The Complainant is services (Austria) GmbH, of Vienna, Austria, represented by Brandl & Talos Rechtsanwaelte GmbH, Austria.
The Respondent is Cifagro enterprises u.a., of Kiev, Ukraine, represented internally. 2. The Domain Names and Registrar
The disputed domain names , are registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2011. On July 7, 2011, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On July 7, 2011, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. The Response was filed with the Center on July 31, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on August 8, 2011. 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
The Complainant belongs to the Group, which provides online gaming services, such as sports betting, poker, casino games, bingo, soft games and skill games, an online market and audio and video streaming on top events.
The Group was constituted following the merger of the companies bwin Interactive Entartainment AG and PartyGaming PLC in April 2011.
Before the merger, the entire operative business of bwin Interactive Entertainment AG was transferred to bwin Services AG, which changed its corporate form from a public limited company to a private limited company, being renamed “ services (Austria) GmbH”. As a result, all trademark rights previously owned by bwin Interactive Entertainment AG passed through to the Complainant, by universal succession.
The Complainant is the owner of several trademark registrations for BWIN, including the International trademark No. 886220 for BWIN (word mark), registered on February 3, 2006, in classes 9, 16, 35, 36, 38, 41 and 42, and No. 896530 for BWIN (figurative mark), registered on March 16, 2006, in classes 9, 16, 35, 36, 38, 41 and 42. Both trademark registrations grant protection also for Ukraine, where the Respondent is located.
The Complainant has also provided evidence of ownership of the Community trademark registration No. 7577281 for BWIN (word mark), filed on February 3, 2009, in classes 9, 16, 35, 36, 38, 41 and 42; and No. 7577331 for BWIN (figurative mark), filed on February 3, 2009, in classes 9, 16, 35, 36, 38, 41 and 42.
The Group operates the website under the domain name , which was registered on April 3, 2003, and is the owner of several domain name registrations including the mark BWIN.
The disputed domain names were registered on May 13, 2008. 5. Parties’ Contentions A. Complainant
The Complainant informs the Panel that bwin Services AG provides various services to its affiliates companies, such as marketing, software development, customer support, regulatory services and business development. The Complainant is a wholly owned subsidiary of digital entertainment plc, which is listed on the London Stock Exchange under the ticker BPTY and is a member of FTSE250 Index.
The Complainant states that, as of October 30, 2010, the bwin Group had about 20 million registered customers, in more than 25 core markets all over the world. According to the reports submitted by the Complainant, the gross gaming revenues amounted to EUR 423 million in 2009 and to around EUR 383.7 million in the first three quarters of 2010, while marketing expenses amounted to EUR 99 million in 2009 and to EUR 93 million in the first three quarters of 2010.
The bwin Group spent approximately EUR 37.6 million annually for sport sponsorship. In the past, the bwin Group also sponsored famous worldwide events as BA-CA Tennis Trophy, MotoGP in Brno, Jerez, Barcelona and Valencia, the Portuguese Soccer League, the German Basketball League and the Ice Hockey World Cup 2006. The Group currently sponsors the Real Madrid soccer club.
The Complainant states that, due to the comprehensive marketing activities of the companies of the Group, the trademark BWIN is very famous, and cites the following UDRP decisions acknowledging the reputation of its trademark: bwin Interactive Entertainment AG v. Andrei Gladchih,WIPO Case No. D2009-0167 (, ), bwin Interactive Entertainment AG v. wp,WIPO Case No. DES2009-0018 () and bwin Interactive Entertainment AG v. qushaobing,WIPO Case No. D2011-0090 ().
The Complainant contends that the disputed domain names are confusingly similar to the trademark BWIN in which it has rights since they contain common misspellings of the Complainant’s trademark, as the letter “i” and “s” are, in Western keyboards, positioned “almost directly below the letters “w” and “i”.
With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that it has not authorized the Respondent to use its trademark Bwin, that the Respondent is not commonly known by the names “bwlin” and “bwsin” and that the Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain names. The Complainant underlines that the disputed domain names have been pointed to web pages displaying sponsored links which allow the Respondent to earn pay-per-click revenues.
