The Complainant is Realm Entertainment Limited of Ta' Xbiex, Malta, represented by Ports Group AB, Sweden.
The Respondent is Whois Agent, Domain Protection Services, Inc of Denver, Colorado, United States of America ("United States") / Onur Oztas, Betin 73 of Adana, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2017, 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 July 6, 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 amended Complaint on July 10, 2017.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 31, 2017.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on August 2, 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. 4. Factual Background
The Complainant is a limited liability company which is incorporated in Malta. Since 2011, the Complainant runs a game site at "". Under the name BETS10 the Complainant offers a wide range of online gambling products and games.
The Complainant holds the following European Union trademarks, inter alia registered for financial, telecommunication services and gambling:
- European Union trademark BETS10 (No. 009941139), filed on May 4, 2011, registered on September 14, 2011 in the following classes: 36, 38 and 41;
- European Union trademark BETS10 (No. 012403713), filed on December 9, 2013, registered on May 5, 2014, in the following classes: 36, 38 and 41;
According to the WhoIs information as confirmed by the Registrar, the disputed domain name was registered to the Respondent on June 6, 2016. The disputed domain name does not currently resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's duly registered trademark BETS10. The addition of the acronym "vip" was added to give the impression that the site or the Respondent are connected to the Complainant in some way.
Further, the Complainant asserts that the generic Top-Level Domain ("gTLD") ".com" is not to be taken into consideration when assessing this first requirement of the Policy.
With regard to the second element of the Policy, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name since the Respondent has not been authorized to register the disputed domain name incorporating the mark BETS10.
Besides, the usage of the domain name strongly suggests that the domain name was registered having in mind the BETS10 trademark of the Complainant aiming to commercially profit from misleading consumers. Thus, there is no fair use of the domain name. To that end, the Complainant provides the source code of the Respondent's website where the trademark BETS10 appears as a keyword.
Ultimately, the Complainant states that there is no evidence that the Respondent has been commonly known by the disputed domain name.
With respect to the third requirement, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent was well aware of the Complainant's trademark and business when registering the domain name. Such a finding is supported by the fact that the Complainant had been using the mark five years before the disputed domain name was registered. Further, as shown in a screenshot of the disputed domain name website from June 8, 2017, the Respondent's website is active in the same kind of business and the disputed domain name reproduces the Complainant's mark. Therefore, states the Complainant, some knowledge of the Complainant's trademark and business exists.
The Respondent is trying to take advantage of the BETS10 trademark. Accordingly, the domain name has been registered for commercial gain in an attempt to attract users by creating a likelihood of confusion with the Complainant's mark. Alternatively, the Respondent is disturbing the Complainant's business by generating confusion to consumers. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested of the disputed domain name to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 14(a) of the Rules in the event of a failure of the Respondent to lodge a Response, the Panel is required "to proceed to a decision on the complaint", whilst under paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate". This dispute resolution procedure was accepted by the disputed domain name registrant as a condition of registration of the disputed domain name. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name "is identical or confusingly similar to a trademark or service mark in which the Complainant has rights".
The Panel finds that the Complainant has registered rights in the BETS10 trademark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7 expresses the consensus view of WIPO UDRP panels in relation to the first test: "This test 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". Therefore, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark.
Moreover, the Panel also notes that previous WIPO UDRP decisions conclude that adding a dictionary term to a trademark in which the Complainant has trademark rights, and registering the resulted combinations as a domain name does not eliminate the confusing similarity of such domain name to such trademark. Accordingly, the term "vip" is disregarded since the term does not distinguish the disputed domain name's confusing similarity to the mark BETS10. See Alcatel Lucent v. Domains By Proxy, LLC / Bin G Glu, G Design,WIPO Case No. D2016-1745.
It is also well established that the specific Top Level of the domain name does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no
rights or legitimate interests with respect to the disputed domain name.
No evidence in the records suggests that the Respondent has any rights or legitimate interests in the disputed domain name. It is clear that the Respondent has no authorization or license to use the BETS10 trademark as domain name. Nor is the Respondent commonly known by the disputed domain name. Further, it is clear from the records that the Respondent uses the Complainant's mark as a keyword in his website source code without any apparent legitimate or fair use purpose.
Accordingly, the Panel is of the opinion that the Complainant has made out a prima facie case. When the Complainant makes such a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed 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 disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he 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.
However, the Respondent did not submit a response although it was duly notified of its right to do so. As noted, paragraph 14(b) of the Policy states that in these circumstances the Panel "shall draw such inferences therefrom as it considers appropriate". The Panel finds that the Respondent has not been authorized or licensed by the Complainant to use the mark BETS10 as a domain name. Nor the Respondent is known as BETS10. Moreover, in the Panel's view, by reproducing the Complainant's mark in the corresponding domain name and using the trademark as a keyword in the Respondent's source code website, the Respondent is not 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.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of the Policy, paragraph 4(b) any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
According to the records the Panel finds that the following circumstances indicate that the Respondent´s registration and use of the domain name was in bad faith: a) the domain name incorporates the Complainant's mark BETS10 plus an additional generic term, as such "vip"; b) the usage of the mark BETS10 as a keyword in the Respondent's website source code, the use of the disputed domain name for a website with pay-per-click links, as shown by the Complainant's screenshot of the disputed domain name website from June 8, 2017, and the passive holding of the disputed domain name at the time of this Decision; c) a clear absence of rights or legitimate interests coupled with no explanation for the Respondent's choice of the domain name as noted in the previous paragraph.
The Panel is of the opinion that in registering the disputed domain name, the Respondent was aware of the Complainant's mark because the disputed domain name was registered years after the Complainant's trademarks were registered. Moreover, the Panel finds that, on balance, the record reveals that the motive in relation to the registration and use of the disputed domain name was to take advantage of the Complainant's trademark rights for commercial gain. The disputed domain name's previous use for a website with pay-per-click links suggests the Respondent gained commercially by diverting Internet users, and the current lack of active use does not prevent a finding of bad faith. See Compagnie Générale des Etablissements Michelin v. Balticsea LLC,WIPO Case No. D2017-0308.
Upon the above mentioned, the Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use. 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.
Manuel Moreno-Torres
Sole Panelist
Date: August 6, 2017
Full & Egal Universal Law Academy