WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Provent Holdings Ltd., Harmony Park International Inc. v. Xia jiang / ganzao huang
Case No. D2014-2226
1. The Parties
The Complainants are Provent Holdings Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“British Virgin Islands”) and Harmony Park International Inc. of Belize City, Belize represented by Quahe Woo & Palmer LLC, Singapore.
The Respondent is xia jiang of Shengxiao, Hong Kong, China / ganzao huang of xiamenshi, “Alabama, United States of America” (“United States”).
2. The Domain Names and Registrar
The disputed domain names <m88abc.com> and <m88gg.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 22, 2014, 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 January 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2015.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 5, 2015. 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.
Consolidated complaint
As stated in Section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0), in order for multiple complainants to file a single complaint against multiple respondents, the complainants must accompany the complaint by a request for consolidation which establishes the following criteria:
“(i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion;
(ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”1
The Panel finds that consolidation in this case is proper. On December 19, 2014, the Complainants Provent Holdings Ltd. and Harmony Park International Inc. filed a joint complaint against xia jiang of Shengxiao, Hong Kong, China / ganzao huang of xiamenshi, “Alabama, United States”. First, the Complainants have a specific common grievance against the Respondents because the Complainant Provent Holdings Ltd. licensed the use of its M88 trademarks and its domain names incorporating the M88 trademark to the Complainant Harmony Park International Inc. Second, it would be equitable and procedurally efficient to permit the consolidation because the Domain Names are likely to be owned by the same person (the “Respondent”). The evidence on file shows that the registrants’ email addresses for the Domain Names are identical, the Domain Names resolve to websites with identical content, which replicates content of a website associated with the Complainants’ domain names and the Domain Names are registered with the same Registrar. WhoIs information reveals that both websites have the same IP address. It would be unjust to force each of the Complainants to incur additional costs by making them file a separate complaint. Thus, the consolidation is proper.
4. Factual Background
The Complainants own several trademark registrations and applications for trademark registration in the M88 trademark, (the “M88 trademark”) including the Chinese trademark registration No. 302331314 dated July 31, 2012, and trademark registration No. 41-0273819 of the Republic of Korea dated November 22, 2013 The Complainants also won several applications for trademark registration in M88.COM and several other trademarks. The Complainants operate an online casino, poker, sports book and sports exchange gaming websites connected to the <m88sb.com> domain name.
The Respondent registered the <m888abc.com> domain name on March 6, 2014, and the <m88gg.com> domain name on March 12, 2014. The Domain Names direct visitors to identical websites in the Chinese language that appear to be running an online casino (the “Websites”). The Websites are similar in look and feel to the Complainants’ website to which the <m88sb.com> domain name resolves. The Websites also display several other trademarks belonging to the Complainants.
5. Parties’ Contentions
A. Complainants
The Complainants claim that the first Complainant is a British Virgin Island company that owns several trademark registrations and applications for trademark registration in the M88 trademark and M88.COM trademark. The second Complainant is a Belizean company, that licensed the M88 and M88.COM trademarks and several domain names, such as <m88.com> and <mansion88.com> from the first Complainant. The Complainants claim that the second Complainant operates leading international online casino, poker, sports book and sports exchange gaming websites. The Complainants allege that they have acquired substantial goodwill in the M88 and M88.COM trademarks due to extensive advertising and sponsorship deals. The Complainants claim that the Domain Names are identical or confusingly similar to the registered and unregistered M88 and M88.COM trademarks in which the Complainants have rights. The Complainants assert that addition of the elements “abc” and “gg” to the Domain Names and the generic Top-Level Domain suffix “.com” have minimal impact in reducing confusing similarity with the Complainants’ trademarks.
The Complainants claim that the Respondent has no rights or legitimate interests in the Domain Names because the Respondent has never used or made preparations to use the Domain Names in connection with a bona fide offering of goods or services. According to the Complainants, the Websites masquerade as an affiliate of the M88 and M88.COM trademarks. The Complainants claim they has never licensed or authorized the Respondent to use the M88 or M88.COM trademarks. The Complainants argue that the Respondent only use the Domain Names to deceive visitors into thinking that the Websites are affiliated with the Complainants. In addition, the Complainants assert that the Respondent’s Websites display other trademarks belonging to the Complainants. The Complainants claim that the Respondent created the Domain Names to run phishing websites indented to deceive existing and potential customers of the Complainants, so they divulge their personal and credit card information. The Complainants also claim that the Respondent has not been commonly known by the Domain Names.
