DECISION

 

Rush Street Interactive, LP and Rush Street Interactive Colombia S.A.S v. Bernatskyi OLEKSII

Claim Number: FA2402002085057

 

PARTIES

Complainant is Rush Street Interactive, LP and Rush Street Interactive Colombia S.A.S ("Complainant"), represented by John L Krieger of Dickinson Wright PLLC, Nevada, USA. Respondent is Bernatskyi OLEKSII ("Respondent"), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rushbets.co> ("Domain Name"), registered with NETIM SARL.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 22, 2024; Forum received payment on February 22, 2024.

 

On February 23, 2024, NETIM SARL confirmed by e-mail to Forum that the <rushbets.co> domain name is registered with NETIM SARL and that Respondent is the current registrant of the name. NETIM SARL has verified that Respondent is bound by the NETIM SARL 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 February 28, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2024 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@rushbets.co. Also on February 28, 2024, 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.

 

Having received no formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 20, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint."  Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."

 

Previous panels have interpreted Forum's Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int'l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. 

 

The Panel has reviewed the Complaint and is satisfied that that Rush Street Interactive Colombia S.A.S, Inc. is the exclusive licensee in Columbia of all trademarks owned by Rush Street Interactive, LP. relevant to the proceeding.  This is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to in the singular, as "Complainant".

 

PARTIES' CONTENTIONS

A. Complainant

Complainant operates a series of online casinos and sports betting services under a variety of RUSH-formative marks, including RUSH, RUSHBET and RUSH STREET. Complainant claims rights in the RUSH mark through registration with multiple trademark agencies, including with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 5,270,596 registered August 22, 2017). The disputed domain name <rushbets.co> is confusingly similar to the RUSH mark because it wholly incorporates Complainant's registered RUSH mark, differing only through the addition of the generic or descriptive term "bets" and the ".co" country-code top-level domain ("ccTLD").

        

Respondent lacks rights or legitimate interests in the <rushbets.co> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the RUSH mark in any way. Additionally, Respondent fails to use the Domain Name in connection with any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to divert users to a website (the "Respondent's Website") where it offers competing gambling services for commercial gain.

 

Respondent registered and uses the <rushbets.co> domain in bad faith. Respondent uses the confusingly similar Domain Name to attract users to the Respondent's Website for commercial gain, where it offers competing services. Respondent had actual knowledge of Complainant's rights in the RUSH mark prior to registration of the Domain Name.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.  On February 29, 2024, Respondent sent an e-mail to Forum, simply stating "Hello, what should I do to close this case?"

 

FINDINGS

Complainant holds trademark rights for the RUSH mark.  The Domain Name is confusingly similar to Complainant's RUSH mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has 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 and 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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has rights in the RUSH mark through its registration of the mark with the USPTO (e.g., Reg. No. 5,270,596 registered August 22, 2017). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the <rushbets.co> domain name is confusingly similar to Complainant's RUSH mark because it wholly incorporates Complainant's RUSH mark and adds the generic term "bets" and the ccTLD ".co".  Adding a generic term and a ccTLD to a mark to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also 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 finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the RUSH mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Bernatskyi OLEKSII" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is presently inactive but prior to the commencement of the proceeding redirected to the Respondent's Website where Respondent purported to offer gambling services to the public under the RUSH or RUSHBET marks. The Complainant also offers gambling services to the public under its RUSH or RUSHBET marks. The use of a confusingly similar domain name to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii).  See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that "use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).").  See also Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time Respondent registered the Domain Name, June 14, 2023, Respondent had actual knowledge of Complainant's RUSH mark since the Complainant is a well-known entity and the Respondent's Website offered gambling services, the same line of services offered by Complainant.  Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that incorporates the RUSH mark, along with a descriptive term that relates to the services offered ("bets") and use it to redirect visitors to a website purporting to offer gambling services other than to take advantage of Complainant's reputation in the RUSH Mark.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to redirect Internet users to Respondent's own website where Respondent purports to offer services in direct competition with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent's competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant's business by diverting Internet users from the complainant's website to the respondent's website where it offered competing printer products).  Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <rushbets.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: March 20, 2024