WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bwin Interactive Entertainment AG v. Domains by Proxy, Inc. / RussiaPrint
Case No. D2011-0311
1. The Parties
The Complainant is bwin Interactive Entertainment AG of Vienna, Austria, represented by Brandl & Talos Rechtsanwaelte GmbH, Austria.
The Respondent is Domains by Proxy, Inc. of Arizona, United States of America / RussiaPrint of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <bewinnersforum.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2011. On February 16, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 16, 2011, GoDaddy.com, Inc. 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. The Center sent an email communication to the Complainant on February 21, 2011 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 February 22, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2011. The Response was filed with the Center on March 20, 2011.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on April 5, 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
The Complainant has submitted evidence that it is the owner of the following registered trademarks:
BEWINNERS, (word) Community Trademark Registration No. 008661183 with registration date June 2, 2010.
BEWINNERS, (device) Community Trademark Registration No. 008845877 with registration date July 5, 2010.
BEWINNERS, (word) Austrian Trademark Registration No. 254502 with registration date December 17, 2009.
BEWINNERS, (device) Austrian Trademark Registration No. 258300 with registration date August 13, 2010.
The disputed domain name <bewinnersforum.com> was registered on October 29, 2010.
5. Parties’ Contentions
The bwin-group is a leading provider of online gambling and gaming entertainment. The Complainant is the parent company of the bwin-group and has been listed on the Vienna Stock Exchange since March 2000.
The Complainant’s subsidiaries offer sports betting, poker, casino games, soft games and skill games, as well as audio and video streaming of top sports events. Moreover, the Complainant runs an online market together with its subsidiaries. All of these services are provided under the Complainant’s trademark “bwin”. The Complainant’s official website “www.bwin.com” is available in 22 languages. Due to extensive sponsoring activities, the Complainant is very famous all over the world.
At the end of 2009, the Complainant had about 2.4 million active customers in various countries and total revenues of EUR 423 million. The total revenues in 2008 were EUR 403 million and, in the first three quarters of 2010, EUR 308 million.
The Complainant’s affiliate program is marketed under the name BEWINNERS in more than 25 markets and offers advertising material in 22 different languages. The affiliates receive a commission depending on the amount of new customers that originate from the affiliates’ websites. Affiliates are not permitted to use domain names which are confusingly similar with trademarks of the Complainant.
The Respondent has fully integrated the Complainant's trademark BEWINNERS in the beginning of the disputed domain name <bewinnersforum.com>, which strongly emphasizes the Complainant's trademark. The word “bewinners” is the distinctive part of the domain. The word “forum”, which is added directly after BEWINNERS does not provide additional specification or sufficient distinction from the Complainant's trademark BEWINNERS. By adding the term “forum” directly after the trademark, the Respondent increases the danger of confusion as affiliates of the Complainant will consider the website of the Respondent as a platform set up by the Complainant for its affiliates.
The Respondent does not itself offer any goods or services on its website. Rather, the Respondent alleges to provide a discussion platform on its website although this is incorrect. The Respondent therefore does not use the disputed domain name in question for a bona fide offering of goods or services.
The Respondent is not named after or commonly known by the term “bewinnersforum” or any part of it. A search in the databases for community and international trademarks and a search in the TMView of OANMI do not show any trademarks consisting of or containing “bewinners” or “bewinnersforum” except for the Complainant’s trademarks. This indicates that the Respondent has no trademark rights in any of these terms.
The Complainant has not licensed the Respondent to use its trademark and the Respondent has no authority from the Complainant to register the disputed domain name. Thus, the Complainant contends that the Respondent is not commonly known by the disputed domain name or by a part of it.
In previous correspondence with the Complainant’s legal counsel the Respondent alleges that he merely provides a platform to discuss the affiliate program of the Complainant under the disputed domain name and does therefore not violate rights of the Complainant. The Complainant maintains that this is not true as it has been acknowledged by countless panels that the general right to critically discuss about trademark owners and their products and services does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark. If the Respondent was merely providing a platform for discussion, he could very well achieve its objective by adopting a domain name that is not identical or substantially similar to the Complainant’s trademark.
Furthermore, the website of the Respondent is very similar to the Complainant’s website “www.bewinners.com”. The Respondent not only imitates the Complainant’s design and colors, but also in regards to the writing and the construction. The only reason for the design of the Respondent’s website is to mislead potential or actual customers and marketing partners of the Complainant to the website of the Respondent.
