WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bwin.party services (Austria) GmbH v. Interagentur AG
Case No. D2011-1079
1. The Parties
The Complainant is bwin.party services (Austria) GmbH of Vienna, Austria, represented by Brandl & Talos Rechtsanwaelte GmbH, Austria.
The Respondent is Interagentur AG of Brig, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <bwion.com> is registered with EPAG Domainservices GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2011.
On June 24, 2011, the Center transmitted by email to EPAG Domainservices GmbH a request for registrar verification in connection with the disputed domain name. On June 27, 2011, EPAG Domainservices GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and disclosing registrant and contact information for the disputed domain name.
On June 27, 2011, the Center sent an email communication to the Registrar requesting Registrar’s lock for the disputed domain name because of the expiration of the disputed domain name on August 11, 2011. The Center subsequently informed Complainant and Respondent of the approaching expiration on June 28, 2011.
On June 28, 2011, the Center issued a Language of Proceeding Notification in both, English and German, inviting comments from the parties. The Complainant filed on June 29, 2011, a request for English to be the language of the proceedings and notified the WIPO Center, the Respondent and the Registrar that the Complainant changed from “bwin Services AG” to “bwin.party services (Austria) GmbH”.
The Center verified that the Complaint together with the request 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 in both, German and English, the Respondent of the Complaint, and the proceedings commenced on July 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2011.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on August 9, 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 company on the bwin.party group, an internationally active enterprise engaging in sport betting, poker, casino games, skill games, streaming of top sport events and many more. The Complainant is a wholly owned subsidiary of bwin.party digital entertainment plc and provides services to other group companies.
As of January 28, 2011 the Complainant is the universal successor of bwin Interactive Entertainment AG and followed into all rights and duties pursuant to a Demerger and Acquisition Agreement.
Several goods and services are offered by the Complainant among other channels though websites, one of them being “www.bwin.com”.
The Complainant – respectively its group companies – engages in sponsoring of well-known sports clubs and events, among them Real Madrid and MotoGP in Brno, Jerez, Barcelona and Valencia.
Currently, the Complainant offers his services inter alia through the website “www.bwin.com” to more than 20 million registered costumers worldwide, and secures this market position by substantial marketing investments.
The Complainant owns international trademark No. 886220, pursuant to the above mentioned legal succession. The trademark consists of the word “bwin”, was registered on 3 February 2006 and has effect amongst other countries in Australia, Denmark, Estonia, Finland, United Kingdom of Great Britain and Northern Ireland, Germany, China, Georgia, Japan, Norway, Switzerland and the United States of America.
Further, The Complainant owns international trademark No. 896530, pursuant to the above mentioned legal succession. The trademark consists of a device including a word element “bwin” and was registered on March 16, 2006. It has effect amongst other countries in Australia, Denmark, Estonia, Finland, United Kingdom, Germany, China, Georgia, Japan, Norway, Switzerland and the United States.
Also, the Complainant owns Community trademark No. 007577281, pursuant to the above mentioned legal succession. The trademark consists of the word “bwin” and was registered on December 3, 2009.
Finally, the Complainant owns Community trademark No. 007577331, pursuant to the above mentioned legal succession. This trademark was registered on February 3, 2009 and consists of a device featuring a word element “bwin”.
Both Community trademarks offer protection for goods and services in classes 9, 16, 35, 36, 38, 41, and 42.
The Respondent is a Swiss company located in Brig, Switzerland.
The Respondent registered the disputed domain name <bwion.com> on August 11, 2006 with EPAG Domainservices, Germany. The domain name is not and was never used.
The Complainant sent a cease and desist letter to Respondent via email on May 2, 2011. Respondent did not reply.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) He is of the opinion that the disputed domain name is confusingly similar to the “bwin” trademarks in which the Complainant enjoys rights.
