NATIONAL ARBITRATION FORUM

DECISION

Shakopee Mdewakanton Sioux Community v. Alex Green / Daniil Panichev / Pvi comp.

Claim Number: FA2412002128098

PARTIES

Complainant is Shakopee Mdewakanton Sioux Community ("Complainant"), represented by Katlyn M. Moseley of Faegre Drinker Biddle & Reath LLP, District of Columbia, USA. Respondent is Alex Green / Daniil Panichev / Pvi comp. ("Respondent"), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mysticlake.biz> and <mysticlakegaming.biz>, registered with NameCheap, Inc. and Porkbun LLC.

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.

The Honorable Neil Anthony Brown KC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 5, 2024; Forum received payment on December 5, 2024.

On December 5, 2024, NameCheap, Inc. and Porkbun LLC confirmed by e-mail to Forum that the <mysticlake.biz> and <mysticlakegaming.biz> domain names are registered with NameCheap, Inc. and Porkbun LLC and that Respondent is the current registrant of the names. NameCheap, Inc. and Porkbun LLC have verified that Respondent is bound by the NameCheap, Inc. and Porkbun LLC registration agreements 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 December 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@mysticlake.biz and postmaster@mysticlakegaming.biz. Also on December 9, 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 December 31, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 names be transferred from Respondent to Complainant.

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceeding, one of the two domain names is registered by the Registrant Alex Green and one of the domain names is registered by the Registrant Daniil Panichev who may be thought to be a different registrant. Thus, the proceeding may be said not to come within Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") which provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." The Complainant has therefore requested that the two potential proceedings be consolidated. However, the question is really whether the complaint is one proceeding where the domain names in reality have been registered by the same domain name holder and hence one where the proceeding has been validly instituted. The question therefore is whether the two named Respondents, because of their common control, can be said in reality to be "the same domain name holder".

In that regard, the Panel notes that, as the Complainant submits:

(a) both of the Domain Names were registered within weeks of each other, i.e. on October 21, 2024 and November 15, 2024, respectively. This suggest that both domain names were probably registered by the same person or entity;

(b) both of the Domain Names utilize the identical name servers to host content, raising the same probability;

(d) each of the domain names includes the ".biz" generic Top Level Domain;

(e) both Domain Names solicit users to the same online gaming website, when accessed through a computer, and to the same mobile application, Mystic Lake Casino, when accessed through a mobile device.

All of the foregoing considerations show that the two domain names were registered by the same person or entity under common control and that one or both of the registrants was using an alias. It would be naïve to conclude that entirely unconnected parties could have independently come to the same conclusion at about the same time to register similar domain names to perpetrate the same fraud that is shown by the evidence.

In view of the above common features, it is clear that both domain names have been registered by the same person who is therefore "the same domain name holder" within the meaning of Rule 3(c). In any event, if the two requests for the transfer of the two domain names are seen as separate disputes, it is clear that they should be consolidated. On either basis, the proceeding was validly filed and may go forward as one proceeding on that basis.

For reasons of convenience, the two nominal Respondents will hereafter be referred to as "the Respondent".

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

1. The Complainant is a United States federally registered Indian tribe which, through the Shakopee Mdewakanton Sioux Community Gaming Enterprise, operates Mystic Lake Casino and Resort in Minnesota.

2. The Complainant provides its goods and services under the trademarks for MYSTIC LAKE. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the MYSTIC LAKE trademark by virtue of its registration of that mark with the United States Patent and Trademark Office, registration number 1,882,743, registered on March 7, 1995 and other trademarks for MYSTIC LAKE, MYSTIC and derivatives (collectively "the MYSTIC LAKE trademark*). The Complainant has used that trademark since its registration to offer its goods and services.

3. The MYSTIC LAKE trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4. As well as its trademark, Complainant has registered the domain name <mysticlake.com> that it uses in its business and in particular for its website at www.mysticlake.com where it markets its products under the MYSTIC LAKE trademark and brand.

5. The Respondent registered the <mysticlake.com> domain name on October 21, 2024, and the <mysticlakegaming.biz> domain name on November 15, 2024 ("the disputed domain names").

6. The disputed domain names embody, without the consent of the Complainant, the MYSTIC LAKE trademark with the addition, in the case of the <mysticlakegaming.biz> domain name, the generic word "gaming" and the generic Top Level Domain ".biz".

7. The disputed domain names are, respectively, identical and confusingly similar to the MYSTIC LAKE trademark.

8. The Respondent has no rights or legitimate interests in the disputed domain names. That is so because:

(a) the Respondent has no trademark or intellectual property rights in the disputed domain names;

(c) the Respondent has not used the domain names for a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i);

(d) the Respondent has not used the domain names for a legitimate non-commercial or fair use within the meaning of Policy ¶4(c)(iii);

(e) the Respondent has caused the domain names to resolve to a website that offers competing gaming services to those of the Complainant;

(f) the Respondent also uses the domain names to redirect consumers to a mobile application named MYSTIC LAKE CASINO that offers competing games to those of the Complainant;

(g) the Respondent is impersonating and passing itself off as the Complainant; and

(h) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain names.

