The Complainant is Mr. Green Ltd of Sliema, Malta, represented by Advokatfirman Fylgia KB, Sweden.
The Respondent is Kemal Marangoz of Uppsala, Sweden, represented by Dr. de Gaetano, Malta.
The disputed domain name <garbobet.com> is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2015. On October 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response informing that the Respondent indicated in the Complaint was not listed as the registrant and providing the contact details of the correct registrant. In response to the notification that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 16, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2015. The Response was filed with the Center on November 9, 2015.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 23, 2015. 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.
Having reviewed the record before it, the Panel noted that the Respondent stated that he “consents to the remedy requested by the Complainant and agrees to transfer the disputed domain name on the basis of Party agreement, without need for a decision rendered by the Administrative Panel” in his Response.
In this connection, pursuant to paragraph 12 of the UDRP Rules, the Panel requested the Respondent, by means of a Procedural Order, to confirm whether he indeed consented to transfer the disputed domain name to the Complainant by December 22, 2015.
In the negative, the Panel requested the Respondent to provide comments and/or evidence that he did not register the disputed domain name with prior knowledge of the Complainant.
The Complainant, Mr. Green Ltd, is a provider in the online gaming services. The Complainant has submitted to the case file a Community trademark certificate for GARBO PLAY IN STYLE filed on July 1, 2013 and registered on November 27, 2013. The Complainant submits to be the holder of a website at “www.garbo.com” that was created in 2013 to attract women players in particular.
The website at the disputed domain name promotes the Respondent’s online gaming services.
The disputed domain name <garbobet.com> was registered on January 22, 2014.
The Complainant claims that:
- the website “www.garbo.com” created in 2013 has been very successful since its beginning;
- its domain name <garbo.com> and the trademark GARBO PLAY IN STYLE are well-known and the Respondent is profiting from their fame;
- the Respondent is using the disputed domain name with intent for commercial gain to misleadingly divert consumers from the Complainant’s website “www.garbo.com” to the Respondent’s website “www.garbobet.com”;
- the disputed domain name is confusingly similar to the Complainant’s domain name <garbo.com> and registered trademark GARBO PLAY IN STYLE;
- the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name;
- the Respondent registered and is using the disputed domain name in bad faith; and
- the Respondent did not respond to the cease and desist letter sent by the Complainant’s representative requesting the transfer of the disputed domain name.
The Respondent refutes all the allegations made by the Complainant and claims that:
- <garbobet.com> was chosen having in mind the actress late Greta Garbo and not the Complainant’s trademark and/or domain name;
- the combination “Garbo Play in Style” and the website “www.garbo.com” do not establish a distinctively recognizable mark;
- the terms used by both parties have a generic root, “Garbo”, derived from the name of the late Greta Garbo, which alone is prima facie unregistrable as a trademark, unless in conjunction with elements allowing said root to obtain distinctiveness;
- although the Mr. Green business set up by the Complainant has been operational for a number of years the GARBO PLAY IN STYLE trademark is not as yet sufficiently distinctive;
- the theme associated with the late Greta Garbo, which is the main inspiration behind the “www.garbobet.com” website, is one of the many overlays for a generic customized white label engine developed by PlayPearls Ltd, an independent developer. Furthermore, the Respondent submits that the overlay chosen was that linked to a Swedish theme and marketed to Swedish clientele, the overlay having been developed by a team that has its roots in Scandinavia;
- the website at the disputed domain name is also being run as part of a wider marketing affiliate network, using the same platform and software used for a good number of sites, and not as a one-off operation with the specific target of leeching off the fame built up by another party;
- there is no similarity in the look-and-feel of the Respondent’s website “www.garbobet.com”, and of the website “www.garbo.com” operated by the Complainant within the framework of its “Garbo Play in Style”; and
- there were and are no specific actions from the Respondent’s side such as malvertising aimed at intentionally driving clientele from the Complainant’s site to the one of the Respondent.
In order for the Complainant to obtain a transfer of the disputed domain name, the Policy paragraph 4(a) requires that the Complainant must demonstrate to the Panel that:
(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.
The GARBO PLAY IN STYLE trademark and the disputed domain name have as a common part the name “Garbo” which represents the most significant and distinctive element of the trademark and the disputed domain name.
The presence of the generic term “bet” in the disputed domain name does not avoid the confusing similarity between the trademark GARBO PLAY IN STYLE and the disputed domain name. Indeed, it is now well established by many previous UDRP decisions that the addition of a generic term (i.e., “bet” here) to a trademark is generally not sufficient to avoid confusing similarity.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark GARBO PLAY IN STYLE.
The Panel however notes that, the Complainant has submitted to the case file a trademark certificate listing “DSRPTV Gaming Ventures Limited” as the holder of the trademark GARBO PLAY IN STYLE, without explaining the relationship between the Complainant and the holder of the trademark registration.
In view of the Panel’s findings below, however, the Panel need not make a finding under paragraph 4(a)(i) of the Policy.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.”