As far as the second level domain of the disputed domain name is concerned, there exists a confusing similarity between the disputed domain and Complainant’s trademarks. In this sense the disputed domain name may be seen as a common and possible misspelling of the Complainants trademarks as the letters “i” and “o” lay next to each other on a standard western keyboard.
Further, the disputed domain differs only in one additional letter, this being the letter “o”, from the Complainant’s trademarks which is too less a difference to avoid a confusing similarity. Also in the comparable case Interwetten AG v. BMG Media, Inc., WIPO Case No. D2005-00477, such a minor difference was deemed insufficient for the exclusion of confusing similarity.
(2) Further, the Complainant is of the opinion that case that Respondent has no rights or legitimate interests in respect of the domain name.
As regards this second element, the Complainant contends that the Respondent is not commonly known under the term “Bwion” and is – to the knowledge of Respondent pursuant to a database search of TMView of OANMI – not listed as owner of a respective trademark. The Complainant is of the opinion that this evidence constitutes a prima facie case demonstrating that Respondent has no rights or legitimate interests in respect of the domain name.
(3) The Complainant finally contends that the domain name was registered in bad faith.
The Complainant contents that Respondent does not and never did use the disputed domain name. In the view of the Complainant, already this passive holding of the domain name constitutes bad faith use.
The Complainant further refers to earlier opposition proceedings between the Complainant’s legal predecessor and the Respondent in which the court assumed a registering of the earlier disputed domain name in bad faith since Respondent in earlier proceedings had knowledge of the earlier trademarks (bwin Interactive Entertainment AG vs. Interagentur AG, WIPO Case No. D2008-1454).
The Complainant is of the opinion that the Respondent must have been aware of Complainant’s trademarks in this case as well, including “bwin”. The Complainant contends that “bwion” has no meaning in itself as is most likely derived directly from the Complainant’s “bwin” with an added letter “o”.
Furthermore, the trademark BWIN is the successor of the BETANDWIN brand and was subject to extensive marketing and rebranding activities including a campaign during the FIFA World Cup 2006 in Germany which is a neighboring country to the Respondent’s country. The Complainant also points to the fact that the Respondent registered the disputed domain name on August 11, 2006 only ten days after the official launch of Complainants trademark BWIN.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel must first decide about the language of this administrative proceeding.
In this respect, paragraph 11(a) of the Rules state that, “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
An agreement on the language could not be reached since the Respondent decided not to engage in this proceeding.
The registration agreement between the Respondent and the Registrar is available both in English and German, a clear preference cannot be determined. Hence, it is the circumstances of the present case that shall be decisive for determining the language for this proceeding.
English is the world’s most spoken language and is, without a doubt, the predominant language of international business und international dispute resolution. Further, the nature of UDRP domain name dispute resolution is international as the Internet and accordingly the use of domain names cover all jurisdictions worldwide.
Last but not least, the Complainant already filed the Complaint in English relying on English as being at least one of the two possible languages of the Registration agreement. Without any protest or sign to the contrary on the side of the Respondent, the rejection of the documents already submitted would effectively require a translation of all documents and resulting additional investment both in time and resources for the Complainant without due reason.
Taking the above standing into consideration, the Panel decides for English to be the language of this proceeding.
On the substance, the Panel decides as follows:
Pursuant to 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 Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The top level “.com” of the disputed domain name is to be ignored for the purposes of assessing confusingly similarity as it is a functional requirement of the domain name system, which is the common view of UDRP panels and held been decided in earlier cases such as DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. 2000-1493.
As to the second level of the disputed domain name <bwion.com> includes the Complainant’s BWIN trademark in its entirety with the exception of an additional letter “o” between letter “i” and last letter “n”.
With respect to the visual similarity, the Panel believes that the additional “o” in the disputed domain name will be perceived easily as a typical typographical error since the letter “o” is arranged directly next to the letter “i” on western keyboards. Hence, this is a typical case of “typosquatting” which in general does not exclude the similarity of signs.
