The Complainant is Cube Limited of the Isle of Man, represented by Berwin Leighton Paisner, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Super Privacy Service c/o Dynadot of San Mateo, California, United States of America.
The disputed domain names <188004.com>, <188201.cc>, <188202.cc>, <188203.cc>, <188203.net>, <188204.cc>, <188205.cc>, <188206.cc>, <188207.cc>, <188208.cc> and <188209.cc> are registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2016. On June 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 8 and 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant in respect of all the disputed domain names 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 June 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 19, 2016. 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 that provides online betting or gambling services from its official website at “www.188bet.com.” The Complainant’s official website is available in English and Chinese versions, among others. The Complainant has registered the trademark 188BET in various jurisdictions (Community trademark registration no. 8425324 registered on March 22, 2010, United Kingdom trademark registration no. 3017215 registered on November 8, 2013 and Hong Kong, China registration no. 302702655, registered on August 12, 2013, respectively). The Complainant has also registered the numerals “188” as a trademark in the European Union (Community trademark registration no. 8390379, registered on March 22, 2010) specifying goods and services in multiple classes including interactive gaming, gambling and casino services. The Complainant uses its 188BET trademark in a logo in which the numerals “188” appear inside an orange five-sided figure, followed by the word “bet” in the English version. The Complainant also uses a Chinese version of that logo which is identical except insofar as it replaces the word “bet” with the characters “金宝博”.
The Respondent is the registrant of the disputed domain names. The disputed domain name <188004.com> was registered on February 17, 2015; the nine disputed domain names in the “.cc” country-code Top-Level Domain (“ccTLD”) were registered on August 25, 2015; and all of these disputed domain names were updated on January 2, 2016. The disputed domain name <188203.net> was registered on April 5, 2016. At the time of filing the Complaint, all but two of the disputed domain names resolved to a betting or gambling website mainly in Chinese but with some buttons in English. The website prominently displays the Chinese version of the 188BET logo. The website also displays a footnote stating that 188BET is owned by the Complainant, together with the Complainant’s address. At the time of filing the Complaint, the disputed domain names <188206.cc> and <188207.cc> did not resolve to any active website. At the time of this decision, none of the disputed domain names resolves to any active website.
The Complainant submits that the disputed domain names are confusingly similar to its “188” trademark. The disputed domain names wholly incorporate that trademark. The additional numerals in the disputed domain names do nothing to minimize the risk of confusion to potential customers looking for the Complainant’s website.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. All but two of the disputed domain names direct Internet users to an active website purporting to be operated by the Complainant and offering a range of services that are not connected to the Complainant. The Respondent has no licence or other permission from the Complainant to use any of the 188 trademarks or logos. The Respondent is not commonly known by the disputed domain names.
The Complainant submits that the disputed domain names were registered and are being used in bad faith. The disputed domain names were registered some ten years after the Complainant first commenced its use of the 188 trademarks. The Complainant has a significant global reputation in those trademarks. The footnote on the Respondent’s website actually refers to the Complainant. All but two of the disputed domain names resolve to a counterfeit website that displays the Complainant’s 188 trademarks and 188BET logo and purport to offer the remote gambling services offered by the Complainant but are not connected to the Complainant in any manner.
The Respondent did not reply to the Complainant’s contentions.
The Complaint in this proceeding initiated disputes regarding 11 different domain name registrations. The Panel notes that the Respondent is the registrant of all the disputed domain names but it also notes that the Respondent is a privacy service. The Panel observes that (a) all the disputed domain names incorporate the Complainant’s 188 trademark as the initial element; (b) the nine disputed domain names in the “.cc” ccTLD form a numerical sequence and were registered on the same day and updated on the same day; and (c) nine of the disputed domain names (including the two registered on other dates in other TLDs) redirect to the same website. Therefore, in accordance with paragraph 10(e) of the Rules, the Panel decides that it is appropriate to consolidate these 11 domain name disputes in a single proceeding.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements in respect of each 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; 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.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the 188 trademark.
All the disputed domain names incorporate the Complainant’s 188 trademark in its entirety. The 188 trademark is the initial element of every disputed domain name.
