WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cube Limited v. Gang Zhen Xiong

Case No. D2018-0888

1. The Parties

The Complainant is Cube Limited of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Farrer & Co., United Kingdom.

The Respondent is Gang Zhen Xiong of Manila, Philippines.

2. The Domain Names and Registrar

The disputed domain names <18805a.com>, <18806a.com>, <18806b.com>, <18806c.com>, <18806d.com>, <18806e.com>, <18806f.com>, <18806g.com>, <18806h.com>, <18806i.com>, <18806j.com>, <18806k.com>, <18806l.com>, <18806m.com>, <18806n.com>, <18806o.com>, <18806p.com>, <18806q.com>, <18806r.com>, <18806s.com>, <18806t.com>, <18806u.com>, <18806v.com>, <18806w.com>, <18806x.com>, <18806y.com> and <18806z.com> (collectively the “disputed domain names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2018. On April 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 23, 2018, 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 in of the Complaint, and the proceedings commenced on April 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2018.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 25, 2018. 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, Cube Limited, is a company incorporated in the Isle of Man and the owner of website “www.188bet.com”, a site specializing in various online betting and casino services. The Complainant owns registrations for the following trademarks:

The Complainant has been using the 188 Mark since 2005 and has been using the 188 Mark on its website since 2006.

The disputed domain names (except for <18805a.com>) were registered on October 26, 2017. The disputed domain name <18805a.com> was registered on October 9, 2017. The disputed domain names all resolve to functionally identical websites offering gambling goods and services except for <18805a.com>, which does not resolve to a website as of the decision date, and <18806k.com>, which acts as a landing page for the other disputed domain name sites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s 188 Mark. The Complainant has rights in the 188 Mark by virtue of its trademark registrations. When comparing the disputed domain names to the Complainant’s trademark, the comparison should be made to the second-level portion of the disputed domain names only. The Top-Level Domain (“TLD”) “.com” should not be considered. The disputed domain names consist of the 188 Mark plus the numerals and letter “05a”, “06a”, “06b”, “06c”, “06d”, “06e”, “06f”, “06g”, “06h”, “06i”, “06j”, “06k”, “06l”, “06m”, “06n”, “06o”, “06p”, “06q”, “06r”, “06s”, “06t”, “06u”, “06v”, “06w”, “06x”, “06y” and “06z”. The additional numerals and letters do not negate the confusing similarity and in fact add to it because they may capture and redirect any Internet users who make a common typing error. Additionally, the Respondent’s use of the disputed domain names contributes to the confusion because the Respondent is using the disputed domain names to direct Internet users to websites featuring the 188 Mark, the 188BET Mark and the 188BET (logo) Mark. This indicates that the Respondent intended the disputed domain names to be confusingly similar to the Complainant’s trademark.

In addition, the Complainant contends that each of the websites at the disputed domain names uses the Complainant’s name and address, displays the logo of the betting and gaming licensing authority which regulates the Complainant, and displays the logos of two English Premier League football clubs with whom the 188 brand has had an association through sponsoring or partnering arrangements, creating a likelihood of confusion for Internet users looking for the Complainant’s website.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not sponsored by or affiliated with the Complainant. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain names. The WhoIs data for the disputed domain names identifies the registrant as “Gang Zhen Xiong”, which does not resemble the disputed domain names in any way. The Respondent’s use of the Complainant’s marks in the Respondent’s websites is a direct attempt to take advantage of the fame and goodwill that the Complainant has built in its brand since 2005.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Complainant’s 188 Mark enjoys a substantial and widespread reputation and has been in use since 2005, well before the Respondent registered the disputed domain names. By registering domain names that incorporate the Complainant’s 188 Mark in its entirety and adding the above mentioned numerals and letters, the Respondent has created domain names confusingly similar to the Complainant’s mark and domain name. The 188 Mark is so associated with the Complainant that the Respondent’s use of it strongly implies bad faith. The addition of the numerals and letter “05a”, “06a”, “06b”, “06c”, “06d”, “06e”, “06f”, “06g”, “06h”, “06i”, “06j”, “06k”, “06l”, “06m”, “06n”, “06o”, “06p”, “06q”, “06r”, “06s”, “06t”, “06u”, “06v”, “06w”, “06x”, “06y” and “06z” do nothing to reduce the confusing similarity. At the time of the registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark and that registration of domain names containing well-known trademarks constitutes bad faith per se.

Bad faith use can be established by evidence demonstrating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by using the disputed domain names to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, products or services. The Respondent is creating a likelihood of confusion by using a slightly modified version of the Complainant’s trademark in domain names where the mark is the main feature and attempting to profit from such confusion by using the website associated with the disputed domain names to sell similar products.

The Complainant requests that the disputed domain names be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides for transfer or cancellation of the disputed domain name(s) if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(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.