It is the consensus view of UDRP panels that signs with only one additional letter are, absent extraordinary circumstances, to be deemed similar, see Hachette Filipacchi Presse v. Saint-Clare, WIPO Case No. DFR2009-0012; LEGO Juris v. Chris Jones, WIPO Case No. D2009-1326.
Phonetically, the disputed domain name features the identical sequence of vowels with the differences of an additional vowel “o”, namely “BE-WI-O-N compared to “BE-WI-N. Hence, the Panel concludes phonetic similarity to a low degree.
As to the concept, Complainant’s trademarks BWIN are a short version of and refer to the former core trademark BETANDWIN, thereby indicating goods and services related to betting on or in games. As a registered mark, it is entitled to a presumption of sufficient distinctiveness. The disputed domain name in turn clearly is just a version – altered only by the additional letter “o” – of said concept used by Complainant for its trademarks. Accordingly, the Panel finds conceptual identity.
In these circumstances, the Panel considers that the slight difference between the disputed domain name and the Complainant’s trademark is trivial, and therefore unlikely to avoid confusion with the Complainant’s mark. Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established that it is sufficient for the Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain name in order to place the burden of production on Respondent, see Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2001-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain name and that, according to the Complainant, the Respondent has not acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by the Complainant.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate non commercial or fair use of the disputed domain name. According to the Complainant, the Respondent is not has never been making any use of the disputed domain name.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.
The burden of production therefore shifts to the Respondent. In such case, the Respondent must by substantial evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.
Hence, the Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights and/or legitimate interest of Respondent in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant has to establish that the Respondent registered and used the disputed domain name in bad faith.
It is to be acknowledged by the Panel that it may be difficult to prove these requirements in the absence of any factual use of the domain name by the Respondent or any reply to the Complaint. In fact, it is virtually impossible for a complainant to establish the state of mind or intentions of unknown and remote respondent at this or any other moment in the past, see Missoni S.p.A. v. OneandonePrivate Registration/Sophia Kilgore, WIPO Case No. 2010-2223.
Consequently, it is the consensus view of UDRP panels that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. In such case the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“Overview 2.0”).
According to the Complainant, the disputed domain name is objectionable as “typosquatting”, to which the Panel agrees. In the context of paragraph 4(a)(iii) of the Policy “typosquatting” is in and of itself evidence of the bad faith registration of a domain name, see Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568; American Funds Distributors, Inc., and the Capital Group Companies, Inc. v. Eunice May, WIPO Case No. D2011-0361.
Further, the Complainant has brought forward considerable evidence that its trademarks are known to a substantial part of consumers due to wide use, which has not been contested by the Respondent and is credible due in particular to the wide spread media coverage that “bwin” enjoys according to the contentions and attachments provided by the Complainant. Thus, the Panel accepts the Complainant's contention that the trademark BWIN can be considered well known for the purposes of this procedure.
Having accepted this, the Panel refers to earlier WIPO decisions where it was assumed that the integration of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in itself, an indication of bad faith, see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).
Further, the Complainant has cited an earlier case (bwin Interactive Entertainment AG v. Interagentur AG, WIPO Case No. D2008-1454) between the Respondent and the legal predecessor of the Complainant with regard to the trademarks in this proceeding in which the Respondent’s domain name <betan-win.com> was deemed infringing to the then Complainant’s BETANDWIN trademark.
While it is not up to the Panel to draw conclusions from earlier cases, the Panel might very well assume under these circumstances – taking the non deniable resemblance of the respective trademark BETANDWIN of the earlier proceeding with the actual trademarks BWIN in this proceeding into consideration – that the Respondent was aware of the Complainant’s well-known trademarks or should have known the well-known trademarks which allows the Panel to draw the conclusion that the Respondent registered and used the domain in bad faith.
For the foregoing reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bwion.com> be transferred to the Complainant.
Dated: August 23, 2011