The Complainant is Navasard Limited, Cyprus, represented by Giorgos Landas LLC, Cyprus.
The Respondent is Harry Houdini, Portugal. 2. The Domain Name and Registrar
The disputed domain name is registered with 101domain GRS Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2019. On August 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2019, 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 Complainant on August 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 2, 2019.
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 Respondent of the Complaint, and the proceedings commenced on September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2019.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 8, 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
Complainant is Navasard Limited, a limited liability company registered in the Republic of Cyprus.
Complainant has trademark rights in the 1XBET sign, used for the sport betting brand, which is one of the most recognized online sports betting brands in Eastern Europe, namely:
- the European Union trademark 1XBET registration N°013914254 of July 27, 2015 registered in classes 35, 41 and 42 and;
- the European Union trademark 1XBET registration N°014227681 of September 21, 2015, registered in classes 35, 41 and 42.
Complainant is the holder of domain names, including and .
Complainant’s domain names and trademarks are operated by the company 1XCorp. N.V. and a number of other affiliated entities through an Intellectual Property Lease Agreement, of May 17, 2019.
Respondent registered the disputed domain name on March 12, 2019. Respondent did not take into consideration the warning notification that he received when he registered the domain name. According to Trademark Clearinghouse, when a registrant is attempting to register a domain name that matches a trademark term, he receives a warning notice.
Furthermore, the Registrar has suspended the disputed domain name as of August 7, 2019, for a violation of Registrar’s Terms and Conditions.
Respondent did not respond to the amended Complaint. 5. Parties’ Contentions A. Complainant
First, Complainant argues that the disputed domain name is identical to the alpha-string of the trademark N°014227681, before the applicable suffix “soccer”.
Complainant states that the disputed domain name was not registered by it or by any of its affiliated companies or licensees.
Furthermore, Complainant argues that the use of the word “1XBET” is made without any authorization or consent. It considers that Respondent used Complainant’s trademark in order to mislead Complainant’s clients and in order to take advantage of Complainant’s inability to use the disputed domain name in the future.
Then, Complainant states that Respondent is illegally using the disputed domain name for the purpose of re-selling the disputed domain name and is taking advantage of the confusing similarity with Complainant’s trademark. It considers that Respondent does not intend to make any legitimate use of the disputed domain name because there is no actual offering of goods and services. In addition, Respondent is not making any commercial or fair use of the disputed domain name.
Finally, Complainant considers that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows: A. Identical or Confusingly Similar
First, a new generic Top-Level Domain (“new gTLD”) is generally regarded as a functional element. The incorporation in a domain name of “a Complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP" (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888).
The Panel finds that the disputed domain name incorporates Complainant’s trademarks “1XBET”.
Furthermore, a previous panel stated that “because Complainant is a company specialized in providing news, the combination of Complainant's trademark and the ".news" extension is not irrelevant to this case. Given the nature of Complainant's business, the gTLD ".news" only increases the potential for confusion” (Bloomberg Finance, L.P. v. Huang Wei, WIPO Case No. D2015-1378). In fact, Complainant specializes in online sport betting. Thus, adding the new gTLD ”soccer” to the word “1xbet” directly refers to Complainant’s domain of activity.
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s trademarks.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
First, Complainant claims that the disputed domain name has not been registered by it or one of its licensees and that it did not give its consent to Respondent to register the disputed domain name.
Second, Respondent did not take into consideration the warning notification that he received when he registered the disputed domain name. According to previous WIPO UDRP decisions, this lack of response can be indicative of Respondent’s lack of interests (see Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493: “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
Furthermore, Respondent did not provide a response to the amended Complaint.
The Panel finds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and thus cannot claim a bona fide offering of goods and services.
The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
First, Complainant considers that the disputed domain name was registered and is being used in bad faith, but gives very sparse arguments to prove those contentions.
However, Respondent received a warning notification when he was attempting to register the disputed domain name, to alert him that he was using a word corresponding to a registered trademark. Based on this fact, Respondent could not have ignored Complainant’s trademarks.
Panel finds that Respondent registered the disputed domain name in bad faith.
Second, and according to paragraph 4(a)(iii) of the Policy, Complainant has to prove that Respondent is using the disputed domain name in bad faith. Here again, Complainant did not provide a multitude of arguments to prove the use in bad faith. However, the Panel notes that Complainant likely refers to the so-called “passive holding”-doctrine, and references some decisions in support.
The Panel notes that even where Complainant’s argumentation is lacking, according to previous WIPO UDRP decisions, the Panel may nevertheless analyze the facts to state on this point. See Kate Spade, LLC v. Ming Tuff, WIPO Case No. D2012-1907: “Once again, Complainant has failed to provide any argument or evidence related to an element of the Policy, namely providing some argument and proof that the disputed domain name was not only registered in bad faith, but has been used in bad faith as well. The Policy requires “registration and use in bad faith” (emphasis added) in order for the third element to have been met by Complainant. However, as Respondent has not replied to counter Complainant’s lack of contention in this regard, the Panel will consider the evidence presented to see whether this issue can be resolved”.
Respondent did not offer a response to the amended Complaint. This element may be taken into account to show that Respondent is not using the disputed domain name in good faith. As Respondent did not try to prove its legitimate interests in using the disputed domain name, by responding to the Complaint, Panel may consider that he is not using it in good faith.
Further, in a previous WIPO UDRP decision, the panel considered that “In this case, there is an inference that the Respondent was clearly aware of the Complainant’s mark or, at least, the Complainant’s potential rights, when the disputed domain name was registered” (See, Betsson Malta Limited v. john Droker,WIPO Case No. D2010-0883).
It should also be noted that the disputed domain name has been suspended for a violation of Registrar’s Term and Conditions.
Thus, even though the Panel would have preferred to see more ample argumentation and evidence by Complainant, the Panel finds that the disputed domain name is being used in bad faith, due to the obvious context of the matter.
Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy. 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 Complainant.
Nathalie Dreyfus
Sole Panelist
Date: October 18, 2019
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