The Complainant is Tipico Co. Ltd., Malta, represented by Boehmert & Boehmert, Germany.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2019. On May 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2019, 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 May 23, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was June 12, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 13, 2019.
The Center appointed D. Brian King as the sole panelist in this matter on June 24, 2019. 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 A. The Parties
The Complainant is Tipico Co. Ltd., an international provider of sports betting services and casino games established under the laws of Malta in 2004. The Complainant is licensed to conduct a betting business by the Malta Gaming Authority. According to the Complaint, the Complainant has over 750 betting shops throughout Germany, making it one of the market leaders for sports betting in that country. The Complainant also represents that it has branches in Austria, Croatia, Gibraltar, Colombia and Malta. The Complainant notes that it is a sponsor of the football league club FC Bayern Munich and of the German Football League.
The Panel has no information on the activities or history of the Respondent. B. The Marks
The Complainant currently holds registrations for the TIPICO trademark in several jurisdictions (Annex 5 to the Complaint). An illustrative, non-exhaustive list follows:
Trademark
Jurisdiction
Date of Registration
Registration Number
TIPICO (word)
European Union (“EU”)
September 23, 2005
003939998
TIPICO (word)
International Registration
(designating the EU and Turkey)
May 25, 2005
863984
TIPICO (word)
International Registration
(designating Antigua and Barbuda, Albania, Bosnia and Herzegovina, Bonaire, Sint Eustatius and Saba, Switzerland, Curaçao, Croatia, Montenegro, North Macedonia, Norway, Serbia, Russian Federation, Sint Maarten (Dutch part), Turkey and Ukraine)
April 29, 2010
1040604
TIPICO (stylized word)
EU
May 3, 2013
011339835 C. The Domain Name
The Domain Name was registered on February 7, 2019. That is more than a decade after the Complainant registered its TIPICO mark. The website associated with the Domain Name offers and contains links to sports betting services that compete with the Complainant (Annex 6 to the Complaint). The Respondent’s website also prominently features the Complainant’s stylized TIPICO trademark. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is confusingly similar to its registered trademarks. The Complainant notes that the Domain Name fully incorporates the TIPICO mark and argues that the addition of the generic Top-Level Domain (“gTLD”) “.com” does nothing to diminish confusing similarity. By the same token, according to the Complainant, the addition of the term “tips” also fails to distinguish the Domain Name from its famous mark.
The Complainant next argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not licensed or otherwise authorized the Respondent to use any of its trademarks or intellectual property. Furthermore, according to the Complainant, the Respondent’s use of the Domain Name demonstrates an intent unfairly to benefit commercially by means of the confusing similarity of the Domain Name to the Complainant’s mark. This, the Complainant argues, is not a legitimate noncommercial or fair use, but rather an illegitimate usage.
Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant argues that, given the Respondent’s aforementioned use of the Domain Name, the Respondent must have known of the Complainant’s trademarks when registering the Domain Name. This conclusion is bolstered by the fact that “tipico” has no inherent descriptive meaning regarding betting services, and the fact that the TIPICO brand is well known internationally. The Complainant argues that the Respondent clearly registered and uses the Domain Name with the intention of attracting Internet users to the website associated with the Domain Name for commercial gain, by creating a likelihood of confusion with the Complainant’s widely-recognized trademarks. Indeed, the Complainant points out, the Respondent’s website prominently displays the Complainant’s stylized trademark at the top of the landing page. Considered together, the Complainant argues, these facts demonstrate bad faith registration and use under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be entitled to relief:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.
Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above. A. Identical or Confusingly Similar
The Complainant has provided convincing evidence that it possesses rights in the TIPICO mark. Specifically, the Complainant has demonstrated that it registered the mark in multiple jurisdictions as early as 2005, and that the mark has attained international recognition.
The Domain Name entirely incorporates the Complainant’s mark and appends to it the term “tips.” Prior UDRP panels have consistently and rightly held that the addition of descriptive words to a complainant’s trademark does not distinguish a domain name from the mark (see Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving / Izik Apo,
WIPO Case No. D2006-1307; Lime Wire LLC v. David Da Silva / C,
WIPO Case No. D2007-1168; Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber,WIPO Case No. D2003-0251). In the present case, the addition of the generic term “tips” does nothing to prevent a finding of confusing similarity of the Domain Name with the Complainant’s mark. Meanwhile, the addition of the gTLD “.com” also does nothing to prevent a finding of confusing similarity.
For these reasons, the Panel has no difficulty finding that the Domain Name is confusingly similar to the Complainant’s TIPICO mark. The first element of the test under paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a) of the Policy (see Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205; Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith,WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Once a prima facie showing is made, the burden shifts to the respondent to prove that it does possess rights or legitimate interests in the disputed domain name.
The present Panel agrees with these holdings and finds that the Complainant has made out a prima facie case here. The Complainant has shown that it registered the TIPICO mark in multiple countries and jurisdictions as from 2005, or more than a decade before the Respondent registered the Domain Name. Accordingly, the Respondent was at least on constructive notice of the Complainant’s rights in the TIPICO mark when registering the Domain Name. In fact, the Domain Name’s composition and the content of the associated webpage – which offers services that compete with those of the Complainant – constitutes an implicit acknowledgement of actual notice on the Respondent’s part.
In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that the Respondent has no connection to the Complainant or its business. The Panel also finds no evidence that the Respondent is commonly known by a name corresponding to the Domain Name.
In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. Accordingly, the Panel finds that the Complainant succeeds as to the second element of the test under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element of the test under paragraph 4(a) of the Policy requires proof that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out illustrative circumstances that constitute evidence of bad faith registration and use. The Panel finds that the circumstance set out in paragraph 4(b)(iv) has been established here.
As already concluded above, the Domain Name is confusingly similar to the Complainant’s trademark. It resolves to a website offering gambling services that compete with those of the Complainant, and the website in fact prominently displays the Complainant’s TIPICO mark. This establishes to the Panel’s satisfaction that the Respondent is intentionally attempting to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. Under paragraph 4(b)(iv) of the Policy, this constitutes evidence of bad faith registration and use – evidence which, in the circumstances here, the Panel finds to be compelling.
The Panel thus concludes that the Complainant has satisfied its burden with respect to the third element under paragraph 4(a) of the Policy as well. 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.
D. Brian King
Sole Panelist
Date: July 8, 2019
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