WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BET and WIN Interactive Entertainment AG v. Jonas Lindstedt
Case No. D2003-0695
1. The Parties
The Complainant is BET and WIN Interactive Entertainment AG, a corporation organised under the laws of Austria, having its principal place of business in Vienna, Austria ("Complainant"). Complainantís authorized representatives are Brandl & Talos, attorneys at law, of Vienna, Austria.
The Respondent is Jonas Lindstedt, an individual, , Eldsberga, Sweden ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <betandwincasino.com> ("the Domain Name"). The registrar is Register.com ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2003. On September 4, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On September 5, 2003, 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 for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 9, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 2, 2003.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on October 9, 2003. 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 following facts are stated by Complainant and supported by annexes to the Complaint, or can be verified on the Internet.
The object of Complainantís business is to provide online casinos, online gaming and online betting to customers. Complainant runs a number of websites, one of which is "www.betandwin.com".
On February 15, 2000, Complainant applied for a trademark in Austria for a device, consisting of the domain name <betandwin.com>, reproduced in white letters, of which the parts "bet", "win", and "." are written in bold letters, partly underlined by a yellow line, against a black background. This trademark was registered in Austria on July 28, 2000. The Complainant has, on the basis of this registration, applied for an international trademark, which has been registered by the WIPO. The trademark has been registered for, amongst others, entertainment (in particular sports bets) and Internet services.
Respondent registered the Domain Name on August 20, 2002. The Domain Name currently generates a "coming soon" message which is apparently being automatically generated by the Registrar.
5. Partiesí Contentions
- The website "www.betandwin.com" is one of the worldís best known websites in the market of online gaming. The Complainant, who also operates the websites "www.triple-a-casino.com" and "www.balls-of-fire.com", is a successful international enterprise with an outstanding reputation and has more than 390.000 customers and an annual net revenue of approximately USD 160.000.000.
- The Domain Name is confusingly similar to the trademark. Due to the fact that Complainant provides online casinos, the additional term "casino" lets customers think that the Domain Name points to Complainantís existing casino branch. This creates a likelihood of confusion and disrupts Complainantís business.
- Respondent has no rights or legitimate interest in the Domain Name, as he does not offer any services or goods corresponding to the Domain Name. Furthermore, he is not commonly known under the Domain Name and has no trademark rights in the Domain Name.
- Respondent registered the Domain Name in bad faith. When the Domain Name was registered, Complainant and its business were already well known in Europe, as the trademark had already been registered in several countries, including Respondentís home country Sweden. The only reason for acquiring domain names which contain the words "bet", "casino", and "win", would be to use them in connection with a gaming or betting business. However, Respondent has never been involved in the online gaming industry. The Domain Name was primarily registered for the purpose of selling or renting the Domain Name to Complainant. Respondent has not yet developed any website. This commonly indicates bad faith use. Respondent obviously waits for a payment to be offered by Complainant in order to transfer the Domain Name. In an e-mail dated December 11, 2002, Respondent wrote "that he is not unreasonable and willing to negotiate a solution". Such behaviour is strong evidence that Respondent has acquired the Domain Name primarily for the purpose of selling it to Complainant for valuable consideration.
The Respondent submitted a Response on October 21, 2003, therefore the day that this decision is due. As this is well outside the 20-day period within which a response should be submitted in accordance with article 5(a) of the Rules and since no request was received from Respondent for an extension of that period, as provided in article 5(d) of the Rules, the Panel has disregarded the Response.
6. Due Process
Where, as in this case, Respondent does not submit a response in time, the rules of due process require the Panel to verify, to the extent possible, that Respondent was aware of the present proceedings and the applicable deadline. The Panel is satisfied, on the basis of the file documentation, that this is the case. The Notification of Complaint and Commencement of Administrative Proceeding was sent by courier to the address listed in the Registrarís WHOIS details, and by e-mail to the e-mail address mentioned under these contact details as required by the relevant UDRP Rules.
7. Discussion and Findings
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following elements:
(i) that the domain name in issue is identical or confusingly similar to a trademark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
As the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient on all points to support such a decision. The absence of a response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.
The Panel shall deal with each element in turn.
A. Confusingly Similar to a Trademark
Complainant has shown that it holds, and at the time of registration of the Domain Name already held, an Austrian and an international trademark registration for a device (logo), of which the dominant part consists of the (stylized reproduction of) the domain name <betandwin.com>. The Panel considers the Domain Name <betandwincasino.com> to be visually, aurally and conceptually similar to the domain name <betandwin.com>, the dominant part of this mark, and therefore similar to the mark.
For completenessí sake, the Panel notes that Complainantís contention that it had, at the time that Respondent registered the Domain Name, already registered the trademark in Respondentís home country Sweden, is not supported by the facts. The annexes of the Complaint show that the Swedish authorities refused to register the international trademark (based on the Austrian trademark) on October 26, 2001. Nonetheless, this circumstance does not preclude the conclusion that the Domain Name is similar to a trademark in which Complainant holds rights; the UDRP does not require that Complainant holds trademark rights in Respondentís home country.
