The Complainant is Paddy Power Plc of Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Petrin Milenco Daniel of Timisoara, Romania.
The disputed domain name <paddypower.ro> is registered with ROTLD.
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2017. On December 11, 2017, the Center transmitted by email to ROTLD a request for verification in connection with the disputed domain name. On December 12, 2017, ROTLD 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 10, 2018.
The Complaint was submitted in English. The language of the Registration Agreement for the disputed domain name is Romanian. On January 10, 2018, the Center sent a communication in both Romanian and English to the Parties regarding the language of the proceedings. On January 10, 2018, the Complainant submitted a request for English to be the language of proceeding. The Respondent sent an email communication in English language to the Center on January 12, 2018, but did not comment on 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 Romanian of the Complaint, and the proceedings commenced on January 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2018. The Respondent sent email communications to the Center on January 16, and 26, 2018. The Respondent did not submit a formal Response and the Center notified the Parties that it would proceed with the panel appointment on February 21, 2018. The Center received a further email communication from the Respondent on February 21, 2018.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on March 1, 2018. 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 Center received an email communication from the Respondent on March 1, 2018.
The Complainant requested in the Complaint that the language of the proceedings to be in English pursuant to paragraph 11 of UDRP Rules, grounding its request on the following reasons:
- the Respondent has a working knowledge of English as the disputed domain name which was registered by the Respondent is composed of the English word “power” the term “paddy” which is an ethnic slur for defining an Irish man.
- the Respondent exchanged with the Complainant via email in English language only, which indicates that the Respondent is competent enough in English;
- the commission of a translator would add unnecessary cost to the Complainant, who already bears the cost of filing and will cause a delay in commencement of proceedings;
- such action (the commission of a translator) is contrary to the drafters of the Policy intentions to provide a cost-effective and expedited resolution process;
Following the ROTLD’s confirmation as to the language of the Registration Agreement being Romanian and the submission by of the Complaint in a language other than that of the Registration Agreement, the Center notified both Parties (in English and Romanian) of the discrepancy between the language of the Registration Agreement and the language of the Complaint. Following such notification, it was only the Complainant who replied on January 10, 2018, requesting that the proceedings to be in English Language.
According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1., and pursuant to paragraph 11 of the Rules, unless otherwise agreed by the Parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the Panel to determine otherwise.
In noting the aim of conducting the proceedings with due expedition, paragraph 10 of the Rules vests the Panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the Parties are treated with equality, and that each Party is given a fair opportunity to present its case.
Considering firstly, that the Respondent in this case was given the opportunity to comment on or to oppose (if it wishes, in the language of the Registration Agreement) to the Complainant’s arguments – who requested to have these proceedings in English language − but did not present any submission in this regard, secondly, the likelihood that the Respondent is competent in English (the Panel notes that the Respondent sent all its communications to the Complainant and the Center in English) and last, the practice of previous UDRP panels as per General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334; and Gergonne SAS v. Private Person / Dacinoi Flaviu-Constantin, WIPO Case No. DRO2017-0008, the Panel decides with the view to the Complainant’s arguments and previous UDRP decisions that English is the language of these proceedings.
The Complainant’s company was founded in 1988 by three former Irish bookmakers. The Complainant currently owns over 600 betting shops in the United Kingdom and Ireland, and employs over 7,000 people in 16 locations worldwide. In 2000, the Complainant launched its first official website at “www.paddypower.com”. Following this, the Complainant increased its online presence through the registration and use of additional domain names and websites, such as “www.paddypowergames.com”, and “www.paddypowercasino.com” in 2004, “www.paddypowerpoker.com” in 2005 and “www.paddypowerbingo.com” in 2006. In 2010, the Complainant became the first online bookmaker to possess a gambling application in the App Store. In 2016, revenue for the Complainant’s online division increased by 14 percent to GBP 853 million. For the financial year 2016, the Complainant had a total net revenue of GBP 1,551 million and Complainant expanded by acquiring Betfair Group Plc.
The Complainant has acquired widespread consumer goodwill by virtue of more than 25 years of widespread use, for the brand PADDY POWER. As part of their efforts to protect their intellectual property, the Complainant, its affiliates, subsidiaries and associated companies have acquired trademarks for the brand PADDY POWER since 2001, and have been conducting business under this brand for 28 years. For instance, the Complainant is the owner of the European Union Trade Mark No. 001601624 PADDY POWER, registered on November 13, 2001.
As mentioned above, the Complainant also uses its trademark PADDY POWER as part of its company logo to distinguish its services from its competitors and has acquired a significant amount of goodwill and recognition globally. The Complainant registered the domain name for its official website “www.paddypower.com” on July 20, 1998 and has had a strong presence on the web since 2000. The website enables Internet users to bet online directly through the webpage.
The Respondent is a Romanian individual, apparently located in Ireland, who registered the disputed domain name on April 22, 2007. Prior to the filing of the Complaint, the disputed domain name resolved to a website offering the disputed domain name for sale for EUR 5 million. There is currently not active website at the disputed domain name.
