The Complainants are Provent Holdings Ltd. and Upper Assets Limited of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("UK"), and Harmony Park International Inc. of Belize City, Belize, represented by Wei-Jin Lee, China.
The Respondent is Domain Admin, Whois Privacy Corp. of Bahamas. 2. The Domain Name and Registrar
The disputed Domain Names and is registered with Internet Domain Service BS Corp Internet Domain Service BS Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 14, 2017. On September 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Names. On September 18, 2017, 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.
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 September 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 10, 2017.
The Center appointed Peter Wild as the sole panelist in this matter on October 27, 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.
The Complainants request that the proceedings against the two disputed Domain Names be consolidated in one procedure. They claim that the Registrant of both disputed Domain Names is identical, the disputed Domain Names have been registered on the same date, the disputed Domain Names resolve to an identical IP Address; the websites' content and links are similar, they adopt the same proxy registration service and domain name registrar; and the Complainants would incur more costs in filing separate complaints. Based on section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the Complainants are entitled to file a consolidated complaint in this case based on the following criteria: (i) the disputed Domain Names or the website to which they resolve are subject to common control; (ii) the Complainants have a common grievance against the Respondent; (iii) the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion and (iv) the consolidation would be fair and equitable to all parties.
The Panel comes to the conclusion that a consolidation is fair and equitable under the given facts. 4. Factual Background
The Complainant Provent Holdings LTD (the "First Complainant"), incorporated in the British Virgin Islands, Overseas Territory of the UK, owns and owned a significant number of trademark registrations consisting of or containing M88 or M88.COM (the "M88 Marks") in many countries around the world. The First Complainant agreed to assign its M88 related trademarks to Upper Assets Limited of Tortola, British Virgin Islands, Overseas Territory of the UK (the "Second Complainant") and the recordal of this transfer has been completed for a number of marks, while it is still pending for others.
The Complainant Harmony Park International Inc. (the "Third Complainant"), from Belize, is a licensee of the First and Second Complainant and has been granted a license to use the M88 Marks and domain names incorporating the M88 Marks, including and . The Third Complainant runs an international online casino, poker, sports book and sports exchange gaming website under the M88 Marks.
Since at least 2011, the Complainants were the beneficiaries of UK focused sponsoring and advertising agreements with major football clubs through an affiliated company named Mansion. The Complainants also held and/or still hold further sponsorship deals in relation to televised sports events.
The Respondent registered the disputed Domain Names and on September 8, 2016. 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 and M88 marks. The websites were in Bahasa Indonesia language and contained a number of links of which only one link on "www." leads to an active website, namely a gambling website most likely based in Cambodia. 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 disputed Domain Names are confusingly similar to the M88 Marks and the addition of the generic terms "-id" and "s" to the First Complainant's marks does not offer any distinctive character to the disputed Domain Names. "Id" is a geographic reference to the country Indonesia and "s" has no recognizable meaning.
The Respondent has no rights or legitimate interests in respect of the disputed Domain Names and 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's websites are not operated or authorized by or related to the Complainants in any way. The Respondent only uses the disputed Domain Names as a means to deceive visitors into thinking that the Respondent's websites under the disputed Domain Names are related to the businesses operated under the Complainants' trademarks. The Respondent's websites that are very similar to the Second Complainant's websites in layout and content and are apparently phishing websites intended to deceive existing and potential customers of the Complainants.
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.
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 A. Identical or Confusingly Similar
The three Complainants have rights in the M88 Marks. The First and Second Complainants have established that they are the registered owners of various trademark registrations for the M88 Marks around the world. They have granted a license to the Third 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. The disputed Domain Names consist of the term "m88" with the addition of "-id" or "s". The term "m88" is identical to the First Complainant's trademark. The addition of the geographic term "-id," 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. The same is true for the additional element "s" in the second disputed Domain Name. The prominent portion of the and the disputed Domain Names is "m88", which is identical to the First Complainant's well known M88 trademark. The Top-Level Domains ".net" and ".org" don't have an influence on the overall appearance of the disputed Domain Names. Therefore, the disputed Domain Names are confusingly similar to the First Complainant's M88 trademark.
The Panel finds the first element of the Policy is met. B. Rights or Legitimate Interests
There is no evidence in the record to show that the Respondent has been commonly known by the disputed Domain Names. According to the Complainants, they 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, in one case for "www." even providing a link to a competing website. This is not a bona fide offering.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed Domain Names. C. Registered and Used in Bad Faith
The present case is within the situation described in paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent was certainly 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. A simple Internet search would have revealed the Third Complainant and its interests in the M88 Marks. Moreover, it is very clear from the use of the M88 Marks and the Complainants' other marks and content, and the use of the disputed Domain Names that the Respondent knew the Complainants' trademarks 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 those offered by the Third Complainant under the M88 Marks. The Respondent's websites incorporate the M88 Marks. They also copy the look and feel of the Third Complainant's website, and therefore create the false impression that the Respondent's websites were controlled by or affiliated with 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 Third Complainant's website in a clear attempt by the Respondent to pass its websites and services off as those of the Complainants. Some of the content may also be copyright protected and the use of such trademarks and material without the owners consent constitutes bad faith use. The Respondent 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 establish bad faith use of the disputed Domain Names pursuant to paragraph 4(b)(iv) of the Policy.
The Panel finds that the Respondent registered and used 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.
Peter Wild
Sole Panelist
Date: November 1, 2017
Full & Egal Universal Law Academy