The Respondent allows marketing activities on its website, which is commercial use. On the Respondent’s website there are commercial offers like “order viagra”, “buy cialis”, “we sale meds online for lowest prices” and similar. The Respondent’s website contains only nine postings and most of them have nothing to do with the affiliate program of the Complainant. Most of the postings are libelous, unserious and misleading.
The fact that the Respondent placed tiny disclaimers at the bottom of the website does not make its use of the disputed domain a fair one and does not abolish its bad faith. Internet users cannot see the disclaimers when entering the homepage of the Respondent as they first need to scroll down to the bottom. In addition, it is difficult to notice the disclaimers as they are written in a light color. Such disclaimers are insufficient and by the time Internet users reach the disclaimers they have already been exposed to the misrepresentation inherent in the disputed domain name.
The Respondent does not make a legitimate noncommercial or fair use of the disputed domain name.
It is clear from the statements on the Respondent’s website that the Respondent is an affiliate of the Complainant and was at the time of registration aware of the Complainant’s BEWINNERS trademark. Solely the intentional registration of a domain name including a famous trademark constitutes bad faith. Moreover, it is not and has never been the intention of the Respondent to operate an objective and serious discussion forum. From the very beginning the Respondent created its platform in a layout which is confusingly similar to the Complainant’s platform. The sole purpose of the registration and the use of the disputed domain was and is to mislead potential or actual affiliates, other marketing partners or customers of the Complainant to the website of the Respondent. Such circumstances constitute both, bad faith registration and use.
The Respondent argues that the Complainant’s trademark BEWINNERS is descriptive for the relevant goods and services. It is composed of the two parts be winners which means “to be winners”. In fact the search for the keyword “bewinners” respective “be winners” offers 447.000.000 search results at Google of which only a small part is related to the Complainant’s trademark or activity. “Be winners” is a commonly used term. It should be examined if the trade mark BEWINNERS should be canceled due to its descriptive character. The Complainant admits that the term BEWINNERS has started to be used in October 2011. So it is nearly impossible to assume a public awareness of this term when the disputed domain name <bewinnersforum.com> was registered.
The disputed domain name <bewinnersforum.com> is composed by three parts, i.e. “be”, “winners” and “forum”. These three parts are descriptive exactly for what they are standing for, i.e. a forum for people who want to be winners.
The Complainant cannot claim these three words to be the only one to use them as they are completely descriptive and cannot be protected by a single party. In this case the first come first served principle is relevant. As the disputed domain name <bewinnersforum.com> is composed of three words in a totally descriptive way it cannot be identical or confusingly similar to the trademark of the Complainant.
Any danger of confusion has been excluded as the forum is declared as a totally independent forum. The meta description tag, which is the first and only text visitors can see when they check results of search engines like Google, contains the following description: “bewinnersforum.com is the independent discussion forum for bwin affiliates to discuss the new partner program bewinners, to share experiences and to give each other tips.” In addition on each and every page of the forum a disclaimer has been placed with the following content: “bewinnersforum.com is an independent discussion forum. We are not in any way affiliated with or endorsed by bwin or bewinners”. For these reasons there is no risk of confusion by visitors of the webpage and regarding the disputed domain name <bewinnersforumn.com> with the trademark of the Complainant.
The Respondent is using the domain name in bona fide offering services on its website. Only a few days after starting the discussion forum the website was included into the Google index. After this the webpage received a lot of visitors who read the postings on the website. It is normal that there are more readers than writers in a forum, at least at the beginning. But this does not change the fact that the website got very famous in a short time and this definitely before receiving any notice of the dispute.
It is not true that the Respondent has chosen the domain name to block the Complainant from its own activities. The Complainant registered a lot of domain names containing BEWINNERS. If it would have been so obvious to start a discussion forum under the disputed domain name <bewinnersforum.com>, it is not clear why the Complainant did not register this domain name itself. In fact, the Complainant initially started a discussion forum on Facebook when launching the new BEWINNERS affiliate program. Only three days after opening this forum the Complainant closed it again after receiving too many bad comments regarding the changes with negative impact for all affiliates.
The Complainant suggests that the website of the Respondent seems to be constructed very similar to the Complainant’s website, which is not true. The Complainant uses a standard style sheet with colors black, white and yellow with a standard type of character. When using such a standard design the Complainant cannot claim to be the only one to use it. If the Complainant would have used very special characters or very individual designs situation might be evaluated in a different way, but not like it is actually.
