WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bwin Services AG v. wang jian aka jian wang

Case No. D2011-0900

1. The Parties

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

The Respondent is wang jian aka jian wang of Beijing, the People’s Republic of China, represented by himself.

2. The Domain Name and Registrar

The disputed domain name <5bwin.com> is registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2011. On May 25, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On May 26, 2011, HiChina Zhicheng Technology Ltd. (“the Registrar”) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On May 27, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 30, 2011, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center has verified that the Complaint satisfies 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 proceeding commenced on June 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 23, 2011.

On June 17, 2011 and June 20, 2011, the Center received email communications from the Respondent requesting extensions of time for filing the Response. On June 20, 2011, the Center invited the Complainant to comment on the Respondent’s extension requests by email. On June 21, 2011, the Complainant objected to such requests. Taking into account the Respondent’s stated reasons for the extension requests, and considering the Complainant’s objection, the Center granted an extension of time until June 27, 2011.

The Response was filed with the Center on June 27, 2011.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 4, 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

A. Complainant

The Complainant is a company incorporated in Austria and conducting business in the area of online gaming and the owner of international word and logo trade mark registrations for the trade mark BWIN (the “Trade Mark”), registered since February 2006.

B. Respondent

The Respondent is an individual apparently with an address in China.

The disputed domain name was registered on March 7, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant made submissions in the Complaint as follows.

The Complainant is part of the bwin.party group of companies (the “Group”), the world’s largest listed online gaming group of companies.

The Group offers online sports betting, poker, casino games, bingo, soft games and skill games, and online audio and video streaming of top sports events to its customers, all under the Trade Mark and via the Group’s “www.bwin.com” website, available in 22 different languages. The Group has about 20 million registered customers in more than 25 countries around the world. In the year 2009, the Group had gross gaming revenues of EURO 423 million and marketing expenses of EURO 99 million.

The Group sponsors (under the Trade Mark) world famous soccer clubs like Real Madrid; the BA-CA Tennis Trophy; MotoGP in Brno, Jerez, Barcelona and Valencia; the Portuguese Soccer League and the German Basketball League.

The disputed domain name is confusingly similar to the Trade Mark and the addition of the number “5” to the disputed domain name does not serve to distinguish it from the Trade Mark.

The Respondent is an individual, is not commonly known under the disputed domain name and does not have any trade mark rights in respect of the disputed domain name.

The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain name. The Respondent is not making a bona fide offering of goods or services under the disputed domain name and is not making a legitimate non-commercial or fair use of the disputed domain name.

The Respondent is using the disputed domain name in respect of a website which offers online gambling and gaming services in competition with the Complainant (the “Website”).

In registering the disputed domain name comprising the Complainant’s well-known Trade Mark, the Respondent has registered and is using the disputed domain name in bad faith. The Respondent is using the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Website.

B. Respondent

The Respondent submitted copies of a certificate of registration issued by the Registrar of the disputed domain name and several business registration and other similar certificates issued by various government bodies in China in respect of the operation of the Website.

The Respondent also submitted evidence of his use of the disputed domain name including screen shots of the Website and details of customers, revenue and advertising expenditure.

The Respondent contends that the nature of its business is different from the nature of the Complainant’s business. The Respondent claims it does business in the area of lotteries which is different from the Complainant’s business. The Respondent also claims it is not a competitor of the Complainant.

The Respondent further contends that the meaning of the disputed domain name in Chinese is “I will definitely win”, the numeral “5” meaning “I”. The Respondent also submits that the “5bwin.com” logo it uses on the Website is different to the Trade Mark.

6. Discussion and Findings

A. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be conducted in English.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) According to previous UDRP decisions, it is in the spirit of the Rules to ensure fairness in the selection of the language in giving full consideration to the parties’ level of comfort with the language, the expenses to be incurred and the possibility of delay;

(2) The Complainant is only able to communicate in English or German and, if the Complainant is required to submit the Complaint in Chinese, the proceeding will be unduly delayed and the Complainant will incur substantial translation expenses;

(3) English is the most popular language in international business and nearly everybody involved in business is able to speak English.

The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

The Complainant has not adduced any evidence to suggest the Respondent is conversant and proficient in the English language. The Panel does not agree with the Complainant’s contention that nearly everybody involved in business is able to speak English.

However, the Panel notes the Respondent has communicated with the Center twice by email in fluent English in requesting extensions of time for filing the Response. Had the Respondent filed cogent submissions requesting that the language of the proceeding be Chinese, the Panel would likely have been sympathetic to such submissions. However, in all the circumstances, the Panel finds on the evidence it is likely the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).

In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) that:

(1) The Panel will accept the filing of the Complaint in English;

(2) The Panel will accept the filing of the Response in Chinese;

(3) The Panel will render the Decision in English.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name.

UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

In the present case, the Panel concludes that the addition of the non-distinctive numeral “5” does not serve to distinguish the disputed domain name from the Trade Mark. The Panel does not find the submissions of the Respondent regarding the purported meaning of the disputed domain name at all credible. The Panel finds the disputed domain name is confusingly similar to the Trade Mark both visually, aurally and in meaning.

The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden of production is thus on the Respondent to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The evidence suggests the Website is used by the Respondent to offer the same lottery and sports betting services offered by the Complainant under the Trade Mark. The use of the Trade Mark in this manner without the authorization of the Complainant does not give rise to any rights or legitimate interests in the disputed domain name on the part of the Respondent.

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. In this regard, the Panel would note that, absent any trade mark registrations in China, the mere fact the Respondent has been using the disputed domain name as evidenced in both the Complaint and the Response does not give rise to any trade mark rights on the part of the Respondent under Chinese law.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

In registering and using the disputed domain name the Respondent is clearly using the well-known Trade Mark of the Complainant in order to attract Internet users to the Website. The Panel finds use of the Trade Mark in this manner in order to promote online gaming and gambling services is clear evidence of bad faith.

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all 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 <5bwin.com> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: July 6, 2011