The Complainant is Realm Entertainment Limited, of Birkirkara, Malta, represented by Domain and Intellectual Property Consultants (DIPCON AB), Sweden.
The Respondent is Lucia Romano, of London, United Kingdom of Great Britain and Northern Ireland
The Disputed Domain Name <bets10giremiyorum.com> is registered with eNom, Inc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2012. The Center acknowledged receipt of the Complaint on September 13, 2012. On September 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name.
On September 14, the Registrar transmitted by email to the Center its verification response disclosing the 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 September 20, 2012 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 amended Complaint on September 24, 2012.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2012.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2012.
Notwithstanding the above, on October 23, 2012, the Respondent filed with the Center a formal response, through its authorized representative Mr. Edward Saliba, of Sliema, Malta (the “Late Response”).
On October 24, 2012, the Center acknowledged receipt of the Late Response and indicated to the Respondent that, as the specified due date for submission of a Response had passed, the Center would alert the Panel of the receipt of such communication and it would then be at the sole discretion of the Panel as to whether it wished to consider such communication.
The Panel notes that as the registration for the Disputed Domain Name was due to expire while these proceedings were on foot (i.e. on September 13, 2012), the Complainant elected to renew the Disputed Domain Name pursuant to Paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy in order to keep it active and locked pending the outcome of these proceedings. However, following the renewal of the Disputed Domain Name, the WhoIs information was incorrectly changed by the Registrar to show Betsson Malta Limited as the Registrant. The Center informed the Registrar of this error by email on September 25, 2012 and the WhoIs information was corrected to show the Respondent as the registrant of the Disputed Domain Name on the same day.
The Center appointed Ms. Gabriela Kennedy as the sole panelist in this matter on November 1, 2012. 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.
The Complainant is a company incorporated in Malta which operates several gaming websites around the world including <bets10.com> (the “Gaming Website”), which is targeted at the Turkish market and offers games of chance such as poker, bingo and other online casino games. The Gaming Website was launched in February, 2011. The Complainant is the owner of Community Trademark No. 009941139 for BETS10 which was filed on May 4, 2011 and registered on September 14, 2011.
The Respondent is an individual based in the United Kingdom. The Disputed Domain Name was registered on September 13, 2012 through the privacy service "WhoisGuard", which was the named Respondent prior to the Complaint being amended. On July 12, 2012, the Complainant sent a cease and desist letter to WhoisGuard by email, but no response was received. The Late Response indicates that the Respondent had no knowledge of registering the Disputed Domain Name and has no interest in the Disputed Domain Name.
Currently, the Disputed Domain Name resolves to a parking page containing sponsored links unrelated to the products and services provided by the Complainant. However, prior to the Complaint being filed, the Disputed Domain Name resolved to a website which used a similar layout and color scheme to the Gaming Website, featured the BETS10 trademark and contained links to services related to those provided by the Complainant (the “Website”).
The Complainant's contentions can be summarized as follows:
(a) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
(i) the Disputed Domain Name contains the Complainant’s BETS10 trademark in its entirety; and
(ii) the addition of the Turkish phrase "giremiyorum", which means “I cannot enter” in English is not sufficient to negate the similarity with the Complainant's BETS10 trademark.
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:
(i) the Respondent is not commonly known by the name "BETS10", nor has the Complainant authorized the Respondent's use of the Complainant's trademark in the Disputed Domain Name; and
(ii) there is no evidence that the Respondent is using the Disputed Domain Name for a legitimate noncommercial purpose. The Respondent is using the Disputed Domain Name for commercial purposes as the Disputed Domain Name resolved to a website containing links related to the type of services offered by the Complainant.
(c) The Disputed Domain Name was registered and is being used in bad faith:
(i) the Disputed Domain Name was registered after the Complainant’s trademark was registered (the Panel notes that while the Complainant's trademark application for BETS10 had been filed prior to registration of the Disputed Domain Name, the trademark only proceeded to registration 1 day after the Disputed Domain Name was registered);
(ii) the Respondent’s knowledge of the Complainant’s trademark and business can be implied from the links to services related to those provided by the Complainant on the Website; and
(iii) the Respondent did not reply to the cease and desist letter from the Complainant dated July 12, 2012 (the Panel notes that the cease and desist letter was sent to WhoisGuard, the privacy service used to register the Disputed Domain Name, not to the Registrant directly).
