WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intera N.V. v. Domains By Proxy, LLC / Sheref Selcuk
Case No. D2012-2069
1. The Parties
The Complainant is Intera N.V. of Curaçao, Netherlands Antilles, Overseas Territory of the Netherlands, , represented by Nabarro LLP, United Kingdom of Great Britain and Northern Ireland.
The First Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America and the Second Respondent is Sheref Selcuk of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <betboo-100.com> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2012. On October 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2012, and November 16, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Second Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 November 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2012. Neither the First or Second Respondent submitted a Response. Accordingly, the Center notified the Respondent’s default on November 27, 2012.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on December 6, 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.
In accordance with paragraph 11 of the Rules, the language of the present proceedings is English.
4. Factual Background
The Complainant is a registered company in Curaçao, the Netherlands Antilles.
The Complainant operates an online gambling business under the name BETBOO, and has been carrying on this business under this name since April 2009.
The Complainant is the registrant of the domain name <betboo.com>. The Complainant operates its gambling business through a number of country-specific websites, which are hosted on country-specific sub domains of the <betboo.com> domain. The <betboo.com> domain name was registered on June 28, 2005, and was transferred to the Complainant on April 30, 2009.
The Complainant owns registrations in Europe and South America for its BETBOO trademark, including Community trademark registration no. 8760563 for BETBOO in classes 9, 41 and 42 filed on December 16, 2009, and registered on June 15, 2010, which covers, amongst other things, gambling and casino services.
The Domain Name was registered on November 24, 2011 and expired on November 24, 2012. The Domain Name remained locked and subject to the present administrative proceeding in accordance to paragraph 184.108.40.206 of the ICANN Expired Domain Deletion Policy.
Prior to the filing of the Complaint with the Center the Complainant filed an internal complaint with the First Respondent on September 11, 2012. The First Respondent replied to the complainant on September 13, 2012, stating that it had forwarded the complaint to the Second Respondent as it was the underlying registrant to the Domain Name requesting that the Second Respondent contact the Complainant no later than close of business on September 20, 2012, failing which the First Respondent would then disclose the Second Respondent's contact information to the Complainant.
On September 21, 2012, the First Respondent contacted the Complainant stating that, since it had not received proof that the Second Respondent had attempted to contact the Complainant, it would disclose the underlying contact information for the limited purpose of the internal complaint.
On September 25, 2012, the Complainant wrote to the Second Respondent setting out its concerns. The Complainant received no response to this letter or a subsequent follow up letter that was sent on October 9, 2012. The Complainant thereafter filed the instant proceedings.
5. Parties’ Contentions
The Complainant submits that it has clearly established rights in the trademark BETBOO, which predate the Second Respondent's registration of the Domain Name by over two years, and that the Domain Name is confusingly similar to that trademark. The only difference between BETBOO” and “betboo-100" is the addition of the suffix “100”. The leading term “betboo” is clearly the core identifying element of the Domain Name. The Second Respondent has simply juxtaposed the number “100” with the Complainant's trademark. The suffix "100" adds nothing of any meaning to the prefix which is the Complainant’s BETBOO trademark. Relevant costumers (i.e. users of online gaming services) would therefore think that the Domain Name is owned by the Complainant and points toward a website operated by the Complainant. Internet users are drawn to the Website through the use of the Complainant’s BETBOO trademark in the Domain Name. Even if an Internet user would, on reviewing the Website, come to the conclusion that it is not connected with or endorsed by the Complainant, at this point the Internet user has already been diverted and misled. This “initial interest confusion” is damaging to the Complainant and demonstrates a likelihood of confusion.
The Second Respondent's name is not “betboo” or “betboo-100.com” and he has not been commonly known by the Domain Name prior to or after its registration for reasons beyond the existence of the Domain Name. In addition, it does not possess any rights in or to the BETBOO trademark.
The Second Respondent has registered the Domain Name in knowledge of the Complainant’s rights in the BETBOO trademark. As under the Domain Name the Second Respondent advertises identical services to the Complainant, the registration of the Domain Name and its use through the Second Respondent has diverted sales – which the Complainant would or may have made through its websites – to one of the Complainant's competitors. The Domain Name was registered primarily for the purpose of disrupting the Complainant's business. The Second Respondent has not used the Domain Name in connection with a bona fide offering of goods or services and its intent is to misleadingly divert consumers or to tarnish the trademark of service mark at issue in order to obtain commercial gain.