In light of its findings under Sections B. and C. below, the Panel will not address to what extent the similarity is confusing. However, the Panel finds useful to observe that the trademark per se must be considered, at best, only weakly distinctive, as the dominant part of the trademark (the phrase "bet and win") is highly descriptive of the services it has been registered for (particularly: performance of sports bets). The phrase "bet and win" is used, as a brief search on the internet shows, on several websites of third parties as a catch phrase, inviting the public to place bets.
The EC Court of Justice has clearly ruled that the more distinctive the earlier mark is, the greater will be the likelihood of confusion and, contrarily, the weaker the distinctive character is, the less likely it is that there will be confusion (EC Court of Justice November 11, 1997, Case C-251/95, Sabel vs. Puma, paragraph 24, and EC Court of Justice, September 29, 1998, Case C-39/97, Canon vs. MGM, paragraph 18). These rules are relevant in this case, as Complainant and Respondent both reside in the European Union and the European Trademark Directive (Directive 89/104 of December 21, 1988) should therefore be considered relevant.
The Panel notes that an initially weakly distinctive mark can become a highly distinctive mark because of the reputation it acquires on the market (cf. Canon v. MGM, paragraph 18). Complainant, however, has failed to provide evidence of such an acquired distinctive character or secondary meaning. Although Complainant has stated that its website "www.betandwin.com" is one of the worldís best known websites in the market of online gaming, it has not provided any evidence thereof. Furthermore, Complainant has stated that its enterprise (which apparently also includes other websites and possibly non-internet gambling and betting activities) has more than 390.000 customers and an annual net revenue of approximately USD 160.000.000, but once again it has failed to provide evidence thereof, and it has not made clear to what extent these customers and these revenues relate to its activities on the website "www.betandwin.com". To assess to what extent a trademark has acquired a (highly) distinctive character, the EC Court of Justice has ruled (EC Court of Justice May 4, 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee vs. Huber and Attenberger, paragraph 51) that the following may be taken into account: (1) the market share held by the mark; (2) how intensive, geographically widespread and longstanding the use of the mark has been; (3) the amount invested by the undertaking in promoting the mark; (4) the proportion of the relevant class of persons who, because of the mark, identify goods or services as originating from a particular undertaking; and (5) statements from chambers of commerce and industry or other trade and professional associations. Again, no evidence of this kind has been produced by Complainant. The Panel therefore concludes that no evidence has been submitted that the trademark has acquired a (highly) distinctive character.
B. No Rights or Legitimate Interests
Complainant has supported his contention that Respondent has no rights or legitimate interest in the Domain Name by stating that Respondent does not use the Domain Name to offer any services or goods corresponding to the Domain Name and that he is not commonly known under the Domain Name and has no trademark or service rights thereof. These circumstances are not sufficient to show that Respondent does not have a right or legitimate interest in the Domain Name. The mere fact that a domain name is not (yet) used to offer goods or services and the fact that Respondent is not (yet) commonly known under the Domain Name, do not, by themselves, demonstrate a lack of rights or legitimate interests in that domain name. The descriptive nature of the Domain Name <betandwincasino.com> and the lack of distinctiveness of the Complainantís trademark makes the fact that Respondent has no trademark rights in that name irrelevant.
C. Registered and Used in Bad Faith
Complainant has stated that when Respondent registered the Domain Name, Complainant and its business were already well known in Europe. As pointed out above under 7.A., Complainant has failed to provide any evidence of the reputation of its trademark and its website "www.betandwin.com". Without such evidence, the Panel has no compelling reason to assume that Respondent was aware of Complainant and its business when he registered the Domain Name and that, more particularly, Respondent registered the Domain Name for the purpose of selling or renting it to Complainant. The fact that Respondent has never been involved in the online gaming industry also does not necessarily mean that the Domain Name was only registered for the purpose of selling or renting it to Complainant. Complainantís contention that a situation where a respondent has not developed any sites in connection with the domain name in issue commonly indicates bad faith use, must be dismissed. Such a circumstance can be one of the factors that justify the conclusion that a domain name is being used in bad faith, but Ė again Ė does not in itself justify such a conclusion.
The Panel also rejects Complainantís contention that Respondent is obviously waiting for a payment for valuable consideration in excess of the costs related to acquiring the Domain Name to be offered by Complainant in return for the transfer of the Domain Name. According to Complainant Respondent has written in an e-mail dated December 11, 2002, "that he is not unreasonable and willing to negotiate a solution". Leaving aside whether this phrase in itself would be sufficient evidence of the alleged behavior (and whether that would amount to bad faith registration and use of the Domain Name), Complainant has failed to submit a copy of this e-mail. Therefore, Complainant has failed to provide evidence of bad faith registration and use of the domain name by Respondent.
The Panel concludes that the evidence provided by Complainant is insufficient and that, therefore, the Complaint is denied.
Wolter Wefers Bettink
Dated: October 21, 2003