9. The Respondent has registered and used the disputed domain names in bad faith. That is so because:

(a) the Respondent had knowledge of the Complainant and its trademark when it registered the disputed domain names;

(c) the Respondent has attempted to impersonate and pass itself off as the Complainant to sell competing and unauthorized gaming services;

(d) the Respondent's aforesaid conduct has generated confusion between the Complainant's and the Respondent's websites within the meaning of Policy ¶ 4(b)(iv); and

(e) all of the acts, facts, matters and circumstances revealed by the evidence will show that the Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent failed to submit a formal Response in this proceeding.

FINDINGS

1. The Complainant is a United States federally registered Indian tribe which, through the Shakopee Mdewakanton Sioux Community Gaming Enterprise, operates Mystic Lake Casino and Resort in Minnesota.

2. The Complainant provides its goods and services under the trademark for MYSTIC LAKE. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the MYSTIC LAKE trademark by virtue of its registration of that mark with the United States Patent and Trademark Office, registration number 1,882,743, registered on March 7,1995 and other trademarks for MYSTIC LAKE, MYSTIC and derivatives (collectively "the MYSTIC LAKE trademark). The Complainant has used that trademark since its registration to offer its goods and services.

3. The Respondent registered the <mysticlake.com> domain name on October 21, 2024, and the <mysticlakegaming.biz> domain name on November 15, 2024 ("the disputed domain names").

4. The disputed domain names embody, without the consent of the Complainant, the MYSTIC LAKE trademark with the addition, in the case of the <mysticlakegaming.biz> domain name the addition of the generic word "gaming" and the generic Top Level Domain ".biz".

5. The Respondent has caused the domain names to resolve to a website and mobile application and by that means has sought to impersonate and pass the Respondent off as the Complainant, mislead internet users, utilize and infringe the Complainant's trademark, and offer competing gaming services to those of the Complainant.

6. By reason of the matters aforesaid, and as established by the evidence, the disputed domain names are identical and confusingly similar respectively to the MYSTIC LAKE trademark, the Respondent has no rights or legitimate interests in the disputed domain names and the disputed domain names have been registered and used in bad faith.

7. Accordingly, the disputed domain names should be transferred from the Respondent to the Complainant.

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 the domain names should be cancelled or transferred:

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

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

(3) the domain names have been registered and are 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

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The Complainant provides its goods and services under the trademark for MYSTIC LAKE. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the MYSTIC LAKE trademark by virtue of its registration of that mark with the United States Patent and Trademark Office, registration number 1,882,743, registered on March 7,1995 and other trademarks for MYSTIC LAKE, MYSTIC and derivatives (collectively "the MYSTIC LAKE trademark). The Complainant has used that trademark since its registration to offer its goods and services.

The aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order.

The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain names are identical or confusingly similar to the Complainant's MYSTIC LAKE trademark.

With respect to the <mysticlake.biz> domain name, the Panel finds that it is identical to the MYSTIC LAKE trademark. That is so because the domain name consists of the entirety of the trademark with no alterations.

The Panel also finds that the <mysticlakegaming.biz> domain name is confusingly similar to the MYSTIC LAKE trademark for the following reasons. The disputed domain name embodies, without the consent of the Complainant, the MYSTIC LAKE trademark with the addition of the generic word "gaming" and the generic Top Level Domain ".biz". When a domain name includes a trademark, as in the present case, it is more likely than not that the domain name is confusingly similar to the trademark. Thus, internet users would read the domain name as invoking the trademark, as dealing with the Complainant's services offered under the trademark and as being either the domain name of the Complainant itself or one that has been registered with its consent. The addition of the generic word "gaming" would be interpreted by internet users to mean that the domain name will deal with the Complainant's gaming services. That is because the addition of a generic word will not negate a finding of confusing similarity that is otherwise present on the evidence.

The present case is slightly different, although it leads to the same result because, if anything, the addition of the word "gaming" in the present case strengthens the notion that the Respondent was intending to invoke the Complainant and the gaming services with which its name is associated. Gaming aficionados and the community as a whole would have no trouble in concluding when they see the words "mystic lake" and "gaming" together, that what is being referred to are the gaming services provided at the Mystic Lake Casino and Resort operated by the Complainant and it is hard to see how they could think that those words mean anything different.

The addition of the generic Top Level Domain ".biz" is ignored in making the comparison, because all domain names must have such an extension.