Neither the First or Second Respondent replied to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
In the present proceeding, the First and Second Respondent did not submit a response. In view of the Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding “on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.” (see Friedman & Feiger, LLP v. Whois Watchdog, NAF Claim No. 1319476; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). Besides, it has to be noted that the lack of response makes it difficult for the Panel to reasonably make findings differently from those convincingly argued by the Complaint (see Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493).
Furthermore, the Panel finds it proper and appropriate to record the name of both the First and Second Respondents in this Decision, the First Respondent being a privacy or proxy service and the Second Respondent being the underlying registrant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9.
A. Identical or Confusingly Similar
The leading term “betboo” is clearly the same identifying element of the Domain Name. The only difference between the BETBOO trademark and the Domain Name is the addition of the suffix “-100”. In fact, the top level domain “.com” is typically ignored when assessing identity or similarity (see Accor v. Noldc Inc., WIPO Case No. D2005-0016). However, the addition of a number, being generic, cannot serve to differentiate a domain name from a complainant’s trademark (see Academy of Motion Picture Arts and Sciences v. 007 Promotions, WIPO Case No. D2009-1523). In addition, when a domain name incorporates the entirety of a complainant’s trademark, it has been found in previous decisions under the Policy to be confusingly similar to that trademark, regardless of the addition of any other non-distinctive elements (see Volvo Trademark Holding AG v. Peter Lambe, WIPO Case No. D2001-1292). As the Domain Name incorporates the entirety of the Complainant’s trademark with only the suffix of a generic number (and the services offered under the Domain Name and the Complainant’s trademark are both related to gambling) relevant users of online gambling services would likely think that the Domain Name is owned by or related to the Complainant. The Domain Name is therefore confusingly similar to the trademark of the Complainant.
For the above-mentioned reasons, the Panel concludes that paragraph 4(a)(i) of the Policy is established.
B. Rights or Legitimate Interests
From the evidence in front of the Panel the Respondent's name is not “Betboo” or “Betboo-100.com”. There is no evidence that the Respondent was commonly known by the Domain Name prior to his registration or that after registration of the Domain Name, it has legitimately become known by the Domain Name for reasons beyond of its simple use. The Respondent also does not possess any apparent rights in or to the BETBOO trademark and the Domain Name was registered only after the Complainant had used its BETBOO trademark for over two years. The Complainant provided a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name, in particular that the Second Respondent has not used the Domain Name in connection with a bona fide offering of goods or services and that it is not making a legitimate noncommercial or fair use of the Domain Name. Therefore, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the Domain Name (see Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630). As in the present proceeding the Respondent failed to submit a Response – a fact that also speaks for a nonexistence of any right or legitimate interest with respect to the Domain Name (see Spenco Medical Corporation v. Transure Enterprise Ltd, WIPO Case No. D2009-1765) – the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
For the above mentioned reasons, the Panel concludes that paragraph 4(a)(ii) of the Policy is established.
C. Registered and Used in Bad Faith
When assessing bad faith in the registration requirement, it should be considered (1) whether the Second Respondent knew of the Complainant and its trademarks (see Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281), and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the Domain Name and the trademark (see Align Technology Inc. v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103).
It is demonstrated that the Respondent registered the Domain Name long after the Complainant's BETBOO registration. The Complainant's <betboo.com> domain name was registered over seven years and transferred to the Complainant over two years before the Respondent’s registration of the Domain Name. The Domain Name was also registered after the Complainant had established the rights in the BETBOO trademark. Given the use that the Complainant has made of the BETBOO trademark and the resulting reputation that it has acquired amongst users of online gaming services, and the fact that the Respondent is using the Domain Name to advertise similar services to the Complainant, the Panel is convinced that the Respondent has known of the BETBOO trademark at the time it registered the Domain Name.
It is demonstrated that by using the Domain Name, the Respondent – by taking advantage of the reputation of the Complainant’s trademark – has intentionally attempted to attract for commercial gain Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's marks as to source, sponsorship, affiliation or endorsement of the Respondent’s website or location. This is evidenced by the fact that the Respondent has reproduced identically on the Website the form in which the Complainant uses its BETBOO trademark on its own Website. This use of the Domain Name has, or has potentially, diverted sales which the Complainant would or may have made through its websites to one of the Complainant’s competitors. Although certain Internet users may realize that the Website is not their intended destination, some visitors will still click on the competitor advertising on the Website rather than navigate away from the Website. It is therefore demonstrated that the Respondent has deliberately set out to create confusion by registering and using the Domain Name in bad faith.
For the above mentioned reasons, the Panel concludes that paragraph 4(a)(iii) of the Policy is established.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <betboo-100.com> is transferred to the Complainant.
Michael A.R. Bernasconi
Date: December 21, 2012