WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merryvale Limited v. reza biabangard

Case No. D2021-2691

1. The Parties

The Complainant is Merryvale Limited, Guernsey, represented by Herzog, Fox & Neeman, Israel.

The Respondent is reza biabangard, Turkey.

2. The Domain Names and Registrar

The disputed domain names <betwayfa.club>, <betwayir.club>, <betway1.club>, <betway10.club>, <betway12.club>, <betway12.xyz>, <betway123.club>, <betway2.club>, and <bet1way.club> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 23, 2021, 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 23, 2021.

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 August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2021.

The Center appointed John Swinson as the sole panelist in this matter on September 22, 2021. 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 operates an online gaming business with approximately 1.5 million active users in 2021. The Complainant commenced operations in 2006.

The Complainant holds registrations for the trademark BETWAY in numerous countries, which it uses to designate downloadable computer software programs and entertainment services related to game services, gambling and online sports betting. For example, European Union Trade Mark Registration No. 004832325 shows a registration date of January 26, 2007.

The Complainant owns numerous domain names that comprise of, or contain, the trademark BETWAY, including the domain name <betway.com>, and has from 2006 operated an active website that allows Internet users around the world to access its gaming platforms.

According to the Registrar’s records, the Respondent has an address in Turkey. The Respondent did not file a response, so little else is known about the Respondent.

The Respondent registered the disputed domain names on the following dates:

- <betwayfa.club> - June 8, 2021
- <betwayir.club> - October 7, 2020
- <betway1.club> - October 30, 2020
- <betway10.club> - March 22, 2021
- <betway12.club> - October 25, 2020
- <betway12.xyz> - October 25, 2020
- <betway123.club> - October 15, 2020
- <betway2.club> - December 4, 2020
- <bet1way.club> - November 10, 2020

All the disputed domain names resolved to the same website, which appears to be a website that takes bets and offers gambling services very similar to the Complainant’s own website. The Respondent’s website includes the Complainant’s BETWAY logo in the same design and format as appearing on the Complainant’s website. The Complainant’s website includes photographs of casino staff wearing professional uniforms. In contrast, the Respondent’s website includes images of women wearing only underwear.

5. Parties’ Contentions

A. Complainant

The Complainant filed a detailed Complaint, citing many relevant authorities. In summary, the Complainant submits as follows:

The Complainant operates a number of popular online gaming websites under the BETWAY trademark. The Complainant has a substantial reputation in the BETWAY trademark.

The Complainant owns a number of registered trademarks for BETWAY in various jurisdictions.

The disputed domain names include the Complainant’s BETWAY trademark and additional terms. These additions, of numbers, a descriptive term, a geographical term or an indistinct two letter term, do not detract from the identity or confusing similarity between the disputed domain names and the BETWAY trademark, as there is no doubt that the dominant and distinctive element of the disputed domain names is the term BETWAY.

It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of words or numbers.

The Complainant has not authorized the Respondent to use the BETWAY trademark, the Respondent is not affiliated with the Complainant, and the Respondent is not commonly known by the disputed domain name.

The Respondent has not used, or made demonstrable preparations to use, the disputed domain names or any name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. The Respondent’s use of the disputed domain names is not bona fide or legitimate.

Upon discovering the website at the disputed domain names, the Complainant discovered that the Respondent is making use of the Complainant’s BETWAY trademark and of images of West Ham United players, which is sponsored by the Betway Group, wearing BETWAY branded uniforms, as well as content associated with the Complainant. In addition, at one time, this website featured provocative images of semi-nude women wearing West Ham United’s uniforms. Recently, the Respondent removed the above-mentioned images, and replaced them by provocative images of semi-nude women, excluding the uniform, and by images of random football players. At all times, the website included the Complainant’s trademark.

It is difficult to fathom how such past and present trademark infringement by the Respondent could be interpreted as a legitimate interest or a bona fide offering of goods or services.

The Respondent clearly uses the disputed domain names to unlawfully benefit from BETWAY trademark’s reputation and to attract the Complainant’s customers, or potential customers to the Respondent’s website.

By registering the disputed domain names in a short period of time, it is beyond clear that such behavior constitutes a pattern of conduct of preventing the Complainant from reflecting its trademarks in corresponding domain names.

Arguably, the fact that the Respondent registered domain names that consist of such a well-known

trademark for online gaming and betting services, is in and of itself indicative of bad faith.

B. Respondent

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

6. Discussion and Findings

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 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 onus of proving these elements is on the Complainant.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

As set out above, the Complainant owns trademark registrations for BETWAY.

The Panel considers that the disputed domain names are confusingly similar to the Complainant’s BETWAY trademark. The disputed domain names include the Complainant’s BETWAY trademark in its entirety. In one instance, discussed in further detail below, the BETWAY trademark is divided by the numeral 1, i.e. “bet1way”.

