

The Center appointed Nicholas Weston as the sole panelist in this matter on April 15, 2024. 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.

The language of the proceeding is English, the language of the registration agreement.

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4. Factual Background

The Complainant exclusively operates the sole legal betting, lottery, and gambling service in Finland. The
Complainant holds registrations for the trademark VEIKKAUS in Finland pursuant to the Registration No.
248158, registered on February 15, 2010, in classes 35 and 42 and registration No. 266351, registered on
April 8, 2016, in classes 9, 16, 28, 35, 36, 38, 41 and 42.

The Complainant is also the owner of, inter alia, the domain name <veikkaus.fi>, which resolves to the company’s main website.

The Disputed Domain Name <veikkausbonukset.io> was registered on November 13, 2020. The
Complainant has supplied uncontested evidence that this Disputed Domain Name was used to direct Internet
users to a website that refers mainly to games lawfully and exclusively offered to the Finnish public by the

Complainant on the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

The Complainant cites its trademark registrations for VEIKKAUS in Finland as prima facie evidence of ownership.

The Complainant submits that the trademark VEIKKAUS “is distinctive, well-known, and widely recognized around the world” and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the VEIKKAUS trademark and that the similarity is not

removed by the addition of the word “bonukset”, which from Finnish language translates to the English word
“bonus”.

The Complainant contends that it operates a monopoly “based on law and enjoys goodwill as the Finnish law contains rules and processes for use of the company’s profits for the benefit of the society”. As such, it contents that the Respondent has no authorized rights or legitimate interests in respect of the Disputed Domain Name.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules. It submits that the registration and use “has been done with the intention to attract Internet users to the Respondents website, creating a likelihood of confusion with registered and well-known VEIKKAUS trademark and lottery operations of Veikkaus” and that the “Respondent undeniably knew the identity and business of the Complainant and had intent to target its rights for commercial purposes before it registered the [D]isputed [D]omain [Name]” in bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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(ii)       that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)      that the Disputed Domain Name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark VEIKKAUS. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected URDP

Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).[1]

[1]The Panel notes that the Policy is similar to the Uniform Domain Name Dispute Resolution Policy (the “UDRP”). Thus, the Panel, has

Turning to whether the Disputed Domain Name is identical or confusingly similar to the VEIKKAUS trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s VEIKKAUS trademark; (b) followed by the word “bonukset”; and (c) followed by the country- code Top-Level Domain (“ccTLD”) “.io”.

It is well established that the TLD used as technical part of a domain name may be disregarded (see section
1.11.1 of the WIPO Overview 3.0). The relevant comparison to be made is with the second-level portion of
the Disputed Domain Name, specifically: “veikkausbonukset”.

It is also well-established that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see WIPO Overview 3.0, section 1.7).

This Panel accepts that the addition of the word “bonukset” does not preclude a finding of confusing similarity to the Complainant’s trademark (see WIPO Overview 3.0, section 1.8).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden of proof on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name because it has not licensed, permitted or authorized the Respondent to use the
Complainant’s trademark or to sell its products and for those reasons, the Respondent is not making a
bona fide offering of goods or services. The Complainant submits that “since Veikkaus is the only official
betting operator in Finland […] [g]iven that Veikkaus is the owner of similar domains, such as <veikkaus.fi>,
consumers will automatically presume that the domain <veikkausbonukset.io> is also owned by the
Complainant or it has some other connection to it.”

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This Panel accepts that the Respondent is not an authorized reseller with a legitimate interest in a domain name incorporating a Complainant’s mark, and there is no disclaimer on the website to which the Disputed Domain Name resolves to, therefore it cannot meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,

WIPO Case No. D2001 0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. Nor, alternatively, is the Respondent making use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.

The composition of the Disputed Domain Name consists of the Complainant’s trademark with the word because the evidence demonstrates that it has an awareness of the Complainant and its mark and intent to take unfair advantage of such, which does not support a finding of any rights or legitimate interests (see WIPO Overview 3.0, section 2.1).

“bonukset”, which from the Finnish language translates to the English word “bonus”. In this Panel’s view, the

In the absence of countervailing evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is engaging in an illegitimate commercial use of the Disputed Domain Name by suggesting some association with the Complainant and misleading consumers who are seeking out the Complainant’s mark VEIKKAUS to opportunistically divert Internet traffic to its web page.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered or Used in Bad Faith

The third element of the Policy that a complainant must also demonstrate is that the disputed domain name in question has been registered or used in bad faith. Unlike the position under the UDRP, this is not a conjunctive requirement. It is sufficient to establish only one or the other.

On the issue of registration, given the composition of the Disputed Domain Name, the Panel is satisfied that the Respondent targeted the Complainant’s trademark VEIKKAUS when it registered the Disputed Domain Name and the Panel is prepared to infer that the Respondent knew, or should have known, that its

registration would be identical or confusingly similar to the Complainant’s trademark despite the additional
word “bonukset” (see WIPO Overview 3.0, section 3.2.1).

In addition, a gap of several years between registration of the Complainant’s trademarks and the Complainant) can in certain circumstances be an indicator of bad faith. In this case, the Complainant’s rights in the trademark VEIKKAUS predates any rights that could possibly flow from the Respondent’s registration of the Disputed Domain Name by 10 years.

On the issue of use, the uncontradicted evidence of record is that the Disputed Domain Name was used to
resolve to a website bearing the Complainant’s trademark and games referred to on the Complainant’s
official website. In line with prior UDRP panel decisions, the Panel finds that this misconduct is an intentional
attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
Respondent’s website (see WIPO Overview 3.0, section 3.1.4).

This Panel accepts the Complainant’s uncontested evidence and finds that the Respondent has registered and used the Complainant’s trademark VEIKKAUS in the Disputed Domain Name, without the Complainant’s consent or authorization, for the likely purpose of capitalizing on the reputation of the trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the
Policy.

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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, <veikkausbonukset.io>, be transferred to the Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: April 27, 2024

referred to the WIPO Overview 3.0, where appropriate.