WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cube Limited v. Super Privacy Service, c/o Dynadot
Case No. D2015-1325
1. The Parties
The Complainant is Cube Limited of Douglas, Isle of Man, represented by Berwin Leighton Paisner, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Super Privacy Service, c/o Dynadot of San Mateo, California, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <188b000.com>, <188b111.com>, <188b222.com>, <188b333.com>, <188b444.com>, <188b555.com>, <188b666.com>, <188b777.com>, <188b888.com>, and <188b999.com> are registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 30, 2015, 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 Complainant filed an amended Complaint on July 31, 2015.
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 August 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2015.
The Center appointed C. K. Kwong as the sole panelist in this matter on September 1, 2015. 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 Complainant is the owner of numerous trademark and service mark registrations consisting of or comprising the following elements, namely:
(a) the numerals “188”, including European Community Trademark Registration No. 8390379, registered on March 22, 2010 in respect of goods and services in international classes 9, 28, 41, and 42;
(b) the numerals “188” and the word “BET” combined, including European Community Trademark Registration No. 8425324, registered on March 22, 2010 in respect of goods and services in international classes 9, 28, 41, and 42, as well as Hong Kong Trademark Registration No. 302702655 in the same classes with the filing date of August 12, 2013 and registered on August 12, 2013.
The uncontradicted evidence produced by the Complainant shows that the registrations of its aforesaid marks occurred well before the registration of the following disputed domain names all on May 11, 2015, namely:
Other than the particulars shown in the printouts of the database search conducted by the Complainant on the WhoIs Database (as provided in Annex 1 to the Complaint), and on the websites to which the disputed domain names resolved or diverted (as provided in Annex 5 to the Complaint), there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions:
1. The Complainant has rights in its said “188” marks above consisting of the numerals alone or with the word “BET” combined to form “188BET” (“collectively the “188 Marks”). It has obtained registrations for the 188 Marks throughout the world including the European Union, United Kingdom, and Hong Kong, China. It operates its business from its website “www.188bet.com”.
2. From the Complainant’s website, it provides consumers with an extensive range of betting products and services including live casino and traditional casino entertainment services online under the 188 Marks.
3. The Complainant has a significant global customer base, the majority of which is in Asia.
4. The Complainant’s website is available to its users in a number of languages including English and Chinese.
5. The Complainant claims its first use of the 188 Marks on its website “www.188bet.com” in 2005.
6. Considerable sums of money were spent every year in advertising and promoting the 188 Marks and the “www.188bet.com” website. One method of promotion is through sponsorship and partnership with prominent internationally recognized football teams and the English Premier League (“EPL”) Football Clubs which has television broadcasts in 212 countries with an estimated global TV audience of EPL matches of 4.7 billion. Such activities include those with the Manchester City Football Club (“MCFC”) and Liverpool Football Club (“LFC”).
7. As a result of the extensive use of the 188 Marks, the 188 Marks have become very well known in relation to the online sports business operated by the Complainant and has become distinctive of its business.
8. The numerals “188” form the prominent part of its trademark and service mark to distinguish its website from those of competitors.
9. The websites to which the disputed domain names resolve are active betting and gaming websites which offer a range of betting services.
10. Each of the disputed domain names has incorporated the Complainant’s trademark comprising the numerals “188” entirely.
11. The dominant part of each of the disputed domain names is the Complainant’s trademark consisting of the numerals “188”. The addition of the letter “b” and the numerals “000” through to “999” does not minimize the risk of confusion, but rather increases the likelihood of confusion. There is a substantial likelihood that Internet users or consumers will be confused.
12. The likelihood of confusion is exacerbated by the other elements appearing on the websites to which the disputed domain names resolve.
13. The Respondent has not received any permission, authorization, or consent (whether express or implied) from the Complainant to use the numerals “188” in the disputed domain names. The use and registration of the 188 Marks and the Complainant’s <www.188bet.com> domain name took place well before the disputed domain names were registered by the Respondent on or about May 11, 2015.
14. The Respondent has no rights or legitimate interests in respect of the disputed domain names, which have not been used in connection with a bona fide offering of goods or services.
15. The Respondent is not commonly known by the disputed domain names.
16. The Respondent does not have any registered trademarks or trade names corresponding to the disputed domain names.
17. The Respondent has registered and used the disputed domain names in bad faith.
18. The disputed domain names have not been and could never be put to legitimate use by the Respondent.
19. The websites to which the disputed domain names resolve showed, inter alia:
(a) The use of the 188BET trademark, to offer remote gaming services (being the same services offered by the Complainant);
(b) The two logos of the EPL Football Clubs which cooperated with the Complainant in sponsorship programmes; and
(c) The use of the coat of arms of the Isle of Man Gambling Supervision Commission (“IOMGSC”), being the regulatory body from which the Complainant holds a license to conduct its online gaming business, while the Respondent does not hold such license.
