The Complainant is Navasard Limited, Cyprus, represented by Giorgos Landas LLC, Cyprus.
The Respondent is Valentine Kobzar, Ukraine. 2. The Domain Name and Registrar
The disputed domain name 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 Domain Name. On August 28, 2019, 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 September 3, 2019, 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 September 4, 2019. The Complaint was submitted in English. The language of the Registration Agreement for the Domain Name is Russian. On September 12, 2019, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and submitted a translated Complaint on September 19, 2019. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended Complaint and the translated 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, in Russian and English, the Respondent of the Complaint, and the proceedings commenced on September 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default October 14, 2019. The Center appointed Olga Zalomiy as the sole panelist in this matter on October 22, 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 The Complainant is a company registered in Cyprus. The Complainant is the owner of the 1XBET word European Union trademark registration, number 014227681, which was registered on September 21, 2015. The Complainant also owns the 1XBET design European Union trademark 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 March 14, 2019. The Domain Name used to direct to an online casino. Currently, the Domain Name does not resolve to any active websites. 5. Parties’ Contentions A. Complainant The Complainant claims that it is 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 it did not authorize the Respondent to use its trademark in the Domain Name. The Complainant contends that the Respondent is illegally using the Domain Name for the purposes of reselling the Domain Name at a profit by taking advantage of the confusing similarity of the Domain Name with the Complainant’s trademark. The Complainant claims that the Respondent is not making any commercial or fair use of the Domain Name. The Complainant asserts the Respondent does not intend to make any legitimate use of the Domain Name and there is not actual offering of goods and services. The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant contends that the 1XBET trademark is registered with the Trademark Clearinghouse. The Complainant claims that a potential domain name registrant receives a warning notice when it attempts to register a domain name that matches a trademark term in the Trademark Clearinghouse. The Complainant asserts that the Respondent was aware of the Complainant’s rights in the 1XBET trademark and registered the Domain Name that was confusingly similar to the Complainant’s mark in bad faith. The Complainant contends that apparent lack of active use of the domain name or absence of any active attempt to sell or to contact trademark holder does not prevent a finding of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Language of the Proceeding Under paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement, unless the parties agree to use a different language, or the registration agreement provides otherwise. The Panel has the right to determine language of the administrative proceeding based on the circumstances of the case. Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. The Complainant requested that English be the language of the administrative proceeding but translated the Complaint into Russian. However, it would be unfair to the Complainant to continue communications in Russian. It would put the Complainant in an unfairly disadvantaged position Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, …(vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.” The Panel finds that it is likely that the Respondent understands English. First, the Respondent registered the Domain Name in Latin characters. Second, a Panel visit to the Wayback Machine1 at the “www.archive.org” website in search for archived pages of the “www.casino-1xbet.net” website showed that in March-April of 2019, the Domain Name was used to direct to an online casino. The website at the Domain Name contained texts in Russian and in English. It will not be unfair to the Respondent if the proceeding is conducted in English because the Respondent appears to understand English and because the Respondent did not object to use of English as the language of this proceeding despite being informed about his right to do so. In addition, the Complainant submitted a Complaint translated into Russian. Considering the facts and law stated above, the Panel grants the Complainant’s request that English be the language of this proceeding. 7. 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 must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Under section 1.2.1 of the 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”. The Complainant satisfied the standing requirement in this case by submitting evidence of ownership of the 1XBET word and design trademarks. The Domain Name consists of the word “casino”, the Complainant’s 1XBET trademark, a hyphen and the generic Top-Level Domain (“gTLD”) “.net”. Where a domain name incorporates the entirety of a trademark and where the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to the mark for purposes of UDRP standing. Because the 1XBET trademark is recognizable within the Domain Name, neither the addition of the descriptive term “casino”, nor the addition of a hyphen would prevent a finding of confusing similarity under the first element.2 “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Therefore, the Domain Name is confusingly similar to the Complainant’s 1XBET trademark. Thus, the Complainant has satisfied the first element of the UDRP. 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.3 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.4 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.5 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, Above.com, Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Respondent used to use the Domain Name to direct to an online casino. The Respondent’s website prominently displayed the Complainant’s trademark and offered services identical to those of the Complainant. Such use was not bona fide use. Currently, the website at the Domain name is inactive. The Respondent’s non-use, or passive holding, of the Domain Name is further evidence that it does not have any rights or legitimate interest in the Domain Name. See, e.g., Bayerische Motorken Werke AG v. Weiss,WIPO Case No. D2017-2145 (“The Panel agrees that the use of the disputed domain name in connection with a ‘coming soon’ website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”) The Respondent has not been commonly known by the Domain Name. The Respondent provided no evidence that the Respondent owns trademark registrations or registered a business under the Domain Name. The WhoIs information on file shows that the Respondent identified itself as Valentine Kobzar. Nor is the Respondent’s use of the Domain Name fair, because “it falsely suggests affiliation with the trademark owner”.6 The nature of the Domain Name itself suggests affiliation between the Complainant and the Respondent because the Domain Name consists of the Complainant’s trademark and the term “casino”, which refers to the Complainant’s live casino betting services. As such, it carries a risk of implied affiliation between the Complaint and the Respondent. The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent7 . Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP. 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. The Domain Name was registered after the Complainant registered its 1XBET trademark and started operating its business. As shown by archive results provided by the Wayback Machine, the Respondent used the Domain Name to direct to an online casino website, which displayed the Complainant’s trademark. Therefore, it is likely that the Respondent knew about the Complainant’s trademark rights and business and registered the Domain Name in bad faith. Presently, the Domain Name does not resolve to any active website. It is well-established that non-use of a domain name would not prevent finding of bad faith under certain circumstances8 . The following circumstances have been considered “relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, … and (iv) the implausibility of any good faith use to which the domain name may be put”9 . Here, the Domain Name used to direct to an online casino. The home page of the casino prominently displayed the Complainant’s distinctive 1XBET trademark. It is implausible that the Respondent may try to put the Domain Name to any good faith use because in the past it tried to trade on the goodwill of the Complainant’s trademark by offering identical services by using a confusingly similar Domain Name. The Respondent failed to rebut this assumption. Therefore, the Respondent is using the Domain Name in bad faith. 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. 8. 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 Olga Zalomiy 1 Under section 4.8 of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. 2 Section 1.8, WIPO Overview 3.0. 3 Section 2.1, WIPO Overview 3.0. 4 Id. 5 Id. 6 See section 2.5.1, WIPO Overview 3.0. 7 See section 2.1, WIPO Overview 3.0. 8 Section 3.3, WIPO Overview 3.0. 9 Id.
Sole Panelist
Date: November 5, 2019
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