The Complainant is Cosmo Gaming Company LTD of Msida, Malta, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Alice Collier of Lansing, Michigan, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 23, 2017.
The Center appointed Mihaela Maravela as the sole panelist in this matter on March 3, 2017. 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 and its related company, BPG SRL, are the sole operators of the NetBet brand, an online gaming and casino company, which has received recognition in Europe. Since 2006, the Complainant has held a European license enabling them to offer over 450 state-of-the-art casino games and become a market leader within the business of online betting. In addition to websites, NetBet also offers an app, which features more than 30 games and enables consumers to use the popular NetBet services on the move. The Complainant's NetBet brand is the first hit on many Google search engines when searching for NetBet. The Complainant is active on social media websites such as Twitter and Facebook. The Complainant refers to an extensive advertising program featuring the NETBET trademark.
The Complainant referred in its Complaint to various registrations of the NETBET trademark. In this context, the Complainant's related company, BPG SRL, is the owner of the European Union Trade Mark ("EUTM"), Registration No. 8916314, registered on May 16, 2012. The Complainant also owns EUTMs for NETBET, with registrations dating from 2015.
The disputed domain name was registered on January 2, 2015. The disputed domain name previously resolved to a website with links to, inter alia, services competing with the Complainant's.
In response to a cease-and-desist letter sent by BPG SRL, that seems to operate together with the Complainant the services under the trademark NETBET, the Respondent replied that it registered the disputed domain name for a web project, argued that the domain is currently under development and will be launched soon. The Respondent asked for an amount of EUR 8,000 for the transfer of the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to the NETBET trademark as it incorporates said trademark, with the exception of the extension ".me" that should be disregarded by the Panel since it is used for technical purposes alone.
In addition, the Complainant argues that to the best of its knowledge, the Respondent does not have any rights in the name "netbet", since it is not known as "netbet", nor has the Respondent ever had any relationship with the Complainant. Moreover, the disputed domain name has only been known to resolve to landing pages that offer links to other competing gaming and betting services and such use is not legitimate under the Policy.
The Complainant further argues that the Respondent has registered and used the disputed domain name in bad faith. Given the extent of the online presence of the Complainant, the Respondent would have been exposed to the existence of the Complainant NETBET trademark at the time the disputed domain name was registered. The Respondent offered to sell the disputed domain name for EUR 8,000 which is in excess of its out of pocket expenses for the registration of the disputed domain name, which illustrates that the Respondent primary registered the disputed domain name to extort benefit from the trademark owner. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Noting the fact that the Respondent has not filed a response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
"A Panel shall decide a 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 it deems applicable", paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
The Panel has verified, in accordance to the consensus view of previous UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 4.5), the trademark registrations indicated by the Complainant in its Complaint and is satisfied that the Complainant, together with its related company BPG SRL, is the owner of NETBET registered trademarks, including inter alia:
EUTM NETBET Registration No. 008916314, registered on May 16, 2012 and Registration No. 013371653 registered on August 23, 2015; United Kingdom Trademark NETBET with a figurative element, Registration No. 00003018081, registered on November 22, 2013.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks of the Complainant.
UDRP panels customarily treat the first element of a UDRP complaint as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name"; some panels refer as well to the "overall impression" created by the domain name. See, WIPO Overview 2.0, paragraph 1.2.
Here the disputed domain name incorporates the trademark NETBET of the Complainant, with the addition of the country code Top-Level Domain ("ccTLD") ".me".
It is well accepted by UDRP panels that a ccTLD, such as ".me", is typically ignored when assessing identity or confusing similarity between a trademark and a disputed domain name.
The Panel finds that the disputed domain name is identical to the Complainant's trademark, and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of previous UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in WIPO Overview 2.0, paragraph 2.1, which states: "[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]".
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests in a response to the Complaint. The Complainant has established that it is the owner of the trademark NETBET, and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the said trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name "netbet". See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. See for a similar finding KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910. In a letter responding to the cease-and-desist letter provided by BPG SRL, the Respondent argued that it registered the disputed domain name for a web project, and argued that the domain is currently under development and will be launched soon, but failed to provide any evidence to this extent in the current proceedings and to rebut the prima facie case made by the Complainant. Rather, the Respondent offered to sell the disputed domain name to the Complainant for the price of EUR 8,000.
In light of the above, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
The fact that the disputed domain name is identical with the Complainant's trademark and that the said trademark has been used some years prior to the registration of the disputed domain name indicate not only that the Respondent was aware of the Complainant's business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant's services.
The disputed domain name has been used by the Respondent to resolve to a page where Internet users find numerous links to companies operating in the same business area as the Complainant – online gaming services. It is very likely that this parking page provided revenue to the Respondent, who is therefore trading off the reputation of the Complainant's trademarks. (Hermès International v. Whois privacy services provided by DomainProtect LLC / Domain Administrator, Internetconsult Ltd,WIPO Case No. D2011-2146).
The record shows that the Complainant asked for the transfer of the disputed domain name and the price requested by the Respondent was an amount of EUR 8,000, which is in excess of the Respondent's out-of-pocket costs directly related to the registration of the disputed domain name. Hence, the record appears to show that, if the Respondent did not primarily obtain the disputed domain name for bad faith purposes as described under Policy, paragraph 4(b)(iv), then the Respondent primarily obtained the disputed domain name for the purpose of selling the disputed domain name to the Complainant or the Complainant's competitors for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the disputed domain name. The record offers no evidence to refute this finding (see for a similar finding Abdij Affligem v. Jiang Jun,WIPO Case No. D2013-0729).
The Respondent provided no explanations during the proceeding as to why it registered the disputed domain name.
The Respondent has failed to make to date any genuine use of the disputed domain name. The absence of any bona fide use of the disputed domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio,WIPO Case No. D2016-0186.
In the Panel's view these circumstances represent evidence of registration and use of the disputed domain name in bad faith.
Consequently, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Mihaela Maravela
Sole Panelist
Date: March 17, 2017
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