WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bwin Services AG v. Brainman Wiaslova / Protected Domain Services

Case No. D2011-0886

1. The Parties

The Complainant is bwin Services AG of Vienna, Austria, represented by Brandl & Talos Rechtsanwaelte GmbH, Austria.

The Respondent is Brainman Wiaslova of Amherst, Massachusetts, United States of America and Protected Domain Services of Denver, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bwin5.com> is registered with Spot Domain LLC dba Domainsite.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 24, 2011, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the disputed domain name. On May 24, 2011, Spot Domain LLC dba Domainsite.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Furthermore, it transmitted a so called, “informative filing”, requesting the Panels declaration that Protected Domain Services is not the Registrant of the disputed domain name and thus, not a Respondent in this case.

The Center sent an email communication to the Complainant on May 26, 2011, 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 amended Complaint on May 27, 2011.

The Center verified that the Complaint together with the amended 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 May 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2011.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on June 28, 2011. 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 company within the bwin.party group, namely the wholly owned subsidiary of the group parent company bwin.party digital entertainment plc, listed on the London Stock Exchange under the ticker BPTY and a member of the FTSE250 Index.

The bwin.party group is the result of the merger between bwin Interactive Entertainment AG and PartyGaming Pic in April 2011 to create the world’s largest listed online gaming company.

The Complainant provides various services to other group companies such as marketing, software development, customer support, regulatory services and business development services.

The bwin.party-group offers sports betting, poker, casino games, bingo, soft games and skill games, an online market, and audio and video streaming on top sports events.

The mark BWIN was registered as an international trademark on February 3, 2006, and the logo “bwin” was registered as an international trademark on March 16, 2006 (International Registration No. 886220 and International Registration No. 896530). The international trademark registrations enjoy protection in inter alia Australia, the People’s Republic of China, Georgia, Japan, Norway, Turkey, the United States of America and lots of countries of the European Union.

Moreover, the Complainant is the owner of the community trademarks BWIN, (No. 007577281) and “bwin” logo (No. 007577331). Additionally, both the word and the logo “bwin” are registered as national trademarks in various countries, such as Argentina, Austria, Andorra, Brazil, Chile, Columbia, India, Japan, Macedonia, Mexico, Peru, United States of America and the Republic of South Africa.

The registered goods and services are:

class 9: Computer software; class 16: Paper, cardboard and goods made from these materials not included in other classes, printed matter; class 35: Advertising; class 36: Financial affairs, monetary affairs; class 38: Telecommunications, in particular news transmission via Internet in context with sport bets and games, provision of communications engineering access to electronic data bases; class 41: Entertainment, in particular performance of sport bets and games, performance of sport events; class 42: Design and development of computer hardware and software.

Furthermore, the Complainant respectively its affiliated companies own numerous domain names containing the mark BWIN.

5. Parties’ Contentions

A. Complainant

The Complainant’s trademark is fully incorporated in the beginning of the disputed domain name. The appearance of “bwin” in the first part of the disputed domain name strongly emphasizes the Complainant’s trademark.

“bwin” is the distinctive part of the disputed domain name. The number “5”, which is added directly to “bwin”, does not provide sufficient distinction from the Complainant’s trademark.

The Respondent is not commonly known by the mark “bwin5” or any part of it. A search in the databases for community and international trademarks and a search in the database TMView of the European Union Trademarks Office did not show any registered trademarks consisting of or containing “bwin5”. This indicates that the Respondent has no trademark rights in the term “bwin5”. The Respondent has no name rights to the term “bwin5” either, and therefore the Respondent has no private interest in holding the disputed domain name <bwin5.com>.

The Complainant has neither licensed the Respondent to use its trademark nor has it authorized the Respondent to register the disputed domain name.

The disputed domain name is not used for a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Rather, the opposite is the case insofar that the Respondent provided an online gaming offer under the disputed domain name. Moreover, he abused the trademark of the Complainant to market its competing services. Additionally, the Respondent displayed the trademark BWIN as well as the trademark BETANDWIN (which also belongs to the Complainant) on its website and tried to create the impression that it was a website of the Complainant or a company of its group. The evidence leads to the assumption that the Respondent is very well aware of the Complainant's trademarks. As a reaction to the cease and desist letter of the Complainant’s legal counsel, the website is no longer available. The behaviour of the Respondent cannot be considered a bona fide offering of goods and services.