Thus, internet users would read both domain names as invoking the trademark, as dealing with the Complainant's gaming services offered under the trademark and as being domain names of the Complainant itself or domain names that have been registered with its consent.

The Panel therefore finds that the disputed domain names are, respectively, identical to and confusingly similar to the MYSTIC LAKE trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish under the Policy.

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names on all of the grounds relied on by the Complainant:

(a) the Respondent has no trademark or intellectual property right in the disputed domain names; the Respondent has had the opportunity to show that it has any such rights, but it is in default and has not sought to provide any evidence on this or any other issue; the Panel therefore finds that on the balance of probabilities, the Respondent has no trademark or other intellectual property rights that could give it a right or legitimate interest in the domain names;

(b) the Complainant has never given any licence, permission or authority to the Respondent to use the MYSTIC LAKE trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; this has been established on the evidence and it therefore negates any suggestion that the domain names have been registered with the permission of the Complainant;

(c) the Respondent has not used the domain names for a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i); with respect to this and the following two grounds, it is clear to the Panel that the domain names were registered to copy the Complainant, trade on its good name, set up rival gaming services and mislead internet users into thinking that the services being offered on the offending website are genuine services of the Complainant; the Panel accepts that the Complainant has made out a strong case proving all of those elements; in particular, the Complainant relies on its Annexes 5 and 6; Annex 5 shows how when users obtain access to the domain names on a mobile device, they are redirected to another mobile application named the MYSTIC LAKE CASINO; this carries such frequent use of the Complainant's MYSTIC LAKE trademark and copying of the Complainant's services, together with all the accoutrements of a gaming site, that it is obviously an attempt to show that it is an official and genuine Mystic Lake gaming application; this is deceitful and an obvious fraud; it might be noted that it also pretends that it is a link to the Resort Hotel run by the Complainant at the Mystic Lake complex; Annex 6 shows what happens when users use the domain names from a desk top browser, namely that they are redirected to a separate website at www.gamefirsttime.xyz apparently operated by Cyborg and which offers a series of games; again, this is deceptive and misleading, obviously in competition with the Complainant, and tantamount to the Respondent's using the Complainant's trademark to promote its own games and, no doubt, for financial reward; none of the aforesaid conduct is remotely bona fide and it is more akin to being mala fide;

(d) the Respondent has not used the domain names for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii); there is nothing legitimate in the Respondent's conduct, it is commercial rather than noncommercial, and it is not fair, either to the Complainant or internet users in general;

(e) the other grounds relied on have also been made out on the evidence discussed above and there is no need to repeat it here; those grounds are that the Respondent has used the domain names to offer competing services to those of the Complainant, the Respondent has used the domain names to redirect consumers and it has been impersonating and passing itself off as the Complainant; and

(f) it is also clear from the evidence that there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain names.

The Complainant has therefore made out a very persuasive case for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain names.

All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it.

The Complainant has therefore made out the second of the three elements it must establish under the Policy.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain names were registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain names in bad faith on several grounds. In view of the evidence discussed above, which is equally applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration and use of the domain names and in particular in the deception of the public in which the Respondent has engaged, amply demonstrated by Annexes 5 and 6. In particular, it is clear from the evidence that, as the Complainant has submitted:

(a) the Respondent had knowledge of the Complainant and its trademark when it registered the disputed domain names; this is of course clear from the evidence and the Panel goes further and finds that the Respondent had actual knowledge of the Complainant and its trademarks because it needed to have that knowledge to perpetrate its deceptive and misleading conduct;

(b) by causing the domain names to resolve to a mobile application that appears to be an official application of the Complainant and to the aforesaid competing website, the Respondent has disrupted the Complainant's business; clearly, this conduct must amount to disruption, as the Respondent's modus operandi was to divert as much business as possible away from the Complainant and to itself which must inevitably have disrupted the Complainant's business;

(c) the Respondent has attempted to impersonate and pass itself off as the Complainant to sell competing and unauthorized gaming services; this has already been established by the evidence; the Respondent has used the Complainant's name and brand and has virtually said that it is the Complainant;

(d) the Respondent's aforesaid conduct conduct has generated confusion between the Complainant's and the Respondent's websites within the meaning of Policy ¶ 4(b)(iv); that confusion came about because the gaming community must have been wondering whether the resolving website and mobile application were genuine Mystic Lake outlets or not; and

(e) all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain names in bad faith.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain names using the MYSTIC LAKE trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainant, tried to set up a rival source of gaming services, pretended that it was the Complainant or authorised by it and actively set about misleading the public.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has also correctly cited numerous prior UDRP decisions that support all of its contentions.

The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks.

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 <mysticlake.biz> and <mysticlakegaming.biz> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Neil Anthony Brown KC, Panelist

Dated: January 1, 2025