WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Trav och Galopp v. BAM Software
Case No. D2012-1954
1. The Parties
The Complainant is Aktiebolaget Trav och Galopp of Stockholm, Sweden, represented by Bird & Bird, Sweden.
The Respondent is BAM Software of San Francisco, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <v75lottery.com>, <v75now.com> and <v75today.com> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 3, 2012. On October 4, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On October 5, 2012, GoDaddy.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”), 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 October 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2012.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on November 14, 2012. 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 Swedish company, existing under the law of Sweden with organization No. 556180-4161, which provides products and services consisting of lotteries, betting, gambling and horse racing under the trademark V75.
The Complainant is the owner of inter alia the following registered trademarks (on which the Complaint is based):
- Community trademark no. 1505759 V75 (word mark), registered on January 31, 2001, for services in class 41, namely “entertainment; operating lotteries, lottery business, betting, gambling, sports and athletic activities, especially organisation of sports competitions and of sports events”.
- U.S. trademark registration no. 2976512 V75 (word mark), registered on July 26, 2005, for services in class 41, namely “entertainment services, namely, operating and providing lottery services for others; casino gaming services, sports and athletic activities, namely arranging and conducting sports and athletic competitions; coverage of horse races”.
- Canadian registration no. 602396 V75 (word mark) registered on February 17, 2004, for services in class 41, namely “entertainment services, namely entertainment in the nature of conducting and arranging lotteries, lottery businesses, betting and gaming; sports and athletic activities, namely, arranging and conducting sporting and athletic events and competitions”.
The disputed domain names were registered on April 18, 2012.
5. Parties’ Contentions
The Complainant contends that:
- the disputed domain names consisting of “V75” followed by the common generic and descriptive words “lottery”, “now” and “today” are confusingly similar to the Complainant’s registered trademarks V75;
- the Respondent has not rights or legitimate interests in respect to the disputed domain names;
- the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain names.
- the Respondent uses the disputed domain names in bad faith, as the disputed domain names resolves to parking pages displaying sponsored links in the field of lotteries, betting, gambling and horses, i.e. for websites in direct competition with the Complainant’s services.
- the Respondent is using the disputed domain names in bad faith in an attempt to attract, for commercial gain, Internet users to the website at the disputed domain names by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To have the disputed domain names transferred to the Complainant, the Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the disputed domain names are 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 names; and
(iii) that the Respondent’s disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it owns rights in the word marks V75 and that the registrations of these trademarks predate the registration of the disputed domain names.
The disputed domain names consist of the combination of the trademark V75 and a descriptive word such as “lottery”, “now” or “today”.
It has been consistently held that mere addition of descriptive or generic words to a registered trademark is insufficient to avoid confusing similarity (Sanofi-aventis v. BH Marketing, WIPO Case No. D2006-0440; Sanofi-aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Sanofi-Aventis v. Internet Marketing Inc. John Bragansa, WIPO Case No. D2005-0742; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0057).
The Panel thus finds that the disputed domain names are confusingly similar to the trademarks held by the Complainant.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue”.
The Respondent has not filed a Response, and there is nothing in the file suggesting that the Respondent might have any rights or legitimate interests in the disputed domain names.
The Respondent is using the Complainant’s trademark to divert Internet users to a parking website of the Internet Service Provider Go Daddy which provides sponsored links to numerous commercial third-party websites offering and advertising inter alia lottery, betting and gambling services as well as services with connection to horses.
The Respondent’s use of the disputed domain names serve the purpose of generating revenue via advertised pay-per-click products and links (Lernco, Inc v. Ho Nim, WIPO Case No. D2010-1572). There is no personal use of the disputed domain names but only a use generated by a technical system.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The use of the disputed domain names serves a purpose of achieving commercial gain by displaying links to competing third party websites that advertise and sell inter alia competing services. The Respondent’s exploitation of the Complainant’s trademark to mislead users and obtain click-through commissions from the diversion of Internet users constitutes use in bad faith (Lernco, Inc v. Ho Nim, WIPO Case No. D2010-1572).
For the above reasons, the Panel finds that paragraph 4(b) is satisfied in this case and that the registration and use of the disputed domain names has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <v75lottery.com>, <v75now.com> and <v75today.com> be transferred to the Complainant.
Date: December 5, 2012