WIPO-UDRP Entscheid D2013-0941

FallnummerD2013-0941
KlägerRealm Entertainment Limited
BeklagterSunlive
EntscheiderKhasawneh, Nasser A.
Betroffene Domain(s) 4bets10.org
bets10vip.com
StatusGeschlossen
EntscheidungTransfer
Entscheidungsdatum31.07.2013

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Realm Entertainment Limited v. Sunlive

Case No. D2013-0941

1. The Parties

Complainant is Realm Entertainment Limited, Ta’ Xbiex, of Malta, represented by Domain and Intellectual Property Consultants, Sweden.

Respondent is Sunlive, of Izmir, Turkey.

2. The Domain Names and Registrar

The disputed domain names <bets10vip.com> and <4bets10.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2013. On May 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 29, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2013. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2013.

The Center appointed Nasser Ali Khasawneh as sole panelist in this matter on July 12, 2013. 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.

4. Factual Background

Complainant Realm Entertainment Limited owns Community Trademark No. 009941139, for the word mark BETS10, registered September 14, 2011, in International Classes 36, 38 and 41.1 Complainant has an online betting business that can be accessed on the Internet at “www.bets10.com”.2

The disputed domain name <bets10vip.com> was registered April 8, 2013, while <4bets10.org> was registered April 18, 2013. Both disputed domain names route to the Turkish language web pages at “www.4bets10.org”, which promote online betting and casinos, including a system of linking to third-party bookmakers. Respondent’s website prominently displays Complainant’s trademark, in similar colors and fonts to Complainant’s website display of its trademark.

Respondent’s website describes its business as “Bets10,” run by a company licensed under the name “6Bets10” in Malta. From material viewable on Respondent’s website, it appears that Respondent’s services have, over time, used a long series of domain names and variants containing Complainant’s trademark, including (without the gTLDs) “3Bets10,” “4Bets10,” and “5Bets10,” and so forth.

Respondent’s website explains that gaming members wishing to use prior login information need to use a simple link (by clicking on the reproduction of Complainant’s trademark), which will redirect them to the currently updated login site. This is apparently because the betting websites associated with Respondent’s operations frequently change web addresses and domain name servers, because the prior coordinates become “blocked.” The website attributes the blocking to Turkish national legal restrictions on online betting.

5. Parties’ Contentions

A. Complainant

The Complaint avers that Complainant is incorporated and licensed for online gambling in Malta. Complainant avers that its well-known gambling and game website at “www.bets10.com” has over 50 million page views per month.

Under the Policy, Complainant alleges that (1) the disputed domain names are confusingly similar to Complainant’s trademark, (2) that Respondent has no rights or legitimate interests in use of the disputed domain names, and (3) that Respondent registered and uses the disputed domain names in bad faith.

Complainant also avers that it sent cease and desist letters on April 23, 2013, to which Respondent did not reply, supporting a finding of bad faith under the Policy.

On the basis of the above allegations, Complainant seeks transfer.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Notification of Proceedings to Respondent

The Policy and the Rules establish procedures to give respondents notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

The Center sent to Respondent by courier notification of these proceedings. The Center used the address from the Registrar’s verification, but the notification was not deliverable to that address.

The Center also sent email notifications to contacts provided by the Registrar. One of the four listed email addresses returned delivery errors. There was no available fax number.

The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.

B. Substantive Rules

The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

(iii) the disputed domain names have been registered and are being used in bad faith.

Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

C. Identical or Confusingly Similar

The Panel agrees with Complainant that the disputed domain names are confusingly similar to a trademark in which Complainant has rights, as explained below.

UDRP panels generally disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

Without the gTLD suffix, the first disputed domain name <bets10vip.com> consists of the combination of Complainant’s BETS10 trademark with the added term “VIP.” The second disputed domain name <4bets10.org>, without its gTLD suffix, simply adds the number “4” to the BETS10 trademark.

The Panel concludes that the addition of the descriptive term “VIP” and the generic number “4,” respectively, do not negate the confusion created by Respondent’s complete inclusion of the BETS10 trademark in both disputed domain names. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.

The Panel therefore concludes that the first element of paragraph 4(a) of the Policy is established with respect to both disputed domain names.

D. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain names.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the disputed domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the disputed domain name; or (3) making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, Policy, paragraphs 4(c)(i)-(iii).

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

Complainant avers that Respondent has no authorization by Complainant to use its trademark and that Respondent is not commonly known by the disputed domain names. In the absence of a response, the Panel accepts as true the undisputed factual averment by Complainant that there is no authorization for use of its trademark.

Whether Respondent is commonly known by the disputed domain names is a more involved question. Viewing the webpages to which the disputed domain names route, the Panel notes that Respondent’s business is presented under the name “Bets10,” the same as Complainant’s trademark. However, the webpages also state that “6Bets10,” a company licensed in Malta, is behind the webpages. The WhoIs record lists the registrant as “Sunlive.” Taking this evidence together, and without the benefit of any response or clarification by Respondent, the Panel must conclude that the record supports the conclusion that Respondent is not commonly known by either of the disputed domain names <bets10vip.com> or <4bets10.org>.

The Complaint also alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, but is instead seeking to profit from consumers searching for Complainant’s business. On the basis of the record before it, the Panel is inclined to agree.

Respondent presumably receives revenues when it routes traffic through links to third parties. The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit [. . .] in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079. Moreover, it appears that Respondent itself is offering commercial products and services using domain names that are confusingly similar to Complainant’s trademark.

The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. Respondent’s commercial activities undertaken through use of the disputed domain name are neither fair use nor bona fide under the Policy. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.

Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied

E. Registered and Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.

Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint, provision of incomplete contact details, and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The record shows that Respondent registered the disputed domain names after Complainant promoted its on line Turkish language gambling website. Respondent directly displays Complainant’s trademarks on the website to which the confusingly similar disputed domain names route, and does so for its own purposes, not to link to or promote Complainant’s business. The Panel infers that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Registration in bad faith is therefore established.

Since the disputed domain names are used to promote businesses in the same field as Complainant, the disputed domain names are being used for direct competition with Complainant. This is frequently deemed to be evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).

Respondent’s failure to respond to Complainant’s cease and desist letter and the Complaint, in addition to its failure to maintain complete and accurate contact details as required under his agreement with the Registrar, are further indications of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, supra.

The Panel consequently concludes that the disputed domain names were registered and are being used in bad faith under paragraph 4(b)(iv) of 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 names <bets10vip.com> and <4bets10.org> be transferred to Complainant.

Nasser Ali Khasawneh
Sole Panelist
Date: July 31, 2013

1 The certificate of registration submitted as Annex 3 to the Complaint was omitted from the filed record, however, this information was verified on line by the Panel.

2 The Panel has undertaken limited research by visiting the web pages to which the disputed domain names route. See Paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”). The webpages display images that are consistent with those submitted as exhibits to the Complaint.

The Panel has also accessed Complainant’s website on line at “www.bets10.com”. When the Panel accessed Complainant’s website by entering its URL, the browser was directed to Complainant’s Turkish language site, although the Panel understands that Complainant also maintains similar webpages in English.