The mark and the logo “bwin” were registered as international trademarks in February and March 2006 respectively. In the United States of America, the country in which the Respondent is domiciled, the mark and logo “bwin” were registered in March and May 2007 respectively.

Due to the comprehensive marketing activities of the Complainant and its affiliated the trademark BWIN is very famous (which has been acknowledged by former panels, see, e.g., bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167; bwin International Entertainment AG v. wp, WIPO Case No. DES2009-0018; and bwin Interactive Entertainment AG v. qushaobing, WIPO Case No. D2011-0090).

The Respondent registered the disputed domain name on October 7, 2009. Numerous marketing activities in the years 2006, 2007 and 2008 as well as in the beginning of 2009 meant that the trademark BWIN was very famous at the time of the Respondent’s registration. The fact that the Complainant's trademark is very famous (and was famous already at the time of the disputed domain name registration) is a strong argument for the Respondent's registration and use of the disputed domain name in bad faith. When considering the numerous marketing activities of the Complainant there can be no doubt that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name.

Moreover the Complainant has a substantial presence in the world-wide-web, a fact that can easily be assessed by entering “bwin” or “bwin5” in a search engine. It is the duty of a domain owner to assess if he is violating trademark rights with the registration of the desired domain name before the registration.

In accordance with paragraph 4(b)(iv) of the Policy it shall be considered evidence of the registration and use of the disputed domain name in bad faith if it is indicated that the Respondent acquired the disputed domain name primarily for the purpose of intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.

Until the cease and desist letter was sent on April 7, 2011, the Respondent offered online gaming on its website. Thus, he provided services competing with the services of the Complainant. For these competing services, the Respondent used not only a domain name confusingly similar with the Complainant's trademark, but rather tried to create the impression that he is the Complainant or linked in some way with the Complainant by featuring the marks of the Complainant. The Respondent even used “bwin” as an identifier, e.g. through the featuring of “Copyright © Bwin Bwin”. The Respondent also used the term “betandwin” on its website which is also a famous trademark of the Complainant.

The way the Respondent abuses the trademarks of the Complainant does not only constitute bad faith, but according to the Complainant is an intentional violation of trademark rights which constitutes a criminal offense and unfair competition.

The Respondent neither replied to the cease and desist letter, nor did he transfer the disputed domain name, which is a further evidence for his bad faith.

For all the reasons stated above, there can be no serious doubt that the disputed domain name was registered und is being used in bad faith and the Panel should decide that the disputed domain name shall be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Preliminary Issue, the Status of Protected Domain Services

At the explicit request of Protected Domain Services, the privacy service employed by the underlying Respondent to this case, this Panel also sees the need to comment on the issue of amendments to complaints, resulting in several respondents.

It is increasingly common for registrants to employ privacy services, a reality which previous UDRP panels have addressed.

As described in Divex Limited v. ZJ, Sam Chang and Tim NG, WIPO Case No. D2007-0861, most panels appear to treat as the respondent the underlying registrant, i.e. the person or entity that has engaged the privacy service, even when that person or entity cannot be identified, see Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183. Other panels, as can be concluded from some recent cases, such as Mark Alan Pearson and Markco Media Limited v. Domains by Proxy, Inc. and China Snake Media, WIPO Case No. D2009-0253, although the panel did proceed to find the party that had engaged the privacy service (and not the privacy service itself) to be the substantive respondent, have suggested that the definition of the respondent in the Rules should be interpreted literally. The different interpretations and its adherence to the Policy and the Rules have been comprehensively discussed in, e.g., Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324.

In most cases where a privacy service has been used by the registrant, the registrar has in its verification email disclosed to the Center of the actual registrant of the disputed domain name. However, as noted by the panel in the decision cited above, a registrant that chooses to register through a privacy service and the registrar that provides such registration must bear some of the consequences of anonymous registration. See F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854; Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881. This should also be the case for the agency providing these kinds of privacy services.

