Centro de Arbitraje y Mediación de la OMPI
ADMINISTRATIVE PANEL DECISION
Intera N.V. v. akin cetin / WhoisGuard Protected
Case No. D2011-1333
1. The Parties
The Complainant is Intera N.V. of Netherlands Antilles, Overseas Territory of the Netherlands, represented by Nabarro, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Akin cetin of dusseldorf, Germany; WhoisGuard Protected of Los Angeles, Unite States of America.
2. The Domain Name and Registrar
The disputed domain name <betboo-bonus.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2011. On August 4, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 5, 2011, eNom transmitted by email to the Centre its verification response disclosing registrant and contact information in the Complaint. The Centre sent an email communication to the Complainant on August 8, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. According to InterNic’s website the disputed domain name is registered with the Registrar, eNom, as being different to the entity named in the Complaint as the Registrar. The Center sent an email communication to the Complainant on August 8, 2011 requiring it to amend the relevant part of the Complaint to reflect the correct Registrar information. The Complainant filed an amendment to the Complaint on August 9, 2011.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2011.
The Center appointed Pravin Anand as the sole panelist in this matter on September 13, 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 facts stated in the Complaint by the Complainant, Intera N.V. are as follows:
1) The Complainant Intera N.V. was incorporated as a registered company in the Netherlands Antilles on May 5, 2008.
2) The Complainant operates an online gambling business under the name BETBOO and has been carrying on this business under this name since April 2009. Its annual revenues for 2010 were more than Euro 5,200,000.
3) The Complainant is the registrant of the domain name <betboo.com>. The complainant operated its gambling business through various country specific websites. The <betboo.com> domain name was registered on June 29, 2005 and was transferred to the Complainant on April 30, 2009.
4) The Complainant owns registrations in Europe and South America for its BETBOO trade mark, including Community trade mark registration no. 8760563 for BETBOO in classes 9, 41 and 42 filed on December 16, 2009 which includes computer software, design, creation relating to online gambling and casino services.
5) A complete list of BETBOO trade mark registrations in class 41 are as follows:
BETBOO as registered trade mark no. 890676 on July 15, 2010 (Chile).
BETBOO as registered trade mark no. 410171 on September 20, 2010 (Columbia).
BETBOO as registered trade mark no. 8760653 on June 15, 2010 (European community) for Class 9, 41 and 42.
BETBOO as registered trade mark no. 1171181 on July 29, 2010 (Mexico).
BETBOO as registered trade mark no. 1044 on May 31, 2010 (Peru).
6) The Respondent registered with the Complainant’s affiliate programme, Betboo partners, on March 15, 2011. The Complainant became aware on or around March 16, 2011 that the Respondent was using the disputed domain name in relation to the website.
7) Under the Complainant’s terms and conditions for its affiliate programme, the Complainant does not permit its affiliates to purchase or register domain names which are identical or similar to any of the Complainant’s trade marks.
8) The Complainant contacted the Respondent on March 16, 2011 informing it that its use of the disputed domain name was in breach of terms and conditions, and requested the Respondent to discontinue the use of the disputed domain name.
9) The Respondent replied to this on March 18, 2011 stating that it did not consider the use of the disputed domain name to be a breach of the terms and conditions, requesting to continue using the disputed domain name.
10) The Complainant responded by reminding the Respondent of its rights in the BETBOO name and also suspended the Respondent’s affiliate account with the Betboo partners.
11) The Complainant subsequently became aware that the Respondent had removed Betboo advertising from the website, and had replaced it with click-through advertising banner for Casino Maxi, which was the Complainant’s competitor.
5. Parties’ Contentions
The Complainant’s contentions are summarized briefly as under.
1. The Complainant has rights in the trade mark and trade name BETBOO. These rights predate the Respondent’s registration of the disputed domain name by two years. Additionally, the disputed domain name <betboo-bonus.com> is confusingly similarly to the trade mark BETBOO as being almost identical.
2. The sole difference is the addition of the suffix “bonus”. It is the Complainant’s contention that the preceding word “betboo” is the main identifying element of the disputed domain name and the Respondent has merely juxtaposed the descriptive term “bonus” with the Complainant’s trade mark.