20. The sole purpose of the Respondent in using the disputed domain names is to interrupt the business of the Complainant by intentionally misleading consumers and diverting them to the websites to which the disputed domain names resolve, which are not in any way connected to or endorsed by the Complainant.
21. It is not possible to conceive of any plausible actual or contemplated use of the disputed domain names by the Respondent that would be legitimate.
22. The Respondent has clearly and intentionally attempted to attract, for commercial gain, consumers by creating a likelihood of confusion with the Complainant’s 188 Marks, as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites and services.
23. The Respondent is in breach of conditions of registration under the Dynadot service agreement, in particular clause 9, which prohibits “directly or indirectly infring[ing] the legal rights of a third party”.
24. The Respondent’s registration of the disputed domain names through a privacy service supports the allegation that registration of the disputed domain names was in bad faith, as the true operator of the websites has purposely attempted to conceal its identity.
25. The Respondent clearly had knowledge of the Complainant and its 188 Marks when the disputed domain names were registered and used.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of Proceedings
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.
B. The Three Elements
The three Policy elements required to be proved by the Complainant are considered below.
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in its trademarks, which consist of the numerals “188” either alone or in combination with the word “BET” to form the mark 188BET by reason of its various trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that each of the disputed domain names, which incorporated the numerals “188” entirely, is confusingly similar to the Complainant’s 188 Marks. The addition of the English letter “b” immediately following the numerals “188” is not sufficient to distinguish the disputed domain names from the Complainant’s 188 Marks. When read, “one eight eight b” sounds close to “one eight eight bet” i.e., 188BET, which does not help to reduce the possibility of confusion. The letter “b” being the first letter of the word “bet” may also suggest the word “bet” which is indicative of the Complainant’s main line of activities i.e., betting services. The addition of the non-distinctive numerals “000” through to “999” in the ten disputed domain names as suffixes also does not distinguish them from the Complainant’s 188 Marks. It is also a well-established practice to disregard the generic Top-Level Domain (“gTLD”) suffix of a domain name like “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. See Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, there is prima facie evidence that the Respondent lacks rights or legitimate interests in the disputed domain names. There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain names by the Respondent. The Complainant has expressly confirmed that it has no connection with the Respondent and has not permitted, licensed, or authorized the Respondent to use the 188 Marks in any way. However, on the websites to which the disputed domain names resolve, references are also made to the Complainant, its address, and the 188 Marks.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy is established.
3. Registered and Used in Bad Faith
The disputed domain names resolve to the sites at “www.188b000.com”, “www.188b111.com”, “www.188b222.com”, “www.188b333.com”, “www.188b444.com”, “www.188b555.com”, “www.188b666.com”, “www.188b777.com”, “www.188b888.com”, and “www.188b999.com” respectively. The printout of the websites as shown in Annex 5 to the Complainant shows online betting services being offered, the same line of business as the Complainant. It is noted in particular that in doing so, the Complainant’s name (“Cube”), its address, and its trademark 188BET as well as the emblems of its promotional partners MCFC and LFC are featured. These, together with the fact that the 188 Marks were registered and used by the Complainant worldwide for many years prior to the registration of the disputed domain names on May 11, 2015, support the contention that the Respondent was aware of the Complainant’s 188 Marks at the time of registration of the disputed domain names.
The Complainant has clearly stated that it has not authorized the Respondent to use the 188 Marks or to register any domain names containing them. It is the Complainant’s uncontradicted claim that references to services of the aforesaid types at the websites to which the disputed domain names resolve result in the public being misled into believing that the services offered there are associated or otherwise connected with the Complainant. It is clear that the Respondent is not using the disputed domain names for a purpose other than for commercial gain.
There is a strong case for the Respondent to come forward to defend itself. However, the Respondent has chosen not to do so.
On the basis of the evidence adduced, the Panel finds that the Respondent has registered the disputed domain names in bad faith primarily for the purpose of disrupting the business of the Complainant. The presumption under paragraph 4(b)(iii) of the Policy applies.
By using, whether directly or indirectly, the disputed domain names in the manner described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the said websites, by creating a likelihood of confusion with the Complainant’s 188 Marks as to the source, sponsorship, affiliation, or endorsement of the websites or services on the websites. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy also applies to the present case.
The Panel finds that the disputed domain names have been registered and are being used 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 names <188b000.com>, <188b111.com>, <188b222.com>, <188b333.com>, <188b444.com>, <188b555.com>, <188b666.com>, <188b777.com>, <188b888.com>, and <188b999.com> be transferred to the Complainant.
C. K. Kwong
Date: September 15, 2015