WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Realm Entertainment Limited v. Sun Live

Case No. D2013-1160

1. The Parties

The Complainant is Realm Entertainment Limited of Ta’Xbiex, Malta, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.

The Respondent is Sun Live of İzmir, Konak, Turkey.

2. The Domain Name and Registrar

The disputed domain name <5bets10.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2013. On June 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 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.

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 July 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2013.

The Center appointed Selma Ünlü as the sole panelist in this matter on August 1, 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.

In accordance with the Rules, paragraph 11, 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 Complainant is a limited liability company which is incorporated in Malta. The Complainant runs a game site at “www.bets10.com” using its trademark BETS10.

The Complainant’s Community Trademark BETS10, with registration No. 009941139 and application date May 4, 2011, was registered on September 14, 2011 in classes 36, 38, and 41.

The Respondent is based in İzmir, Turkey. The disputed domain name <5bets10.org> was created on May 17, 2013 and it currently resolves to a website in Turkish that includes advertisements which link to other websites offering online betting services.

The website contains several “Bets 10” logos on the front page and includes statements such as “CLICK TO ENTER BETS10” (“BETS10’a GİRİŞ İÇİN TIKLAYINIZ”) and “ABOUT BETS10” (BETS10 HAKKINDA”).

5. Parties’ Contentions

A. Complainant

The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:

i. The disputed 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 disputed domain name;

iii. The disputed domain name was registered and is being used in bad faith.

(i) Identity or Confusingly Similarity

The Complainant states that it has a Community Trademark BETS10, with registration No. 009941139 and application date May 4, 2011, registered in classes 36, 38, and 41. The Complainant states that it is the owner of the well-known game site “www.bets10.com” which has 50 million page views per month. The Complainant alleges that the disputed domain name is confusingly similar to its trademark as it contains the trademark in its entirety, apart for the mere addition of the number “5” at the beginning. The Complainant asserts that this addition of a single number is not enough to distinguish the wording in the disputed domain name from the wording in the registered trademark. The Complainant further asserts that the addition of a generic Top-Level Domain (gTLD) suffix, for example “.org”, is irrelevant for the assessment of confusing similarity between a trademark and a domain name.

(ii) Rights or Legitimate Interests

The Complainant asserts that the Respondent does not have any rights in the trademark BETS10, nor is a licensee of the Complainant and the Complainant has not given the Respondent any permission to register the trademark as a domain name.

The Complainant contends that the disputed domain name resolves to a website which is used for linked advertisements related to the same kind of services as the Complainant’s trademark and information in Turkish. The Complainant further contends that these facts suggest that the Respondent’s motive in registering the disputed domain name is to commercially profit from misleading consumers who are searching for information about the Complainant’s business.

The Complainant further asserts that there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent is commonly known by the disputed domain name.

(iii) Registered and Used in Bad Faith

The Complainant argues that the Respondent was well aware of the Complainant’s trademarks and business when registering the disputed domain name and that the fact that the website at the disputed domain name includes links with services related to those provided by the Complainant implies the Respondent’s knowledge of the Complainant’s trademarks and business.

The Complainant states that the official launch of the Turkish market of “bets10” by the Complainant was made before the Respondent registered the disputed domain name and the fact that the disputed domain name resolves to a website in Turkish suggests that the Respondent was aware of the Complainant's trademark.

The Complainant notes that it sent a cease and desist letter to the Respondent on May 31, 2013, however has not received a response. The Complainant contends that these circumstances strongly suggest that the disputed domain name has been registered and is being used in bad faith by the Respondent.

B. Respondent

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 a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

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

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark 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 has the burden of proving that all of these requirements are fulfilled.

A. Identical or Confusingly Similar

The first element under paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights.

The Panel considers that the Complainant has clearly established its rights in the BETS10 trademark as evidenced by the Community Trademark registration submitted with the Complaint.

First of all, previous UDRP panels have found that the generic Top-Level Domain (gTLD) does not have any distinguishing significance under the Policy and does not typically remove the likelihood of confusion between a trademark and a domain name incorporating said trademark. See, Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent), WIPO Case No. D2007-0515 and The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. 95491. Therefore, the Panel is of the opinion that the suffix “.org” has no significance under this element.

It is clearly that the disputed domain name <5bets10.org> fully incorporates the Complainant’s BETS10 trademark. The Panel is of the opinion that the number “5” does not create a distinctive element in the disputed domain name. See Realm Entertainment Limited v. Sportx Sports, WIPO Case No. D2012-1833, regarding the <1bets10giris.com> domain name. In that UDRP decision, the domain name was also found confusingly similar to the Complainant’s trademark.

Also, as determined in previous UDRP cases (see Grundfos A/S v. Equipment Agents, WIPO Case No. D2009-0906), numeric additions to the domain name do not differ the domain name but rather increase the similarity between the domain name and the trademark. As it is seen, the only difference between the disputed domain name and the Complainant’s trademark is that the Respondent added number “5” before the trademark. Therefore, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s Community Trademark BETS10.

Hence, the Panel is of the opinion that the disputed domain name is confusingly similar to the Complainant’s BETS10 trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] 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 trademark or service mark at issue.

The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or argument to sufficiently demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, license or any similar rights to use the Complainant’s trademark in the disputed domain name.

In the absence of a Response, the Respondent 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 name. Especially, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services. Furthermore, there is no indication in the current record that the Respondent is commonly known by the disputed domain name.

There is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert Internet users or to tarnish the BETS10 trademark. On the contrary, it appears that the Respondent particularly tries to mislead Turkish speaking customers by causing the impression that the website linked to the disputed domain name is an official site, being the entrance into the world of games provided by the Complainant.

Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.

In the light of the evidence in the case file, the Panel is convinced that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant, in particular with its provided services. According to the print-outs of the website linked to the disputed domain name provided as annexes to the Complaint and as the Panel has discovered by itself, the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to create the false impression that the website is somehow officially linked to the Complainant. Even on the website there has been a link for “BETS 10 GİRİŞ” meaning “BETS 10 ENTRANCE”. At this point, the Panel believes that the disputed domain name was registered and used for the sole purpose to commercially profit from misled consumers searching for information about the Complainant’s business.

As it is understood from the contents of the Respondent’s website, it is a website with links to other gambling sites, and the Panel is of the opinion that the Respondent intentionally attempted to attract Internet users to its website for commercial gain by benefiting from the Complainant’s reputation.

The Panel further notes that:

(i) the Respondent did not offer any counter-argument and remained in default;

(ii) the Respondent has not proven any good faith use of the disputed domain name;

(iii) the Respondent has provided false contact details which may constitute a breach of the registration agreement as well.

In relation to the contact information of the Respondent, it seems to be false contact information since the courier service could not deliver the Written Notice to the Respondent and in Turkey addresses should include street and avenue name as well. However, the Respondent registered its address as including only city and district name. Therefore, the Panel refers to Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550, where the panel held that “[i]n the absence of explanation, the omission of significant information may be taken to amount to bad faith in securing a domain name registration.”. Likewise, in various UDRP decisions, panels held that false contact information provided by the respondent can constitute bad faith. See also Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138.

Furthermore, the Panel refers to Realm Entertainment Limited v. mark engels / PrivacyProtect.org, WIPO Case No. D2013-0830, and notes that the cease and desist letter dated May 13, 2013 sent by the Complainant to the Respondent will not be taken into consideration as there is no proof of receipt.

In light of the above, the Panel 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.

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 <5bets10.org> be transferred to the Complainant.

Selma Ünlü
Sole Panelist
Date: August 15, 2013