The Complainant is Navasard Limited of Limassol, Cyprus, represented by Giorgos Landas LLC, Cyprus.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Andy Bornd of Minsk, Belarus. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2017. On June 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 16, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 2017 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 amendment to the Complaint on June 27, 2017.
The Center verified that the Complaint together with the amendment to 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 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2017.
The Center appointed Olga Zalomiy as the sole panelist in this matter on August 1, 2017. 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.
It is well-established that in cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. 4. Factual Background
The Complainant is a company registered in Cyprus. The Complainant is the owner of the 1XBET word European Union trade mark registration, number 014227681, which was registered on September 21, 2015. The Complainant also owns the 1XBET design European Union trade mark registration number 013914254, which was registered on July 27, 2015. The Complainant uses the above mentioned trademarks in connection with its online sports betting services.
The Respondent registered the Domain Name on February 6, 2017. The Domain Name directs to a website in the Russian language, which displays information about the online sport betting company 1xbet. The landing page of the “www.” website displays the following text:
“1xbet is an international bookmaker company with an international name, which gives both novices and veterans of sport betting the best opportunities for betting and subsequent repatriation of assets. The main resource is located at the address ”
The heading of the landing page reads: “Bookmaking company 1xBet”. The bottom of the landing page lists the “[…]@” email as the contact address of the website owner.
The “www.” website also has a page entitled “mirror”. The web page contains information that many users have been experiencing problems with the website “www.” and instructs users to press a button displayed on the page, so they can use its purported “mirror”. The button directs users to an online betting website belonging to a competitor of the Complainant. Several pages of the website prominently display a button redirecting users to the same competitor’s online betting website. 5. Parties’ Contentions A. Complainant
The Complainant claims that it’s a Cypriot company, which owns trademark registrations for the word and design 1XBET marks. The Complainant alleges that the 1XBET mark is one of the most recognized online sport betting brands in Eastern Europe. The Complainant alleges that prior to its registration of the 1XBET mark, the brand was used by its predecessors as a common law trademark. The Complainant contends that its trademark is leased to companies affiliated with the Complainant by virtue of common control. The Complainant claims that its licensees have registered several domain names incorporating the 1XBET trademark and use the domain names to direct to websites offering online sport betting.
The Complainant argues that the Domain Name is identical or confusingly similar to the Complainant’s 1XBET trademark because the second level domain of the Domain Name is identical to the Complainant’s trademark.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent is effectively illegally using the Domain Name for purposes of deceitfully making visitors believe that the Domain Name is genuinely operated under the brand of the Complainant and leading them into competitors’ websites upon attempting to register. The Complainant further claims that the website operated under the Domain Name does not offer any genuine services other than deliberately and illegally soliciting customers and the Respondent is not making any noncommercial or fair use of the Domain Name.
The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant claims 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
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
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has established its rights in the 1XBET trademark by submitting copies of the European Union trade mark registrations for the 1XBET word and design marks. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”
It is well established that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”1 “Where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”2 “The applicable Top Level Domain (‘TLD’) in a domain name […] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”3 “The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element.”4
Here, the Domain Name consists of the Complainant’s 1XBET trademark and the TLD suffix “.online”. The Domain Name incorporates the Complainant’s trademark in its entirety. The addition of the TLD “.online” does not impact the assessment of the confusing similarity.
Thus, the Domain Name is identical or confusingly similar to the Complainant’s 1XBET mark and the first element of the UDRP has been satisfied. B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.5 Once the Complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.6 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.7
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not authorized the Respondent to use and register the Complainant’s 1XBET trademark, or to register any domain names incorporating the 1XBET mark. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use that complainant’s trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, A, Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
The Panel finds that there is no evidence of the Respondent’s use, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Complainant argues that the Domain Name does not offer any genuine services. Instead the Domain Name directs to a website, which purports to look like it is affiliated with one of the Complainant’s licensees. The “www.” website contains information that prompts Internet users to press on buttons that redirect users to a different online betting website belonging to a competitor of the Complainant. Such use is neither noncommercial, nor fair. It is also not bona fide.
Prior UDRP panels found that “when the TLD is descriptive of or relates to goods or services (including their natural zone of expansion)[…], the respondent’s selection of such TLD would tend to support a finding that the respondent obtained the domain name to take advantage of the complainant’s mark and as such that the respondent lacks rights or legitimate interests in the domain name.”8 Here, the Respondent registered the Domain Name consisting of the Complainant’s 1XBET trademark and the TLD “.online” to direct Internet users to a website offering online betting, which is descriptive of the Complainant’s online betting services. Therefore, it is likely that the Respondent obtained the Domain Name to take advantage of the Complainant’s mark and, therefore, the Respondent lacks rights or legitimate interests in the Domain Name.
The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied. 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.
Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios may constitute evidence of a respondent’s bad faith:
(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 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 its 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 respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds that the Respondent is using the Domain Name in bad faith because by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the its website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of either the Respondent or its website. The evidence on file shows that the “www.” website associated with the Domain Name is designed to look like it is associated with or authorized by the Complainant. The website displays the Complainant’s 1XBET trademark and information in the Russian language about the bookmaker company 1XBET. The heading of the landing page reads: “Bookmaking company 1xBet”. The bottom of the landing page lists the “[…]@” email as the contact address of the website owner, whereas the domain name belongs to one of the Complainant’s licensees.
Furthermore, the “www.” website contains a page entitled “mirror”, which displays a text stating that many users have been experiencing problems with the website “www.” and that “management of 1xbet is hoping to resolve the issue of blocking in the legal field. Those, who do not want to wait until that moment [resolution of the issue], we offer simple methods for finding us in the web. The easiest and the simplest one is an alternative address , otherwise called mirror site.” The page also displays a button redirecting to a website of a competitor of the Complainant that offers online betting services. Moreover, several pages of the Respondent’s website contain a button redirecting users to the same competitor’s online betting website.
The Panel notes that there are other circumstances indicating that the Respondent’s registration and use of the Domain Name is in bad faith present in this case, such as: (i) the chosen TLD “.online”, which corresponds to the Complainants online betting services; (ii) the content of the websites to which the Domain Name directs and redirect, which is designed only to entice Internet users to use the Complainant competitor’s “” website; (iii) incomplete or false contact information provided by the Respondent at the registration of the Domain name.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved. 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 name be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: August 14, 2017
1 Section 1.7, WIPO Overview 3.0.
2 Id.
3 Section 1.11.1, WIPO Overview 3.0.
4 Section 1.11.2, WIPO Overview 3.0.
5 Section 2.1, WIPO Overview 3.0.
6 Id.
7 Id.
8 Section 2.14, WIPO Overview 3.0.
Full & Egal Universal Law Academy