WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corvee Limited, East Pioneer Corporation B.V. v. Superstadyum
Case No. D2012-2226
1. The Parties
The Complainant is Corvee Limited of Guernsey, United Kingdom of Great Britain and Northern Ireland; East Pioneer Corporation B.V. of Curacao, Territory of the Kingdom of the Netherlands, represented by Navarro, United Kingdom.
The Respondent is Superstadyum of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <superbahis438.net> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 13, 2012. On November 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2012, 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 November 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2012.
The Center appointed Kaya Köklü as the sole panelist in this matter on December 12, 2012. 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.
On January 16, 2013, in response to the Panel Order No. 1 sent to the Parties on January 9, 2013, the Complainant provided a further submission to the Center. The Respondent kept silent on this Panel Order and did not provide any reaction.
In accordance with, paragraph 11(a) of the Rules, and since the parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the Registration Agreement (i.e. English).
4. Factual Background
The Complaint has been filed by two companies, which hereinafter – whenever appropriate – are referred to as the Lead Complainant (Corvee Limited) and the Second Complainant (East Pioneer Corporation B.V.).
The Lead Complainant was incorporated as a registered company in Guernsey on October 11, 2011 with Registration No. 54079. The Second Complainant was incorporated as a registered company in Curacao on September 30, 2011 with Registration No. 124311.
The Lead Complainant is wholly owned by Sportingbet Plc. Sportingbet, through its related companies, including Internet Opportunity Entertainment (Sports) Limited ("IOE"), until recently, operated an online gaming and betting business under the name “superbahis“.
The term “superbahis“ origins in the Turkish language and means “super bet” in the English language.
IOE sought to register SUPERBAHIS as a trademark, and on May 10, 2006 filed Community trademark applications (nos. 5068168, 5068234 and 5068259) for SUPERBAHIS in classes 9, 35, 36, 38, 41 and 42 which cover, amongst other things, gambling, betting and casino services.
Based on its own investigations by the Panel, corresponding trademark applications were filed with the competent trademark office in Turkey on May 25, 2006 (nos. 2006/24480, 2006/24476 and 2006/24475). According to the information published in the Turkish trademark register, the applications were all rejected for grounds of absolute refusal.
In November 2011, Sportingbet Plc. sold its business to the Second Complainant. At the same time, the Community trademark SUPERBAHIS was assigned to the Lead Complainant and the Second Complainant
took a licence of the trademark from the Lead Complainant to use the trademark in the sector of gambling and casino services.
The Lead Complainant is also the registrant of the domain names <superbahis.com> and <superbahis438.com>, which are licensed to the Second Complainant. The websites linked to the domain names of the Lead Complainant are in Turkish language and are apparently designed for Turkish speaking consumers only.
The Second Complainant and its predecessors have been carrying on their business under the SUPERBAHIS name since 1998. According to the information provided in the case file, the Complainant’s business is directed to Turkish speaking people all over the world, in particular to users located in Turkey, the United States of America, Germany and Azerbaijan.
The Respondent appears to be a Turkish company located in Istanbul, Turkey. According to the current record, the disputed domain name <superbahis438.net> was first created on August 15, 2012. On the website linked to the disputed domain name, the Respondent offers goods and services related to online gambling and betting.
According to the materials provided by the Complainant in response to the Panel Order No. 1, the Respondent apparently uses the term “suberbahis” as well as the Complainant’s official domain name <superbahis438.com> various times within its source code of the website linked to the disputed domain name. Additionally, the Respondent apparently uses the term “superbahis” in the same type of font and style like the Complainant’s does on its official website ”www.superbahis438.com”.
On becoming aware of the Respondent’s website linked to the disputed domain name, the Complainant’ s authorised representative wrote to the Respondent on September 19, 2012 setting out its concerns. The letter was written on behalf of IOE because, at the time, the recordal of the assignment of the Community trademark SUPERBAHIS to the Lead Complainant had not yet been filed, so the trademark was still in the name of IOE on OHIM’s records. The Complainant received no response to this letter or a subsequent chaser letter that was sent on October 5, 2012.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name to the Lead Complainant.
First, the Complainant argues that it has relevant trademark rights in the term SUPERBAHIS. Beyond its Community trademark rights, the Complainant asserts that it has also acquired unregistered trademark protection in Turkey by virtue of “extensive use” since 2006. The Complainant believes that the disputed domain name is confusingly similar to its SUPERBAHIS trademarks.
Second, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that it has not licensed or otherwise permitted the Respondent to use its Community trademarks and has not permitted the Respondent to register or use any domain name incorporating the term “superbahis”. The Complainant additionally asserts that the Respondent has never used the disputed domain name, nor made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Finally, the Complainant sees no evidence or indication that the Respondent trades under or is commonly known by any name corresponding to the disputed domain name.
