WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merryvale Limited v. Wikid Networks
Case No. D2013-0235
1. The Parties
The Complainant is Merryvale Limited of Alderney, Channel Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland represented by Morrison & Foerster (UK) LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Wikid Networks of Thornhill, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <betwaybingo.com> 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 February 4, 2013. On February 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2013, the Registrar 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 February 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2013.
The Center appointed Petter Rindforth as the sole panelist in this matter on March 4, 2013. 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of the trademark BETWAY, registered as:
BETWAY (word), Community Trademark Registration (CTM) No 004832325, registered January 26, 2007 for goods and services in Clauses 9 and 41;
BETWAY (word), Reg. No. 3393148, registered March 4, 2008 for services in Class 41 - issued by the United States Patent and Trademark Office (“USPTO”);
BETWAY (word), Australian national Reg. No. 1094468, registered January 13, 2006 for goods and services in Clauses 9 and 41; and
BETWAY (word), Canadian national Reg. No.TMA702542, registered December 7, 2007 in respect of “software downloadable via the Internet for use in association with gaming services, games of chance and casino-style gaming” and “entertainment services, namely the provision of game services and gambling services provided on-line and information relating to entertainment on-line”.
(Printouts showing the above registrations are provided by the Complainant as Annex 4 - 7 of the Complaint).
The disputed domain name <betwaybingo.com> was registered on January 29, 2008. No detailed information is provided about the Respondent’s activities, apart from what is mentioned above under Procedural History, and below by the Complainant.
5. Parties’ Contentions
The Complainant informs that the BETWAY trademark is used since 2005 in the operation and promotion of the website operating under the domain name <betway.com>, which offers online sports betting, online casino-style and other games and online poker services (“BETWAY.COM”). Among the online games offered on BETWAY.COM are a number of bingo games (shown by Annex 8 of the Complaint).
The domain name <betway.com> was registered on May 13, 2002 in the name of the Complainant’s parent company, Didcot Universal Limited. A large number of other, legitimate, related BETWAY domain names have also been registered by affiliated companies of the Complainant.
According to the Complainant is <betwaybingo.com> confusingly similar to the trademark BETWAY, as the use of BETWAY in the disputed domain name is dominant and clearly recognizable, and the addition of the generic word “bingo” does not avoid the potential for confusion but rather reinforces and increases it.
The Complainant states that the Respondent can have no rights or legitimate interests in respect of <betwaybingo.com>, as: i) the Respondent is not a licensee of the Complainant nor is the Respondent otherwise authorized to use the BETWAY trademark for any purposes, ii) to the Complainant’s knowledge, the Respondent has no independent intellectual property rights in the disputed domain name, iii) the Respondent is not using the disputed domain name <betwaybingo.com> in connection with a bona fide offering of goods or services, and the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant’s affiliate company and solicitors sent “cease and desist” letters to the Respondent on September 19, 2012 and October 18, 2012, claiming that the Respondent was infringing the Complainant’s rights in the BETWAY trademark by the registration of the disputed domain name and operation of a website from <betwaybingo.com>, demanding that the Respondent transfer the disputed domain name to the Complainant or its affiliate company. The Respondent did not respond to either of these letters refuting these allegations or asserting any rights or legitimate interests in respect of either the disputed domain name <betwaybingo.com> or the BETWAY trademark.
Finally, the Complainant - referring to a number of previous UIDRP cases - argues that the disputed domain name was both registered and is being used by the Respondent in bad faith.
The disputed domain name <betwaybingo.com> was registered by the Respondent on January 29, 2008, sometime after the registration of the BETWAY trademark, when the trademark was already globally well-established.
The Complainant states that the Respondent clearly knew of the BETWAY trademark and BETWAY.COM at the time of the domain name registration, which is reinforced by the fact that the Respondent elected in registering the disputed domain name to combine the BETWAY trademark with the word “bingo”, being one category of the games available on BETWAY.COM.
The Respondent subsequently set up a website connected to the disputed domain name, with the simple test “default website” followed by a hyperlink labeled “Looking for bingo?”.
The said hyperlink previously redirected users to BINGOHOTEL.COM, being a casino style games website that is a direct competitor of BETWAY.COM, and currently redirects users to FREEBINGO.CA, an alternative casino style games website that is described on its “About” page as an “online social game community focusing on bingo and lottery games”, and, as such, is also a direct competitor of BETWAY.COM.
The use by the Respondent of the disputed domain name to redirect Internet users via a hyperlink to websites which are plainly in competition with BETWAY.COM is clear evidence of bad faith registration and use of the disputed domain name <betwaybingo.com>.
According to the Complainant, the Respondent has registered a large number of other domain names, many of which also incorporate the term “bingo” and similarly appear not to have been registered for a legitimate purpose.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is 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 name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the BETWAY trademark, registered in a number of countries, including Canada – the home country of the Respondent.
The relevant part of the disputed domain name is “betwaybingo”. The Panel concludes that the domain name consists of the Complainant’s trademark BETWAY, with the addition of the generic word “bingo”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark.
The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’ is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”); see also Goyard St-Honore v. WhoisGuard, WhoisGuard Protected, Brucef Lee, WIPO Case No. D2011-1837 (“In this case, the descriptive terms “bags” and “shop” have been appended to the Complainant’s registered GOYARD mark, which may serve to heighten Internet user confusion”).
The Panel therefore concludes that the disputed domain name <betwaybingo.com> is confusingly similar to the Complainant’s trade mark BETWAY.
B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden of production of evidence shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1.
By not submitting a formal Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
The Respondent is not an authorized agent or licensee of the Complainant’s goods or services and has no other permission to apply for any domain name/s incorporating the trademark BETWAY.
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
On the contrary, the Panel finds that the Respondent’s of the disputed domain name to redirect users to a competing website of BETWAY.COM. Such use does not establish rights or legitimate interests. See Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade[…] off Complainant’s trademark […] is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd. WIPO Case No. D2010-1680 (registration of a domain name “for the purpose of misleading or diverting consumers” cannot give to rise rights or legitimate interests”).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s trademark registrations for BETWAY cover, among other countries, Canada – the home country of the Respondent.
Further, the Panel notes that the Complainant registered the trademark BETWAY in Canada on December 7, 2007. The Respondent registered the disputed domain name <betwaybingo.com> on January 29, 2008.
Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name, and that the addition of the generic word “bingo” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with the Complainant’s mark and services as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. See GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826 (finding that a respondent’s knowledge of a complainant’s trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant’s trademark and a term “clearly relate[d]” to the complainant’s products).
The disputed domain name is used for a website with links to other websites - that may or may not be hold by the Respondent - offering for sale competing services
In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith); see also Swarovski Aktiengesellschaft v. Chen Meifeng, WIPO Case No. D2011-0364 (“the incorporation of Complainant’s trademark in the disputed domain name combined with the content featured on the domain name exhibits intent to deceive consumers into believing that the domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. Continued use of the domain name in this manner contributes to a risk of consumers mistakenly believing that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s <swarovski.com> and <swarovski.net> domain names”).
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
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 name <betwaybingo.com> be transferred to the Complainant.
Date: March 18, 2013