The Complainant is Merryvale Limited, Guernsey, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Sg Group, India. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2020. On November 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 13, 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 November 15, 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 amended Complaint on November 17, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on November 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on December 23, 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 operates an online gaming business with approximately 1.5 million active users in 2020. The Complainant holds registrations for the trademark BETWAY in numerous countries, which it uses to designate downloadable computer software programs and entertainment services related to game services, gambling and online sports betting. European Union Trademark Registration No. 004832325, for example, shows a registration date of January 26, 2007. The Complainant owns numerous domain names that comprise of, or contain, the trademark BETWAY, including the domain name The Respondent registered the Disputed Domain Name on September 8, 2020. The Disputed Domain Name resolved to a web page containing advertisements and gaming content very similar to the Complainant’s own websites, including images of the Complainant’s trademarks. 5. Parties’ Contentions A. Complainant The Complainant cites its trademark registrations of the trademark BETWAY in Europe, India, and many other geographies as prima facie evidence of ownership. The Complainant submits that the mark BETWAY, is well-known and that its rights in that mark predate the registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the BETWAY trademark and that the confusing similarity is not removed by the addition of the geographical word “India”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “The Respondent is not affiliated with the Complainant and has never been licensed or otherwise authorized to use the Betway Marks”. Finally, the Complainant alleges, inter alia, that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy and, in particular, paragraph 4(b)(iv). It contends that “the Respondent offers online sport betting services, same as the Complainant” and submits “the fact that the Respondent registered a domain name that consists of such a well-known mark for online gaming and betting services as the Betway Marks is in and of itself indicative of bad faith”, citing: Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co,WIPO Case No. D2000-0163. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following: (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 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 produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BETWAY in numerous countries including the United States and the Respondent’s apparent location, India. The standing requirement of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the BETWAY trademark, the Panel observes that the Disputed Domain Name comprises: (a) the geographical country name “India”; (b) followed by an exact reproduction of the Complainant’s trademark BETWAY; (c) followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name, specifically: “indiabetway”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the geographical term “India” (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). This Panel accepts the Complainant’s contention that the addition of the geographical word “India” before the Complainant’s registered trademark is an additional element that does not obviate confusing similarity with the Disputed Domain Name. See: Pfizer Inc. v. Deep Soni and Ashok Soni, WIPO Case No. D2000-0782 (“Complainant owns a world famous trademark using the name “Pfizer”, a trademark with which this Panel is familiar… Respondents’ disputed domain name The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need to first put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a web page dominated by gaming content, including using the Complainant’s own trademarks and artwork, that sought to illegitimately passing off the Complainant’s goodwill and reputation for the Respondent’s own benefit. The Complainant has not licensed, permitted, or authorized the Respondent to use the Complainant’s trademark and the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, and displaying content and advertisements that ape the gaming business (and trademarks and artwork) of the Complainant, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the Complainant has provided evidence that it is the principal sponsor of West Ham United Football Club in the English Premier League soccer competition. This Panel finds that the trademark BETWAY is such a famous mark that it would be inconceivable that the Respondent – using it for the same area of commerce – might have registered the mark without knowing of it. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.. Merryvale Limited v. Wikid Networks, WIPO Case No. D2013-0235 (“the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name”); Merryvale Limited v. Liang Zhuge, WIPO Case No. D2018-2811 (“the Complainant’s well known trademark”). This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s submission that “the fact that the Respondent registered a domain name that consists of such a well-known mark for online gaming and betting services as the Betway Marks is in and of itself indicative of bad faith” (see Merryvale Limited v. Registration Private, Domains By Proxy, LLC / Nick Shepherd,WIPO Case No. D2019-2951 (”given the use to which the Respondent’s website is currently being put, namely, to offer a service concerned with bookmaking, and given that the Complainant is a prominent company in the world of online gaming, the Panel makes the reasonable inference that the Respondent could not have selected the disputed domain name without knowledge of the Complainant and its rights”). The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814). On the issue of use, the evidence is that the Disputed Domain Name resolves to a webpage unconnected with any bona fide supply of goods or services by the Respondent. The Panel finds that the evidence does support a finding that the Respondent has registered the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark and gaming services. The Complainant has supplied a copy of the Respondent’s website that resolved from the Disputed Domain Name, showing the website offered gaming services for soccer, tennis and cricket, the latter of which is the most popular sport in the Respondent’s location, India. In the absence of any evidence to the contrary, this Panel accepts this evidence and finds that the Respondent has taken the Complainant’s trademark BETWAY and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a web page for commercial gain. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Nicholas Weston
Sole Panelist
Date: January 5, 2021
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