The disputed domain name <bewinnersforum.com> is definitely not used in a commercial way. The only sense is to provide Internet users an independent discussion forum and to inform visitors who have questions regarding the affiliate program. There are no attempts by the Respondent to make any profit from visitors or to mislead them in any way. No ads or commercial information are placed on the website. That there have been some links like the Complainant mentioned made by spammers is the sad reality for everybody who offers a public forum. But this does not mean that the Respondent allows marketing activities on its website. In fact, the website gets reviewed regularly and such spam is canceled as soon as possible. The terms and conditions which are accepted by every visitor for using the forum make clear that such a behavior is not permitted, but unfortunately a few users try to exceed the rules.
It is not true that the statements in the Respondent’s website are highly unserious. It is commonly known that users of discussion forums use a very direct way to express themselves and that they are not able to write like Shakespeare. Affiliates who are very disappointed express themselves in a very direct way. But this does not mean that the Respondent does not run his forum in a serious way.
The disputed domain name was never registered for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant. The disputed domain name was not registered in order to prevent the Complainant from reflecting the trademark in a corresponding domain name. The Complainant registered numerous domain names containing the term BEWINNERS, but not the disputed domain name <bewinnersforum.com>, which means, that it never thought to expand its activities in this direction.
The Complainant and the Respondent are not competitors. The Complainant is a very big online gaming industry, probably the world leader. The Respondent is a private person doing its own business.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark BEWINNERS. The disputed domain name <bewinnersforum.com> incorporates the Complainant’s trademark in its entirety. Furthermore, the disputed domain name contains an addition of the word “forum” and the ability for such a descriptive and generic word to distinguish the disputed domain name from the trademark of the Complainant is limited.
Having the above in mind, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Evidently the Respondent is part of the Complainant’s affiliate program named BEWINNERS. The Complainant’s trademark registrations for BEWINNERS predate the Respondent’s registration of the disputed domain name <bewinnersforum.com>. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark BEWINNERS in connection with the disputed domain name <bewinnersforum.com>, which is confusingly similar to the Complainant’s registered trademark.
Based on the submitted evidence in the case, it appears that the Respondent is using the disputed domain name <bewinnersforum.com> for a forum where affiliates can meet and discuss the affiliate program and share experiences. The website of the Respondent contains a number of discussion topics related to the Complainant’s affiliate program and a disclaimer stating that the forum is independent and not endorsed by the Complainant.
Screenshots submitted by the Complainant demonstrate that the Respondent’s forum has nine registered members and that the forum contains six posts. Considering the presently limited activity in the Respondent’s forum there is no compelling evidence in the case demonstrating that the Respondent is commonly known by the disputed domain name.
It has been argued by the Complainant that the Respondent is using the disputed domain name for commercial gain by allowing marketing activities on the website to which the disputed domain name resolves. However, the Panel sees no evidence demonstrating that the Respondent’s website is of a commercial nature or that the Respondent is using the disputed domain name for commercial gain. Nothing in the case establishes that the Respondent’s forum contains any paid advertisements, sponsored links, pay-per-click links, commercial information or automated advertising programs, other than a few unsolicited postings by forum spam bots.
The Panel finds no evidence in the case that demonstrates that the Respondent is, for example intentionally using the disputed domain name to divert consumers or to tarnish the Complainant’s trademark, let alone with intent for commercial gain. The Respondent has advanced a not implausible explanation for its registration and use of the disputed domain name, and such present use as is apparent from the record in these proceedings strikes the Panel as essentially noncommercial, and does, not in any event bear hallmarks of a clear or typical case of cybersquatting of the sort the Policy is generally intended to address.
Having the above in mind, the Panel concludes that the Respondent has on balance established a right or legitimate interest in the disputed domain name on the record in these proceedings, including by demonstrating to this Panel’s satisfaction that the Respondent is using the disputed domain name in an essentially noncommercial manner without intent for commercial gain or to misleadingly divert consumers or to tarnish the Complainant’s trademark, as described in paragraph 4(c)(iii) of the Policy.
C. Registered and Used in Bad Faith
Given the finding of the panel that the Respondent has established a right or legitimate interest in accordance with paragraph 4(c)(iii) of the Policy, the Panel does not need to consider the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Dated: April 19, 2011