A. Identical or Confusingly Similar

The Complainant has rights to the 188 Mark. The Complainant has established that it is the registered owner of trademark registrations of 188 Mark. Although the Complainant does not have a registered trademark in the Respondent’s location (the Philippines), the general UDRP panels’ view is that the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element (see Section 1.1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The disputed domain names contains the element “188”, one out of the numerals and letter set “05a”, “06a”, “06b”, “06c”, “06d”, “06e”, “06f”, “06g”, “06h”, “06i”, “06j”, “06k”, “06l”, “06m”, “06n”, “06o”, “06p”, “06q”, “06r”, “06s”, “06t”, “06u”, “06v”, “06w”, “06x”, “06y” and “06z”, and the TLD “.com”. As a technical part of the domain name, the “.com” TLD may be disregarded in determining confusing similarity. Alienware Corp. v. Truther, WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer, WIPO Case No. D2002-0329. The Panel does not find the Complainant’s argument that the disputed domain names may capture and redirect any Internet users who make a common typing error to be convincing, given the physical separation on the keyboard between the numerals and letters involved. However, the case remains that the addition of non-distinctive numerals and letters as suffixes does not distinguish the disputed domain names from the Complainant’s 188 Mark. Cube Limited v. Domain Administrator / lihong chen, WIPO Case No. D2016-0313; Cube Limited v. Super Privacy Service, c/o Dynadot, WIPO Case No. D2015-1325. “188” remains the dominant part of the disputed domain names.

Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the respondent may demonstrate rights or legitimate interests in the disputed domain name(s) by showing any of the following circumstances, in particular but without limitation:

(i) The respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or

(ii) The respondent 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.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use its 188 Mark or to register any domain name incorporating that trademark. The Respondent is not affiliated with the Complainant in any way.

The Respondent is not using, nor is there evidence that the Respondent has made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The Respondent uses the disputed domain names to publish gambling websites that offer the same products as the Complainant’s own site and which could be confused with the Complainant’s website and services. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”). Additionally, the 188 Mark is well-known in Asia, where the Respondent’s country of registration is located and the Complainant and its services maintain a presence. In the absence of evidence to the contrary, knowledge of the Complainant and its rights in the 188 Mark may be imputed to the Respondent at the time of registration of the disputed domain name. See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. (“The inevitable conclusion is that th[is] word[ ] [is] not one[ ] that the Respondent would legitimately choose in the context of provision of goods, services or information via a website unless seeking to create an impression of an association with the Complainant.”). Indeed, the Respondent’s use of the Complainant’s 188BET (logo) Mark indicates that the Respondent was aware of the Complainant, its services and the 188 Mark.

The Respondent is not making any noncommercial or fair use of the disputed domain names. To the contrary, the evidence in the record indicates that the Respondent uses the disputed domain names for commercial gain by seeking to create an impression of an association with the Complainant and to misleadingly divert consumers to the Respondent’s competing websites.

Accordingly, the record indicates that the Respondent has no rights or legitimate interest in respect of the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name(s) 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 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 the respondent’s documented out-of-pocket costs directly related to the disputed 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 disputed 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 such website or location or of a product or service on such website or location.

The present case falls squarely within that contemplated by paragraph 4(b)(iv) of the Policy.

The Respondent registered the disputed domain names in bad faith. The Respondent undoubtedly was aware of the Complainant and its 188 Mark at the time of registration of the disputed domain names and that such registration was in bad faith. The Complainant and its 188 Mark are widely known throughout Asia. The Respondent must have had the Complainant’s famous trademark in mind when the Respondent registered the disputed domain names, as evidenced by the Respondent’s use of the disputed domain names to direct Internet users to a website offering services that compete with those of the Complainant. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. Moreover, the Respondent’s websites use the 188BET (logo) Mark prominently, further indicating that the Respondent was well aware of the Complainant, its services and the 188 Mark. The Respondent’s registration of the disputed domain names incorporating the Complainant’s mark, being fully aware of the Complainant’s rights in the mark, without any rights or legitimate interests in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Respondent also uses the disputed domain names in bad faith. By using the disputed domain names to link to websites that promote and offer competing services, the Respondent conveyed the impression that the Respondent’s website was affiliated with or created, endorsed or sponsored by the Complainant. See Dow Jones & Company, Inc. v. Down Johns Update, WIPO Case No. D2000-0495. The Respondent’s website does not offer any statements indicating that the Respondent and the website lack affiliation with the Complainant. The Respondent has intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s 188 Mark as to the source, sponsorship, affiliation, or endorsement of such website. The Respondent further attempted to create Internet user confusion by prominently displaying the 188BET (logo) Mark on the Respondent’s website. These activities amount to bad faith use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy. See id. Additionally, the Respondent’s failure to respond to the Complainant’s efforts to contact the Respondent for settlement outside of this proceeding “provide[s] strong support for a determination of ‘bad faith’ registration and use.” Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.

For these reasons, the Panel finds that the Respondent’s registration and use of the disputed domain names is 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 names, <18805a.com>, <18806a.com>, <18806b.com>, <18806c.com>, <18806d.com>, <18806e.com>, <18806f.com>, <18806g.com>, <18806h.com>, <18806i.com>, <18806j.com>, <18806k.com>, <18806l.com>, <18806m.com>, <18806n.com>, <18806o.com>, <18806p.com>, <18806q.com>, <18806r.com>, <18806s.com>, <18806t.com>, <18806u.com>, <18806v.com>, <18806w.com>, <18806x.com>, <18806y.com> and <18806z.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: June 14, 2018