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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GVC Holdings plc / ElectraWorks Limited v. Registration Private, Domains By Proxy, LLC / Adnan Atakan Alta

Case No. D2016-2563

1. The Parties

The Complainants are GVC Holdings plc of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and ElectraWorks Limited of Gibraltar, Overseas Territory of United Kingdom, represented by IPQ IP Specialists AB, Sweden.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Adnan Atakan Alta of Girne, Cyprus.

2. The Domain Names and Registrar

The disputed domain names <betbwin1.com>, <betbwin2.com>, <betbwin24.com> and <betbwin365.com> 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 18, 2016. On December 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 20, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 9, 2017.

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” 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2017.

The Center appointed Kaya Köklü as the sole panelist in this matter on February 7, 2017. 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 composed of two companies, which belong to the same group (both of them jointly referred to as “the Complainant” in the following decision). The Complainant is a leading provider of online betting and gambling services throughout the world.

It is the owner of the word and figurative trademark BWIN, which is registered and prominently used since August 2006 in many jurisdictions worldwide. BWIN is the result of a rebranding of “bet and win”, which was used formerly by the Complainant and its predecessors.

The Complainant also operates hundreds of domain names, which fully include the trademark BWIN, such as <bwin.com>, <bwinbets.es> and <bwinbetting.eu> since many years.

According to the current record, the disputed domain names were all created on August 28, 2016 by the Respondent.

The Respondent is composed of a domain name privacy registration service and an individual person apparently from Cyprus (both of them jointly referred to as “the Respondent” in the following decision).

At the time of the decision, the disputed domain names were redirected to a third-party website providing online betting and gambling services in Turkish. However, the provided screenshots of the former websites directly linked to the disputed domain names in Annex 12.1 and Annex 12.2 of the Complaint show that at least until the October 14, 2016, the Respondent not only prominently used the Complainant’s BWIN trademark, but also embedded live broadcasting services from the official website of the Complainant.

Provided screenshots of a recorded live chat on the website linked to the disputed domain name <betbwin365.com> indicate that the Respondent asserted to be active since 1999 under the brand “betbwin” and to own an official license from Gibraltar.

According to the available record, the Respondent did not reply to the cease-and-desist letter sent by the Complainant on November 21, 2016 asking for the immediate cease of use and the transfer of the disputed domain names to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant believes the disputed domain names are confusingly similar to the Complainant’s BWIN trademark.

The Complainant argues that the main difference between the disputed domain names and the Complainant’s trademark is that the disputed domain names additionally comprise the descriptive term “bet” in combination with the figures 1, 2, 24 or 365. The Complainant is of the opinion that the addition of the term “bet” in combination with the mentioned figures does not negate the confusing similarity with its BWIN trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular, the Complainant states that it has never granted a permission or license to the Respondent to use its BWIN trademark. The Complainant further alleges that the Respondent has never used and does not intend to use its trademark in connection with a bona fide offering of goods and services or any other legitimate interest.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant believes that the Respondent was aware of the Complainant’s BWIN trademark, when registering the disputed domain names. The Complainant is further of the opinion that the Respondent apparently tries to mislead Internet users who are searching for the services provided by the Complainant and to gain illegitimate benefits by jeopardizing the goodwill of the BWIN trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraphs 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to the trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the BWIN trademark of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in BWIN. As evidenced in the Complaint, the Complainant is the owner of the BWIN trademark, which is registered in many jurisdictions worldwide.

Although not identical, the disputed domain names fully incorporate the Complainant’s BWIN trademark.

The disputed domain names differ from the Complainant’s BWIN trademark only by the addition of the descriptive term “bet” in combination with the figures 1, 2, 24 or 365. In the Panel’s view, the addition of these descriptive elements does not negate the confusing similarity between the Complainant’s trademark BWIN and the disputed domain names. The Panel finds that the additional incorporations are purely descriptive elements and do not distinguish the disputed domain names from the Complainant’s BWIN trademark. Quite the opposite, the full inclusion of the Complainant’s trademark in combination with “bet”, which is directly linked to its provided online betting and gambling services, may even enhance the false impression that the disputed domain names are officially related to the Complainant. The Panel concludes that the disputed domain names are likely to confuse Internet users into their believing that the disputed domain names are affiliated or endorsed by the Complainant or that the use of the disputed domain names is at least authorized by the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain names.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s BWIN trademark in the disputed domain names.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).

In the absence of a Response by the Respondent, there is no indication in the case file that the Respondent might be commonly known by the disputed domain names. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain names. Particularly, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services. Indeed, given the circumstances of this case, the Panel finds it hard to conceive of any use of the BWIN trademark by the Respondent, which would qualify as a legitimate use.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain names in bad faith.

The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users and/or to tarnish the Complainant’s BWIN trademark, apparently for illegitimate commercial gain, particularly for the following reasons.

First, the Panel believes that the Respondent was aware of the Complainant’s BWIN trademark when it registered the disputed domain names on August 28, 2016. At the date of registration of the disputed domain names, the Complainant’s BWIN trademark was already widely known in the field of online gambling and betting for many years, including in Turkey and Cyprus. Furthermore, the way of using the Complainant’s figurative trademark BWIN on the websites linked to the disputed domain names strongly indicates that the Respondent has deliberately chosen the Complainant’s trademark as the distinctive part of the disputed domain names to mislead Internet users who are searching for the betting and gambling services provided by the Complainant. The embedding of content from the official website of the Complainant into the websites linked to the disputed domain names further strongly indicates the Respondents bad faith intentions.

Second, the Panel notes that the Respondent used a privacy service when creating the disputed domain names. Although privacy services might be legitimate in certain circumstances, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain names (which fully incorporate the Complainant’s trademark), the content as well as the design of the Respondent’s corresponding websites rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.

Third, the Respondent preferred not to respond to the Complainant’s cease-and-desist letter of November 21, 2016 and its contentions within the pending administrative proceeding.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.

All in all, the Panel concludes that the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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 disputed domain names <betbwin1.com>, <betbwin2.com>, <betbwin24.com> and <betbwin365.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: February 21, 2017

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