The Complainants are digital entertainment plc (the “first Complainant”) and ElectraWorks Limited (the “second Complainant”), both of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Taylor Wessing, United Kingdom.
The Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Jason D’Cruz of Shah Alam, Selangor, Malaysia and Identity Protection Service of Godalming, United Kingdom / Yeo Hock Heng of London, United Kingdom (collectively the “Respondent”). 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, LLC, and is registered with Webfusion Ltd trading as 123-reg. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2014. On October 1, 2014, the Center transmitted by email to the registrars a request for registrar verification in connection with the disputed domain names. On October 2, 2014, the registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on October 3, 2014 providing the registrant and contact information disclosed by the registrars, and inviting the Complainants to amend the Complaint. The Complainants filed an amended Complaint on October 7, 2014.
The Center verified that the amended 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 proceeding commenced on October 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2014. The Respondent sent an email to the Center on October 23, 2014 but did not submit a formal response.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 13, 2014. 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 second Complainant is a wholly owned subsidiary of the first Complainant, and both Complainants are part of the digital entertainment plc group of companies. The two Complainants are collectively referred to as the “Complainant”.
The Complainant is a listed public company on the London Stock Exchange, which carries business in the field of online gaming. The company was the product of a merger between PartyGaming Plc and bwin Interactive Entertainment AG on March 31, 2011. Party Gaming Plc was founded in 1997 and Bwin Interactive was founded in 1999. The Complainant initially offered gaming services in the United States in 1997, but terminated those US services in 2006, and thereafter offered gaming services throughout the rest of the world. As of May, 2014, the Complainant had a market capitalization of GBP 996,720,000, with approximately 2,700 employees located in offices around the world. The Complainant’s revenues for 2012 and 2013 were USD 801.6 million and USD 652.4 million, respectively.
The Complainant has registered the BWIN trademark around the world in connection with gaming services, holding approximately 260 trademark registrations at the time the Complaint was filed, including the following:
Community Trade Mark Registration for BWIN (No. 7577281) dated December 10, 2009
Community Trade Mark Registration for BWIN Design (No. 7577331) dated September 2, 2009
United Kingdom Trademark Registration for BWIN (No. 886220) dated February 3, 2006
United Kingdom Trademark Registration for BWIN Design (No. 896530) dated March 16, 2006
The Complainant owns hundreds of domain names corresponding to its BWIN mark, including:
The disputed domain name was registered on July 8, 2014, and was registered on January 2, 2014. At the time the Complaint was filed the disputed domain names reverted to a website which provided online gaming services. 5. Parties’ Contentions A. Complainant Confusingly Similar
The Complainant submits that it owns over 260 registrations for the trademark BWIN, including those mentioned above.
The Complainant contends that the disputed domain names and are identical to the Complainant’s BWIN trademark except for the addition of the word “arbitrage”. The Complainant submits that this descriptive word “arbitrage” – which means to take advantage of a price difference between two or more markets - adds nothing to the disputed domain names to distinguish it from the Complainant’s registered trademark.
Accordingly, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s registered BWIN trademark. Rights and Legitimate interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the and domain names. The Respondent is not commonly known by the name Bwin, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the domain names in a bona fide offering of goods and services. The Complainant contends that it is unrealistic to believe that the Respondent was unaware of the Complainant’s reputation in the BWIN trademark and its operations around the world. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the domain names and in bad faith, because (i) the Respondent must have been aware of the Complainant’s registered trademark rights in BWIN, when the Respondent registered the confusingly similar domain names; (ii) the Respondent registered and is using a confusingly similar domain names to trade on the goodwill and reputation of the Complainant’s registered trademark by using the domain names in association with websites that provide identical services of the Complainant, and thereby interfering with the commercial business of the Complainant; (iii) the Respondent is copying the look and feel of the Complainant’s registered designs for the trademark BWIN on the websites associated with the disputed domain names; and (iv) the Respondent failed to respond to the Complainant’s cease and desist letter dated May 21, 2014. B. Respondent
The Respondent sent an email to the Center merely stating “we will bring down the website shortly”, but did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith. A. Consolidation
Consolidation of multiple complainants and respondents in a single complaint may be appropriate in certain circumstances if the panel finds consolidation efficient, fair and equitable to all parties. Generally, panels tend to permit consolidation of multiple complainants that are related through overarching ownership or affiliation and of multiple respondents if the complainant demonstrates common control of the domain names.
The Panel notes that both Complainants are part of a group of companies under the parent company . The registrants of the disputed domain names are individuals, “Jason D’Cruz” and “Yeo Hock Heng”. While the Respondents appear to be located in different countries, the two domain names are identical except for their top-level domain suffixes, and both domain names resolve to identical websites bearing the Complainant’s mark. The Panel finds it likely that the disputed domain names are under common control and finds it fair and equitable to proceed to a single decision in the present circumstances. B. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark BWIN by virtue of its many Trademark Registrations, including those listed in paragraph 4 of this decision.
The Panel further finds that the disputed domain names and are confusingly similar to the Complainant’s registered trademark BWIN. The addition of the descriptive word “arbitrage” does not serve to distinguish the domain names from the BWIN trademark. In fact, the Panel finds the addition of the word “arbitrage” actually increases the likelihood of confusion, because the word is connected to gaming services.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Panel notes that the Respondent did not file any responding materials in this proceeding, and therefore did not dispute any of the facts submitted by the Complainant. The Respondent is not commonly known by the name BWIN, and was clearly never authorized or licensed by the Complainant to use the registered trademark BWIN. Furthermore, the Panel is prepared to find that the registration and use of domain names confusingly similar to the Complainant’s trademark in association with a website(s) that offer identical services to those of the Complainant, along with what appears to be intentional copying of the look and style of the Complainant’s registered Design trademarks is not evidence of a bona fide offering of goods and services. Accordingly, based on the evidence filed in these proceedings, the Panel is prepared to find that the Respondent does not have any rights or legitimate interests in the disputed domain names and .
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel is prepared to find, on the evidence filed, that the Respondent must have been aware of the Complainant’s registered trademark rights in the mark BWIN when it registered the disputed domain names on July 8, 2014 and January 2, 2014. The Panel further concludes that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark by developing a website(s) that proposed to offer identical gaming services as that of the Complainant. The Panel further finds that the Respondent registered confusingly similar domain names to interfere with the Complainant’s business by diverting unsuspecting Internet users away from the Complainant’s website to the Respondent’s website.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 and be transferred to the first Complainant, digital entertainment plc.
Christopher J. Pibus
Sole Panelist
Date: November 27, 2014
Full & Egal Universal Law Academy