The Complainant is Newcote International Limited, Gibraltar, United Kingdom, represented by Taylor Wessing LLP, United Kingdom.
The Respondent is Suntharalingam Sureshkumar, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2021. On May 11, 2021, the Center transmitted by email to Cheaper Domains Pty Ltd a request for registrar verification in connection with the disputed domain name. On May 26, 2021, Cheaper Domains Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. The Center sent an email communication to the Complainant on May 26, 2021 providing the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 26, 2021. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2021. The Center received several email communications from the Respondent on May 26, 27, and 28, and June 1, 2021. Pursuant to paragraph 6 of the Rules, on June 17, 2021, the Center informed the Parties that it would proceed with panel appointment. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 24, 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 the intellectual property holding company for Betvictor Limited, which is an online betting business. According to the Complaint, Betvictor Limited was founded in 1946 and has been trading under the BETVICTOR name and trade mark since 2012. It has annual turnover in excess of GBP 1 billion and more than 200,000 active customers in more than 50 countries. Amongst other things, the Complainant owns Australian Registered Trade Mark No. 1551639 for BETVICTOR, in respect of a range of goods and services in International Classes 9, 41 and 42 including, for example, gambling software, entertainment services and gambling, gaming and betting services. This trade mark has been registered with effect from April 15, 2013 in Australia. According to the Complaint, Betvictor Limited uses this trade mark in Australia under licence from the Complainant. According to the Registrar, the disputed domain name was first registered on September 5, 2013. It does not appear to have been used in any way since its registration and merely resolves to a holding page provided by the Registrar. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark at the date the Complaint was filed and, if so, the disputed domain name must be identical or confusingly similar to the trade mark. The Complainant has proven that it owns the registered trade mark for BETVICTOR referred to in section 4 above. On the question of identity or confusing similarity, what is required is simply a visual and aural comparison and assessment of the disputed domain name itself to the Complainant’s trade mark: see, for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd.,WIPO Case No. DAU2002-0001. This test is narrower than and thus different to the question of “likelihood of confusion” under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, however may fall for consideration under the other elements of the Policy. Typically and as is appropriate in this case, it is permissible to disregard the country-code Top Level Domain (“ccTLD”), “.com.au”, as a functional component of the domain naming system. See for example auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”), section 1.2. . Disregarding the ccTLD, “.com.au”, therefore, the disputed domain name is identical to the Complainant’s registered trade mark. Accordingly, the Complainant has established the first requirement under the Policy. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Previous auDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. The Complainant states that it has not licensed the Respondent to use the Complainant’s trade mark and the Respondent is not associated with the Complainant or Betvictor Limited in any way. The disputed domain name is not derived from the Respondent’s name or any name by which the Respondent claims to be commonly known. As noted above, the Respondent has not used the disputed domain name in connection with the offer in good faith of goods or services. Nor has the Respondent claimed to be engaged in any preparations to do so. On the contrary, in his email to the Center on May 26, 2021, the Respondent stated that “It looks like the domain has been registered a long time ago and not used at all”. In these circumstances, the Panel finds that the Complainant has established a sufficient prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Panel notes it is not clear from the case record when the Respondent became the registrant of the disputed domain name. The Complainant contends it was May 14, 2021 on the basis that this is the date when the then available Whois record showed it was last modified. The Panel notes this is also the date from which the Australian Business Name Register shows the Australian Business Name Registration stated in the Whois Record became active. The Respondent appears to contend, however, that he has held the disputed domain name for several years and, as noted above, the Registrar has stated the disputed domain name was first registered on September 5, 2013. In the end, it does not matter. Assuming in the Respondent’s favour that he registered the disputed domain name on September 5, 2013, that is still after the date on which the Complainant filed its trade mark application – April 15, 2013 – and from which the registration is effective. It is also after the date the Complainant claims it commenced carrying on its business under the name and trade mark BETVICTOR. In the emails received from the Respondent, he appears to indicate that he is willing to transfer the disputed domain name on payment of suitable compensation. For example, in the first email on May 26, 2021 already referred to the Respondent said “… Does that says [sic] you will pay me compensation to transfer/drop the domain name? In subsequent emails, the Respondent asked “Can you please let me know the settlement figures please.”. The Respondent’s emails do not offer any basis on which the Respondent would be entitled to charge a fee to transfer the disputed domain name to the Complainant. The Respondent’s emails do not address the matters alleged by the Complainant which gives rise to the prima facie case. As the prima facie case raised by the Complainant has not been rebutted, the Panel finds that the Complainant has established the second requirement under the Policy also. C. Registered or Subsequently Used in Bad Faith In contrast to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trade mark owned by (usually) the complainant. Although the date the Respondent registered the disputed domain name is not clear, as already noted it was in any event after the Complainant acquired its rights. Moreover and in any event, it is sufficient for the Complainant to demonstrate that the disputed domain name has been used in bad faith. See e.g. auDRP Overview 1.0, section 3.1. The Respondent’s emails confirm that the disputed domain name has merely been passively held. Apart from the ccTLD, the disputed domain name is identical to the Complainant’s trade mark. The auDRP panels usually find that the registration of a domain name which consists solely of the complainant’s trade mark (apart from the second level domain extension) has the effect of preventing the complainant from reflecting its trade mark in the domain name and so is evidence of bad faith under paragraph 4(b)(ii) of the Policy. See e.g. auDRP Overview1.0, section 3.1B. In addition, the Respondent’s emails also confirm that he was willing to surrender it for a price. His emails do not specify what price he had in mind or would accept. If the Respondent were interested in transferring the disputed domain name in return only for his out of pocket costs, the Panel considers the onus fell on the Respondent to specify that and what the claimed out of pocket costs were rather than trolling for whatever windfall may come the Respondent’s way. Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith contrary to the Policy. The Complainant therefore has established all three requirements under the Policy. 6. Decision For all 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 Warwick A. Rothnie
(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 or subsequently used in bad faith.
If so, how much is that please?”
Sole Panelist
Date: July 8, 2021
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