WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION bwin Interactive Entertainment AG v. Andrei Gladchih Case No. D2009-0167 1. The Parties
Complainant is bwin Interactive Entertainment AG of Vienna, Austria represented by Brandl & Talos Rechstsanwaelte GmBH, Austria.
Respondent is Andrei Gladchih of Republic of Moldova. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2009. On February 6, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On February 6, 2009, GoD, Inc. 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 February 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 6, 2009.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on March 17, 2009. 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 owns the following trademark registration: International Registration No. 886220 for the mark BWIN, registered February 3, 2006.
Complainant also owns a large number of domain name registrations which include the term “bwin” all over the world.
The disputed domain names both were registered August 3, 2006 and route to websites with identical content, which is quoted below in its entirety:1
“Dear friends!
Welcome to our project contributed to the Black and White technologies used in Television!
If you love those old fashioned movies, TV shows, and all what is related up to the coming of the RGB color era please join!
Our community is still in the development stage, however, hopefully will be launching soon.
[illustration of TV and logo omitted] BWINTV.COM
Black and White technologies in television
Please, note! We are not related to any brand, and do not have the intentions of using the ownership of the domain for other scopes or resell. Black and White technologies in TV administration.”
The hypertext links on Respondent's web pages stating “Black and White technologies in TV administration” simply appear to enable users to use a mail program on their computers to generate an email to a contact address coded underneath the link. 5. Parties' Contentions A. Complainant
Complainant alleges that it is the parent company of the bwin-Group, one of the world's leading providers of online gaming entertainment. Complainant avers that “Complainant bwin has been listed on the Vienna Stock Exchange since March 2000,” and that it has been listed under the name “bwin Interactive Entertainment AG” on the Vienna Stock Exchange since July 21, 2006.
Complainant avers that bwin's subsidiaries and affiliated companies offer under the “bwin” marks sports betting, poker, and casino games, as well as audio and video streams of top sports events via the Internet. Complainant notes that at the end of the third quarter 2008, the bwin-Group had about 1.685.000 active customers worldwide, and a turnover of approximately EUR 303.1 million for the first 9 months of 2008.
Complainant avers that “bwin is very famous in Europe and all over the world.”
According to Complainant, bwin sponsors world-famous soccer clubs like AC Milan and Real Madrid, the BA-CA Tennis Trophy, and MotoGP in Spain. Complainant avers that the Grand Prix of Jerez in Spain of the MotoGP class has been named “bwin,” as a part of the sponsorship arrangement.
Complainant's legal contentions are summarized below. (i) Confusing Similarity
Complaint contends that UDRP panels disregard gTLDs in determining whether a disputed domain names and trademarks are identical or confusingly similar; that Respondent reproduces Complainant's BWIN mark in its entirety in the disputed domain names; and that, by reproducing Complainant's mark at the beginning of the disputed domain names, Respondent's choice of domain names adds to the confusion experienced by Internet users.
Noting that bwin is a famous provider of entertainment, streaming media covering sports events, and telecommunications services, Complainant adds that the use of the non-distinctive term “tv” enlarges the danger of confusion as to source, citing DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694; Deutsche Telekom AG v. Kaththea Sias,WIPO Case No. D2008-1665; and Société Nationale des Chemins de Fer Francais v. Sinclare Vabalon, BHG,WIPO Case No. D2008-1613. (ii) Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the term “bwin” and that there are no international or Community Trademark Marks, names or other rights that would justify a legal interest in Respondent's use of the disputed domain names. Complainant avers that Respondent is not commonly known under the term “bwin” and that Respondent has not licensed Respondent to use its marks.
Complainant also alleges that Respondent does not use the domain names for a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use. Complainant also points out that for two and a half years after registration, the web pages presumably have displayed only the information quoted above, thus demonstrating that “the Domains have only been registered to block the Complainant's interests.”