The Respondent registered the disputed domain name on January 22, 2014. The Respondent has submitted that the website linked to the disputed domain name is part of a wider marketing affiliate network, using the same platform and software used for a good number of sites. The Respondent in support of its claim has indicated several other websites. On the “About us” page of the website “www.garbobet.com” the following notice is made “GarboBet was founded in 2013” and: “GarboBet means the company Platypus B.V. a company registered in the Commercial Register of Curaçao with number 136428, regulated by the Curaçao e-Gaming Licensing Authority and duly licensed through a sublicence granted on 11 August 2015 by Curaçao Interactive Licensing N.V pursuant to Master Gaming Licence #5536/JAZ.”
The above points appear to indicate that the Respondent was using the disputed domain name in connection with an offering of its online gaming services prior to this dispute.
As well explained in FINAXA Société Anonyme v. Vitalie Popa, WIPO Case No. D2004-0873, once prior use of a disputed domain name has been established, the relevant question is then whether the respondent was in good faith (“bona fide”). In fact, not every use of a domain name prior to notice of a UDRP dispute qualifies as bona fide use. As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847, “use which intentionally trades on the fame of another cannot constitute a bona fide offering or service” and “to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy”.
This Panel considers that the chronology of events is an important factor in determining whether the Respondent acted in bona fide in the circumstances of this case.
In order to assess the chronology and to better understand some of the assertions made by the parties (where these were undocumented) in addition to visiting the website at the disputed domain name, the Panel also visited the Wayback Machine to inform itself of the Complainant’s use of the “www.garbo.com” website1 .
The Panel learned that the Complainant’s website “www.garbo.com”, although the corresponding domain name seems to have been registered by the Complainant on April 2, 2013, it appears to have been activated only at a certain point in 2014.
Indeed, the first result obtained through the Wayback Machine, showing an active website, dates February 7, 2014. Moreover, the content is solely composed of a picture of a woman (maybe portraying the late Greta Garbo) and a geometrical logo not giving any indication about any products and/or services it might be used for.
Accordingly, it appears that the disputed domain name was registered before the Complainant’s website “www.garbo.com” was activated and started promoting the Complainant’s online gaming services and a little less than two months after registration of the trademark GARBO PLAY IN STYLE.
The Respondent submitted in its response to the Complaint that the choice of the disputed domain name, intended for the Swedish market, was inspired by the late Greta Garbo, and not having in mind the trademark GARBO PLAY IN STYLE and the domain name <garbo.com>. Similarly, in its response to the Procedural Order, the Respondent expressly affirmed that it did not register the disputed domain name with prior knowledge of the Complainant.
The Respondent further submits that the design of the Respondent’s website and the presentation of its services, i.e. the look-and-feel, are different from the website used by the Complainant. The Panel notes that a comparison of the websites does not support the Complainant’s contention that the Respondent banks on the GARBO PLAY IN STYLE trademark and/or provokes confusion between its own services and those of the Complainant.
The Panel is cognizant that the fact that both parties operate in the same business field casts a doubt to the Respondent’s submissions in this case.
It is to be noted, though, that it is the Complainant who bears the burden of proof in UDRP proceedings. The Complainant did not file any document showing the use of the trademark GARBO PLAY IN STYLE and/or of the website “www.garbo.com”, nor did it document it when the use of same started.
Noting that no proof of the Complainant’s use of the trademark GARBO PLAY IN STYLE or the domain name <garbo.com> in connection with an offering of online gaming services or other commercial use at the time of registration of the disputed domain name has been provided by the Complainant, the Panel finds that the Complainant has not met its burden here.
The Panel quotes here the decision in Societe du Figaro S.A. v. Cognac Inc., Juan Hervada, WIPO Case No. D2014-2159:
“In a fully contested proceeding which permitted cross-examination and reply evidence, the Respondent's explanation could possibly be challenged. Under the Policy, that sort of full-scale litigation process is not available, as the Panel can only receive and review evidence in a summary procedure that does not readily lend itself to an indepth investigation of contested facts. Within the framework of the Policy, the Respondent has raised sufficient facts to lay claim to a legitimate interest in the domain name in question. This finding by the Panel is not intended to be a comprehensive approval of the Respondent's explanation, which the parties may choose to test in a different forum with a different set of procedures. However, for the purposes of this proceeding, the Respondent has succeeded in preventing the Complainant from establishing the absence of legitimate interests.”
In light of the conclusions reached in the previous Section, the Panel need not evaluate bad faith registration and use of the disputed domain name. However, for the sake of completeness, the Panel notes that similarly to the above Section, the Complainant has failed to demonstrate the Respondent’s bad faith.
For the foregoing reasons, the Complaint is denied.
Fabrizio Bedarida
Sole Panelist
Date: December 28, 2015
1 As stated by the panel in The Franchise Group v. Jay Bean, WIPO Case No. D2007-1438: “Panels frequently reference the Wayback Machine in order to determine how a domain name has been used in the past. Karl’s Sales and Service Company, LLC v. LaPorte Holdings, Inc., WIPO Case No. D2004-0929; National Football League v. Thomas Trainer, WIPO Case No. D2006-1440; La Francaise des Jeux v. Domain Drop S.A., WIPO Case No. D2007-1157. More properly known as the Internet Archive, the Wayback Machine is a non-profit organization that constructs a library of web pages that have appeared on the Internet over time. It maintains these historical web pages in an archive which is accessible to the public. To research a particular domain name, one simply goes to “www.archive.org” and enters the domain name that one is researching in the Wayback Machine browser.”