The Complainant is Newcote International Limited of Nassau, Bahamas, represented by SILKA Law AB, Sweden.
The Respondent is xushuaiwei of Kunming, Yunnan, China, self-represented.
The disputed domain names <betvicto.com>, <betvictr.com> and <betvitor.com> are registered with Ourdomains Limited (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2016. On September 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 3, 2016, 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.
On October 4, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Respondent submitted a request that Chinese be the language of the proceeding. On October 4 and October 6, 2016, the Complainant submitted a request that English be the language of the proceeding.
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 both Chinese and English of the Complaint, and the proceedings commenced on October 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2016. Two Responses were filed with the Center, one on October 24 and the other on October 28, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on November 4, 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 the parent company of BetVictor, a company providing sports betting as well as online casino and poker services to its customers in more than 160 countries, including China. The Betvictor brand was founded as early as 1946.
The Complainant is the owner of the registered trade mark BETVICTOR as a word mark in several countries worldwide including China where the Respondent resides. Among the trade mark registrations it owns are:
|
Jurisdiction / Territory |
Mark |
Registration No. |
Registration Date |
|
European Union |
BETVICTOR |
009608332 |
May 2, 2011 |
|
China |
BETVICTOR |
9133980 |
February 28, 2012 |
|
Singapore |
BETVICTOR |
T1100747B |
January 20, 2011 |
The Complainant is also the registered owner of several domain names containing the term “betvictor”, including <betvictor.com> which is used as the official website of the Betvictor brand.
The Respondent is an individual based in China.
The disputed domain names were all registered on September 2, 2014, which postdates the use and registration by the Complainant of its trade mark BETVICTOR. According to the evidence submitted by the Complainant, the disputed domain name <betvicto.com> was redirected to the website “http://ads2.williamhillcom”, presumably an online gambling website. As at the date of this decision, the disputed domain names do not resolve to any active websites.
The Complainant contends as follows:
(a) the disputed domain names all consist of various intentional misspellings of the BETVICTOR trade mark. They are confusingly similar to the trade mark BETVICTOR.
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain names. The disputed domain names were redirected to another online gambling website that is a competitor of the Complainant. This can also be verified through the online tool “www.archive.org”. For instance, on March 20, 2016 (which is the latest available scan record), the “www.archive.org” record shows that the disputed domain name <betvicto.com> redirected to http://ads2.williamhill.com/redirect.aspx?pid=182610954&bid=1487411444&lpid=1478396550”. There has been no legitimate or fair use of the disputed domain names.
(c) the disputed domain names have been registered and are being used in bad faith. They were used to attract and divert Internet users for commercial gain to a competing website by creating likelihood of confusion as to source, sponsorship, affiliation or endorsement of the said website. In the alternative, the disputed domain names have been chosen with the intent of being eventually sold for a considerable profit.
For the above reasons, the Complainant requests for the transfer of the disputed domain names.
The Respondent responds as follows:
(a) although the Complainant may have registered its trade mark BETVICTOR in China, it has not commenced use of the same in China and its website “www.betvictor.com” cannot be accessed from China. Accordingly, it cannot be said that the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights.
(b) the Respondent was making preparations to use the disputed domain names but its websites could not be launched due to interruption by spam emails received from the Complainant.
(c) the Respondent intends to use the disputed domain names to operate websites for China local news. The Respondent is not a competitor of the Complainant and its use of the disputed domain names will not cause any loss to the Complainant. The Respondent has never sought to offer the disputed domain names for sale to the Complainant at a high price. The disputed domain names do not resolve to any active websites.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules require the panel to ensure that the proceeding takes place with due expedition and that the parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Respondent is presumably a Chinese individual residing in China. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent has requested that Chinese be the language of the proceeding, claiming no knowledge of English.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are registered in Latin characters, rather than Chinese script;
(b) according to the evidence submitted by the Complainant, the disputed domain name <betvicto.com> was redirected to the website “http://ads2.williamhillcom” with content entirely in English; and
(c) the Respondent has registered several other domain names comprising Latin characters, e.g., <justhere.com>, <extremetubbe.com>, <extremmetube.com>, <totheglory.com>, <financialexpres.com>, <seeingarrangement.com>, <theweathernetork.com>, <checkmytri.com>, <tinysub.com> and <daiysteals.com>, based on a reverse WhoIs search conducted independently by the Panel using the Respondent’s email address.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
(c) the Respondent has filed two Responses in Chinese regarding the Complainant’s contentions.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint as filed in English and the two Responses as filed in Chinese along with all supporting materials, that English shall be the language of the proceeding, and that the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be cancelled or transferred:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in BETVICTOR by virtue of its use and registration of the same as a trade mark.
