The Complainant is Fonbet Corp. of Marbella, Panama, internally represented.
The Respondent is Hosting Ukraine Ltd / Evgenij Viktorov both of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Center of Ukrainian Internet Names (UKRNAMES) (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 21, 2016. On April 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 28, 2016.
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 May 2, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on June 2, 2016. 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.
Upon reviewing the case file, it became evident, that the trademark FONBET was used in connection with the "" website, which allegedly was operated by the Complainant's licensee Fon Curacao N.V., in fact was registered by Leofon Limited, which used it prior to registration of the Complainant's FONBET trademark.
On June 24, 2016, the Panel issued Procedural Order No.1 to the parties, requesting the Complainant to deliver to the Panel and to the Respondent its explanations and evidence in the English language explaining its relation, if any, to Leofon Limited, the registrant of the domain name both as to the underlying rights invoked, and as to any common law rights (unregistered trademark rights) in the FONBET trademark by July 1, 2016.
The Complainant filed a reply to the Procedural Order No. 1 on June 28, 2016 claiming that the details of the operation of the "www." website and of its cooperation with other legal entities regarding the Domain Name did not concern the Domain Name and that it would prefer not to disclose the requested information to the Respondent because such disclosure might be to the detriment of its business and business of its affiliates. The Complainant offered to disclose any additional information solely to the Panel. The Complainant also submitted a document signed by the Complainant and Leofon Limited confirming that the Complainant was the sole owner of, among others, the registered trademark FONBET and that Leofon Limited had a right to use the registered FONBET trademark in connection with its "" website. Further, the Confirmation stated that "Leofon Limited …. Do not wish to invoke any rights under the Case Number D2016-0790 with World Intellectual Property Organization Arbitration and Mediation Center, as well as to any common rights (unregistered trademark rights" in the FONBET trademark".
Upon consideration of the Complainant's submission pursuant to the Procedural Order No. 1, on June 28, 2016, the Panel issued Procedural Order No. 2 in the following terms:
Upon reviewing the Complainant's additional submissions, the Panel now makes the following Procedural Order No. 2 ("Procedural Order"):
The Panel has completed a preliminary review of the case file in this matter. The Complainant has indicated that the disputed domain name (the "Domain Name") was registered on October 31, 2014, and has provided evidence of its registration of the FONBET trademark in 2016.
By 4 p.m. Geneva time on Tuesday, July 5, 2016, the Panel invites the Complainant:
1) to provide additional information, evidence and authority supporting the allegation that Respondent had Complainant's FONBET mark in mind when registering the Domain Name; and
2) to demonstrate genuine use of the Complainant's trademark by the Complainant and/or a party authorized/related to the Complainant at a date predating the Domain Name registration on October 31, 2014.
If the rights in the FONBET trademark arouse out of the mark's use by a party other than the Complainant, the Complainant must provide sworn statements under penalty of perjury from the Complainant and such other party confirming or denying any relationship between the Complainant and such other party.
In accordance with paragraph 10(d) of the Rules, the Panel denies the Complainant's request that it consider materials that will not also be made available to the opposing Party. In this regard the Panel notes paragraph 2(h)(iii) of the Rules: "Any communication by a Party shall be copied to the other Party, the Panel and the Provider, as the case may be."
Any submission from the Complainant must be filed with the Center in the English language and copied to the Respondent. Any submission from the Respondent in response to the Complainant's submission must be filed with the Center and copied to the Complainant by 4pm Geneva time on Thursday, July 7, 2016 in the Russian or English language.
The Parties are placed on notice that if they do not file a submission as provided for by this Procedural Order or if that submission does not address in the case of the Complainant the specific points raised in this Procedural Order; the Panel may draw adverse inferences from the same."
On July 5, 2016, the Complainant filed a submission pursuant to the Procedural Order No. 2 and requested a one day extension of the deadline to have the affidavit required by the order to be signed in front of a court officer. The Panel granted the extension. On July 6, 2016, the Complainant submitted an affidavit by its internal representative. The Respondent did not file any response to the Complainant's submissions. 4. Factual Background
The Complainant is a company registered in Panama and has been engaged in sport online betting operations since 1999. The Complainant is the owner the FONBET trademark, registration number 014873194, which was registered in the European Union on March 15, 2016. The Complainant has also registered the trademark FON, European Union Trade Mark number 013070875 on January 27, 2015.
The Respondent registered the Domain Name on October 31, 2014. The Respondent has operated a website from the Domain Name . At all relevant times the website has displayed information about the bookmaker company Fonbet. The website operating from the Domain Name prominently features the FON Design Mark and the FONBET word trademark. The website is in the Russian language. The landing page of the "www." website displays the following text:
"Back in 19941 , the bookmaker company fonbet began its successful history for the first time in the territory of the CIS2 .