The Complainants allege that the Domain Names were registered and are being used in bad faith. The Complainants assert that because the Respondent does not use the Domain Names in a bona fide manner, the Respondent registered the Domain Names to exploit the M88 and M88.COM trademarks for commercial gain. The Complainants claim that the Respondent’s use of the Domain Names is to cause Internet users to mistake the Respondent’s Websites as belonging to or associated with the Complainants’ trademarks because the Respondent offers services identical to those of the Complainants. Finally, the Complainants claim that the Respondents’ false contact information provided during registration of the Domain Names further shows its bad faith use.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In this UDRP proceeding, the Complainants must prove, by a preponderance of the evidence2 each of the following UDRP elements3 :
(i) the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. The Complainants demonstrated their rights in the M88 trademark by submission of copies of multiple trademark registrations for the M88 trademark, such as the Chinese trademark registration No. 302331314 dated July 31, 2012, and trademark registration No. 41-0273819 of the Republic of Korea dated November 22, 2013. The Panel finds that the Domain Names are confusingly similar to the Complainants’ M88 trademark. The test for confusing similarity should be a comparison between the mark and the domain name.4 To satisfy this test, the trademark must be recognizable within the domain name, the addition of common, dictionary, descriptive, or negative terms, typically being insufficient to prevent threshold Internet user confusion.5
The domain name <m88abc.com> comprises the letter “m”, the numbers “88”, the letters “abc” and the gTLD “.com”. The domain name <m88gg.com> comprises the letter “m”, the numbers “88”, the letters “gg” and the gTLD “.com”. The Domain Names are confusingly similar to the Complainants’ trademark because the Complainants’ trademark is incorporated in its entirety.6 Adding merely generic or descriptive wording to a complainant’s trademark, like the letters “abc” or “gg”, where the mark constitutes the dominant part of the domain name, cannot avoid a finding of confusing similarity.7 It is also well established that adding the gTLD “.com” or equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.8
Therefore, the Panel finds that the Complainants have satisfied the first UDRP element by proving that the Domain Names are confusingly similar to the M88 trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainants are “required to make out a prima facie case that the respondent lacks rights or legitimate interests”9 in the Domain Names.10
Under the preponderance of the evidence standard used in UDRP proceedings, an asserting party must typically establish that it is more likely than not that the claimed fact is true.11 The Panel finds the Respondent probably does not have rights or legitimate interests in the Domain Names for several reasons. First, it is not commonly known by the name M88. Second, the Complainants neither authorized, nor licensed the Respondent to use the M88 trademark or to register the Domain Names incorporating the M88 mark. Third, the evidence on file shows that the Respondent knows of the Complainants’ M88 trademark and have been using the Domain Names to trade on the Complainants’ goodwill. Such use cannot provide the Respondent with rights or legitimate interests in the Domain Names. The evidence on record shows that the websites at “www.m88abc.com” and “www.m88gg.com” display identical graphics, which are also identical to the look and feel of the Complainants’ website “www.m88sb.com”. In addition, the Respondent’s use of the Domain Names that are confusingly similar to the Complainants’ M88 trademark for the websites that are not connected with the Complainants but displaying contents copied from the Complainants’ own website and other registered trademarks owned by the Complainants and offer online gambling services that are identical to the Complainants’ services. Under no circumstances may such use confer rights or legitimate interests in the Domain Names on the Respondent.
The Panel, therefore, finds that the Complainants made out a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Names. There is a consensus view amongst UDRP panelists that “[o]nce [a] prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name”.12 If the respondent fails to offer such appropriate allegations or evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.13 By failing to respond to the Complainants’ contentions, the Respondent failed to satisfy its burden of production. Therefore, the Panel finds that the Complainants satisfied the second UDRP element.
C. Registered and Used in Bad Faith
To satisfy the third UDRP element, the Complainants must prove that the Domain Names were registered and are being used in bad faith.14
First, it cannot be a coincidence that the Websites associated with the Domain Names look virtually identical to the Complainants’ website at “www.m88sb.com”. The Websites display graphics identical to the graphics displayed on the Complainants’ website and other trademarks belonging to the Complainants. Because the Respondent registered the Domain Names at least two years after the Complainants registered their M88 trademark, it likely the Respondent knew about the Complainants’ M88 trademark when they registered the Domain Names.
Second, it is likely that the Respondent intentionally attempts to attract, for commercial gain, Internet users to its the Websites, by creating a likelihood of confusion with the Complainants’ M88 trademarks on the source, sponsorship, affiliation, or endorsement of the Websites because the Respondent made both its Domain Names and the Websites look very similar to the Complainants’ official website and trademarks to divert customers from the Complainants. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the UDRP.
Third, the Complainants also contend that the Respondent’s bad faith is shown in its registration of the Domain names by using inaccurate contact information. The Panel agrees that the Respondent’s purposefully using false contact information in registering the Domain Names to conceal its identity may be an additional proof of the Respondent’s bad faith.
The Panel, therefore, finds that the Complainant has established the third element of paragraph 4(a) of the UDRP.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain names, <m88abc.com> and <m88gg.com>, be transferred to the Complainants.
Olga Zalomiy
Sole Panelist
Date: February 18, 2015
1 Paragraph 4.16, WIPO Overview 2.0.
2 Paragraph 4.7, WIPO Overview 2.0.
3 Paragraph 4(a) of the Policy.
4 Paragraph 1.2, WIPO Overview 2.0.
5 Id.
6 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.
7 Paragraph 1.9, WIPO Overview 2.0.
8 Paragraph 1.2, WIPO Overview 2.0.
9 Paragraph 2.1, WIPO Overview 2.0.
10 Paragraph 4(a)(ii) of the UDRP.
11 Paragraph 4.7, WIPO Overview 2.0.
12 Paragraph 2.1, WIPO Overview 2.0.
13 Id.
14 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.