The Complainant is Globet International Sports Betting Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Jeffrey Green Russell Solicitors of London, United Kingdom.
The Respondent is AltMed Limited of Belize, Panama.
The disputed domain name <superglobet.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2008 by email and on December 9, 2008 by hardcopy. On December 4, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 4, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 12, 2008. 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” 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 12, 2009. An email communication was submitted to the Center on January 23, 2009 through the email address listed as the administrative contact of the disputed domain name.
The Center appointed Brigitte Joppich as the sole panelist in this matter on February 18, 2009. 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 paragraph 7 of the Rules.
The Complainant is doing business in the field of online betting and is the owner of United Kingdom trademark registration no. 2068509 GLOBET with priority of April 11, 1996 and Community trademark registration no. 005841549 GLOBET with priority of April 18, 2007, both covering mainly gaming services and information relating thereto (the “GLOBET Marks”). Furthermore, the Complainant owns the domain name <globet.com> and offers its services on the Internet under this domain name.
The disputed domain name was first registered on October 6, 2008 and has been used in connection with a website providing sports betting services to the public, showing the Complainant's logo. The website available at the disputed domain name was taken offline after the Complainant first contacted the Respondent.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is confusingly similar to the Complainant's GLOBET Marks as it fully incorporates such marks.
(2) The Respondent used the disputed domain name in connection with a website of an Italian sports betting company which was taken offline after the Complainant contacted the Respondent. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith as the Respondent has used the Complainant's logo on the website at the disputed domain name, has copied the “look and feel” of the Complainant's website and has used the disputed domain name in connection with sports betting services and therefore in order to attract, for commercial gain, Internet users by creating the impression that its website is associated with the Complainant, trying to benefit from the goodwill associated with the Complainant.
The communication provided by email address listed as the domain name registrant's administrative contact replied to the Complainant's contentions stating that he does not represent the Respondent, that he took down the website at the disputed domain name after receipt of the Complaint and that he forwarded all communications to the Respondent without receiving any reply.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The disputed domain name fully incorporates the Complainant's distinctive GLOBET Marks in which the Complainant has rights. It is well established that the mere addition of the word “super” does not generally hinder a finding of confusing similarity because it generally has no distinctive quality (see F. Hoffmann-La Roche AG v. AndrewZZZ, WIPO Case No. D2006-0357; F Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246; Verizon Directories Corp. v. Tamra Hartley and Domains by Proxy, Inc., WIPO Case No. D2006-0176).
Furthermore, it is well established under previous UDRP decisions that the specific top level domain name is not an element that is taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that where the complainant makes a prima facie case to address the requirements of paragraph 4(a)(ii) of the Policy, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will shift to the respondent.
The Complainant has asserted to the Panel's satisfaction that the Respondent has no rights or legitimate interests in the disputed domain name and has therefore fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent has not denied these assertions and therefore failed to prove rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered and is being used in bad faith.
Evidence of bad faith registration and use is shown where registration of a domain name occurs in order to utilize another's trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corporation, NAF Case No. 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101).
The Respondent revealed its knowledge about the Complainant's GLOBET Marks by using the Complainant's logo on its website. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's Marks and in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the GLOBET Marks into the disputed domain name, by incorporating the Complainant's logo on the website at the disputed domain name and by offering services in direct competition to those of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning revenue from Internet users searching for the Complainant's website. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <superglobet.com> be transferred to the Complainant.
Dated: March 2, 2009