The Complainant is Tipico Co. Ltd., Malta, represented by Boehmert & Boehmert, Germany.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Rupert Goldman, United States.
The disputed domain name <tipicousa.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 14, 2020, 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 February 18, 2020, 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 February 20, 2020.
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 proceedings commenced on February 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2020.
The Center appointed John Swinson as the sole panelist in this matter on March 30, 2020. 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 Tipico Co. Ltd, a company incorporated in Malta. According to the Complaint, the Complainant is an international provider of sports betting services and casino games, headquartered in St Julian’s, Malta.
The Complainant is licensed by the Malta Gaming Authority (MGA) of Malta to conduct betting businesses and other broker activities. According to the Complainant, the Complainant is a market leader of sports betting in the German market and also has branches in Austria, Croatia, Gibraltar, Colombia, and Malta.
The Complainant is the owner of a number of registered trade marks including European Union Trade Mark number 003939998 for TIPICO, registered on September 23, 2005 (“Trade Mark”).
The Respondent is Rupert Goldman, who is making use of a privacy service. No response was received by the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on December 16, 2019. The Complainant submits that the Disputed Domain Name resolves to a website promoting pornographic content.
The Complainant makes the following submissions.
The Complainant is the registered owner of trade marks in numerous jurisdictions. The Disputed Domain Name is confusingly similar to the Complainant’s Trade Mark.
It is well established that the addition of generic, descriptive or geographical wording to a domain name is normally insufficient to avoid a finding of confusing similarity. The addition of “usa” does not prevent a finding of confusing similarity.
The Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use its Trade Mark or to register the Disputed Domain Name incorporating the Trade Mark.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent’s actions show clear intent to obtain unfair commercial gain, with a view to misleadingly divert consumers or to tarnish the Trade Mark owned by the Complainant.
A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue only if certain requirements are met (as set out in Oki Data Americas Inc v ASD Inc., WIPO Case No. D2001-0903 (“Oki Data Case”)). The Respondent has not met the requirements of the test set out in the Oki Data Case, as the Respondent is not offering the Complainant’s betting services but is promoting pornographic content under the Disputed Domain Name.
The Respondent is trying to take advantage of the Complainant’s reputation. The mark TIPICO has no descriptive meaning, and therefore any ignorance by the Respondent of the Complainant would have to be considered willful blindness.
It is also implausible that the Respondent had registered the Disputed Domain Name without discovering that the domain names <tipico.com>and <tipico.de>were registered by the Complainant. It is clear that the Respondent has registered the Disputed Domain Name to take advantage of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 onus of proving these elements is on the Complainant even though the Respondent failed to submit a response.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the geographical term “usa”. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0). In this case the term “usa” does not prevent a finding of confusing similarity.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent is using the website at the Disputed Domain Name to promote pornography services and presumably is deriving profit from doing so.
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a website which promotes pornography services using the Complainant’s Trade Mark. In the circumstances, this is not bona fide.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered in 2019. This is 14 years after the Complainant registered the Trade Mark. The Panel accepts that the Complainant has developed a reputation in the Trade Mark and is known for the services it provides.
Given that the Disputed Domain Name is identical to the Trade Mark other than the addition of the term “usa”, the Panel can reasonably infer that the Respondent knew of the Complainant’s Trade Mark at the time it registered the Disputed Domain Name.
The Panel finds that the Disputed Domain Name was registered in bad faith.
The Respondent is using the Disputed Domain Name to promote pornography. Given the use that the Respondent is making of the Disputed Domain Name, the Panel finds that the Respondent registered and is using the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the website. The Respondent is using the Trade Mark in the Disputed Domain Name to trade off the Complainant’s reputation, and to misleadingly divert Internet users to their own website.
The use of a privacy service is further evidence of bad faith in these circumstances (see section 3.6 of the WIPO Overview 3.0).
In light of the above, the Panel finds that the Complainant has succeeded on the third element 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 Name <tipicousa.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: April 13, 2020