WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Phumelela Gaming & Leisure Limited v. Pham Dinh Nhut

Case No. D2019-1972

1. The Parties

The Complainant is Phumelela Gaming & Leisure Limited, South Africa, represented by Moore Attorneys Incorporated, South Africa.

The Respondent is Pham Dinh Nhut, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <soccer6.com> (“Disputed Domain Name”) is registered with April Sea Information Technology Corporation (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 13, 2019. On August 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing 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 August 27, 2019, 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 August 29, 2019.

The Center sent an email communication to the Parties in English and Vietnamese on August 27, 2019, regarding the language of the proceeding, as the Complaint had been submitted in English and the language of the Registration Agreement for the Disputed Domain Name is Vietnamese. The Complainant submitted a request for English to be the language of the proceeding on August 29, 2019. The Respondent did not submit any communication regarding the language of the proceeding.

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 in English and Vietnamese of the Complaint, and the proceedings commenced on September 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2019.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on October 4, 2019. 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, Phumelela Gaming & Leisure Limited, is a South Africa-based company, which was founded in 1997. The Complainant is a worldwide operator of horseracing, tote betting on sport, and soccer bets.

The trademark SOCCER 6 has been used by the Complainant since 2003, and it has an active presence on various social media platforms, including a 19,000-follower Facebook page and a 3,600-follower Twitter profile. This trademark has been registered under South African Trademark Registration Nos. 2012/23140, 2012/23141, and the European Union Trademark Registration No. 003035003, among others.

In addition, the Complainant owns a number of domain names featuring the trademark SOCCER 6, among which a notable one is <soccer6.co.za> that was registered in 2003.

The Disputed Domain Name <soccer6.com> was registered on May 15, 2004. As of the date of this Decision, the Disputed Domain Name is resolving to a parked page containing sponsored links to various third party’s soccer-related contents.

The Complainant sent a cease and desist letter to the Respondent on February 21, 2019, requesting for a transfer of the Disputed Domain Name. However, the Respondent did not respond to the cease and desist letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.

Firstly, the Complainant contends that the Complainant has exclusive rights in the well-known SOCCER 6 trademark in South Africa and throughout the world in connection with the gambling and sport betting services.

Second, the Complainant contends that the Disputed Domain Name is confusingly similar to the mark owned by the Complainant since the Disputed Domain Name reproduces entirely the trademark SOCCER 6, and the addition of the generic Top-Level Domain (“gTLD”) “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

Firstly, the Disputed Domain Name was registered on May 15, 2004, after the Complainant’s domain name <soccer6.co.za> was registered on February 11, 2003.

Secondly, the Respondent is not commonly known by the Disputed Domain Name <soccer6.com>, in any way affiliated with the Complainant, nor authorized or licensed to use the trademark SOCCER 6, or to seek registration of any domain name incorporating said mark.

Additionally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name due to the Respondent’s intention for commercial gain through the monetized parked page containing sponsored links to soccer-related contents, which interferes with the business of the Complainant and confuses members of the public into believing that the Disputed Domain Name belongs to the Complainant, when it does not.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant submits that the Disputed Domain Name amounts to an abusive registration by the Respondent. The purpose of registering the Disputed Domain Name is to confuse members of the public by making them believe that the Disputed Domain Name is that of the Complainant and to generate advertisement revenue as a result of the goodwill and reputation inhering in the Complainant’s SOCCER 6 trademark.

The Complainant contends that the Disputed Domain Name was registered in order to prevent the Complainant from reflecting the trademark SOCCER 6 in a corresponding domain name and to interfere with the business of the Complainant as well as the Complainant’s online presence.

By the registration and use of the Disputed Domain Name, the Respondent intentionally attempts to attract Internet users to its 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 the location of a product or service on the Respondent’s website.

Finally, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely‐known trademark by an unaffiliated entity can itself be a presumption of bad faith.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Procedural Issues

(i) Respondent’s identity

The Panel notes that the present case involves privacy registration services. At the time the Complaint was filed on August 13, 2019, the Respondent was identified as “Vietnam Domain Privacy Services”. On August 23, 2019, the Registrar revealed the underlying registrant “Pham Dinh Nhut”. The Center sent an email communication to the Complainant on August 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On August 29, 2019, the Complainant filed an Amended Complaint, replacing the privacy service named in the initial Complaint with the underlying registrant.

Therefore, in accordance with section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel determines the identity of the Respondent in this case is the disclosed underlying registrant, Pham Dinh Nhut, as named in the Amended Complaint filed on August 29, 2019.

(ii) Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.

On August 29, 2019, the Complainant submitted a request that English be the language of the proceeding. The Respondent submitted neither request nor comment on the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors (See, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the case at hand, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the fact that the Complainant, a South African business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;

(ii) English is a common language in global business and quite popular in Viet Nam, where the Respondent is located, and it is also evidenced to the Panel that the website under the Disputed Domain Name contain English contents; these suggest that the Respondent has knowledge of the English language and be able to communicate in English; and

(iii) the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.

