The Complainant is Navasard Limited of Limassol, Cyprus, represented by Giorgos Landas LLC, Cyprus.
The Respondent is Gatsby Kim of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2018, 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 July 31, 2018 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 amendment to the Complaint on August 6, 2018.
The Center verified that the Complaint together with the amendment to the 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 August 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2018. The Respondent submitted an email communication on July 31, 2018 but did not submit any formal Response. Accordingly, the Center notified the Parties on August 28, 2018 that it would proceed to the panel appointment.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 4, 2018. 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.
Having noted that:
1) one of the annexes to the complaint (Annex 3.2) was not legible in all its parts, e.g. part of the text, the email address of the recipient/s, as well as the date on which it was sent; and that
2) the Complainant affirmed, without documenting it, that they became aware that the Respondent had registered the disputed domain name thanks to a notification they received from the Trademark Clearinghouse, and thus affirmed that, under the mechanism of the service provided by the Trademark Clearinghouse, the Respondent, before registering the disputed domain name, had acknowledged the rights of the Complainant in respect of the 1XBET trademarks.
This Panel issued an Administrative Panel Procedural Order (the “Procedural Order”) on September 13, 2018.
The Procedural Order requested the Complainant to:
a) submit a legible copy of the correspondence sent to the Registrar, i.e. Annex 3.2 to the Complaint, specifying the sending date and the addresses it was sent to and documenting (if possible) whether or not it was received by the Registrar and/or the Respondent;
b) submit a copy of the notification they received from the Trademark Clearinghouse on March 22, 2018, no later than September 18, 2018, and so give the Respondent the opportunity to comment on the Complainant’s submission, which it would do by September 23, 2018.
The Complainant requested an extension in order to reply to the Procedural Order on September 18, 2018 “due to [unspecified] technical reasons”. The Panel assigned a new deadline of September 23, 2018 to the Complainant and gave until September 28, 2018 to the Respondent to comment on Complainant’s submission.
The Complainant replied to the Procedural Order on September 24, 2018, providing a legible copy of the requested Annex 3.2, without specifying the addresses it was sent to and whether or not it was received by the Registrar and/or the Respondent. In addition the Complainant, instead of providing the requested copy of the notification they received from the Trademark Clearinghouse on March 22, 2018, asked to delete the related paragraph from the Complaint.
The Respondent did not submit any comment on the Complainant’s submissions. 4. Factual Background
The Complainant has existed since March 9, 2015, and has proven to be the owner of trademark registrations for the sport betting brand 1XBET.
The Complainant is, inter alia, the owner of:
European Union trademark 1XBET (device) registration No. 013914254 registered on July 27, 2015 in International Classes 35, 41 and 42.
European Union trademark 1XBET (word) registration No. 014227681 registered on September 21, 2015 in International Classes 35, 41 and 42.
The Complainant has registered the above trademarks with Trademark Clearinghouse.
In addition, according to an affidavit of the Complainant, the domain name was registered on September 1, 2006, and on the corresponding website the 1XBET trademark has been used since then.
The disputed domain name was registered on July 27, 2016.
The disputed domain name resolves to a standard registrar parking page with pay-per-click links, some of which contain the Complainant’s 1XBET trademark.
The Complainant’s trademark registrations predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is identical to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent submitted an email communication on July 31, 2018 but did not submit any formal Response.
In this email the Respondent asserted only that the disputed domain name was his and that no one could deprive him of it. 6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(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 established rights in the 1XBET trademarks.
The disputed domain name incorporates the trademarks of the Complainant in their entirety and differs from these trademarks only in the addition of the “.co” country code Top-Level Domain (“ccTLD”). Owing to the fact that the Top-Level Domain suffix is generally disregarded under the test for confusing similarity for the purposes of the Policy, the Panel finds that the disputed domain name is identical to the 1XBET trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “1XBET” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not formally replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name. Also, the Respondent has not commented on the Complainant’s response to the Procedural Order.
The Panel finds that the Complainant has satisfied paragraph 4(a) (ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant affirms that the disputed domain name was registered and has been used in bad faith, for the following reasons:
1) Under the mechanism of the service provided by the Trademark Clearinghouse, the Respondent, before registering the disputed domain name, had acknowledged the rights of the Complainant in respect of the 1XBET trademarks;
2) The Complainant has sent the Registrar an email informing it of the rights of the Complainant in respect of the 1XBET trademarks and asked the Registrar and the Respondent to transfer the disputed domain name to the Complaint;
3) The Respondent is illegally using the disputed domain name for the purpose of re-selling it at a profit by taking advantage of the confusing similarity of the disputed domain name with the popular sports betting trademark held by the Complainant;
4) The Respondent has specifically used the Complainant’s word mark in order to pursue the goal of misleading potential clients of the Complainant on the basis of similarity;
5) Lack of “active” use of the disputed domain name does not in and of itself preclude a finding of bad faith;
6) The Complainant, through its predecessor in title, has been using the domain name and the 1XBET trademark since the year 2006.
The Panel notes that:
I The main argument of the Complaint, i.e. the one indicated under point 1) has been withdrawn by the Complainant; and that
II. There is no proof that the Respondent ever received the email sent by the Complainant to the Registrar, nor that this email was indeed sent to the Respondent.
These two points have been addressed in the Procedural Order. The Complainant’s response to the Procedural Order de facto turns these two points from being favorable to the Complainant’s case to being, at the least, res nullius. Indeed they cast a shadow over the Complainant’s claims.
As regards the assertions made under points 3 and 4), the Panel notes that the Complainant has not given any further explanation nor provided any documents and/or elements to support its thesis.
The fact that there is no active use of the disputed domain name, though it does not preclude a finding of bad faith as such, is not proof per se of bad faith either.
The case file for this proceeding also contains the following important elements:
1) The Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in this proceeding, and it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name then the Respondent would have responded;
2) The Respondent has used a privacy shield registration service for the disputed domain name;
3) The Respondent’s details indicated in WhoIs, once the privacy shield had been lifted, appears to be at the least incorrect; in fact, as an example, we see that the Respondent’s city is indicated as Singapore (and the registrant's phone number starts with the area code of Singapore +65), the province as London, and the country as United Kingdom;
4) The disputed domain name, which is not actively used, was registered on July 27, 2016. Thus it appears that is passively held;
5) The disputed domain name corresponds perfectly to the Complainant’s 1XBET trademark and domain name;
6) Given the Respondent’s company name, Bet365 Online, it is reasonable to assume that the Respondent is in the field of online betting and probably (possibly) a competitor of the Complainant.
The Panel has decide to exercise its powers under paragraph 10(a) of the Rules and has conducted limited factual research. The details and results of that research are as follows:
The Complainant’s “www.m” website appears to be temporarily suspended (at least for Italian visitors), and indeed on the corresponding website the following message “The company is currently in the process of obtaining a national license. Access to services has been temporarily suspended” is displayed. However, a simple Internet search revealed that the Complainant’s 1XBET trademark and activity is and has been quite renowned in the sports betting field for several years.
There are several websites containing and/or corresponding to the Respondent’s name, i.e. Bet365 Online, which are active in the sports betting field, thus supporting the conclusion that the Respondent is the Complainant’s competitor.
In the circumstances, even though the Complainant’s case could have been stronger, noting the exact match of the trademark and the disputed domain name, and lack of response by the Respondent, the Panel finds on the balance of probabilities, that the Respondent has registered and used the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Date: October 5, 2018
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