3. The suffix “bonus” is descriptive in relation to gambling services for which the Complainant’s BETBOO trade mark is well-known. It is accepted that the addition of merely a descriptive term could never serve to differentiate a domain name from a complainant’s trademark.
4. When a domain name adopts the entirety of a complainant’s trademark, it is confusingly similar to that mark, regardless the addition of any other word. (Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292).
5. The Respondent has no rights or legitimate interests in respect of the disputed domain name and it is also unclear whether the Respondent’s name is “Betboo” or “Betboo-Bonus” as the name is hidden by privacy services.
6. The Respondent does not possess any rights as the disputed domain name was registered only after the Complainant had used its trade mark BETBOO for two years.
7. The Respondent is attempting to divert Internet users to the website by using a domain name which is confusingly similar to the Complainant’s trade mark BETBOO. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and has complete intent for commercial gains.
8. The disputed domain name was registered and is being used in bad faith by taking advantage of the reputation of BETBOO trade mark. The Complainant’s domain name was registered almost six years ago and thus the Respondent would have been well aware about the BETBOO trade mark at the time of registering the disputed domain name.
9. Further the Respondent registered the disputed domain name in direct contravention of the Complainat’s terms and conditions for its affiliate programme and continued to use the disputed domain name after its membership with Betboo partners affiliate programme had been suspended. The Panel has previously held that such registration and use amounts to bad faith. (Sandals Resorts International (2000) Limited v. BSJ Marketing, WIPO Case No. D2010-2218).
10. The disputed domain name was registered primarily for the purpose of disrupting the business of a competitor. Further when informed that it may not use the disputed domain name the Respondent attempted to generate revenue by advertising the Complainant’s competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has to prove each of the following elements:
1) The disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3) The disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
1. The Complainant has exclusive rights in the trade mark BETBOO by virtue of its numerous trade mark registrations as well as the extensive use of the trade mark and trade name BETBOO in the course of business.
Further the addition of the suffix “bonus” does not make the disputed domain name dissimilar to the trade mark in which the Complainant has rights. (See Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110; Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.)
Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
B. Rights or Legitimate Interests
1. The Respondent registered the disputed domain name <betboo-bonus.com> recently on March 15, 2011 as compared against the Complainant who has been using <betboo.com> for the past two years.
2. The Respondent has clearly violated the terms and conditions of the Betboo partners affiliate programme, as per which no affiliate without the express written consent of Betboo purchase or register keywords which are identical or similar to any of the Betboo trade marks or include the word “betboo”.
3. The Complainant has neither authorized nor licensed the Respondent in any way to use or exploit the trademark BETBOO on the contrary it has explicitly requested the Respondent to refrain from using the disputed domain name.
4. The disputed domain name displays information regarding the services offered by the Complainant’s competitor’s with the motive of generating revenue for itself. Such use cannot be the basis for a bona fide offering of goods or services pursuant to the Policy, paragraph 4 (c)(i) or a non commercial or fair use of the disputed domain name pursuant to the Policy, paragraph 4(c)(iii). See Credit Suisse Group v. Kingdomdatanet Nework, Inc, WIPO Case No. D2004-0846.
Therefore the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
1. The trade mark BETBOO is alleged to be a well-known trade mark. The Respondent must be taken to have knowledge about the Complainant’s trade mark. Further the Respondent cannot have made randomly the association of the word “bonus” and “betboo” in the expression “betboo-bonus”. It had complete intention for using the reputation of the Complainant for commercial gains.
2. The Respondent must be taken to have known of the Complainant’s business and reputation. The disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant by creating confusion among Internet user seeking information about the services provided by the Complainant and to obtain revenue from diverting traffic intended for the Complainant’s websites. See Credit Industriel et Commercial S.A. and Confédération Nationale du Credit Mutuel v. Spiral Matrix, WIPO Case No. D2006-0271; Crédit Industriel et Commercial S.A. v. Web Advertising Corp., WIPO Case No. D2006-1418.
3. The Respondent further, attempted to generate revenue for itself by advertising for the Complainant’s competitors after the Complainant suspended its membership from their affiliate programme. Accordingly it is clear that the Respondent set out to create confusion by registering and using the disputed domain name in bad faith.
The following circumstances collectively as well as severally establish that the disputed domain name was registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <betboo-bonus.com>, be transferred to the Complainant.
Dated: September 27, 2011