Currently, bc3 fonbet is a member of the NAB (the National Association of Bookmaker), that gives a full reason to say that the line bc fonbet is the best not only in the territory of our country, but also in other countries in the world. …"
The heading of the second paragraph of the landing page reads: "Official site of Fonbet". The bottom of the landing page contains the following text: "All rights reserved. ®F. – Site of bookmaker company Fonbet". 5. Parties' Contentions A. Complainant
The Complainant claims that the Domain Name is confusingly similar to its FONBET trademark. The Complainant alleges that it owns a trademark registration in the FONBET trademark. The Complainant argues that the Domain Name is identical to the Complainant's FONBET trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant argues that the Respondent is using the Domain Name to make users believe that the Domain Name is associated with the website, which is associated or approved by the Complainant and, which redirects users to Complainant's competitors' websites. The Complainant claims that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
The Complainant claims that Domain Name was registered and is being used in bad faith. The Complainant further contends that the use of its trademarks FON and FONBET on the website associated with the Domain Name was made without any authorization or consent by the Complainant. Furthermore, the Complainant alleges that the "REGISTRATION" button on the bottom of the landing page of the "www." website redirects users to websites operated by competitors of the Complainant. The Complainant argues that the Domain Name is used in bad faith and for the sole purpose of diverting customers to the Complainant's competitors and that by using the Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation, and endorsement of the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the proceeding
Paragraph 11(a) of the Rules provides that: "Unless 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."
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English or Russian.
It is established practice to make a decision regarding the language of the proceeding that ensures fairness to the parties and maintains an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593.
The Center advised the Respondent in both English and Russian about an opportunity to object to the Complainant's request for English or Russian to be the language of the proceeding, but the Respondent failed to do so. Therefore, it will not be unfair to the Respondent for the Panel to conduct the proceeding in English. Moreover, the Complainant submitted the Complaint in both English and Russian. The Panel, therefore, determines English to be the language of this proceeding. 6.2. General discussion
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
The evidence on file shows that the Complainant owns a trademark registration for the FONBET trademark and, as a result, has rights in the FONBET trademark. While the Complainant registered its FONBET trademark after the Respondent's registration of the Domain Name, it is well-established that "[r]egistration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights".4
The Domain Name consists of the FONBET trademark and the generic Top-Level Domain ("gTLD") suffix ".org". The Panel finds that the Domain Name is confusingly similar to the Complainant's FONBET trademark because it fully incorporates the FONBET trademark. The gTLD suffix ".org" is to be generally disregarded under the confusing similarity test (as TLDs are a technical requirement of registration).
Therefore, the Panel holds that the first element of the UDRP has been met. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the UDRP, the Respondent may establish that it has rights or legitimate interests in the Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name5 . Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.6
The Complainant contends and the Respondent does not dispute that the Respondent has no right or legitimate interests in respect of the Domain Name because the Respondent is using the Domain Name to make users believe that the website at the Domain Name is associated or approved by the Complainant and, which redirects users to Complainant's competitors' websites. The Complainant claims that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Complainant also claims that the Domain Name was not registered by any of its licensees or affiliated companies. The evidence on file shows that the Respondent has not been commonly known by the Domain Name and he is not making legitimate commercial or fair use of the Domain Name.
Therefore, the Panel holds that the second element of the UDRP has been met. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
Generally, if a domain name was registered before the trademark was registered, the registration of the domain name "would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."7 However, "[i]n certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found."8
The Complainant claims that by the time when the Respondent registered the Domain Name in 2014, the Complainant had been using the FONBET trademark in connection with "" and other websites operated by its affiliated companies for many years. This statement is supported by the Complainant's internal representatives Affidavit. (Paragraphs 2 and 5 of the Affidavit). The Complainant relies on analytical information provided by an independent third party market analytics resource at to show that the FONBET mark was used as a common law or unregistered trademark prior to the Domain Name registration. Based on the analytical data, the website "" was the largest by number of users in the territory of the Russian Federation, with over 3.200.000 registered users in 2013, 2.500.000 in 2014 prior to the Domain Name registration. The Panel finds that, at the time of the registration of the Domain Name, the Complainant had common law or unregistered trademark rights in the FONBET trademark for use in connection with the online betting business by virtue of its use of the mark in connection with the website "" by its affiliated company Leofon Limited.
The Complainant argues that the Domain Name is used in bad faith and for the sole purpose of diverting customers to the Complainant's competitors and that by using the Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation, and endorsement of the Respondent's website. The Complainant claims that the Respondent was clearly aware of the Complainant's FONBET trademark when he registered the Domain Name. The evidence on file shows that the "www." website associated with the Domain Name displays the Complainant's FONBET trademark and the information in the Russian language about the bookmaker company Fonbet, the heading of the second paragraph of the landing page reads: "Official site of Fonbet" and the bottom part of the landing page contains the following text: "All rights reserved. ©F. Site of bookmaker company Fonbet."
The Panel notes that the Respondent has been afforded every opportunity in the course of this proceeding to explain his actions and to respond to the Complainant's submissions. Therefore, the Panel finds that it is very likely that at the time of the registration of the Domain Name the Respondent was clearly aware of the Complainant and its FONBET trademark and to divert Complainant's customers.
Thus, the third element of the UDRP has been met. 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 Domain Name, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: July 7, 2016
1 The Panel notes the Respondent's inclusions of the phrase "SINCE 1994" within a graphical header incorporating the Complainant's design mark and further reference to activities in the mid-90s. In consideration of all the circumstances of this case, the Panel finds such references unreliable given the Respondent's incorporation of the Complainant's intellectual property.
2 CIS stands for the Commonwealth of Independent States.
3 BC apparently stands for the "bookmaker company".
4 Paragraph 1.4, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
5 Paragraph 2.1, WIPO Overview 2.0".
6 Id.
7 Paragraph 3.1, WIPO Overview 2.0.
8 Id.
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