WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bwin Services AG v. shenoyan
Case No. D2011-0901
1. The Parties
The Complainant is bwin Services AG of Vienna, Austria, represented by Brandl & Talos Rechtsanwaelte GmbH, Austria.
The Respondent is shenoyan of Hong Kong, SAR of the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <bwin2.com> and <bwin788.com> (the “Domain Names”) are registered with Web Commerce Communications Limited dba WebNic.cc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2011. On May 25, 2011, the Center transmitted by email to Web Commerce Communications Limited dba WebNic.cc a request for registrar verification in connection with the Domain Names. On May 26, 2011, Web Commerce Communications Limited dba WebNic.cc 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 May 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on June 24, 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 part of the bwin.party group of companies (“the Group”). The Group is a substantial online gaming company with about 20 million registered customers in more than 25 core markets around the world. Its average annual revenue is in the region of Euros 400 million and average marketing expenditure is around Euros 100 million. The Group’s sponsorship activities include soccer clubs Real Madrid, AC Milan and Barcelona, the BACA Tennis Trophy, MotoGP, the Portuguese Soccer League, The German Basketball League, The Ice Hockey World Cup (2006) and The Red Bull Air Race. The main website in respect of which the Group operates its activities is “www.bwin.com” (“the bwin Website”) which is available in 22 languages. As a result of these activities, the BWIN trade mark is a well-known trade mark in the gaming industry. The panels in other UDRP proceedings which the Complainant and its predecessors have been involved in have recognized the reputation of the BWIN trade mark.
The Complainant is the owner of the trade mark rights in BWIN. BWIN has been registered as a trade mark in both word and logo form in many countries around the world including Australia, China, European Union, Georgia, Japan, Norway, Turkey and the United States of America with the earliest registration in February 2006.
The Respondent registered the Domain Names on April 1, 2011. At the time of the filing of the Complaint, the domain name <bwin2.com> was connected to an active website in the Chinese language which provided online gaming services (“the Website”). The Website had a colour scheme and design which resembled the bwin Website. The Website also displayed the BWIN trade mark across the top of the web page in a style which is similar to the Complainant’s “bwin” logo. In addition, it displayed the official sponsoring partners that appear on the bwin Website. The Website contained a copyright notice at the end of each page which says this - “Copyright © 2011 bwin International Ltd”. This is identical to the copyright notice on the bwin Website. The Website had links that lead to a website connected to the <bwin788> domain name. This website displayed request fields for an ID and password which did not appear to work. On the Panel’s review of both websites, it appears that both are no longer active. They both show error notices.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the BWIN trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered and unregistered rights in the BWIN trade mark and the BWIN trade mark is well-known in the gaming industry.
The Complainant’s registered trade mark, BWIN is the dominant portion of the Domain Names. The addition of the descriptive/generic terms “2” and “788” does nothing to minimise the risk of confusion. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not known by the Domain Names nor any part of the same. The Respondent does not appear to own any registered trade marks in the Domain Names. The Complainant has not authorised or licensed the Respondent to use the BWIN trade mark or register the Domain Names. The Respondent is not in any way linked to the Complainant.
The Complainant further contends that as can be seen from the content of the websites connected to the Domain Names as described in paragraph 4 above, the Respondent is not using the Domain Names for any bona fide offering or services. Neither is the Respondent making a legitimate noncommercial or fair use of the Domain Names. There is clearly an intention to impersonate the bwin Website and also to disrupt the Complainant’s business.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The BWIN trade mark was registered before the Domain Names were registered. The Complainant has a substantial presence on the Internet worldwide. The Complainant contends that the “bwin” name is
well-known in Asia and the Complainant has its own subsidiary in China.
There are several factors which together clearly indicate that the Respondent had knowledge of the Complainant’s BWIN trade mark when he registered the Domain Names. The Respondent offers online gaming on the Website which is the identical service which the Complainant operates. The Respondent has the “bwin” name prominently displayed on the Website. The “bwin” name is used in a form almost identical to the “bwin” logo in which the Complainant has rights. The Respondent has copied the copyright notice from the bwin Website. It also has at the bottom of the web pages, the logos of the Complainant’s official sponsoring partners. Further, the Respondent has copied official information about the Group from the bwin Website on its Website. The above shows a clear intention to mislead users and create the false impression that the Respondent is the Complainant or part of the Group and therefore connected to the Complainant. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when he registered the Domain Names and such registration was made in bad faith.
The content of the Website as set out above is clear evidence that the Respondent was also using the domain name <bwin2.com> to attempt to attract, for commercial gain Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as the source of sponsorship, affiliation, or endorsement of his website or location or of a product or service on the Respondent’s website or location. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
In the case of <bwin788.com>, although the website connected to it does not show any real activity, it does not prevent a finding of bad faith. The consensus view in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
In addition to the circumstances of registration referred to above, the following facts indicate that the domain name <bwin788.com> is being used in bad faith – the Complainant has a well-known trade mark, the Respondent failed to file a response, the Respondent has not given a proper contact address when he registered the Domain Names. It will be impossible to locate someone at “hongkong 100086, China”. Considering the circumstances, the Panel considers that this domain name was also used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <bwin2.com> and <bwin788.com> be transferred to the Complainant.
Dated: July 8, 2011