WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bwin Services AG v. Casino Seiten Design
Case No. D2011-0697
1. The Parties
The Complainant is bwin Services AG of Vienna, Austria represented by Brandl & Talos Rechtsanwaelte GmbH of Austria.
The Respondent is Casino Seiten Design of Haskova, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <bwinturkiye.com> is registered with Domain.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 21, 2011, the Center transmitted by email to Domain.com, LLC. a request for registrar verification in connection with the disputed domain name. On April 27, 2011, Domain.com, LLC. 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 April 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2011.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on May 27, 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 is a group company of the bwin.party group of companies. The entire operative business (and therefore also the trademarks) of former bwin Interactive Entertainment AG has been transferred by the way of an demerger and acquisition agreement dated January 28, 2011 to the Complainant.
The bwin.party group offers sports betting, poker, casino games, soft games and skill games, an online market, and audio and video streaming on top sports events.
The website operated under “www.bwin.com” is available in 22 different languages. Marketing activities during the Soccer World Cup 2010 gave the bwin trademark another boost. In 2009, marketing expenses amounted to EUR 99 million and, in the first three quarters of 2010, to EUR 93 million.
The Complainant has trademark and name rights for the term "bwin". The term "bwin" was registered as an international trademark on February 3, 2006 and the logo BWIN was registered as an international trademark on March 16, 2006 (IR No. 886220 and IR No. 896530, Those international trademarks grant protection for, amongst others, Australia, People’s Republic of China, Georgia, Japan, Norway, Turkey, the United States and lots of countries of the European Union, amongst them Bulgaria, the Respondent's residence. Moreover, the Complainant is the owner of the community trademarks number 007577281 (term "bwin") and 007577331 (logo "bwin"), which grant protection for each jurisdiction of the European community and therefore also for Bulgaria. Additionally, both, the term and the logo BWIN are registered in various countries, amongst others, in Argentina, Austria, Andorra, Brazil, Chile, Columbia, India, Japan, Macedonia, Mexico, Peru and the Republic of South Africa as national trademarks.
The Complainant through it’s respectively its affiliated companies own numerous domain names containing the term "bwin".
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s BWIN trademark. The disputed domain name reproduces the Complainant’s trademark BWIN in its entirety and simply appends the descriptive word “turkiye”. This causes a high likelihood of confusion among the consumers.
The geographic designation “turkiye” adds nothing distinctive to the domain name, and the emphasis remains on the name “bwin” to attract the attention of Internet users. Indeed, Internet users are likely to believe the domain name is used by the Complainant for its Turkish customers. Thus, the addition of “turkiye” does not avoid the suggestion of a false sense of origin or sponsorship with the Complainant. The trademark BWIN is a protected and well-known name associated with the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In support of this allegation, the Complainant states that the Respondent has never been known by this name, the Complainant adds that the Complainant has never licensed or otherwise permitted the Respondent use its trademarks or to register any domain name containing the above-mentioned trademark.
The Respondent does not and never did provide any content of his rights under the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
According to the Complainant at the time the Respondent registered the domain (namely on December 28, 2010), the Complainant’s BWIN trademark has already been well-known.
The Complainant states that the Respondent presents himself as bwin International Ltd. and constitutes the impression that the Complainant's group of companies still offers gambling services to the Turkish market. This behaviour is illegal and can cause problems for the Complainant and its group. Moreover, the well established reputation of the Complainant and its group may be exposed to discredit on grounds of the Respondent's material violation of law.
The Respondent neither replied to the cease nor desist letter which has been sent by the Complainant nor did he transfer the domain name, which is a further evidence of bad faith. The Complainant refers the case (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name registered by the Respondent 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 respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark BWIN, which is protected by numerous trademark registrations in many countries including international trademark registration on February 3, 2006 and the logo BWIN was registered as an international trademark on March 16, 2006 (IR No. 886220 and IR No. 896530, Australia, People’s Republic of China, Georgia, Japan, Norway, Turkey, the United States and lots of countries of the European Union, amongst them Bulgaria, the Respondent's residence. Moreover, the Complainant is the owner of the community trademarks number 007577281 (term "bwin") and 007577331 (logo BWIN), which grant protection for each jurisdiction of the European community and therefore also for Bulgaria.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
In addition, the Panel also concurs with the finding of previous UDRP panels that the use of a well-known mark in its entirety together with a geographic term in a domain name will tend to create a domain name that is confusingly similar to the well-known mark. See, e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation. v. South East Asia Tours, WIPO Case No. D2004-0388.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-aventis v. US Online Pharmacies, WIPO Case No. D2006-0582. Finally, the Respondent has brought no argument in support of his contention that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed that the Respondent has neither a license nor any other permission to use the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks right or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name he likely had a knowledge of existence of the Complainant’s BWIN trademark, and registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.
It is obvious that the Respondent must have been aware of the Complainant and the trademark BWIN at the time the disputed domain name was registered.
As mentioned above, it is reasonable to infer that that when the Respondent registered the disputed domain name, he knew that the name was the trademark of the Complainant. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge may be considered as both a precondition and in appropriate cases also an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The use of the trademark BWIN in the website “www.bwinturkiye.com” also supports a finding of bad faith on the part of the Respondent. The Respondent obviously tries to create the impression that the website would be property of the Complainant and an official Turkey branch of the Complainant.
Thus it is obvious to this Panel that by using the disputed domain name, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) 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 domain name <bwinturkiye.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Dated: June 13, 2011