WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bwin Interactive Entertainment AG v. Amy Sung
Case No. D2011-0143
1. The Parties
The Complainant is bwin Interactive Entertainment AG, of Vienna, Austria, represented by Brandl & Talos Rechtsanwaelte GmbH, Austria.
The Respondent is Amy Sung of Mumbai, India, appearing per se.
2. The Domain Name and Registrar
The disputed domain name <betewin.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2011. On January 26, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 26, 2011, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2011. Notice of the Commencement of Administrative Proceeding was also sent to the Respondent by fax and courier. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2011. The Response was filed with the Center on February 19, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 11, 2011. 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
According to the Complainant, it is the parent company of the bwin-group, a leading provider of online gambling and gaming entertainment, which derives revenues primarily from sports betting and poker.
The bwin-group offered its services under the trademark BETANDWIN until 2006, then under the trademark BWIN. The scale of bwin-group’s business is that at the end of 2009 it had about 2.4 million active customers in many countries and revenues of around EUR 423 million. It is spending about EUR 37.6 million annually on sports sponsorship, including for example Real Madrid, the BA-CA Tennis Trophy, MotoGP in Brno, Jerez, Barcelona and Valencia, the Portuguese Soccer League and the German Basketball League. Thus it is well-known.
The Complainant owns trademarks including the following:
BETANDWIN.COM, styled as a logo, international trademark registered with the World Intellectual Property Organization, No. 741099, registration date July 28, 2000, classes 9, 35, 38, 41, 42;
BETANDWIN, international trademark registered with the World Intellectual Property Organization, No. 855119, registration date March 9, 2005, classes 38, 41;
BETANDWIN, styled as a logo, international trademark registered with the World Intellectual Property Organization, No. 896533, registration date March 22, 2006, classes 9, 16, 35, 36, 38, 41, 42.
The bwin-group also owns domain names containing the terms "bet" and "win”, including <betandwin.com>, <betwewin.eu>, <betwewin.de>, <betwewin.info>, <betwewin.net>, <betwewin.org>, <betwin.asia>, <betwin.tm>, <betsnwin.de>, <betsnwin.com>, <betbwin.com>, <betawin.com>, <betawins.com>, <betanwin.at> and <betanwin>.
The Respondent appears to have registered the disputed domain name on March 31, 2010 and to have displayed betting material on an initial website. According to the Respondent, the disputed domain name is now a page on the website of Twitter and is not engaged in business.
5. Parties’ Contentions
The language of the proceedings should be English.
The Complainant has produced documentary evidence of its rights in the trademarks BETANDWIN and BETANDWIN.COM.
The Complainant contends that the disputed domain name <betewin.com> is confusingly similar to its trademarks BETANDWIN and BETANDWIN.COM. The terms "betandwin" in the trademark and "betewin" in the disputed domain name look and sound similar. The change of "and" in the trademark to "e" in the disputed domain name cannot eradicate the similarity between the terms, in particular because "and" and "e" have the same meaning in English and Italian respectively and the word meaning "and" begins with an “e” in several other languages (e.g., "et" in French, "en" in Dutch).
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. There are no international or CTM trademarks that would justify a legal interest in the use of the disputed domain name. The Complainant has not licensed the Respondent to use its trademark and there is no evidence to suggest that the Respondent had authority from the Complainant to register the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is used in bad faith. A user informed the Complainant of "a scam site playing with [its] brand". The Complainant's representative sent a cease and desist letter to the Respondent on 14 December 2010. The sole reaction of the Respondent was a short, unobjective email with a refusal to communicate with the Complainant on a professional, competent basis and an offer to sell the disputed domain name. The Complainant contends, citing previous WIPO decisions, that an offer to sell a disputed domain name is a strong indication of bad faith.
The Complainant submits that according to 4(b)(iv) of the Policy, it shall be deemed to be evidence for the registration and use of a disputed domain name in bad faith if it is indicated that the Respondent acquired a domain name primarily for the purpose of intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint. The Respondent’s contentions are constructed from a Response submitted in abbreviated note form and email correspondence.
It is contended in an email reply to the Complainant’s cease and desist letter that the disputed domain name is a unique name derived from the slogan “bet easy win” and has no relation to the Complainant’s trademarks. The email welcomed the Complainant to contact the Respondent with any offer to purchase the disputed domain name.
With reference to an apparent message from the Respondent with an asking price of USD 2,000.00, the Respondent contends that such a message can be put together by anyone, including the Complainant, and that a screenshot of a website or email message may not be valid evidence. There is no evidence to support the validity of certain annexes, purporting to be evidence of the Respondent’s website, or of a letter from one of the Complainant’s clients, the cease and desist letter, or the Respondent’s reply to it.
The Respondent contends that the disputed domain name resolved to a page at the Twitter website and is not used for profit. It may be used for business in the future and the Complainant does not have any trademark for the word “betewin”.
The Respondent says she has never heard of the Complainant’s name and that it is not famous beyond the realm of sport or outside Europe.
It is contended that the words "bet" and "win" are common in the sphere of betting and gaming. There is no evidence of confusing similarity between the disputed domain name and the Complainant’s trademark.
The Respondent questions the legitimacy and reputation of the Complainant and says nobody would be interested in creating a likelihood of being confused with it.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
In accordance with paragraph 11(a) of the Rules, the Panel is satisfied that the language of this proceeding is English.