Each of the disputed domain names effectively incorporates the Complainant’s trade mark BETVICTOR in its entirety. The omission of a letter “r” in <betvicto.com>, “o” in <betvictr.com> and “c” in <betvitor.com> is not sufficient to distinguish the disputed domain names from the Complainant’s trade mark BETVICTOR. The disputed domain names are foreseeable typographical variants of the Complainant’s trade mark BETVICTOR and the Complainant’s domain name registration <betvictor.com>. The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name.
The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain names. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the BETVICTOR trade mark or register the disputed domain names. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “Betvictor”.
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain names.
The Panel finds the Respondent’s claim that preparations have been made to use the disputed domain names in connection with operating websites containing China local news, to be unconvincing. The Respondent’s mere allegations in this case are not enough to establish rights or legitimate interests. Contrary to the Respondent’s claim that the disputed domain names do not yet resolve to any active websites, the evidence submitted by the Complainant showed that one of the disputed domain names, namely <betvicto.com>, was redirected to the website “http://ads2.williamhillcom”, presumably another online gambling website in competition with the Complainant. The Panel further notes the Complainant’s contentions that the disputed domain names were redirected to another online gambling website that is a competitor of the Complainant. This can also be verified through the online tool “www.archive.org”. For instance, on March 20, 2016 (which is the latest available scan record), the “www.archive.org” record shows that the disputed domain name <betvicto.com> redirected to http://ads2.williamhill.com/redirect.aspx?pid=182610954&bid=1487411444&lpid=1478396550”. Using a domain name which is a misspelled trade mark to divert Internet traffic to the competitor of the trade mark owner does not constitute a bona fide offering of goods or services.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trade mark 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 names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, 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.
The Panel notes that, as of the date of this decision, the disputed domain names do not resolve to any active websites. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2.
The Complainant has submitted evidence to show that it has used the BETVICTOR trade mark in connection with online gambling services for a number of years, and that its trade mark enjoy a strong online presence. Indeed, in this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the BETVICTOR trade mark and its extensive use by the Complainant. As such, a presumption arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain names. Registration of a domain name that incorporates a complainant’s widely-known trade mark (albeit with misspelling) suggests opportunistic bad faith.
The Panel notes that the disputed domain name <betvicto.com> had been redirected to the website “http://ads2.williamhillcom”, presumably another online gambling website in competition with the Complainant. The Panel further notes the Complainant’s contentions that the disputed domain names were redirected to another online gambling website that is a competitor of the Complainant. This can also be verified through the online tool “www.archive.org”. For instance, on March 20, 2016 (which is the latest available scan record), the “www.archive.org” record shows that the disputed domain name <betvicto.com> redirected to http://ads2.williamhill.com/redirect.aspx?pid=182610954&bid=1487411444&lpid=1478396550”. In doing so, the Respondent deprives the Complainants from selling their services to prospective clients who are clearly looking for the Complainants and, at the same time, promotes services offered by competitors. The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s trade mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
The Panel further notes that the Respondent was previously involved in other UDRP proceedings for registering domain names which are misspellings of other well-known trade marks belonging to third parties, such as <casinobetway.com> (see Merryvale Limited v. xushuaiwei, Xu Shuaiwei, WIPO Case No. D2015-0124) and <zonsbank.com> (see Zions First National Bank v. Xu Shuaiwei / Domain Administrator, See PrivacyGuardian.org, WIPO Case No. D2015-1177). This is evidence that the Respondent is engaged in a pattern of cybersquatting and has registered the disputed domain names in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are applicable to the present case.
In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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 <betvicto.com>, <betvictr.com> and <betvitor.com> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: November 21, 2016