The identity of the Respondent

The Complainant has identified the natural person Brainman Wiaslova in its amended Complaint as the Respondent in this case. The Center has chosen to include Protected Domain Services in the section where the Respondent to the case is identified.

As stated in the panel decision, Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0324, the ICANN name registration system requires a registrar to register a domain name upon its receipt of a proper registration agreement duly completed by a registrant; a registrar is forbidden to undertake any investigation to verify for example, the truth of a registrant’s representation and warranty that “to [the registrant's] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” (Policy, paragraph 2(b)). However, if, as in this case, a privacy service is entered into the registrar’s registers for its own account, when faced with Policy proceedings it still must demonstrate its own legitimate interest in the disputed domain name, and may not be wilfully blind to the marks of third parties. Thus, if a privacy service registers as agent, as appears to be the case here, it obtains no greater rights than its principal, the person engaging its privacy service. This is also a general legal rule in agency relations. Acts taken by the agent are binding on the principal.

However, in this case, the privacy service has duly released the identity of the registrant of the disputed domain name. The Respondent is in fact Brainman Wiaslova. Given that the identity of the registrant is known, this Panel will decide on the merits of this case in relation to Brainman Wiaslova only. There is no reason to assess the circumstances under the supposition that Protected Domain Services is a party to this case.

A. Identical or Confusingly Similar

The disputed domain name differs from the Complainant’s mark only by the addition of the number “5” which cannot serve to distinguish the disputed domain name from the registered trademarks of the Complainant.

Prior panels have also found that use of a company’s entire trademark with non-distinctive and descriptive matter creates confusion; see, e.g., ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034 (finding <worldcup2002[.com, .org. and .net]> to be confusingly similar to the WORLDCUP mark.); see also The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664 (finding <priceclub2000.com> to be confusingly similar to the PRICE CLUB mark).

According to well established consensus view of the UDRP panels, the “.com” suffix denoting second-level domain status in the disputed domain name does not affect the fact that the disputed domain name is confusingly similar to Complainant’s marks pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is a consensus, amongst UDRP panels, that a respondent's default does not automatically result in a decision in favour of the complainant. The Complainant is still required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), paragraph 2.1, and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

It is clear from the submitted evidence that, prior to the cease and desist letter sent by the Complainant, the Respondent has used the disputed domain name in a manner which can only be considered as deceptive. Attempting to portray itself as, or at least as affiliated with, the Complainant, is intentional and clearly cannot amount to a bona fide offering of goods and services. Having considered the submissions of the Complainant, the Panel finds that the Respondent is not connected with the Complainant and is not commonly known by the disputed domain name, but uses the Complainant’s mark with an intention to derive commercial advantage from the trademarks of the Complainant. Such use by the Respondent is not a legitimate noncommercial or fair use and does not confer any rights in favour of the Respondent. The non-use of the disputed domain name after the apparent receipt of the Complainant’s cease and desist letter cannot alter these findings. Moreover, the file contains no evidence to suggest a legitimate interest, and the lack of a reply from the Respondent only adds to this perception. Hence, the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The Complainant has asserted that the Respondent must have known of the Complainant’s trademark rights because of the well-known character of the Complainant’s marks. The Panel finds that the assertion is substantiated through the supporting evidence submitted by the Complainant.

The Complainant has extensively used and marketed its trademark in inter alia the United States of America (the Respondent’s country of residence). The Panel considers the trademark BWIN as well-known. Absent any response, the Panel finds it inconceivable that the Respondent was unaware of the trademark rights of the Complainant at the time of the registration. This finding is further supported by the obvious bad faith use made of the disputed domain name, prior to April 6, 2011, the date of the cease and desist letter.

Apart from the above, the Panel also holds the view of previous panels, expressed e.g. in Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, where it was observed:

“The Panel, however, also notes that subparagraphs of Paragraph 4(b) are not intended to be the exclusive criterion of bad faith use. The Panel believes that bad faith use can also exist in situations, such as the instant one, where (i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainant’s trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well-known mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name. Among other things, in these circumstances and absent a transferal, Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site.”

The Panel thus finds that the Complainant has fulfilled its evidentiary burden and proved that the disputed domain name has been registered and is being used in bad faith.

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 name <bwin5.com> be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Dated: July 12, 2011