WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Newcote International Limited, Victor Chandler International Limited v. Isen Murtishi
Case No. D2013-0198
1. The Parties
The Complainants are Newcote International Limited of Nassau, Bahamas; Victor Chandler International Limited of Gibraltar, Overseas Territory of the United Kingdom (“United Kingdom”), represented by Olswang LLP, United Kingdom.
The Respondent is Isen Murtishi of Gostivar, Macedonia.
2. The Domain Names and Registrar
The disputed domain names <betvictor.co>, <betviktor.com>, <vctorchandler.com> and <victorchandler.co> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2013. On January 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 29, 2013, 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 Complainants on February 4, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 15, 2013 and requested to add the domain name <betviktor.com> to the proceeding. On February 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <betviktor.com>. On February 19, 2013, 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. In response to a notification by the Center that the amended Complaint was administratively deficient, the Complainants filed a second amended Complaint on February 22, 2013.
The Center verified that the Complaint together with the amended Complaints 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 February 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2013.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 28, 2013. 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 Complainants are part of the Victor Chandler Group, which have been providing betting services and gambling facilities for decades in the United Kingdom, under the trademark VICTOR CHANDLER.
In 2012, the Complaints’ online betting platform was rebranded to BETVICTOR, serving over 500.000 customers located in over 160 countries.
The Complainants own several European Community Trademark registrations for the mark VICTOR CHANDLER, since 1998, and many domain names that incorporate such mark, since 1997.
Additionally, the Complainants own a European Community Trademark registration for the mark BETVICTOR, filed on December 17, 2010, and several domain names that incorporate such mark, since 2002.
The disputed domain names were registered in the following dates:
<vctorchandler.com> July 25, 2010;
<victorchandler.co> July 20, 2010;
<betvictor.co> February 25, 2011; and
<betviktor.com> February 25, 2011.
The Panel tried to access the disputed domain names <betvictor.co> and <betviktor.com> on April 8, 2013, when they were not linked to any active website. At the same date, the Panel verified that the disputed domain names <vctorchandler.com> and <victorchandler.co> were linked to a website offering betting services under the brand BET365.
5. Parties’ Contentions
The Complainants make the following contentions:
a) The disputed domain names are either identical or highly similar to the Complainants’ Group trademarks or domain names, as well to the Complainant's unregistered rights in the mark VICTOR;
b) The Respondent has no rights or legitimate interests in the disputed domain names; the Complainants have not consented to the Respondent’s use of the Complainant’s trademarks; the Respondent is not in anyway related to the Complainants; the Respondent has not made any use of, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods and services; the Respondent is not commonly known by the disputed domain names; the registration of the disputed domain names are examples of a “typosquatting” practice; the Respondent’s lack of rights is also exemplified by the fact that two of the disputed domain names are being kept without use, and the two other disputed domain names are being used to redirect users to a Complainant’s competitor;
c) The disputed domain names were registered and are being used in bad faith; the Respondent’s bad faith and commercial intent are exemplified by the act of redirecting the Complainants’ customers to a competing website; the passive holding of the other disputed domain names also characterizes bad faith considering (i) that by the time of the registration the Respondent was aware of the Complainants’ reputation, (ii) that any attempt to use those disputed domain names would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation or endorsement of the Complainants’ websites, (iii) and that the contact details supplied by the Respondent were incorrect; the Respondent has registered the disputed domain names in order to prevent the respective use by the Complainants; the Respondent has a pattern of engaging in conduct designed to prevent rights holders to reflect their marks in a corresponding domain name; the disputed domain names were registered primarily for the purposes of disrupting the Complainants' business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Annex 4 to the Complaint demonstrates European Community registrations of VICTOR CHANDLER and BETVICTOR trademarks, filed before the registration of the disputed domain names.
The Panel has no doubt that VICTOR CHANDLER and BETVICTOR are trademarks directly connected with the Complainants’ activities.
The trademarks VICTOR CHANDLER and BETVICTOR are wholly encompassed within the disputed domain names <victorchandler.co> and <betvictor.co>, respectively.
The domain names <vctorchandler.com> and <betviktor.com> consist of a misspelling of the Complainants’ trademarks VICTOR CHANDLER and BETVICTOR. This practice is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors made by Internet users seeking the complainant’s commercial website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).
It is also well established that a top-level domain suffix, in this case “.com” and “.co”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607).
As a result, the Panel finds the disputed domain names to be confusingly similar to the Complainants’ trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondents’ default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the domain names in connection with a bona fide offering of goods or services. Indeed, some of the disputed domain names link to a website offering competing betting services, and others are being kept without any use by the Respondent.
Furthermore, the Complainants have not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain names.
Consequently, the Panel is satisfied that the Complainants have proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
When the disputed domain names were registered the Complainants’ trademarks VICTOR CHANDLER and BETVICTOR were already widely used and promoted in the field of betting services. Therefore, in this Panel’s view, it is not feasible that the Respondent could have been unaware of the Complainants’ reputation and business.
Furthermore, some of the disputed domain names are linked to third party websites that offer competing services. Therefore, in doing so, the Respondent creates a likelihood of confusion with the Complainants’ trademarks, deprives the Complainants from selling their services to prospective clients who are clearly looking for the Complainants and, at the same time, promotes services offered by competitors.
The lack of any operation on the other disputed domain names does not help the Respondent. Previous WIPO cases have shown that the mere passive holding of a domain name may characterize bad faith in some cases. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005. Here the Panel finds such circumstances are present in particular as the Respondent has registered other domain names also encompassing the Complainants’ trademarks and pointing to competing betting services.
Therefore, the Panel is satisfied that the Complainants have proven the third element 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 names <betvictor.co>, <betviktor.com>, <vctorchandler.com> and <victorchandler.co> be transferred to the Complainants.
Date: April 15, 2013