WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bwin.party digital entertainment plc, ElectraWorks Limited v. Domains By Proxy, LLC, DomainsByProxy.com / Hooman Elmi Ketabforoosh
Case No. D2014-1007
1. The Parties
The Complainants are bwin.party digital entertainment plc and ElectraWorks Limited both of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America / Hooman Elmi Ketabforoosh of Tbilisi, Georgia.
2. The Domain Name and Registrar
The disputed domain name <bminco.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint for the domain names <bmin.co> and <bminco.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2014. On June 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 13, 2014, 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 June 16, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint, adding the names of both Registrar-disclosed registrants as formal Respondents and demonstrating that both registrants are the same entity, or to file a separate Complaint for one of the domain names, and file a short amendment to drop said separately-filed domain name from the current Complaint. The Complainants filed an amendment to the Complaint on June 17, 2014, removing the domain name <bmin.co> from the proceeding.
The Center verified that the Complaint together with the amendment to 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 June 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 15, 2014. 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 bwin.party digital entertainment plc group of companies. ElectraWorks Limited is the wholly owned subsidiary of bwin.party digital entertainment plc. For the purposes of this decision the Complainants hereafter will be referred to in the singular, i.e. the “Complainant”. The Complainant is a large online gaming company, and the product of a merger between PartyGaming Plc and bwin Interactive Entertainment AG that was concluded on March 31, 2011. bwin Interactive Entertainment AG was founded in 1997 and has provided online gaming services since at least that date. As of May 2014, the Complainant has a market capitalisation of around GBP 966,720,000. The Complainant also maintains a website at “www.bwin.com”, having registered that domain name in August 2005.
The Complainant is the owner of a number of trademarks consisting of the word “bwin” (the “BWIN Mark”), in jurisdictions across the world in relation to gaming services. In the United States, the BWIN Mark was registered on March 6, 2007, having been filed on February 3, 2006. The Complainant has been using the BWIN Mark since August 2006.
The Domain Name <bminco.com> was registered on August 25, 2013. The Domain Name currently resolves to a website, that features the following text:
“Welcome to nginx!
If you see this page, the nginx web server is successfully installed and working. Further configuration is required.
For online documentation and support please refer to nginx.org.
Commercial support is available at nginx.com.
Thank you for using nginx”
Prior to the commencement of the proceeding the Domain Name resolved to a website (the “Respondent’s Website”), which appeared to be a website offering online gaming services. The Respondent’s Website made reference to the Complainant by reproducing the Complainant’s BWIN Logo/BWIN Mark, along with logos of other gaming companies.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s BWIN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the BWIN Mark. It owns trade mark registrations for the BWIN Mark in various jurisdictions around the world.
The Domain Name consists of the BWIN Mark with the addition of the suffix “co”, which is a widely known abbreviation for “company”. The addition will not have any impact on the overall impression of the dominant part of the Domain Name, “bmin”, which is confusingly similar, both visually and orally to the BWIN Mark. The Domain Name is confusingly similar aurally, visually and conceptually to the Complainant’s trade mark BWIN.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not commonly known by reference to the Domain Name. The Complainant has not authorized the Respondent to use and register the BWIN Mark or to seek the registration of any domain name incorporating or otherwise similar to the BWIN Mark. The Respondent allegedly opened an affiliate account with the Complainant on May 3, 2012, which specifically required the Respondent not to open or register any domain name that is confusingly similar to the BWIN Mark. The Respondent is using the Domain Name to operate a site through which the Respondent offers gaming services in competition with the Complainant. The Respondent is doing so with the awareness of the similarity between the Domain Name and the BWIN Mark and aims to take advantage of such confusion. The use of the Domain Name in this manner does not confer a right or legitimate interest on the Respondent.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with full knowledge of the BWIN Mark, which is a well-known mark in the gaming industry. The Domain Name is being used for a website for commercial purposes that take advantage of the reputation of the Complainant’s BWIN Mark. Such use is prima facie evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy or otherwise. Furthermore the Respondent is an affiliate of the Complainant and in registering the Domain Name breached the affiliate agreement it had signed with the Complainant. The Respondent’s use of the Domain Name is calculated to create confusion with the BWIN Mark and to take advantage of that confusion for financial gain through receiving income from the active commercial website that is maintained at the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the BWIN Mark, having registrations for the BWIN Mark as a trademark around the world and in particular the United States.
The Domain Name consists of the BWIN Mark with “w” replaced with “m” and addition of the suffix “co”. The Panel finds that the addition of a suffix “co” to the BWIN Mark does not prevent a finding of confusing similarity. “co” is an abbreviation for “company” and is also a country code Top-Level Domain. Furthermore the replacement of “w” with “m” also does not prevent a finding of confusing similarity as the Domain Name remains visually and aurally similar to the BWIN Mark. The Panel finds that the Domain Name is confusingly similar to the Complainant’s BWIN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.” (Policy, paragraph 4(c)).
The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BWIN Mark or a mark similar to the BWIN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
Rather the Respondent used the Domain Name to operate a website that competes with the Complainant and, without the permission of the Complainant, makes references to the Complainant (via the use of Complainant’s name and logos) that may assist in persuading visitors that the website is associated with the Complainant. The Respondent can be presumed to receive income from such misleading behaviour through people who bet using the Respondent’s Website after being enticed by the similarity of the Domain Name to the BWIN Mark. Such use, being commercial and misleading, is not a bona fide offering of goods or services.
The Complainant has alleged that the Respondent is an affiliate of the Complainant, and as part of the affiliate agreement agreed not to register any confusingly similar domain name to the BWIN Mark. Although there is circumstantial evidence to suggest that the Respondent is an affiliate of the Complainant, the name of the individual identified in the Complaint as an affiliate and the name of the Respondent are different and the Panel does not make a finding that the affiliate of the Complainant and the Respondent are the same person. Rather, regardless of whether the Respondent is affiliated with the Complainant, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests including providing evidence of the bona fide nature of the Respondent’s Website but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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 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.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the BWIN Mark at the time the Respondent registered the Domain Name. The Respondent’s Website offered the same services as the Complainant and featured the BWIN Mark and logo alongside the marks and logos of a number of well-known gaming companies. The registration of the Domain Name in awareness of the BWIN Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the BWIN Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consisted of a website that competes directly with the Complainant and makes reference to the Complainant’s BWIN Mark. The only apparent purpose behind the conduct of the Respondent is to gain financial revenue from people who visit the Respondent’s site out of confusion or because they assume it is a site connected to the Complainant. It appears both from the Domain Name itself and from the Respondent’s Website that it is highly likely that the Respondent has intentionally attempted to attract Internet users to the Respondent’s Website by means of confusion with the BWIN Mark, and receives or intends to receive revenue for that activity. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 <bminco.com> be transferred to the Complainant.
Date: July 18, 2014