Complainants are Netbet Entreprises Ltd (“Complainant 1”) and Technospin Limited, Malta (“Complainant 2”), represented by Cabinet Bouchara, France.
Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2021. On February 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2021, 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 Complainants on February 8, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on February 8, 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 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on March 5, 2021. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on March 10, 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 Complainants operate in the field of online gaming, poker, and sports betting. Complainant 1 is the proprietor of numerous trademarks, including the following: - European Union Trademark No. 8916314 for NETBET (word mark), registered on May 16, 2012 for goods and services in classes 28, 35, 41, and 42; - International Trademark No. 1395478 for NETBET (word mark), registered on November 22, 2017 for goods and services in classes 9, 16, 18, 25, 28, 35, 38, and 41. Complainant 1 is the holder of numerous domain names containing its NETBET mark, including Complainant 2 is the proprietor of European Union Trademark No. 17178451 for 777 (device mark), registered on January 9, 2018 for goods and services in classes 9, 28, 35, 38, and 41. The disputed domain name was registered on March 7, 2019. It resolves to a website inviting visitors to login to “Netbet77” with a username and password field and featuring photos of two internationally famous athletes. 5. Parties’ Contentions A. Complainants Complainants’ contentions may be summarized as follows. Complainants request consolidation of the proceedings. The disputed domain name, consisting of Under the first element, Complainants contend that they both operate in the field of online gaming, poker, and sports betting, where they enjoy a broad reputation in their common field of specialty. The disputed domain name reproduces Complainants’ trademarks in under the following configuration: Under the second element, Complainants contend that Respondent has not requested nor received permission to use Complainants’ marks, especially to designate services that are identical to those of Complainants. There is no relationship between Complainants and Respondent. Nothing in the available record indicates that Respondent is an individual, business or corporation known by the name “netbet77.” The disputed domain name is probably being used in respect of a sport betting website, which is in direct competition with the gambling products and services offered for many years online by Complainants. Under the third element, Complainants contend that the disputed domain name seems to be used in respect of a sport betting website which is protected by a user login. The homepage reproduces Complainants’ marks and displays photos of internationally known athletes. It seems clear that the website is used for sports betting online. The disputed domain name includes Complainants’ respective marks, NETBET and 777, both of which are known for online gambling and betting. Respondent is using the disputed domain name to offer services under Complainants’ marks leading to consumer confusion. Prominently displaying Complainants’ marks in the website banner is a clear case of bad faith. Respondent must have been aware of Complainant’s marks when it registered the disputed domain name, as Complainants are well-known. A previous panel has considered Complainant 1 a market leader. The disputed domain name incorporates the well-known mark of Complainant 1 in its entirety. Respondent could not have selected the disputed domain name without knowledge of Complainants and their respective rights. Respondent’s use of the disputed domain name for activities competitive with Complainants is clear evidence of bad faith. Complainants request transfer of the disputed domain name to Complainant 1. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a Response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. A. Preliminary Issue – Consolidation of Complainants The Panel notes that the Complaint has been filed by two Complainants who have submitted a request for consolidation of the Complaint. Pursuant to paragraph 10(e) of the UDRP Rules, the Panel has discretion to consolidate complaints in accordance with the Policy. Consolidation is permissible where complainants have a specific common grievance against the respondent or respondent has engaged in common conduct that has affected complainants in a similar fashion, and it would be equitable and procedurally efficient to permit the consolidation. The application of these criteria by UDRP panels is articulated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, and cases cited thereunder. The Panel finds that Complainants have established their rights in their respective marks as set forth above, and that Complainants have a specific common grievance against Respondent. The disputed domain name is comprised of Taking into account all of the above, the Panel grants Complainants’ request to consolidate the proceedings and notes that, if the Complaint succeeds, Complainants have requested that the disputed domain name be transferred to Complainant 1. B. Identical or Confusingly Similar Complainants have provided evidence establishing that they have trademark rights in their respective NETBET and 777 marks, and such rights predate the registration of the disputed domain name. Complainants thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1. In comparing the NETBET mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with this mark. The disputed domain name contains the mark of Complainant 1 in its entirety. The addition of the mark of a third party that is joined in the proceeding does not prevent a finding of confusing similarity, since the mark NETBET is clearly visible within the disputed domain name. See WIPO Overview 3.0, section 1.12. Moreover, the Panel finds that the “77” element of the disputed domain name is a deliberate misspelling of the 777 mark of Complainant 2, which is a form of typosquatting. See WIPO Overview 3.0, section 1.9. Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. C. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) 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 circumstances stated in the Complaint, the amended Complaint and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant 1’s established NETBET mark with a close replica of the 777 mark of Complainant 2, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainants, the trademark owners. See WIPO Overview 3.0, section 2.5.2. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the NETBET or 777 marks with the permission of Complainants. The Panel therefore finds that the evidence submitted by Complainants establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent has not filed any Response. The circumstances of the case, in particular, the use of the disputed domain name to resolve to a website apparently offering services similar to those of Complainants and incorporating a sign containing the mark of Complainant 1 and a sign confusingly similar to the mark of Complainant 2, do not indicate that any rights or legitimate interests are plausible. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. According to the evidence submitted and in absence of a Response, the Panel finds bad faith registration and use under the Policy. Respondent has registered a domain name that reproduces in its entirety the mark of Complainant 1, and nearly identical sign to the mark of Complainant 2. Both marks were registered, and in the case of the NETBET mark, the registration took place nearly a decade ago. Taking into account the use of the domain name, It is not credible that Respondent was unaware of Complainants’ marks when it registered the disputed domain name. Considering these circumstances, the Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. The Panel finds that Respondent has demonstrated bad faith by using the disputed domain name for a website apparently offering sports betting, thereby deliberately relying upon a perceived association with Complainants’ marks to attract Internet users. Due to the fact that Respondent’s website beyond the home page is available only to registered users, it is not possible for the Panel to ascertain the precise nature of Respondent’s business. Nevertheless, on balance of probabilities, it appears clear from the evidence that Respondent is improperly using Complainants’ marks for commercial gain. Respondent’s website features images of two world-famous athletes together with the words “Netbet 77.” Internet users would erroneously assume that they have reached a sports betting site affiliated with Complainants. On this record, there is no plausible actual or contemplated use of the disputed domain name that would not be illegitimate. The Panel finds therefore that Complainant has established the third element under paragraph 4(a) 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 Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: March 24, 2021
Full & Egal Universal Law Academy