With reference to the circumstances evidencing bad faith, the Complainant points out that, when it became aware of the registration, the disputed domain names were owned by a third party named “Swiss Mixcon AG”, which used them “for the operation of phishing websites by using a technique called framing to mirror the website of the Complainant operated under “www.”.
The Complainant states that, further to the cease and desist letter addressed by the Complainant’s representatives on May 2, 2011, the disputed domain names were transferred, on May 29, 2011 (date of the last change in the WhoIs information according to the concerned Registrar’s database), to the Respondent. A new cease and desist letter was therefore sent to the Respondent on June 1, 2011, requesting the transfer of the disputed domain names, but the Respondent replied to it, contesting the risk of confusion and offering the sale of the disputed domain names to the Complainant for a price of USD 1,250. The Complainant then offered to reimburse the Respondent for registration and renewal costs, but the Respondent replied to it, stating that it bought the disputed domain names long time ago, reiterating its offer for sale of the disputed domain names at the same amount originally requested and stating “BTW, have you already informed your client that the Filling and Decision of the WIPO will cost him a minimum of 1500 USD (…) more than the 1250 USD to buy the Domains directly”.
The Complainant contends that the above-mentioned correspondence with the Respondent (copy of which is attached to the Complaint), and specifically the offer for sale of the disputed domain names, constitutes evidence of the Respondent’s bad faith.
The Complainant asserts that, since the disputed domain names were used by their prior owner for phishing purposes at least until three days before the transfer to the Respondent, the Respondent could not ignore the bad faith use of the disputed domain names by its predecessor and the existence of the Complainant’s mark.
The Complainant emphasizes that it is the duty of a domain name owner to verify if any trademark rights could be violated by the registration of a domain name, that the trademark BWIN was well known in Europe and worldwide at the time of the registration and that the existence of the Complainant’s mark could be easily assessed by entering “bwin”, “bwlin” or “bwsin” in a search engine.
The Complainant contends that the Respondent acquired the disputed domain names primarily for the purpose of intentionally attempting to attract, for commercial gain, users to its websites or other online locations, by creating a likelihood of confusion with the Complainant’s mark according to paragraph 4(b)(iv) of the Policy and states that the unauthorized use of the Complainant’s mark to generate pay-per-click revenues constitutes bad faith.
The Complaint also informs the Panel that the Respondent has been subject to another UDRP proceeding, AG v. Cifgaro enterprises u.a.,WIPO Case No. DCH2011-0002, which was decided in favor of the Complainant, and states that “the Respondent shows a pattern of its behavior”. B. Respondent
The Respondent rebuts the Complainant’s contentions, stating that it acquired the disputed domain names “earlier this year”, even though the WhoIs data, the domain name servers and their redirections was updated only on May 29, 2011. The Respondent points out that the disputed domain names were not used by the prior owner for phishing websites but for direct forwarding to an “Affiliate Site” of the Complainant.
The Respondent asserts that the disputed domain names “don't sound like the mentioned trademark bwin” and that they are not identical or confusingly similar to the Complainant’s trademark. The Respondent states that it never heard of any company named "bwin" and contends that this company is not famous outside Europe.
Regarding rights or legitimate interests in the disputed domain names, the Respondent affirms that it bought the disputed domain names for different projects which should be set up later this year, and states that and will be used for information websites regarding, respectively, Singapore Changi Airport, where “sin” corresponds to the official IATA Code for Singapore, and Linate Airport, “lin” being the official IATA Code for Milan Airport Linate. The Respondent points out that the letters “bw” would be the abbreviation for “Best Way (to)” and that, therefore, “bwsin” and “bwlin” would be abbreviations of "best way to Linate" and "best way to Singapore".
With reference to the use of the disputed domain names, the Respondent states that until “the project will go live, [they] have the domains parked and are not using them”. The Respondent underlines that, on the websites under the disputed domain names, there is no advertisement related to the Complainant’s business.
