The Complainants are Provent Holdings Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom") and Harmony Park International Inc. of Belize City, Belize, internally represented.
The Respondent is Jhonri Ignatius of Medan, North Sumatra, Indonesia. 2. The Domain Names and Registrar
The disputed domain names and are registered with CV. Jogjacamp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 13, 2016. On June 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the Respondent.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 15, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 26, 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. 4. Factual Background
The Complainant Provent Holdings LTD (the "First Complainant"), incorporated in the British Virgin Islands, owns dozens of trademark applications and registrations for the M88 and M88.COM marks and for design marks incorporating these word marks (collectively, the "M88 Marks") around the world, including applications in China, Canada, and Thailand and registrations in Hong Kong, China, Japan, the Republic of Korea, Malaysia, the Philippines, Belize, the European Union, and Indonesia, where the Respondent is located.
The Complainant Harmony Park International Inc. (the "Second Complainant"), incorporated under the laws of Belize, is a licensee of the First Complainant and has been granted a license to use the M88 Marks and domain names incorporating the M88 Marks, including and . The Second Complainant operates a leading international online casino, poker, sports book and sports exchange gaming website under the M88 Marks. The Second Complainant is a fully licensed gambling operator with a license to operate its business in the Philippines.
In August of 2011, the Complainants were the beneficiaries of an agreement between Mansion (Gibraltar) Limited ("Mansion") and Manchester City Football Club ("Manchester City") wherein Mansion acquired rights to be the exclusive Official International Betting Partner of Manchester City, a football club in the United Kingdom participating in the English Premier League. Mansion is part of the Mansion Group of companies and is affiliated with both Complainants. During the two-year period of this sponsorship deal, the First Complainant's M88 Marks were prominently displayed on the LED pitch-side perimeter advertising system and the City of Manchester Stadium, where Manchester City plays its home football matches. The LED pitch-side perimeter advertising board was prominently displayed in all of Manchester City's home matches, which were televised and reached millions of viewers worldwide.
In the most recent English Premier League season, Mansion was the main shirt sponsor of two teams—Crystal Palace FC and AFC Bournemouth. Crystal Palace played in the FA Cup finals in May 2016, which was telecast live in many parts of the world and received worldwide media attention. The trademarks on these team shirts were M and design and the Chinese characters "明陞" which translates to "mansion" in English. The First Complainant owns several registrations and applications for the M and design and the 明陞 marks around the world, including registrations for the M and design mark in Australia, Canada, China, the European Union, Hong Kong, China, the Republic of Korea, Malaysia, the United States of America, the Russian Federation, and the Philippines and registrations for the 明陞 mark in China, the European Union, Hong Kong, China, Japan, the Republic Korea, Malaysia, the Philippines, and in Indonesia, where the Respondent is located.
The Complainants also held and/or still hold sponsorship deals, including deals with sporting events and professionals such as Tiger Street Football, the Guinness 9 Ball Tour, World 5's Futsal and 2012 professional drifting champion Daigo Saito. The First Complainant's M88 Marks were prominently displayed in connection with such sponsorships. All of the events were televised regionally and received substantial media attention in Asia.
The Respondent registered the disputed domain name on December 12, 2011. The Respondent registered the disputed domain name on May 29, 2013. At the time the Complaint was filed, the disputed domain names resolved to websites with a similar look, feel and layout to the Second Complainant's website, and that featured similar images and prominently displayed the M88.COM, M88, M and design, and 明陞 marks. The websites were in both Mandarin Chinese and Bahasa Indonesia languages and advertised an online casino and sports exchange gaming business. At the bottom of the "www." website, the Respondent indicated that the website was "Powered by M." At the bottom of the "www." website, the Respondent indicated that the website was "Powered by M88.COM." Much of this content has since been removed from the Respondent's websites but both websites still advertise online gambling services. The website currently features images similar to those on the Second Complainant's website but now uses the name "188BET" to advertise the services. The images have been removed from the "www." website but the website continues to advertise online gambling services under the name "M88". The "www." website continues to claim it is "Powered by M88.COM." 5. Parties' Contentions A. Complainants
The Complainants state that the disputed domain names are identical or confusingly similar to the M88 Marks, in which the Complainants have rights. The First Complainant's registration of the M88 Marks establishes a prima facie case that the First Complainant has rights in the marks and a presumption of rights in the marks. The Complainants have also acquired common law rights in the M88 Marks through use. The disputed domain names are confusingly similar to the M88 Marks and the addition of the generic terms "indo" and "soccer" to the First Complainant's marks does not offer any distinctive character to the disputed domain names. "Indo" is a geographic reference to the country Indonesia and "soccer" betting is commonly available in the gaming community.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has not been commonly known by the disputed domain names. The Complainants have not in any way licensed, authorized or permitted the Respondent to use the Complainants' trademarks.
