The Complainant is Ericius Investments Limited, Cyprus, represented by Bohdan Skrypachov, Ukraine.
The Respondent is Balaban Alexandru, Republic of Moldova (the). 2. The Domain Name and Registry
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2021. On March 9, 2021, the Center transmitted by email to the Registry a request for Registry verification in connection with the disputed domain name. On March 10, 2021, the Registry 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 March 15, 2021 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 19, 2021. 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 March 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2021. The Respondent submitted two email communications on April 1, 2021 and April 10, 2021, the second of which contained an informal Response. The Center appointed Assen Alexiev as the sole panelist in this matter on April 22, 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. On April 23, 2021, the Respondent submitted a supplemental filing. Although the Respondent has failed to explain why it could not submit it earlier, the Panel decides to accept it, as it contains evidence that is relevant to the assessment of the Respondent’s conduct. 4. Factual Background The Complainant was registered in Cyprus on January 17, 2014. It is an online bookmaker. The Complainant is the owner of a number of trademark registrations for the sign “PARI MATCH” (the “PARI MATCH trademark”), including the following registrations1: - the Ukrainian combined trademark PARI MATCH with registration No.178808, with priority as of October 31, 2012, registered on November 25, 2013 for services in International Classes 35 and 41; - the Russian combined trademark PARI MATCH with registration No.536717, with priority as of November 22, 2012, registered on March 11, 2015 for services in International Class 41; and − the International combined trademark PARI MATCH with registration No.1298964, registered on October 26, 2015 for services in International Classes 35 and 41 for a number of jurisdictions, including Romania. The disputed domain name was registered on December 10, 2018. It resolves to an inactive website showing the message “Domain parked”. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name is confusingly similar to its PARI MATCH trademark, because it incorporates the element “parimatch” which is identical to the verbal element of the trademark. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Respondent does not use the disputed domain name or name corresponding to it in connection with a bona fide offering of goods or services, is not known by the disputed domain name and has not used it. The Complainant contends that the disputed domain name was registered and is being used in bad faith, because the Respondent cannot provide explanation for the choice of the disputed domain name, while the PARI MATCH trademark is widely known and it is unlikely that the Respondent has registered the disputed domain name without knowledge of it. The Complainant adds that the disputed domain name has not been actively used since its registration. B. Respondent The Respondent notes that the disputed domain name was registered by him as an individual “for a number of reasons” and that at the time of this registration, he was an employee of the Moldovan company SC Parimatch SRL. The Respondent adds that he registered the disputed domain name at the direction of his superior, and that all rights and trademarks associated with Parimatch are owned by SC Parimatch SRL and the owner of this company. In its supplemental filing, the Respondent reiterates that he has been an employee of the company SC Parimatch SRL in the Republic of Moldova since 2012, and that he has registered the disputed domain name by order of the director and founder of the company, Mr Zdorov Iuri. The Respondent adds that a similar dispute with the Complainant arose over the domain name Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]” A. Identical or Confusingly Similar The Complainant has provided evidence that he is the owner of the PARI MATCH trademark and has thus established its rights in this trademark for the purposes of the present proceeding. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.ro” country code TLD section of the disputed domain name. The disputed domain name incorporates the verbal elements of the PARI MATCH trademark in their entirety, with the only difference being that the space between them is omitted. In cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the PARI MATCH trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent does not use the disputed domain name or name corresponding to it in connection with a bona fide offering of goods or services, the Respondent is not known by the disputed domain name and has not used it in any way. The Complainant has submitted printouts which show that there is no active website at the disputed domain name and that there are no archived copies in Wayback Machine of such a website. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has submitted an informal Response, in which it states that the disputed domain name was registered “for a number of reasons”, and that it was registered under instructions of the owner of the company SC Parimatch SRL, where the Respondent was an employee. It is notable that the Respondent does not elaborate the reasons for the registration of the disputed domain name and does not deny having knowledge of the Complainant. The Respondent submits evidence that the company SC Parimatch SRL was registered in Moldova on July 23, 2010. The registration certificate specifies that the scope of business activities of the company includes restaurants, bars, retail sale of alcoholic beverages and other beverages, and retail sale of tobacco products. There is no evidence that the Respondent has any connection to it and has indeed acted at the orders of its owner. Even if the Respondent were to be connected to the company SC Parimatch SRL, that would not change the Panel’s analysis on the lack of rights or legitimate interests in the disputed domain name. The Respondent also submits evidence that a combined trademark with registration No.32357 was applied for by SC Parimatch SRL in the Republic of Moldova on September 10, 2014 and was registered on April 23, 2019 for services in International classes 35 and 41. It is notable that this trademark has