The Complainant is MB97, Guernsey, represented by Urquhart-Dykes & Lord LLP, United Kingdom.
The Respondent is Atageldi Muhammedov, Turkmenistan. 2. The Domain Name and Registry
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2020. On February 17, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 17, 2020, 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 February 18, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant made an amendment to the Complaint on February 18, 2020. The Center verified that the amended Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for Domain Names registered with NIC.TM (the “Policy”), the Rules for Domain Name Dispute Resolution for.TM Names (the “Rules of Procedure”), and the WIPO Arbitration and Mediation Center Supplemental Rules for Domain Name Dispute Resolution Policy for .TM Names (the “Supplemental Rules”). In accordance with the Rules of Procedure, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2020. In accordance with the Rules of Procedure, paragraph 5(a), the due date for Response was March 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on March 17, 2020. 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 of Procedure, paragraph 7. 4. Factual Background The Complainant is the intellectual property holding entity of the online betting company Marathonbet. Marathonbet was founded in 1997 and initially operated in the Commonwealth of Independent States countries. In 2002, it started operating via the Internet. Today, Marathonbet has a presence in the United Kingdom, Eastern Europe, Spain, Italy, Nigeria, and Latin America. Marathonbet is the Official Betting Partner and Official Training Kit sponsor of Manchester City, as well as an official partner of Sevilla FC, Girona FC and FC Karpaty Lviv. The Complainant is the owner of the following trademark registrations of the mark MARATHON BET (the “MARATHON BET trademark”): - the European Union Trade Mark MARATHONBET with registration No. 011861093, registered on October 25, 2013 for goods and services in International Classes 9, 16, 35, 36, and 41; The disputed domain name was registered on August 21, 2016. It resolves to a Russian language website, which offers online betting and gambling. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is identical or confusingly similar to the MARATHON BET trademark, as it reproduces it entirely. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as there is no relationship between the Parties and the Complainant has not consented to the registration and use of the disputed domain name by the Respondent. The Complainant submits that the Respondent is not commonly known by the disputed domain name and is not making a legitimate or noncommercial or fair use of the disputed domain name. Rather, the Respondent is using it to mislead consumers or to harm the reputation of the Complainant, because the disputed domain name is being used in relation to an online betting website that features the MARATHON BET trademark. The Complainant submits that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent must have been aware of the Complainant and its MARATHON BET trademark when it registered the disputed domain name, because of the longstanding and widespread use and reputation of the MARATHON BET trademark in relation to the Complainant’s global online betting business. The Complainant maintains that members of the public would wrongly believe that the website at the disputed domain name was being operated by the Complainant or is associated to it, especially since the website at the disputed domain name offers online betting under the name MARATHON BET, which may disrupt the business of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 or 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, and the Respondent was given a fair opportunity to present its case. The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding. A. Identical or Confusingly Similar The Complainant has provided evidence of and has thus established its rights in the MARATHON BET trademark. The Panel notes that a common practice has emerged to disregard in appropriate circumstances the country code Top-Level Domain (“ccTLD”) of domain names for the purposes of the test for identity or confusing similarity. The Panel sees no reason not to follow the same approach here, so it will disregard the “.tm” ccTLD of the disputed domain name. The disputed domain name incorporates the word elements of the MARATHON BET trademark in full, only omitting the space between the words that compose the trademark. This difference is not significant, and the latter is easily recognizable in the disputed domain name. In addition, the disputed domain name is identical to the MARATHONBET trademark of the Complainant. In view of the above, the Panel finds that the disputed domain name is identical and confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests As discussed in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in relation to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), 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. The Policy is identical to the UDRP with respect to the second element and the Panel considers it may have reference to the WIPO Overview 3.0 in this respect. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that there is no relationship between the Parties and the Complainant has not authorized the Respondent to register and use the disputed domain name, and the Respondent is not commonly known by the disputed domain name. It adds that the Respondent is misleading consumers and is harming the reputation of the Complainant, because the disputed domain name is being used in relation to an online betting website, which features the MARATHON BET trademark. 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 not disputed the statements of the Complainant and has not alleged that is has rights or legitimate interests in the disputed domain name. The disputed domain name incorporates the MARATHON BET trademark, which was first registered three years prior to the registration of the disputed domain name, and the undisputed evidence in the case file shows that it resolves to a betting website under the title “Marathon Bet”, which offers online betting to Internet visitors in competition to the Complainant, and contains no disclaimer for the lack of relationship between the Parties. In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the MARATHON BET trademark, has registered the disputed domain name in an attempt to exploit the trademark’s goodwill by attracting Internet visitors to the Respondent’s website for commercial gain misleading them that they are accessing a website that is affiliated to the Complainant. In the Panel’s view, such conduct does not give rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered or Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent has registered or is using the disputed domain name in bad faith. For the purposes of this provision of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring its 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location. As discussed above, the disputed domain name is confusingly similar to the MARATHON BET trademark and resolves to a betting website with the title “Marathon Bet”, which competes with the Complainant by offering online betting to Internet visitors and contains no disclaimer for the lack of relationship between the Parties. The case file contains evidence that the Respondent’s physical address as provided to the Registrar is incorrect or non-existent. Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent is aware of the Complainant’s gambling business operated under the MARATHON BET trademark, and that the Respondent has registered and used the disputed domain name targeting the same trademark. It is likely that by creating a likelihood of confusion with the Complainant’s MARATHON BET trademark and an appearance that the Respondent’s website is related to the Complainant, the Respondent has attempted to attract traffic to the disputed domain name and confuse Internet users that they are reaching a website affiliated to the Complainant where betting services are offered in competition with the Complainant, likely for commercial gain. 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(h) of the Policy and 15 of the Rules of Procedure, the Panel orders that the disputed domain name Assen Alexiev
- the Australian trademark MARATHON BET with registration No. 1682710, registered on November 14, 2016 for goods and services in International Classes 9, 16, 35, 36, and 41; and
- the United States of America trademark MARATHON BET with registration No. 5102708, registered on December 20, 2016 for goods and services in International Classes 9, 16, 35, 36, and 41.
Sole Panelist
Date: March 30, 2020
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