The Respondent did not reply to the Complainant’s contentions by the deadline of October 17, 2012. On October 23, 2012, the Respondent filed with the Center the Late Response. In the Panel’s opinion, the Late Response does not put forward any relevant allegations and only informs the Panel that the Respondent had no knowledge of registering the Disputed Domain Name and has no interest in the outcome of the administrative proceedings. As the Late Response was not filed in time, the Panel chooses to exercise its discretion under paragraphs 10(a) and 12 of the Rules to refuse to consider the Late Response.
The fact that the Panel has refused to admit the Late Response does not automatically result in a decision in favour of the Complainant. However, this may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437).
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
a) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in respect of the BETS10 trademark on the basis of the Community Trademark Registration owned by the Complainant for BETS10, which was applied for on May 4, 2011 and registered on September 14, 2012.
The Panel also accepts that the Complainant has obtained rights in the trademark through prior use of the BETS10 trademark. The Gaming Website commenced operations on February, 2011, more than 6 months prior to the Disputed Domain Name being registered by the Respondent.
For the purpose of the Policy, it is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case <.com> may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the Complainant's BETS10 trademark in its entirety. The only difference between the Disputed Domain Name and the Complainant's trademark is the inclusion of the generic Turkish phrase “giremiyorum”, meaning “I cannot enter” in English. It is well established that in cases where the distinctive and prominent element of a disputed domain name is the complainant's trademark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the trademark (see Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).
The Panel finds that BETS10 is the distinctive and prominent component of the Disputed Domain Name and the addition of the generic Turkish phrase “giremiyorum” does nothing to distinguish the Disputed Domain Name from the Complainant's trademark.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the BETS10 trademark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of production to demonstrate it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the Respondent's rights in the Disputed Domain Name (or lack thereof) based on the Respondent's use of the Disputed Domain Names in accordance with the available record.
The Panel accepts that the Complainant has not authorized the Respondent to use the BETS10 trademark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Name.
Accordingly the only way for the Respondent to acquire rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy would be through use of the Disputed Domain Name for legitimate noncommercial purposes or in connection with a bona fide offering of goods or services.
The Panel accepts that prior to the Complaint being filed, the Website featured the BETS10 trademark as well as links promoting products and services related to those provided by the Complainant, from which the Respondent presumably derived income. Therefore, the finding of legitimate noncommercial use is precluded.
The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not be a bona fide offering of goods and services (see Entertainment Shopping AG v. Nishal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162).
Accordingly, the Panel finds that there is insufficient evidence that the Respondent can assert rights or legitimate interests in the Disputed Domain Name and therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Names in bad faith.
Evidence of bad faith includes actual or constructive notice of a well-known trademark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. FA94313).
The Complainant has argued that the fact that the Respondent failed to reply to the cease and desist letter sent by them is evidence of bad faith on the part of the Respondent. The Panel notes that the Complainant only sent the cease and desist letter to WhoIsGuard and there is no evidence suggesting this letter was ever received by the Respondent. Therefore, the Panel has not considered the lack of response to the cease and desist letter as evidence of bad faith on the part of the Respondent
While the Complainant has failed to provide sufficient evidence to show that its BETS10 trademark was well known, the Panel accepts that the Respondent knew of the Complainant's BETS10 trademark and the Gaming Website for the following reasons:
(i) the Disputed Domain Name was registered on September 13, 2012, 7 months after the Complainant had launched the Gaming Website and 4 months after the Complainant had filed its application for the BETS10 trademark; and
(ii) it is evident from screenshots of the Website, that the Disputed Domain Name incorporated an identical reproduction of the Complainant’s BETS10 trademark in several locations, made several references to the Complainant's services offered under the BETS10 trademark and used a similar layout and colour scheme to the Complainant’s Gaming Website. This is sufficient for the Panel to conclude that at the time of registration of the Disputed Domain Name, the Respondent was aware of the Complainant and its BETS10 trademark (see Johnson & Johnson v. Ryan Rupke, WIPO Case No. D2011-1196; # Sr. Altenloh, Brinck & Co. GmbH & Co. KG v. Steve Cree, WIPO Case No. D2005-0046, and Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba, WIPO Case No. D2004-0941).
The Panel notes that the Respondent's use of a WhoIs privacy service to conceal the Respondent's identity can contribute to a finding of bad faith registration and use (see Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC, WIPO Case No. D2008-1300 and Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).
The Panel finds that the Respondent used the BETS10 trademark in its entirety with a view to trade on the Complainant's goodwill in the trademark (see RRI Financial, Inc. v Ray Chen, WIPO Case No. D2001-1242). The Panel has not been provided with any evidence to suggest that the Respondent has used the Disputed Domain Name in any manner or purpose otherwise than in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name.
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 <bets10giremiyorum.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: November 15, 2012