Complainant contends that these allegations fulfill Complainant's requirement of showing a prima facie case and that the burden therefore shifts to Respondent to show that it has rights or legitimate interests in use of the disputed domain names. (iii) Bad Faith Registration and Use
Complainant contends that the disputed domain names were registered and are being used in bad faith.
Complainant recounts a highly visible publicity and rebranding campaign, to link its new company name “bwin” to its old name “betandwin,” which was already famous. Complainant alleges that the close proximity in time of Respondent's domain name registration to Complainant's broad publicity campaign demonstrates Respondent's knowledge of Complainant's mark, and consequently, Respondent's bad faith registration and use.
Moreover, Complainant contends, the disclaimer on Respondent's websites that “we are not related to any brand” does not cure Respondent's unauthorized use of the disputed domain names. Complainant contends that the presence of the disclaimers instead demonstrates that Respondent was aware of Complainant's trademark rights, as a further indication of bad faith.
On the basis of the above contentions, Complainant seeks transfer of the disputed domain names. B. Respondent
Respondent did not reply to Complainant's contentions.2 6. Discussion and Findings A. Language of Proceedings
As a preliminary matter, the Panel rules that this proceeding may properly go forward in English.
Paragraph 11(a) of the Rules states that, “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
According to the Registrar's response to the Center's request for registrar verification, English is the language of the registration agreements; the Registrar also confirmed that the Policy applies.
The Panel also finds that the circumstances support its determination that it is proper for the proceedings go forward in English. Among those circumstances are that Respondent's websites to which the disputed domain names route are in English, and that Respondent has also made statements in English on other English-language websites. See “”3 B. Substantive Rules
The Rules require the Panel to decide a complaint 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:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064.
In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, 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 Respondent's domain names and are confusingly similar to Complainant's BWIN mark.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-13l5.
The Panel concludes that the addition of the descriptive term “tv” does not negate the confusion created by Respondent's complete inclusion of the BWIN trademark in the 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. In fact, given that Complainant undertakes substantial media-related activities, including the streaming of sports events on the Internet, the addition of the term “tv” simply increases the confusion that Internet users would experience. Accor Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625, (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark”).
The Panel finds therefore that the disputed domain names are confusingly similar to the registered trademark of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of 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) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See, 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 Complainant makes out a prima facie case and Respondent enters no response. See id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainant alleges that Respondent does not have legitimate interests because Respondent does not have registered trademark or name rights in the term “bwin,” and that Respondent is not commonly known by the disputed domain names. In the absence of a response by Respondent, the Panel accepts these factual allegations as true.
Complainant also alleges that Respondent does not use the domain names for a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use. The Panel agrees.
The web pages to which the disputed domain names route announce that the website's “community is still in the development stage, however hopefully will be launching soon.” Respondent is not, however, actively offering goods or services, or making use of the sites for any sort of other information or commentary that might support a finding of bona fide or fair use.
The Panel finds that Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel's attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain names.
The Panel rules therefore that Complainant has established the second element of paragraph 4(a) of the Policy. E. Registered and Used in Bad Faith
The Panel also concludes that Respondent has registered and is using the disputed domain names in bad faith, as explained below.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
These circumstances are not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well known, whether there is no response to the complaint, concealment of identity, and other circumstances. E.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel does not hesitate to find that Respondent knew of Complainant's BWIN mark when Respondent registered the disputed domain names, for the following reasons. First, it appears that Complainant's BWIN mark and associated businesses are well known in Europe. Second, Respondent registered shortly following the launch of Complainant's extensive rebranding campaign and relisting on the Vienna stock exchange under the “bwin” name. Third, the Panel concludes that it is reasonable to infer that Respondent knew about Complainant and its BWIN mark through Respondent's involvement with the online major sporting events community.4 The Panel finds, therefore, that Respondent was aware of Complainant's BWIN mark when he registered the disputed domain names, and the Panel concludes that Respondent registered the disputed domain names in bad faith.