The Complainant contends that:
- the Complainant has obtained two trademarks for PADDY POWER, which are protected in several jurisdictions;
- the Complainant relies on the goodwill and reputation they have built over the years, and that the term “paddy power” has now acquired secondary meaning in relation to the Complainant’s goods and services;
- the Complainant has been trading under the PADDY POWER mark for over 25 years;
- the disputed domain name is identical to the PADDY POWER trademark, as it incorporates the Complainant’s trademark in its entirety without any adornment;
- the Respondent has no rights or legitimate interests in respect of the domain name as the Respondent has not registered any trademark for the term “paddy power” and therefore, does not hold any rights or legitimate interests in the disputed domain name and Respondent was not commonly known by the disputed domain name. Prior to the cease and desist letter sent by the Complainant’s representative to the Respondent on November 15, 2017, the website at the disputed domain name was active and advertised that the disputed domain name was for sale for the sum of EUR 5 million. The Respondent was not using and intending to use the disputed domain name in connection with a bona fide offering of goods and services, as their primary intention was to sell the disputed domain name, with its trademark value in mind;
- the Respondent was not commonly known by the disputed domain name;
- the Respondent has never been given permission to use the Complainant’s trademark for registering the disputed domain name, or for any other use;
- the Respondent intended to make a commercial gain from the disputed domain name;
- the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the domain name;
- the disputed domain name was registered and is being used in bad faith. Because the PADDY POWER European Union Trade Mark predates the registration of the disputed domain name by six years and the PADDY POWER trademark has acquired recognition in several jurisdictions by way of widespread use for over 25 years, it seems likely that the Respondent had knowledge of the Complainant’s brand at the time of registration of the disputed domain name;
- the Respondent abusively registered the disputed domain name to solely attract Internet traffic on the value of the Complainant’s trademark;
- the Respondent used the disputed domain name in bad faith. Prior to the cease and desist letter, the Respondent advertised the disputed domain name for sale on its webpage. The Respondent’s asking price for was EUR 5 million. However, as soon as the Respondent was made aware of the Complainant’s rights for PADDY POWER, the Respondent removed the content of the website. The Respondent’s modification of the at-issue website after receiving a cease and desist letter tends to show the Respondent’s bad faith registration and use of the disputed domain name;
- the Respondent is now passively holding the disputed domain name, which also constitutes bad faith.
The Respondent did not formally reply to the Complainant’s contentions. The Panel notes that the Respondent sent an email to the Center and the Complainant on January 12, 2018, with the following content: “Sorry guys , i am away in a long trip abroad, travel the world for 1 year at least and can’t help you with your isue, Regards”. In addition, the Panel notes that the Center received several communications from the Respondent on January 16 and 26, 2018, as well as on February 21, 2018, and on March 1, 2018, with apparently an automatic message (“Out of my home travel for some time , thanks , call my phone”).
According to the Policy the Complainant has to show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Based on the contentions of the Complainant and the evidence presented supporting these contentions, the Panel finds that the Complainant holds rights in the PADDY POWER trademarks.
This Panel also finds that the disputed domain name is identical to the Complainant’s registered PADDY POWER marks because it fully incorporates the trademarks and merely adds the country code Top-Level Domain (“ccTLD”) “.ro”, which is typically disregarded under the first element analysis.
For all the reasons above, the Panel finds that the disputed domain name is identical to the PADDY POWER marks and that the Complainant has established the first element of paragraph 4(a) of the Policy.
Under this element of the Policy, the Complainant has to make at least a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, as indicated in the WIPO Overview 3.0, section 2.1.
This Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent.
The Panel is persuaded by the Complainant’s assertions that the Respondent is not commonly known by the name “Paddy Power” and does not own a trademark with the term, there is no link or no affiliation between the Respondent and the Complainant neither has the Respondent been known as “Paddy Power” in the past.
The Panel acknowledges that the disputed domain name does not currently resolve to an active website while, prior to the cease and desist letter sent by the Complainant’s representative to the Respondent on November 15, 2017, the website under the disputed domain name was active and advertised that the disputed domain name was for sale for the sum of EUR 5 million. Such actions or inactions do not, in the Panel’s view, amount to a bona fide commercial use. The fact that the disputed domain name was advertised for sale to the general public on its webpage, and subsequently changed as a result of receiving the Complainant’s cease and desist letter, shows that the Respondent was not using and intending to use the disputed domain name in connection with a bona fide offering of goods and services, as his primary intention appears to have been to profit from the sale of the disputed domain name to the Complainant.
Accordingly, this Panel finds that the Complainant has demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and therefore, the second element of paragraph 4(a) of the Policy is established.
The Panel agrees with the Complainant that the Respondent has registered and is using the disputed domain name in bad faith.
From the evidences brought by the Complainant, the Panel infers that the Respondent had knowledge of the Complainant’s brand at the time of registration of the domain name. The PADDY POWER European Union Trade Mark predates the registration of the disputed domain name by six years and the PADDY POWER trademark has acquired recognition in several jurisdictions by way of widespread use for over 25 years.
Moreover, the advertisement of the disputed domain name for a price of 5 EUR million, prior to the cease and desist letter, is also an indication of bad faith registration and use of the disputed domain name. The Respondent’s modification of the website resolving to the disputed domain name after receiving a cease and desist letter tends to show Respondent’s further bad faith registration and use of the domain name. In the circumstances, the Panel considers that the Respondent registered the disputed domain name with the intention to sell it to the Complainant for profit. Such conduct falls squarely within the language of paragraph 4(b)(i) of the Policy. The Panel finds that the third element of paragraph 4(a) of the Policy has been established by the Complainant according to the requirements of paragraph 4(b)(i) of the Policy. Moreover the passive holding of the disputed domain name (see Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055), post the cease and desist letter of the Complainant together with the lack of rebuttal by the Respondent of the Complainant’s allegations is a supplementary indication as to the establishment of the third element of 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 name <paddypower.ro> be transferred to the Complainant.
Beatrice Onica Jarka
Sole Panelist
Date: March 15, 2018