The Complainant is Tipico Co. Ltd., Malta, represented by Boehmert & Boehmert, Germany.
The Respondent is Veronica Faust, Veronica, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2019. On October 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 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 October 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2019. The Center appointed Antony Gold as the sole panelist in this matter on October 31, 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 an international provider of sports betting services and casino games. It was founded in 2004 and its headquarters is in St Julian’s, Malta. It operates online and land-based betting services and has branches in a number of countries, including Germany, Austria and Croatia. The Complainant trades as TIPICO. It has registered a number of trade marks to protect its trading style, including the following: - International Trade Mark for TIPICO, registration no. 863984, registered on May 25, 2005 in class 41; - European Union Trade Mark for TIPICO, registration no. 003939998, registered on September 23, 2005 in class 41. The disputed domain name was registered on August 21, 2017. It resolves to a website headed “Tipico Casino”. This contains a large number of gambling and card playing-related articles, such as “Texas Holdem Casino Poker Tips – How to Begin Your Play Highly To Earnings” and “What is the Gambling establishment Party?” The articles purport to be purely informative, but embedded within them are links to a number of companies providing betting and gambling services, which compete with those of the Complainant. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It draws attention to its TIPICO trade marks, full details of two of these marks having been set out above. For the purpose of the comparison, the generic Top-Level Domain (“gTLD”) “.biz” is disregarded as it is a standard registration requirement. The addition of merely generic, descriptive or geographical wording to a trade mark would normally be insufficient in itself to avoid a finding of confusing similarity under the Policy; see Compagnie Générale des Etablissements Michelin v. PrivacyDotLink Customer 1197652 / Alex Hvorost,WIPO Case No. D2016-1923. The disputed domain name reproduces the TIPICO trade mark in its entirety and adds the descriptive indications “casino” and the country code “de” for Germany. Any Internet user when visiting the website to which the disputed domain name resolves will reasonably expect to find a website commercially linked to the owner of the TIPICO trade mark, which is aiming at the German market. The Complainant says that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks or to register the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, her behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the Complainant’s trade marks. Moreover, the website to which the disputed domain name resolves does not meet the requirements for a bona fide offering of goods. A retailer or distributor can only be making a bona fide offering of goods or services, and thus have a legitimate interest in the domain name in issue, if certain conditions are met; see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. In fact, the Respondent is not offering the Complainant’s betting services but is promoting competing services under the disputed domain name. Furthermore, the use of a domain name cannot be fair if it suggests an affiliation with the trade mark owner; see AB Electrolux v. Handi Sofian, Service Electrolux Lampung,WIPO Case No. D2016-2416. The disputed domain name suggests an affiliation with the Complainant and its TIPICO trade mark because it reproduces the mark without authorization and adds the descriptive indicators “casino” and “de”, this being the country code for Germany. As a consequence, Internet users are clearly misled regarding the relationship between the website and the Complainant. In addition, the Complainant has previously filed a complaint under the Policy (subsequently resolved by agreement) to recover a similarly-named domain name, this being Lastly, the Complainant says that the disputed domain name was registered and/or is being used in bad faith. It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant’s TIPICO trade mark when registering it. The term TIPICO has no inherent descriptive meaning with regard to betting services. Even if the Respondent was to claim ignorance of the Complainant’s TIPICO trade marks, this would be willful blindness as a simple Internet search would have revealed the Complainant and its well-known marks. The circumstances of the Respondent’s registration suggest that she knew of the Complainant, not least because the use of the country code “.de” suggests that the Respondent’s website is aiming for the German market, where the Complainant and its TIPICO trade mark have acquired a substantial reputation over many years. The Respondent has registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Complainant’s TIPICO trade mark as to the source, sponsorship, affiliation or endorsement of the website or a product or service on it. This constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s trade mark, accompanied by the descriptive indications “casino” and “de”, and by prominently displaying the Complainant’s TIPICO trade mark at the top of the website, whilst showing no further information regarding the website provider, the Respondent’s website clearly suggests that it belongs to the Complainant or is an official affiliated franchise partner endorsed by the