The Respondent has never used, and does not appear to have made preparations to use, the disputed domain names in connection with a bona fide offering of goods and services before the Respondent has any notice of the dispute. The Respondent's website masquerades as a party who is related to the Complainants, confirmed by the blatant use of the First Complainant's other M and design and 明陞 marks on the Respondent's websites. The Respondent's websites are not operated by or related to the Complainants in any way. The Complainants never licensed or authorized the Respondent to use the M88 Marks. The Respondent only uses the disputed domain names as a means to deceive visitors into thinking that the Respondent's websites and domain names are related to the businesses operated under the Complainants' trademarks. This is apparent from the Respondent's use of the First Complainant's M and design and 明陞 marks in its websites in connection with offering services that are of a similar nature to those offered by the Second Complainant and with which the M88 Marks are associated. This is not a bona fide offering of services given that the Respondent is drawing users to its websites through the creation of an unauthorized association between the Respondent's websites and the Complainants' trademarks. The Respondent's websites that are almost identical to the Second Complainant's websites in layout and content are obvious and deliberate phishing websites intended to deceive existing and potential customers of the Complainants to divulge their personal and credit card information to the Respondent. The Respondent is making an unfair use of the disputed domain names to misleadingly divert customers. Such use of confusingly similar domain names is not a bona fide fair use of the disputed domain names.
The disputed domain names have been registered and are being used in bad faith. Given that the Respondent is not making any bona fide use of the disputed domain names, the only inference that can be drawn is that the Respondent acquired the disputed domain names for the sole purpose of exploiting the M88 Marks. The Respondent has deliberately registered the disputed domain names that are confusingly similar to the Complainants' marks to divert Internet users for the Respondent's own commercial gain or benefit and/or criminal purposes (including phishing). These activities constitute registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. This is particularly so given that not only are the disputed domain names confusingly similar to the M88 Marks, but the content of the Respondent's websites includes additional use of other of the Complainants' trademarks that is infringing.
It is clear that the Respondent's use of the disputed domain names is intended to cause Internet users to mistake the Respondent's websites, through which the Respondent is offering services identical to those of the Complainants, as being websites belonging to or being associated with the Complainants. From this mistake, the Respondent seeks to profit. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances like these where a registrant is seeking to profit from and exploit the trademark of another.
The Complainants request that the disputed domain names be transferred to them. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
The Policy provides for transfer or cancellation of the disputed domain names if the Complainants establish each of the following elements set out in paragraph 4(a):
(i) The disputed domains names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The 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.
The Panel finds that the Complainants have met this burden. A. Identical or Confusingly Similar
The Complainants have rights in the M88 Marks. The First Complainant has established that it is the registered owner of various trademark registrations for the M88 Marks around the world. The First Complainant has granted a license to the Second Complainant to use the M88 Marks in connection with offering an international online casino, poker, sports book and sports exchange gaming website. The Panel accepts that the Complainants' marks are well known.
The Panel finds that the disputed domain names are confusingly similar to the Complainants' M88 Marks. To establish confusing similarity, the trademarks and the domain names themselves should be compared to determine the likelihood of Internet user confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2. The disputed domain names consist of the term "m88" with "indo" or "soccer". The term "m88" is identical to the First Complainant's trademark. The addition of the geographic term "indo," a reference to the country Indonesia, in the disputed domain name does not affect the assessment of whether the disputed domain name is confusingly similar to the First Complainant's trademark. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory,WIPO Case No. D2000-1414; see also A Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei,WIPO Case No. D2014-1093. A country name included in a disputed domain name is not a prominent part because it is likely to be recognized as indicating an overseas website of the trademark owner. See Inter IKEA Systems B.V. v. Muhannad Mayyas,WIPO Case No. D2016-0067 (); Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel,WIPO Case No. D2015-0210 (). Consumers are likely to recognize the term "indo" as indicating the website is an Indonesian website of the Complainants. The prominent portion of the disputed domain name is "m88", which is identical to the First Complainant's M88 trademark and the geographic term "indo" does not distinguish the disputed domain name from the M88 trademark. Therefore, the disputed domain name is confusingly similar to the First Complainant's M88 trademark.