The addition of a number, numbers, or what appears to be meaningless letters to the BETWAY trademark in the disputed domain names does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark under the Policy. Where the relevant trademark is recognizable within the disputed domain name, the addition of a number, numbers, or some additional letters at the end of the disputed domain name does not prevent a finding of confusing similarity under the first element.

Regarding the disputed domain name <bet1way.club>, a meaningless number has been inserted into the middle of the Complainant’s trademark. In the circumstances of this case, the Panel concludes that “bet1way” and BETWAY are confusingly similar, noting that the Complainant’s trademark remains recognisable in the disputed domain name despite such addition. Compare, for example, Nordstrom, Inc. and NIHC, Inc. v. Hatching Ideas, LLC, WIPO Case No. D2001-0418; and F. Hoffmann-La Roche AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Conan Corrigan, WIPO Case No. D2015-2316.

The fact that the Respondent is targeting the Complainants’ trademark (as discussed below) also affirms the Complainants’ assertion that its trademark has achieved significance as a source identifier for the purposes of the Policy.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain names.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Each disputed domain name must be considered separately.

Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

The Panel concludes that none of the circumstances listed in paragraph 4(c) apply in the present circumstances.

The Complainant asserts that the Complainant has not authorized the Respondent to use the BETWAY trademark, that the Respondent is not affiliated with the Complainant, and that the Respondent is not commonly known by the disputed domain name. The Complainant also asserts, for the reasons discussed in relation to the third element discussed below, that the Respondent’s use of the disputed domain names is not bona fide or legitimate.

As discussed below, the evidence points to the Respondent using the Complainant’s logo to confuse consumers into believing that the Respondent is, or is associated with, the Complainant. This is not bona fide use of the disputed domain names.

The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain names.

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances.

For the reasons set forth above, the Panel concludes the Respondent has no rights or any legitimate interests in the disputed domain names.

The Complainant succeeds on the second element of the Policy in relation to the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain names in bad faith.

Previous panels have found that the Complainant’s BETWAY trademark is well-known and distinctive. See, for example, Merryvale Limited v. Sg Group, WIPO Case No. D2020-3008.

It is clear that the Respondent is aware of the Complainant. The Respondent’s website offers similar services to that of the Complainant. A prior version of the Respondent’s website including photographs of players from the West Ham United Football Club. The Complainant has provided evidence that the Complainant is the principal sponsor of West Ham United Football Club in the English Premier League soccer competition. The Respondent’s website includes a BETWAY logo that is a direct copy of the Complainant’s logo.

In the present circumstances, the fact that the disputed domain name resolves to a website which, in effect, impersonates the Complainant leads the Panel to conclude the registration and use of the disputed domain name are in bad faith.

By registering and using the disputed domain name to impersonate the Complainant, it is clear that the Respondent specifically knew of and targeted the Complainant to trick the public into believing that the Respondent is the Complainant, or is affiliated with the Complainant.

In the present circumstances, use of the Complainant’s logo on the Respondent’s website is strong evidence of bad faith. See, for example, Tatts Group Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2020-2055.

See also: Fondation Bettencourt Schueller v. WhoisGuard Protected, WhoisGuard, Inc. / Web designer Web designer, WIPO Case No. D2018-2750; Bytedance Ltd. v. Registration Private, Domains By Proxy, LLC/Kemal Aydin, Kemal, WIPO Case No. D2020-3433; The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561; Graybar Services Inc. v. Graybar Elec., Grayberinc Lawrenge, WIPO Case No. D2009-1017; Gateway Fiber LLC v. Wix.com Ltd., Wix.com Ltd. / Ali Oudah, Ayadi Group, WIPO Case No. D2021-1736; Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031; Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk, WIPO Case No. D2020-2773; and L.M. Waterhouse & Co., Inc. v. Scott Myers, Intersearch Global, WIPO Case No. D2021-0962.

The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy.

Additionally, paragraph 4(b)(ii) of the Policy applies here. The Respondent registered seven out of the nine disputed domain names during the same period of two months, and continues to register additional domain names, all of which include the BETWAY trademark. This constitutes a pattern of conduct of preventing the Complainant from reflecting its trademark in corresponding domain names.

Thus, for the above reasons, the Panel concludes that the registration and use of the disputed domain names was in bad faith.

The Complainant succeeds on the third element of the Policy in relation to the disputed domain names.

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 names <betwayfa.club>, <betwayir.club>, <betway1.club>, <betway10.club>, <betway12.club>, <betway12.xyz>, <betway123.club>, <betway2.club>, and <bet1way.club> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: October 6, 2021