One additional element in each disputed domain name is a three digit numeral consisting of “20” plus another digit, except for one disputed domain name in which the three digit number is “004”. These are mere numerals and not inherently distinctive. None of them is the initial element in any of the disputed domain names. None of them is longer than the 188 trademark either. Therefore, none of these three digit numerals has the capacity to dispel confusing similarity with the 188 trademark. See Cube Limited v. Super Privacy Service c/o Dynadot / chongqing c/o Dynadot, WIPO Case No. D2015-2206, regarding the same trademark and the same additional three digit numerals in ten of the disputed domain names in the present case.
The other additional element is the generic Top-Level Domain (“gTLD”) suffix “.com” or “.net” or the ccTLD suffix for the Cocos Islands “.cc”. A gTLD suffix or a ccTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080; Vodafone Group PLC v. Wikipiedra S.L. / Jonathan Palma Ruz, WIPO Case No. DCC2010-0006.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent 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.
As regards the first circumstance, the evidence shows that the Respondent is using the disputed domain names in connection with the offering of gambling services. The issue is whether that offering is bona fide. The disputed domain names are confusingly similar to the Complainant’s trademark yet, according to the Complaint, the Respondent has no connection to the Complainant. The website to which most of the disputed domain names resolve displays the Chinese version of the Complainant’s 188BET logo, offers the same type of services as the Complainant, and also displays a footnote that refers to the Complainant and its address. This indicates that the reason for choosing the disputed domain names was to misleadingly divert Internet users with intent for commercial gain and that the Respondent’s use of the disputed domain names in connection with the offering of services was not bona fide. As regards the two disputed domain names that do not resolve to any active website, they are not used in connection with any offering of goods or services, and there is no evidence of any preparations to make such a use. Accordingly, the Panel does not find that the Respondent’s use of any of the disputed domain names falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent’s name is hidden by a privacy service. The disputed domain names are numbers combined with TLDs, not personal names. There is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, most of the disputed domain names resolve to a website that offers commercial gambling services. Two of the disputed domain names do not resolve to any active website. Neither is a legitimate noncommercial or fair use of the disputed domain names covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The burden now shifts to the Respondent to show some rights or legitimate interests, but the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The Respondent registered the disputed domain names in 2015 and 2016, years after the Complainant obtained its 188 trademark registration. The initial element of the disputed domain names is identical to the Complainant’s 188 trademark. The website to which most of the disputed domain names resolve displays the Complainant’s trademark and logo, offers the same type of services as the Complainant and identifies the Complainant by its name and its address. This indicates to the Panel that the Respondent intentionally chose to register the Complainant’s trademark and use it in the disputed domain names. While the disputed domain names <188206.cc> and <188207.cc> do not resolve to any active website, they were registered as part of a numerical sequence at the same time, with the same registrar and privacy service, as seven of the other disputed domain names and updated at the same time as eight of the other disputed domain names. This gives the Panel reason to find that the Respondent had the same knowledge of the Complainant’s 188 trademark at the time of registration as it did with respect to the other disputed domain names.
The Respondent uses most of the disputed domain names with a website to offer betting or gambling services. The disputed domain names incorporate the Complainant’s trademark as their initial element yet the Respondent has no connection with the Complainant. The website displays the Complainant’s trademark and logo, offers the same type of services as the Complainant and identifies the Complainant by its name and its address. Given these facts, the Panel considers that the Respondent’s use of the disputed domain names intentionally attempts to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products on that websites. The Panel notes that the use of these disputed domain names changed after the filing of the Complaint, and that they no longer resolve to an active website. This change of use after receiving notice of the Complaint may be further evidence of bad faith and, in any event, does not alter the Panel’s conclusion regarding bad faith use.
The Respondent has made no active use of the disputed domain names <188206.cc> and <188207.cc>. However, mere passive holding of a disputed domain name does not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its 188 trademark which is well-known in the online gambling industry while the Respondent is also offering services in that same industry. The disputed domain names wholly incorporate the Complainant’s 188 trademark as their respective initial element, together with nothing more than other numerals and a TLD, all of which increases the likelihood of confusion of the disputed domain names with the Complainant and its services. These circumstances are evidence that these disputed domain names are being used in bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 names <188004.com>, <188201.cc>, <188202.cc>, <188203.cc>, <188203.net>, <188204.cc>, <188205.cc>, <188206.cc>, <188207.cc>, <188208.cc> and <188209.cc> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: July 21, 2016