Complainant is PointsBet Holdings Limited, Australia, represented by Corrs Chambers Westgarth, Australia (“AU”).
Respondent is WhoIsGuard Protected, Panama / Bitco Hub, India, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 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 Complainant on January 26, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 29, 2021. 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 Respondent of the Complaint, and the proceedings commenced on February 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2021. Apart from brief emails received on February 5, 2021, no formal Response was filed with the Center. The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 15, 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 Complainant is an online corporate bookmaker offering sports and racing betting products and services across 24 sports, including the National Basketball Association, National Football League, National Rugby League and Australian Football League. Complainant was founded in Melbourne, Australia and later expanded to the United States of America (“US”), now operating in 12 states including Colorado, New Jersey, Iowa, and Illinois. Complainant became a publicly listed company in June 2019 and generated annual revenue of USD 75.2 million in the 2019-2020 financial year. Since 2015, Complainant has been known as and operating under the name “PointsBet”. Complainant conducts its sports and racing betting products and services through its websites located at the domain name (a) Facebook under the usernames @PointsBet and @PointsBetUSA; (b) Instagram under the usernames @pointsbet and @pointsbetusa; (c) Twitter under the usernames @PointsBet_AU and @PointsBetUSA; (d) LinkedIn under the username @pointsbet; and (e) YouTube under the username @PointsBet. Complainant is the registered owner of various trademarks for POINTSBET worldwide, including in the US, including: Registration No. Mark Filing date Classes US 5830226 POINTSBET September 27, 2018 9, 41 US 5830227 POINTSBET (with logo) September 27, 2018 9, 41 US 5830228 POINTSBET (with logo) September 27, 2018 9, 41 AU 1725446 POINTSBET (with logo) October 1, 2015 9, 36, 41 The Domain Name was registered on November 12, 2020. Respondent appears to operate a website at the Domain Name. Complainant has submitted copies of screenshots of the site into evidence. Respondent’s website resembles Complainant’s website. Respondent has copied the manner in which the POINTSBET mark is presented and Respondent holds itself out as a provider of similar services, namely online sports and racing betting. Internet users are able to access a feed of sports results and create accounts on Respondent’s site using referral codes. 5. Parties’ Contentions A. Complainant (i) Identical or Confusingly Similar: Complainant submits that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, namely, Complainant’s POINTSBET word mark and Complainant’s POINTSBET marks with logos, as listed above. Complainant further submits that the addition of a Top-Level Domain (“TLD”), such as “.org”, does not affect the assessment that a domain name is confusingly similar to a particular mark. (ii) Rights or Legitimate Interests Complainant submits that: (a) it has no awareness of Respondent being known (let alone commonly known) by the Domain Name; (b) the conduct of Respondent makes clear that any goods or services offering by Respondent using the Domain Name are not a bone fide offering. Respondent’s website uses the POINTSBET trademarks without Complainant’s license or authority, and Respondent has not been licensed or authorized to register the Domain Name or use the POINTSBET mark for any purpose; and (c) the use of the Domain Name by Respondent is not a legitimate noncommercial or fair use, without intent for commercial gain, but rather is intended to misleadingly divert consumers, which risks tarnishing Complainant’s POINTSBET trademarks. (iii) Registered and used in bad faith Complainant submits that the Domain Name was registered and is being used in bad faith by Respondent. Complainant contends that registration of the Domain Name has the effect of preventing Complainant, who is the owner of POINTSBET trademark, from reflecting its mark in a corresponding “.org” domain name. Further, by using the Domain Name, Respondent is intentionally attempting to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site, or a product or service on Respondent’s site. Respondent also seeks to cause confusion by constructing the layout of Respondent’s site such that it clearly resembles that of Complainant’s website. This gives Internet users the misleading impression that the website is an official website of Complainant or a site that is authorized by Complainant. Complainant claims that mere registration of a domain name that is identical or confusingly similar to a widely-known trademark (i.e., the POINTSBET marks) by an unaffiliated entity can create a presumption of bad faith in itself. Given the registration of the Domain Name in conjunction with use of the POINTSBET marks on Respondent’s website, Respondent was fully aware of Complainant and had Complainant’s trademarks in mind at the time of registering the Domain Name. This allegation is reinforced by the extent of use of the POINTSBET marks, as well as the distinctive nature and reputation of the marks. Complainant asserts that Respondent is using the Domain Name in bad faith, including by: (a) using Complainant’s POINTSBET word mark (US trademark registration number 5830226) in the Domain Name itself; (b) using Complainant’s POINTSBET device marks (US trademark registration numbers 5830227 and 5830228) on Respondent’s website; (c) mimicking the get-up of Complainant’s website on Respondent’s site in an attempt to give Respondent’s site an appearance of authenticity; and (d) replicating parts of the source code from Complainant’s website for use on Respondent’s site, as shown by the evidence submitted by Complainant. Complainant is of the view that Respondent is not attempting to establish a genuine service offering via Respondent’s website. Further, in determining bad faith use, Complainant submits that the Panel is able to take into account Respondent’s anticipated failure to provide evidence of any actual or contemplated good faith use. B. Respondent Apart from brief emails received on February 5, 2021, Respondent did not reply to Complainant’s contentions. In its February 5 email, Respondent stated in relevant part that the “[w]ebsite has already closed and the client is ready to transfer the domain to the complainant”. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar Complainant has established that it has well-established rights in its registered POINTSBET trademarks. The Panel finds that the Domain Name wholly incorporates Complainant’s mark, with no alteration except for the “.org” TLD. Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states, “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”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its POINTSBET trademarks; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services – instead, the Domain Name has used to link to a website that fraudulently imitates Complainant’s own site, using Complainant’s POINTSBET mark without authorization, Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent, when registering the Domain Name, was aware of Complainant and its POINTSBET marks, and intentionally targeted those marks, when registering the Domain Name. As noted above, Respondent registered the Domain Name, which incorporates Complainant’s mark in its entirety and adds no additional elements. Thus, given the distinctiveness of Complainant’s POINTSBET marks, the fact that the Domain Name is so obviously connected with Complainant’s marks, and the use of the POINTSBET marks on Respondent’s website, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its marks when registering the Domain Name. See Ebel International Limited v. Alan Brashear,WIPO Case No. D2017-0001. This point is further confirmed by Respondent’s use of the Domain Name. The Domain Name links to a website that imitates Complainant’s own website, and uses Complainant’s POINTSBET mark without authorization. The site purports to offer services similar to those offered by Complainant. These factors point to use of the Domain Name in bad faith. This appears to be an attempt at online passing off, where Respondent has registered the Domain Name to attract, for commercial gain or other fraudulent purposes, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. 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, Christopher S. Gibson
Sole Panelist
Date: April 16, 2021
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