The Respondent concludes that the Complainant has no rights in respect of the disputed domain names and that they have not been registered or used in bad faith. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established rights in the mark BWIN, providing evidence of ownership of, i.a., the International trademark No. 886220 for BWIN (word mark), registered on February 3, 2006, in classes 9, 16, 35, 36, 38, 41 and 42; and the Community trademark registration No. 7577281 for BWIN (word mark), filed on February 3, 2009, in classes 9, 16, 35, 36, 38, 41 and 42.
In ACCOR v. I&M Raamatupidamise O/Accora Consult OÜ,WIPO Case No. D2006-0650 (), the Panel stated: “The Domain Name at issue reproduces entirely the mark ACCOR with the mere addition of the single letter “a” which moreover makes no difference with the Complainant’s trademarks and may also be interpreted to be a misspelled suffix of ACCOR. Indeed the single letter “a” is an obvious attempt to “typosquat” the Domain Name and is insufficient to avoid confusion.”
See also, along these lines, bwin Interactive Entertainment AG v. qushaobing,WIPO Case No. D2011-0090, stating: “The disputed domain name differs from the Complainant’s trademark only in one letter, namely the domain name contains an additional “b” preceding “bwin” and, beyond that, contains the Complainant’s trademark as a whole. The Complainant cites several WIPO panel decisions which have established that when a domain name wholly incorporates a complainant’s registered trademark, solely this fact may be sufficient to establish confusing similarity. The Complainant also cites Pfizer Inc. v. ZJ,WIPO Case No. D2007-0050 and Interwetten AG v. BMG Media, Inc.,WIPO Case No. D2005-0744, in which the disputed domain names (as in this case) differed only in one position. In these cases, the deciding panels ruled that there was confusing similarity. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy”.
Likewise, the Complainant’s trademark BWIN and the disputed domain names and are confusingly similar, since the addition of the letters “s” and “l” is not sufficient to change the overall impression created by the disputed domain names.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with prior UDRP decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
The Panel finds that the Respondent has failed to provide in the statements and documents submitted in the Response, as summarized in the factual section, convincing circumstances and evidences that could demonstrate, pursuant to paragraph 4(c) of the Policy, that it has rights or legitimate interests in the disputed domain names.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain names.
Based on the records, the Respondent has not provided convincing evidence of use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services or that it intended to make a legitimate, noncommercial or fair use of the disputed domain names before or after the notice of the dispute.
Although, in its Response, the Respondent stated that it acquired the disputed domain names to use them in the future in connection with information websites about Singapore and Linate airports, there is no evidence in the records of any such preparations by the Respondent that could prove the seriousness of its intent. Furthermore, the explanation provided by the Respondent that “bw” would stand for the abbreviation of “best way to” does not satisfy this Panel. The Panel further notes that the Respondent did not explain why it did not opt for the real acronym of the alleged intended meaning, i.e. “bwt”, why the Respondent did not register both and , which are still available for registration.
The Panel notes that the disputed domain names are pointing, at the time of this decision, to web pages displaying sponsored links referred to travels (including air travels), holidays and hotels, and finds that, under the circumstances, the use of the disputed domain names merely for pay-per-click pages which direct visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the disputed domain names under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 holder’s documented out-of-pocket costs directly related to the domain names; or
(ii) the holder has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
Based on the records, it is not entirely clear when the disputed domain names were actually registered or acquired by the Respondent, even though it appears that they were assigned to the Respondent in the first months of 2011. As mentioned above, the Complainant asserts that the transfer from the prior owner took place on May 29, 2011, which corresponds to the last change date indicated in the WhoIs of the disputed domain names; while the Respondent states, in its Response, that it acquired them “earlier this year”.
In any case, the Panel finds that, as acknowledged in prior UDRP panel decisions involving the same Complainant, in light of the Complainant’s extensive promotion and use of the trademark BWIN in Europe and worldwide, the Respondent was or ought to be aware of the Complainant’s well known trademark at the time of registration or acquisition of the disputed domain names.
