The Complainant is Tipico Co. Ltd., Malta, represented by Boehmert & Boehmert, Germany.
The Respondent is Nicholas Bacon, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2020. On March 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2020, 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 the Complainant on March 12, 2020 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 amendment to the Complaint on March 13, 2020. The Center verified that the Complaint together with the amendment to 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 March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2020. The Center appointed Peter Burgstaller as the sole panelist in this matter on April 9, 2020. 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. The Complainant is well known under its trademark TIPICO especially as one of the leading providers of online and retail betting services across Europe, with branches in Germany, Austria, Croatia, Colombia and Malta. The Complainant has registered various trademarks containing the mark TIPICO, including the European Union word Trade Mark TIPICO (Registration No. 003939998), registered on September 23, 2005; the International word trademark TIPICO (Registration No. 863984), registered May 25, 2005, designating especially for the European Union and Turkey; and the International word trademark TIPICO (Registration No. 1040604), registered on April 29, 2010, designating especially for Bosnia and Herzegovina, Switzerland, Croatia, Russian Federation, Serbia, Turkey, and Ukraine (Annex 5 to the Complaint). The disputed domain name was registered by the Respondent on February 13, 2020 (Annex 1 to the Complaint; Registrar’s verification dated March 11, 2020); the Respondent did not submit a Response. The disputed domain name The Complainant is an international provider of sports betting services and casino games, headquartered in St Julian’s, Malta. The Complainant is a market leader for sports betting in the German market with over 1,200 betting shops throughout the country. The Complainant was founded in 2004 and developed into one of the leading providers of online and retail betting services across Europe, with branches in Germany, Austria, Croatia, Colombia and Malta. More than 6,000 people work for the entire Tipico Group and the associated franchise network. The Complainant is the owner of various trademarks containing the mark TIPICO and is well known under its TIPICO trademark in Europe due to the Complainant’s substantial marketing efforts, especially as sponsor of the famous football league club FC Bayern Munich and the German Football League (DFL) as well as sponsor of the first football division in Austria, which is called “Tipico-Bundesliga”. The disputed domain name is confusingly similar to the Complainant’s trademarks TIPICO and the Respondent has no rights or legitimate interests in respect of that disputed domain name. The suffix “gp” in the disputed domain name is a commonly used acronym for “grandprix” and/or “grand prize” and refers to a competition or race in various sports, such as motor sports, horse riding, combat sports, chess, athletics, snooker, tennis, volleyball; this suffix even strengthens bad faith in the Respondent’s behavior. The disputed domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to 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 disputed domain name is confusingly similar to the Complainant’s registered wordmark TIPICO since it entirely contains this trademark and only adds the letters “gp”, which is a commonly used acronym for “grandprix” and/or “grand prize” and refers to a competition or race in various sports. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Finally, it has also long been held that suffixes such as a country code Top-Level Domain (“ccTLD”) or a generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case. See section 1.11 of the WIPO Overview 3.0. The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks TIPICO in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, must be demonstrated; consequently, the Complainant must show that: - the disputed domain name was registered by the Respondent in bad faith, and - the disputed domain name is being used by the Respondent in bad faith. The disputed domain name was registered in 2020; the Complainant has trademark rights in the mark TIPICO since 2005. The Complainant’s trademark TIPICO is well known especially in connection with sports betting services and casino games, in particular online and retail betting services. It is the Panel’s conviction that the fame of the TIPICO mark in the sports betting business makes it inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the mark TIPICO; hence, this leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name incorporates the Complainant’s trademark TIPICO entirely together with the suffix “gp”, which is a commonly used acronym for “grandprix” and/or “grand prize” and refers to a competition or race in various sports. In fact, the use of the term “gp” in connection with the mark TIPICO rather strengthens the impression that the disputed domain name is in some way connected to the Complainant, or at least the Respondent may be seen to free ride on the reputation of the Complainant and its name and mark TIPICO. The disputed domain name moreover resolves to a webpage offering pay-per-click links (PPC) with regard to betting services directly competing with the Complainant’s business and not connected with the Complainant. The Respondent “free rides” on the reputation of the Complainant’s name and trademark TIPICO and thus the use of the disputed domain name is suited to divert or mislead potential web users from the website they are actually trying to visit (Complainant’s site); moreover there is no plausible reason for authorized future active usage with regard to the disputed domain name by the Respondent. On the basis of these facts, it is for the Panel incontestable that the disputed domain name is also being used in bad faith. The Respondent has also failed to present any evidence of any good faith registration and use with regard to the disputed domain name and this Panel finds there is no conceivable plausible reason for good faith registration and use with regard to the disputed domain name. Taking all these facts and evidence into consideration this Panel finds that the disputed domain name has been registered and is being used in bad faith under 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 Peter Burgstaller
Sole Panelist
Date: April 23, 2020
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