Identical or Confusingly Similar
The Complainant must prove that it has rights in a trademark to which the disputed domain name is confusingly similar. The Panel is satisfied that the Complainant has rights in the trademarks BETANDWIN and BETANDWIN.COM.
The disputed domain name is <betewin.com>. The Complainant’s trademarks comprise essentially the phrase “bet and win”. The disputed domain name does not contain “betandwin” and is not identical to the Complainant’s trademarks. The question to be decided therefore is whether <betewin.com> is confusingly similar to the Complainant’s trademarks. The Panel is not readily persuaded of the evidence for the Respondent’s claim that “betewin” means “bet easy win”.
The words “bet and win” are ordinary generic and descriptive dictionary words of long standing. In that respect the Complainant’s trademarks are not unique, strong or distinctive. Nevertheless the Complainant’s international trademarks are duly registered and entitled to protection in the form in which they are registered. The more generic the wording of a trademark, the more difficult it may be to demonstrate confusing similarity with a disputed domain name, in which other possible features of a trademark, such as style, font, device, colour and logo are of no consequence and the same words or phrases may be capable of innocent usage.
A further dimension to this analysis is that the word “and” in the Complainant’s trademark appears to have a greater significance than the merely additive. The phrase “bet and win” does more than simply link together the words “bet” and “win”, but introduces a subtle implication that the bet will lead to the win, thereby expressing a degree of expectation. In this respect the trademark is more than usually dependent on the recognisable word “and” or a clear substitute.
The tests of confusing similarity are tests of fact, that is to say, whether the Complainant’s trademark and the disputed domain name are in reality confusingly similar, as decided on the balance of probabilities, or whether the ordinary Internet user is reasonably likely to confuse the disputed domain name with the trademark. The onus of proof is on the Complainant. Conventionally the question is decided without reference to the content of the corresponding website (paragraph 1.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2005 (the “WIPO Overview”).
The Complainant has set out a number of grounds on which it asserts confusing similarity between <betewin.com> and BETANDWIN, which include the following.
The Complainant owns a number of domain names comprising adaptations of its trademark, such as <betsnwin.com> and <betbwin.com>, and says that these are almost identical to its trademark. The matter to be proved, however, is confusing similarity between the disputed domain name and the Complainant’s trademark, not with its domain names. There is no evidence of the Complainant’s adapted domain names having trademark significance, and a sampling by the Panel (recognised as legitimate under paragraph 4.5 of the WIPO Overview) indicates that these resolve to the Complainant’s main website that is now “www.bwin.com”.
The Complainant says its trademarks and the disputed domain name are similar in appearance and in sound. The words “bet” and “win” are present in the disputed domain name, linked by the letter “e”. The Complainant says this letter is equivalent to “and” in Italian, and that “e” is evocative of "et" in French and "en" in Dutch, both meaning “and”. On the facts, however, the disputed domain name is in English (as is the corresponding website, as the Complainant has itself pointed out) and the Panel can find no sufficient reason to equate “e” with “and” in the context.
With dictionary words as potentially descriptive as “bet” and “win”, confusing similarity may have been found with a colloquially accepted substitute for “and”, such as “an” or “n”, some of which domain names the Complainant owns. As the field of hypothetical substitutes for “and” widens, a line of demarcation has to be drawn and falls naturally at the point where the integrity of the trademark ceases to be reasonably recognisable. This depends partly on the strength of the trademark. Had the trademark words possessed the associative distinctiveness of, for instance, “Marks and Spencer”, they may have withstood the insertion of conjunctions substantially different from “and” whilst continuing to evoke the principal words of the trademark. Given the lack of strong or inherent distinctiveness in the words “bet” and “win”, and the English language of the trademark, this Panel finds the letter “e” lacks sufficient affinity with the conjunction “and” for the disputed domain name to be enclosed within the boundary of confusing similarity. The Panel finds the remoteness of “betewin” from BETANDWIN to be such that the integrity of the Complainant’s trademark phrase within the disputed domain name has been lost.
For parallel reasons the Panel is not persuaded by the Complainant’s argument that “betewin” sounds like its trademark, or that it has any predominant pronunciation.
The Complainant argues that typing errors may lead to confusion. A common ground for a finding of confusing similarity is that a disputed domain name consists of a deliberate misspelling of a trademark, concocted in the expectation that a proportion of keyboard users will accidentally make the matching typographic, spelling or phonetic error and thereby be directed to an unintended website (e.g., to “www.ammazon.com” in error for “www.amazon.com”). Again a line of realism has to be drawn, and the Panel is not persuaded on balance by the evidence that “betewin” is a realistically predictable typographic, spelling or phonetic error for “betandwin”.
The Panel finds that the Complainant has failed in these proceedings to prove confusing similarity in the terms of paragraph 4(a)(i) of the Policy on the balance of probabilities, and accordingly the Complaint must be denied.
As stated above, paragraph 4(a)(i) of the Policy is conventionally decided as standing alone and without reference to the content of the corresponding website. In the particular circumstances of the present dispute the Panel does not consider there is any productive purpose in proceeding to discuss the application of paragraph 4(a)(ii) of the Policy (whether the Respondent has rights or legitimate interests in the disputed domain name) and paragraph 4(a)(iii) of the Policy (whether the disputed domain name was registered and is used in bad faith), except to observe that the Respondent may have had some difficulties under these paragraphs of the Policy and that the Decision does not carry with it any right to use the disputed domain name in contravention of another’s trademark or other rights.
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Dated: March 25, 2011