See, among the decisions acknowledging the well known character of the mark BWIN, bwin Services AG v. Brainman Wiaslova / Protected Domain Services,WIPO Case No. D2011-0886, concerning the domain name (“The Complainant has asserted that the Respondent must have known of the Complainant’s trademark rights because of the well-known character of the Complainant’s marks. The Panel finds that the assertion is substantiated through the supporting evidence submitted by the Complainant. The Complainant has extensively used and marketed its trademark in inter alia the United States of America (the Respondent’s country of residence). The Panel considers the trademark BWIN as well-known”); bwin Services AG v. wang jian aka jian wang,WIPO Case No. D2011-0900, regarding the domain name (“In registering and using the disputed domain name the Respondent is clearly using the well-known Trade Mark of the Complainant in order to attract Internet users to the Website”); bwin Interactive Entertainment AG v. Andrei Gladchih,WIPO Case No. D2009-0167, concerning the domain names , (“it appears that Complainant's BWIN mark and associated businesses are well known in Europe”), bwin Interactive Entertainment AG v. wp,WIPO Case No. DES2009-0018, regarding (“La marca de la Demandante es famosa en Europa y en todo el mundo y ya lo era en enero de 2009 cuando el Demandado registró el nombre de dominio en disputa. La gran popularidad de esta marca ha sido ya reconocida en bwin Interactive Entertainment AG v. Andrei Gladchih,Caso OMPI No. D2009-0167. El hecho de que la marca de la Demandante sea famosa es un fuerte argumento para sostener que el Demandado ha registrado el nombre de dominio de mala fe”).
Moreover, both parties acknowledged in the statements submitted that the disputed domain names were pointed, at the time they were under the control of their prior owner, to a web site nearly identical to the Complainant’s website “www.”. The Panel finds improbable that the Respondent did not check the redirection of the disputed domain names before acquiring them. In addition, a verification on search engines for the terms which constitute the disputed domain names, “bwlin” and “bwsin”, would have revealed the existence of the Complainant’s trademark.
Furthermore, in light of the mere one letter difference between the disputed domain names registered by the Respondent and the Complainant’s registered trademark, there is clearly confusing similarity here. The Panel considers such activity a classic example of typosquatting (see Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044). This conclusion was also reached in Allied Building Products Corp v. A c/o Whois Identity Shield,WIPO Case No. D2006-0833 (“it is therefore a reasonable inference from this that the Respondent knew of the Complainant’s business and wanted to exploit the name to divert Internet traffic from it, probably to benefit from pay-by-click arrangements with alternative suppliers).”
The Panel acknowledges that the disputed domain names are currently pointed to web pages where links also unrelated to the Complainant’s business are displayed. This circumstance does not prevent the finding that the Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website under paragraph 4(b)(iv) of the Policy, since the Respondent, in all likelihood, derives pay-per-click revenues each time those links are selected by users who have been diverted to its websites.
See, along these lines, bwin Interactive Entertainment AG v. Obaman Rute,WIPO Case No. D2009-0956, concerning the domain name , which was used for a website whose content included various links related to air travel, with specific references to “BWI” (Baltimore Washington International) Airport – and bicycling (“Although there is no specific mention of the Complainant or its gaming entertainment business, this does not avoid the Panel's conclusion that the Respondent, by using the domain name, has “intentionally attempted 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, under paragraph 4(b)(iv)”).
Moreover, in light of the content of the correspondence attached to the Complaint, the Panel finds that the disputed domain names were also registered for the purpose of selling them to the Complainant for an amount well in excess of the documented out-of-pockets costs, according to paragraph 4(b)(i) of the Policy. The Respondent indeed offered to assign the disputed domain names to the Complainant for USD 1250, amount that is certainly over the costs of registration and maintenance of the disputed domain names. See i.a. Wal-Mart Stores, Inc. v. Brad Tauer,WIPO Case No. D2000-1076, where it was found that “the amount sought, USD 475, far exceeds the domain name registration fee and Respondent did not present any documentation as to any other "out-of-pocket costs directly related to the domain name".
As an additional circumstance evidencing bad faith, the Respondent was subject to a prior proceeding, AG v. Cifgaro enterprises u.a.,WIPO Case No. DCH2011-0002, in which the panel granted to the Complainant the reassignment of the domain name , given that its confusing similarity with the registered mark COMPARIS.
In view of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith. 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 disputed domain names and be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: August 19, 2011
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