Similarly, the addition of the generic term "soccer" in the disputed domain name does not sufficiently distinguish the disputed domain name from the M88 Marks. See Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168 (The addition of the term "download" to the complainant's LIME WIRE trademark in the disputed domain name did not distinguish the disputed domain name from the complainant's mark because users typical download the complainant's software. Therefore, the Panel found that the addition actually increases the confusing similarity.) Soccer betting is commonly available in the sports betting community and the Complainants have had sponsorship deals with soccer teams whereby the M88 Marks have been promoted in connection with this sport. The addition of the term "soccer" in the disputed domain name is likely to be perceived as indicating a soccer-specific website of the Second Complainant. Therefore, the addition of "soccer" to the disputed domain name not only fails to add any distinguishing character to the disputed domain name but it also adds to the confusing similarity. The Panel finds that the disputed domain name is confusingly similar to the M88 trademark. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainants contend, and the Respondent does not deny, that the Complainants never licensed or authorized the Respondent to use the M88 Marks or to register any domain name incorporating the M88 Marks. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain names to publish websites offering services that compete directly with the Complainants' services and which could be confused with those offered by the Complainants. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 ("[I]t would be unconscionable to find that a bona fide offering of services in a respondent's operation of a web-site using a domain name which is confusingly similar to the complainant's mark and for the same business."). Moreover, at the time the Complaint was filed, the disputed domain names resolved to websites that purported to be powered by and operated by the Complainants. The websites featured not only the M88 Marks but also other trademarks of the Complainants and they featured similar content, imagery and layout as the Second Complainant's website in a clear attempt by the Respondent to pass its websites and services off as those of the Complainants. There can be no legitimate interest in passing off services. See, e.g. Mattel, Inc. v. Magic 8 ball factory,WIPO Case No. D2013-0058. The Respondent's obvious attempts to deceive and mislead Internet users to its websites — at best, in an effort to profit by passing itself off as the Complainants, and at worst, in an effort to conduct an unlawful phishing scam — is a clear indication of the Respondent's lack of bona fide intentions and use. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and used the disputed domain names in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or has 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; or
(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; or
(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 the respondent's web site 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 such web site or location or of a product or service on such web site or location.
The present case fits clearly within the situation described in paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent was undoubtedly aware of the Complainants and their trademarks at the time of registration of the disputed domain names. The Complainants' M88 marks are well-known and are registered around the world, including in Indonesia where the Respondent is located. A simple Internet search would have revealed the Second Complainant and its interests in the M88 Marks. Moreover, it is quite clear from the nature of the Respondent's business, the use of the M88 Marks and the Complainants' other marks, and the use of the disputed domain names that the Respondent had the Complainants' trademarks in mind when registering the disputed domain names. The Panel finds that the Respondent's registration of the disputed domain names incorporating the M88 trademark, being fully aware of the Complainants' rights in the M88 Marks, without any right or legitimate interests in doing so is registration in bad faith.
The Respondent's use of the disputed domain names is also in bad faith. As discussed above, the Respondent uses the disputed domain names to direct Internet users to its websites where it promotes online gambling and betting services similar to and that compete with those offered by the Second Complainant under the M88 Marks. Not only did the Respondent's websites incorporate the M88 Marks throughout, but they claimed to be "powered" by those marks. By copying the look and feel of the Second Complainant's website, the Respondent affirmatively created the false impression that the Respondent's websites were controlled by or affiliated with the Complainants. The Respondent has intentionally attempted to attract Internet users to the Respondent's websites for commercial gain by creating a likelihood of confusion with the Complainants' M88 marks as to the source, sponsorship, affiliation, or endorsement of such websites. These activities amount to bad faith use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Respondent is using the disputed domain names in bad faith. 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 Complainants.
Kimberley Chen Nobles
Sole Panelist
Date: August 8, 2016
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