Third, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith. It is argued that the Respondent must have known the Complainant’s Community trademarks at the time of registration of the disputed domain name. It is argued that the Respondent is deliberately attempting to divert Internet users to the Respondent’s website in order to take unfair advantage of the Complainant’s trademarks and to generate revenues of such users clicking on the advertising banners. The Complainant further argues that the Respondent registered the disputed domain name mainly for the purpose of disrupting the business of a competitor. In particular, the Complainant believes that using the same type of font and style in its logo as well as the same extension “438” are strong indications for the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 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 name is 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 name; and
(iii) The disputed domain name has been registered and is 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 as appropriate accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
However, it is noted that an independent research by visiting the Internet sites linked to the disputed domain name has been performed by the Panel. In addition, the Panel carried out a non-comprehensive trademark search for the mark SUPERBAHIS in the Turkish trademark register. The competence of the Panel to perform such independent research is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
It is further noted that the Panel has taken note of the WIPO Overview of 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 name <superbahis438.net> is confusingly similar to the registered SUPERBAHIS Community trademarks owned by the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the sign SUPERBAHIS. As evidenced in the Complaint, the Complainant is the registered owner of three Community trademarks covering protection for the term “superbahis”.
Although not identical, the disputed domain name <superbahis438.net> fully incorporates the trademark SUPERBAHIS.
The disputed domain name differs from the trademark only by the addition of the figure “438”. In the Panel’s view, the addition of the figure “438” does not negate the confusing similarity between the Complainant’s trademarks and the disputed domain name. The Panel finds that this incorporation does not create a new distinctiveness separate from the Complainant’s trademark SUPERBAHIS. On the contrary, the full inclusion of the Complainant’s trademark in combination with the figure “438” even enhances the false impression that the website linked to the disputed domain name is somehow officially linked to the Complainant. This false impression is particularly likely as the Complainant officially operates an own website “www.superbahis438.com”, which differs from the disputed domain name only in respect of the “.com” generic top-level domain (gTLD).
Hence, 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 believes that the Respondent has no rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would 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 and sphere of the Respondent. Therefore, the Panel agrees in line with prior UDRP panels that the Complainant is required to make out a prima facie case before the responsibility shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement by providing uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the Complainant’s trademark in the disputed domain name.
In the absence of a Response, the Respondent has failed to provide any evidence demonstrating such a right or legitimate interest or any other evidence of a right or legitimate interest in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In particular, the Respondent is not able to successfully rely on possibly existing user rights based on the fact that the term “superbahis” is a generic term in the Turkish language and (with reference to the refused trademark applications by the Turkish Patent Institute) probably not trademark protectable term in Turkey. However, Turkey is apparently not the only relevant jurisdiction in this case. Although the websites, operated by the Complainant, are in Turkish language only, it is evidenced by the Complainant’s further submission in response to the Panel Order No. 1 that a significant number of its users are located outside Turkey, in particular in Germany, Ireland, the United Kingdom, France, the Netherlands, the United States, the Russian Federation and Azerbaijan. It is demonstrated by the Complainant that its websites comprising the term “superbahis” have about 30,000 visits a month from customers outside the territory of Turkey. Hence, even if the lex loci protectionis principle would apply, it is not only the legal situation in Turkey that is of relevance in the present case. As the Complainant is the registered owner of several Community trademarks in the term SUPERBAHIS and provides its gambling and betting services for customers in various Member States of the European Union, the Panel believes that any use of the “superbahis” in the way the Respondent does in the present case, needs to be assessed as an unauthorized and illegitimate use by the Respondent.
In this regard, the Panel further confirms that the Respondent did not provide (nor does the case file contain) any evidence of a bona fide use of the disputed domain name or any legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. There is also no evidence or indication to assess that the Respondent trades under or is commonly known by any name corresponding to the disputed domain name. On the contrary, the Panel believes that the Respondent tries to gain benefit from click-through revenue only.
In light of the above, the Panel concludes that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent has registered and is using the disputed domain name in bad faith.
As evidenced in the Complaint, the Respondent is using the term “superbahis” in the same type of font and style as the Complainant. Additionally, the Respondent is using the same extension “438” like the Complainant does with his official website at ”www.suberbahis438.com”. Furthermore, the source code of the website linked to the disputed domain name reveals that the Respondent uses the Complainant’s domain name <superbahis438.com> for reference several times.
Hence, it is obvious to the Panel that the Respondent must have known the Complainant and its SUPERBAHIS trademarks when it registered the disputed domain name in 2012.
It is further apparent that the Respondent tries to monetize on the prominence of the Complainant’s SUBERBAHIS trademark. In the Panel’s view, the Respondent’s sole purpose is to create a likelihood of confusion among users, to tarnish the Complainant’s business and/or to put pressure on the Complainant to pay ransom for the hijacked disputed domain name.
The Panel finds that the Respondent's failure to respond to the Complaint additionally supports the above finding that it has registered and is using the disputed domain name in bad faith.
In light of the above, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent.
The Panel therefore concludes that the disputed domain name was registered and is 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.
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 <superbahis438.net> be transferred to the Complainant.
Date: January 23, 2012