identical visual appearance as the Complainant’s PARI MARCH trademark and is registered for the same classes of services, and that the application for it was filed after the registration of the PARI MATCH trademark with registration No.178808 in Ukraine. In the lack of any explanation by the Respondent to the contrary, this trademark registration in the Republic of Moldova does not appear to the Panel as a mere coincidence. Rather, it appears to the Panel as a confirmation that its registrant had knowledge of the Complainant and/or of the Complainant’s PARI MATCH trademark2 and attempted to obtain for itself rights over the same trademark in the Republic of Moldova. It is also notable in the same regard that the services included in the scope of protection of this trademark have nothing in common with the scope of activities of its registrant according to its certificate of registration. The Moldovan trademark registration also contains a disclaimer that the exclusive right does not extend over the words “PARI” and “MATCH”, except for the special graphic execution. In view of this, this trademark registration cannot serve as basis for rights and legitimate interests of its registrant or of the Respondent in the disputed domain name for the purposes of this proceeding under the Policy. The disputed domain name was registered five years after the first registration of the Complainant’s PARI MATCH trademark, which has valid registrations in all countries that have borders with the Republic of Moldova. It is inactive, so there is no active website at it showing any connection to the company SC Parimatch SRL and any legitimate use of the disputed domain name. The decision in Ericius Investments Limited v. Zdorov Iuri IDNP 0972406891242, WIPO Case No. DMD2020-0004 involves a different Respondent, to which the present Respondent alleges, but has not shown to have a connection, and was issued in a different situation, where the respective domain name was registered prior to the Complainant’s trademark. For these reasons, the Panel considers that this decision is not relevant to the present dispute. In view of all the above, the Panel is not convinced by the statements of the Respondent and the evidence submitted by it. Rather, it appears to the Panel that it is more likely than not that the Respondent, being aware of the Complainant and of its PARI MATCH trademark, has registered the disputed domain name targeting the Complainant’s trademark. To the Panel, such conduct does not appear to be legitimate or giving rise to rights or legitimate interests of the Respondent in the disputed domain name. In view of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” As discussed above, the disputed domain name is confusingly similar to the PARI MATCH trademark, and was registered five years after the first registration of the Complainant’s PARI MATCH trademark, which has valid registrations in all countries that have borders with the Republic of Moldova. The Respondent does not deny that it had knowledge of the Complainant when registering the disputed domain name and has not provided any plausible explanation for its choice and registration that could amount, in the circumstances of this case, to a bona fide registration under the Policy. The Moldovan trademark, referred to by the Respondent, is visually identical to the Complainant’s trademark and covers the same classes of services, but was applied for only after the Complainant’s PARI MATCH trademark was already registered in Ukraine. The Complainant has provided evidence that it has obtained high scores in ratings of online bookmaking companies, which appears to show that it has reputation on this market. Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and targeting the PARI MATCH trademark in an attempt to benefit from the popularity of this trademark by creating a likelihood of confusion with it as to the affiliation or endorsement of the disputed domain name. The disputed domain name is inactive. However, as discussed in section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. The Panel finds that some of these factors are present here. The Complainant has shown that its PARI MATCH trademark has market reputation, and the Respondent has failed to provide any plausible or credible explanation on why the disputed domain name was registered, and how it could be used in good faith. At the same time, the registration of the Moldovan trademark referred to by the Respondent, appears to have been obtained in an attempt to unfairly create an appearance of existence of rights and legitimate interests in the sign PARI MATCH. Therefore, the Panel finds that the disputed domain name has been registered and 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 Assen Alexiev 1 While originally, the applicant or registered holder of the Russian and Ukrainian trademark registrations was an entity different to the Complainant, and such applications occurred before the Complainant was registered in Cyprus in 2014, the Panel notes that the Complainant is the current holder of the mentioned trademark registrations. The Panel finds that the fact that the Complainant was not the original holder of these trademark registrations bears no impact on this decision. In addition, the Panel notes that the Complainant, being the current registered holder of the PARI MATCH trademarks referred in this factual background, is entitled to exercise the rights arising from its current condition of holder of such registrations. Therefore, the Panel will refer to such registrations as the Complainant’s PARI MATCH trademark(s) irrespective of the date of the transfer of these registrations to the Complainant. 2 The Panel notes that the Ukrainian combined trademark PARI MATCH with registration No.178808 was originally registered in the name of an entity different to the Complainant, but that the Complainant was already registered in Cyprus at the time SC Parimatch SRL applied for the trademark with registration No.32357 in the Republic of Moldova on September 10, 2014. It may be that SC Parimatch SRL had knowledge of the Complainant, of the Ukrainian combined trademark PARI MATCH with registration No.178808 (now registered in the name of the Complainant), or of the business developed in the brand PARI MATCH, but this would not change the Panel’s conclusion.
Sole Panelist
Date: April 28, 2021
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