The Complainant is Merryvale Limited, Guernsey, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Oleg Chubatay, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2021. On January 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2021, 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 January 20, 2021, 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 January 24, 2021. On January 20, 2021, the Center sent email communications in English and Russian regarding the language of the proceeding. The same day the Respondent responded to the Center with a vulgar slang suggesting that the Center go away and sent the following email to the Complainant: “who are you and why are you writing letters to me?”. On January 24, 2021, the Complainant requested English to be the language of the proceeding. 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 February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. The Respondent did not submit any response. The Center appointed Olga Zalomiy as the sole panelist in this matter on March 4, 2021. 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 Guernsey company that together with Betway Group of companies, operates a number of online gaming websites under the BETWAY trademark. The Complainant is the owner of trademark registrations for the word mark BETWAY in many countries, such as: -Russian Federation trademark registration No. 548204, registered on July 15, 2015; -European Union Trade Mark registration No. 004832325, registered on January 26, 2007; - European Union Trade Mark registration No.012771564, registered on January 9, 2014. The Respondent registered the Domain Name on September 8, 2020. The Domain Name does not direct to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it is a Guernsey company, a member of the Betway Group of companies, which operates several online gaming websites under the BETWAY trademark. The Complainant alleges that as part of the Betway Group, it enjoys a substantial worldwide reputation as a market leader in the field of online gaming. The Complainant submits that the Domain Name is identical and confusingly similar to the BETWAY trademarks, as it consists only of the words ‘bet’ and ‘way’, with a hyphen between the words and the suffix “.site”. The Complainant contends that the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity and the applicable generic Top-Level Domain (“gTLD”) should be disregarded under the confusing similarity test. The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name because of the following circumstances: 1) the Respondent is not affiliated with the Complainant and has never been licensed or otherwise authorized to use the BETWAY trademarks; 2) the Respondent has not used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services because the Domain Name directs to an inactive webpage. The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant states that the Respondent knew, or at the very least should have known, about the Complainant’s marks and operation because the Complainant registered the Domain Name incorporating its well-known brand almost 14 years after the Complainant started using the BESTWAY brand. The Complainant submits that the use of the Domain Name, which is confusingly similar to the Complainant’s BETWAY trademarks, is clear evidence that the Respondent intentionally attempted to attract for commercial gain, Internet users to the website under the Domain Name by creating a likelihood of confusion with the BETWAY trademarks as to the source, sponsorship, affiliation, or endorsement of that website. The Complainant argues that Respondent’s non-use of the Domain Name does not prevent a finding of bad faith registration and use because the incorporation of a well-known mark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith. The Complainant alleges that it is highly possible that the Respondent passively holds the inactive Domain Name for future active use in a way that would be competitive with or otherwise detrimental to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Finding 6. 1. Procedural Issue - 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 the 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. However, the Complainant requested that English be the language of the administrative proceeding because of the following reasons: (i) the Respondent is capable of communicating in English, while the Complainant cannot communicate in Russian without incurring unnecessary expenses. The Complainant asserts that the Respondent understands English because the Domain Name is in Latin script and not in Cyrillic script; and because (ii) The Respondent sent an email in English to the Complainant in response to the Center’s January 20, 2021 procedural email. 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”. See section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel grants the Complainant’s request that English be the language of this proceeding because of the following circumstances: (i) it is likely that the Respondent can understand English, which is the language of the Complaint, because on January 20, 2021 the Respondent emails in English to both the Center and to the Complainant; (ii) the Domain Name is comprised of the English word “bet” and “way”, and the gTLDs “site”, which is also an English word, which also indicates that the Respondent understands English; (iii) the Complainant is not conversant with the Russian language and would have to incur significant additional cost in the proceeding, if it were required to proceed in the Russian language; (iv) the Respondent was given a chance to object to the Complainant’s request for English to be the language of the proceeding, but chose not to do it. For the reasons stated, the Panel grants the Complainant’s request that English be the language of this proceeding. 6.2 Substantive Issues 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; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The submitted evidence shows that the Complainant owns several trademark registrations for the BETWAY trademark. Pursuant to section 1.2.1 of the WIPO Overview 3.0, this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. The Domain Name incorporates the Complainant’s BETWAY trademark in its entirety. The only differences between the Domain Name and the Complainant’s BETWAY trademarks are the addition of a hyphen (“-”) between the words “bet” and “way” and the gTLD “.site”. It is well established that “[a] domain name, which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”1 . Therefore, the Domain Name containing intentional misspelling of the Complainant’s BETWAY trademark is confusingly similar to the Complainant’s trademark. Because “[t]he 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”, the gTLD “.site”. does not prevent a finding of the confusing similarity between the Domain Name and the Complainant’s trademark. Thus, the Domain Name is confusingly similar to the Complainant’s BETWAY trademark and the first element of the UDRP has been satisfied. B. Rights or Legitimate Interests To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent2 . Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the UDRP: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name because (i) the Complainant never authorized, consented to, or licensed the Respondent to use the BETWAY mark or to register any domain names incorporating the Complainant’s mark, and (ii) the Respondent has not used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services because the Domain Name directs to an inactive webpage. First, the Respondent’s non-use, or passive holding, of the Domain Name does not constitute bona fide offering of goods or services or a legitimate noncommercial or fair use. See, e.g., Bayerische Motoren Werke AG v. David Weiss, Weiss Ent,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.”) Second, the Respondent has not been commonly known by the Domain Name. The WhoIs information on file shows that the Respondent identified itself as “Oleg Chubatay”. In addition, there is no evidence that the Respondent owns trademark registrations under the Domain Name. 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 Respondent. 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 Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. The Complainant contends that that the Respondent registered the Domain Name in bad faith because it knew of the Complainant’s well-known trademark at the time of the Domain Name’s registration. Given the substantial use and advertising of the Complainant’s mark for an extended period of time, the registration of the Domain Name fourteen years after the registration of the Complainant’s mark and the composition of the Domain Name that includes intentional misspelling of the Complainant’s trademark, it is likely that the Respondent targeted the Complainant at the time of the Domain Name’s registration and registered the Domain Name in bad faith to trade on the goodwill of the Complainant’s trademark. It is also well-established that non-use of a domain name would not prevent a finding of bad faith under certain circumstances.3 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 […] (iii) the implausibility of any good faith use to which the domain name may be put”4 . All of those circumstances are present in this case. The Complainant’s mark is well-known. The Respondent failed to submit a response or to provide any evidence of actual or contemplated good-faith use of the Domain Name. In the Panel’s view, any good faith use of the Domain Name is implausible considering the composition of the Domain Name, being almost identical to the Complainant’s mark, and carrying a risk of implied affiliation. 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 satisfied. 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 Domain name Olga Zalomiy 1 Section 1.9, WIPO Overview 3.0. 2 Section 2.1, WIPO Overview 3.0. 3 Section 3.3, WIPO Overview 3.0. 4 Id.
Sole Panelist
Date: March 16, 2021
Full & Egal Universal Law Academy