Pursuant to paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

(iii) Delay in bringing the Complaint

The Panel finds that the Disputed Domain Name was registered on May 15, 2004, but the Complaint was not filed with the Center until August 13, 2019. In considering this delay of 15 years in challenging the Respondent’s registration of the Disputed Domain Name, the Panel is of the same view as UDRP decisions mentioned in section 4.17 of the WIPO Overview 3.0 that “[p]anels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits”. However, similar to a previous decision, the Panel has taken into account this delay when considering the second and third element requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent registered and used the Disputed Domain Name in bad faith (see, e.g., CeltonManx Limited v. Pham Dinh Nhut, WIPO Case No. D2014-0109).

(iv) The Respondent’s Failure to Respond

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SOCCER 6. In addition, it is evidenced that the Complainant has a wide use of its trademark for gambling and sport betting worldwide.

Second, the Disputed Domain Name comprises the Complainant’s SOCCER 6 mark in its entirety, in which the Complainant has exclusive rights. The Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not prevent a finding of confusing similarity (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's SOCCER 6 trademark, and the first element under paragraph 4(a) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.

The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Names (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted with evidence to the contrary.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission, or authorization of any kind to use the Complainant's trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the Disputed Domain Name which comprises the SOCCER 6 trademark.

Further, the Complainant has submitted relevant evidence showing that the Disputed Domain Name resolves to parked page with pay-per-click (“PPC”) links that redirect Internet users to other online locations. In this regard, section 2.9 of the WIPO Overview 3.0 holds that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.

In this present case, the Panel finds that the PPC links in question are referring to, among others, services that are competing with the Complainant. So, in light of the above view and similar to a number of well-established prior UDRP decisions, the Panel upholds that operating PPC parking pages using a unique trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, would not establish bona fide offering of goods or services (see, e.g., Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302; and Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363).

Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. Further, there is also no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name. Therefore, it is not evidenced that the Respondent is identified by “soccer 6” or that it has any right in it.

Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

“(i) circumstances indicating that you have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of registration and use of a domain name in bad faith.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s SOCCER 6 trademark has been used in commerce since 2003 and before the registration of the Disputed Domain Name. Besides functioning as a trademark, SOCCER 6 is also being used in the Complainant’s domain name <soccer6.co.za> that was registered in 2003.

The Disputed Domain Name comprises the SOCCER 6 trademark in its entirety. Given the use of the SOCCER 6 trademark by the Complainant since 2003, which occurs in many countries, on the balance of probabilities, in this Panel’s view, it is very unlikely that the Respondent registered the unique Disputed Domain Name, which is not merely a dictionary term, but includes a “6” thereby rendering it an open question why the Respondent registered the Disputed Domain Name which is an exact reproduction of the Complainant’s mark, in a fortuity. Also, in consideration of the use of the Disputed Domain Name for advertising PPC links, the Panel finds that the Respondent most likely knew the Complainant and its SOCCER 6 trademark when it registered the Disputed Domain Name, and the Panel considers the registration by the Respondent was an attempt to take advantage of the Complainant’s goodwill.

It is further to be noted that the Respondent used a privacy service provider to hide its identity. In this regards, the Panel is of the opinion that the above-mentioned Respondent’s use of a privacy service, which appears to be an intentional attempt to delay the disclosure of the identity of the actual underlying registrant, constitutes a factor indicating bad faith in these circumstances (see section 3.6 of the WIPO Overview 3.0).

On the date of this Decision, the Panel accesses the Disputed Domain Name and finds it still resolves to a parking page comprising PPC links. The Panel is of the view that such use of a domain name provides evidence of bad faith of the Respondent, as was found in previous UDRP decisions (see, e.g., Fontem Holdings 4, B.V. v. J- B-, Limestar Inc., WIPO Case No. D2016-0344; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302).

With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead Internet users and confuse them by making them believe that the parking page, and even the PPC links, are associated, fostered, endorsed, or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

In addition, the Panel finds that the Respondent, Pham Dinh Nhut, over the period of five years between 2014 and 2019, was involved in more than 20 UDRP disputes, of which the note-worthy are: Kurt Geiger Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No. D2017-0364; Moelis & Company Group LP v. Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No. D2016-2554; Herald & Weekly Times Pty Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No. D2016-1162; Dollar Bank, Federal Savings Bank v. Pham Dinh Nhut, WIPO Case No. D2016-0787; and Arnold Clark Automobiles Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No. D2016-0562.

All of the above cases are similar in terms of the Respondent’s pattern of conduct, where it registers domain names identical or confusingly similar to another entity’s trademarks, as found by previous UDRP panels, and uses privacy services to shield its identity. The above UDRP disputes all resulted in transfers to their respective complainants. The Panel finds this pattern of conduct is clearly a further indication of bad faith.

Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a) of the Policy is established.

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 Name <soccer6.com>, be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: October 18, 2019