The Complainant is Tipico Co. Ltd., Malta, represented by Boehmert & Boehmert, Germany.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”).
The disputed domain name <atypiko.com> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2020. On February 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 28, 2020, 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 of the Complaint, and the proceedings commenced on March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2020.
The Center appointed John Swinson as the sole panelist in this matter on April 8, 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 in the sports betting in the German market and also has branches in Austria, Colombia, Croatia, Gibraltar, 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 a privacy server, Super Privacy Service LTD. The Disputed Domain Name was registered on November 30, 2019. The Complainant submits that, depending upon the device used, the Disputed Domain Name resolves to a website promoting links to pornographic content or to betting services not connected to the Complainant.
The Complainant makes the following submission
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.
The Disputed Domain Name consists of the term “atypiko”, which is very similar to the Complainant’s TIPICO trademark, in particular from a phonetic perspective. The Disputed Domain Name sounds and looks very similar to the Trade Mark.
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 any of its trade marks 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 and competing betting services under the Disputed Domain Name.
The Respondent is trying to take advantage of the Complainant’s reputation. It is clear that the Respondent knew of the Complainant’s Trade Mark when registering the Disputed Domain Name. The Respondent is trading off the reputation of the Complainant’s Trade Mark as the Disputed Domain Name is confusingly similar to the Trade Mark, which has no generic or descriptive meaning.
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 to the Complainant. It is clear that the Respondent has registered the Disputed Domain Name to take advantage of the Complainant.
It is also evident from the Respondent’s use of the Disputed Domain Name that the Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users / relevant consumers to the website by creating a likelihood of confusion with the Complainant’s TIPICO trade mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website, which constitutes bad faith registration and use.
In addition, UDRP panels in the past have confirmed that intentional tarnishment of a trademark by linking pornographic images or wholly inappropriate information to an unrelated trademark, in itself shows bad faith on behalf of a respondent.
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 is a misspelling of the Trade Mark, as it has a “k” instead of a “c”, a “y” in place of the first “i”, and the addition of “a” at the beginning.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark and that this is case of typosquatting. 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 betting 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 and betting 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.
The Panel finds that the Disputed Domain Name was registered in bad faith.
The Respondent is using the Disputed Domain Name to promote pornography and betting services. 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 (see section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).
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, <atypiko.com>, be transferred to the Complainant.
John Swinson
Sole Panelist
Date: April 21, 2020