Complainant. Moreover, the Respondent’s bad faith is also evidenced by the fact that she seems to be engaging in a pattern of registering domain names corresponding to the Complainant’s TIPICO marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (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. A. Identical or Confusingly Similar The Complainant has provided evidence of its many trade marks for TIPICO, including the specific mark in respect of which details are provided above. These establish its rights in TIPICO. For the purpose of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark, the “gTLD “.biz” is disregarded as this is a technical requirement of registration. The disputed domain name contains the Complainant’s distinctive trade mark in full, followed by the word “casino” and the letters “de”. The additional words do not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Similarly, section 1.8 of the WIPO Overview 3.0 notes that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Complainant’s mark is recognizable within the disputed domain name and the Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. The Respondent’s website purports to comprise a collection of articles about card playing and gambling. However, the Complaint explains that particular words within the articles link to the websites of the Complainant’s competitors. Accordingly, the Respondent’s use of the disputed domain name is evidently intended to deceive Internet users into believing that the website to which it resolves will be the Complainant’s website, or is operated with its authorization. Once Internet users have visited the website, the Respondent is likely to be deriving pay-per-click income from the links to competing services embedded in the ostensibly noncommercial articles. The rather banal content of the Respondent’s website is an attempt to disguise her objective of monetizing the disputed domain name through the links to the Complainant’s competitors. In the light of the above, the Respondent’s website plainly does not comprise a good faith offering of goods and services. As the panel found in Philipp Plein v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Norma Brandon, cheapphilippplein,WIPO Case No. D2015-1050; “The Respondent’s use of a domain name that is confusingly similar to the Complainant’s trade marks in order to attract Internet users looking for genuine products of the Complainant’s company and to offer them unauthorized copies instead is a “bait and switch” strategy that lacks bona fides and does not give rise to rights or a legitimate interests under the Policy”. A similar view was taken by the panel in Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052: “It is undisputed that Complainant and Respondent operate in the same field. Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to Policy”. The second and third circumstances outlined above which might suggest that the Respondent has rights or legitimate interests in the disputed domain name can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which has been made of it is clearly commercial in character. The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production on this element of the Policy shifts to the Respondent. The Respondent has not submitted a response and so she has, inevitably, failed to satisfy it. The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name contains the Complainant’s TIPICO trade mark in full. In addition, it contains the word “casino”, which is descriptive of one of the services provided by the Complainant, and “de”, which will be understood by many Internet user to comprise the country code for the Federal Republic of Germany, where the Complainant has a number of operations. These words, in combination, point clearly to an awareness by the Respondent of the Complainant and its TIPICO business as at the date of registration of the disputed domain name. This is confirmed by the use to which it has been put following registration. As explained at section 3.1.4 of the WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. See also Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765; “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Whilst the website to which the disputed domain name resolves masquerades as a miscellany of various gambling-related articles, Internet users will have been attracted to it because the various components of the disputed domain name will have created an expectation that it is likely to be operated by, or with the authorization of, the Complainant. Once there, they may appreciate that the Respondent’s website is unconnected with the Complainant. However, at least some Internet users will click on the links embedded within the articles (from which the Respondent will be deriving pay-per-click income) that will take them to websites of the Complainant’s competitors. Such use of the disputed domain name falls squarely within the circumstance evidencing registration and use in bad faith which is described at paragraph 4(b)(iv) of the Policy. See also; Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 and NVIDIA Corporation v. Brent Angie/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtection.org,WIPO Case No. D2014-1171. For these reasons, the Panel finds that the disputed domain name was registered and used in bad faith. The Complainant’s further submissions do not therefore require consideration. 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 Antony Gold
Sole Panelist
Date: November 12, 2019
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