It only remains for the Panel to determine whether Respondent, in addition to registering in bad faith, is also using the disputed domain names in bad faith.5 Despite the fact that the record contains little evidence relating to the four illustrative circumstances in paragraph 4(b) of the Policy, the Panel nevertheless concludes that Respondent is also using the domain names in bad faith.
In many decisions involving inactive websites or so-called “passive holding,” UDRP panels have adhered to the approach outlined in Telstra Corporation Limited v. Nuclear Marshmallows, supra. In Telstra, the panel explored the question of which circumstances of inaction, or passive holding, beyond those identified in paragraphs 4(b)(i), (ii) and (iii) of the Policy, constituted use of a domain name in bad faith.
The Telstra Panel explained that
“[t]his question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent's behaviour. A remedy can be obtained under the Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith.”
It is true that the present proceeding does not present a classic case of passive holding involving wholly inactive websites. The Panel nonetheless rules that the reasoning applied to such cases applies with equal force in this proceeding.
While the websites to which the disputed domain names route are not completely blank, the websites present only a single page of minimal content, and that content has apparently remained unchanged and inactive for two and a half years. For the Panel to refrain from applying the approach in Telstra could have the unwanted result of encouraging abusive domain name registrants to avoid a finding of bad faith use under paragraph 4(a)(iii) of the Policy, simply by posting a tiny bit of content and leaving their websites otherwise inactive for as long as they wish.
Following the approach of Telstra, then, the Panel finds that circumstances indicating bad faith use in this case include (1) Respondent's lack for two and one half years to employ the websites to make good faith use of the disputed domain names, (2) the incorporation of Complainant's well-known trademark in the disputed domain names, (3) Respondent's failure to respond to the Complaint, and (4) Respondent's failure to respond to Complainant's cease and desist letter, sent to the registrant's address listed in the WhoIs record. As to the latter point, see, e.g., Ebay Inc. v. E and Tony Caranci, WIPO Case No. D2000-1632.
The Panel also finds that the existence of the disclaimer posted by Respondent on the websites is further evidence that supports the conclusion that Respondent registered and has used the disputed domain names in bad faith.6 It is well established that the existence of a disclaimer cannot cure bad faith when bad faith has been shown by other factors. Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869 (citing Gallo v. Hanna Law Firm, supra; DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181).
The Panel concludes, therefore, that the disputed domain names were registered and used in bad faith and that the requirements of the third element of paragraph 4(a) of the policy are fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Dated: March 31, 2009
1 Complainant annexed copies of these screen displays to the Complaint. The Panel has also viewed on the Internet the pages to which the disputed domain names resolve and undertaken limited factual research on the Internet into publicly available material. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
2 The Panel notes, however, that a courier service confirmed delivery of the Notification of Complaint to the WhoIs address listed with the registrar, therefore it is reasonable to conclude that Respondent received notice.
3 Respondent apparently made the following statement on the cited website: “Michael, We believe, you will read all the messages, and we are hopefully waiting for your answer (+373) 69107551 “andrew@.” Respondent's name in this posting is anglicized and slightly different from “Andrei,” the name of the registrant according to the WhoIs record and registrant verification; however the Moldovan phone number in the above quote and that listed by the registrant for its administrative and technical contacts is identical.
4 In addition to Respondent's statement on the “” website cited earlier, the Panel notes that the WhoIs records for the disputed domain registrations list Respondent's technical contacts as . The website at “www.” also appears to be dedicated to following major motorsport events.
5 Both the elements of bad faith registration and bad faith use must be established. E.g., E. & J. Gallo Winery v. Hanna Law Firm,WIPO Case No. D2000-0615; Telstra Corporation Limited v. Nuclear Marshmallows, supra.
6 The Panel doubts that Respondent's vague disclaimers are effective to remedy the confusion experienced by Internet users seeking to find, for example, the streaming media coverage of sports events offered by Complainant under its BWIN mark; users will already have been routed to Respondent's websites before they are able to view the disclaimer. E.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642.
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