WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Newcote International Limited, BetVictor Limited (formerly known as Victor Chandler (International Limited) v. Bet Victories / Betvictories
Case No. D2015-1435
1. The Parties
Complainants are Newcote International Limited of Nassau, Bahamas (“First Complainant”) and BetVictor Limited (formerly known as Victor Chandler (International Limited) (“Second Complainant”) of Glacis, Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, (together “Complainants”), represented by ISOLAS.
The Respondent is Bet Victories / Betvictories of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <betvictories.com> 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 August 14, 2015. On August 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 8, 2015.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on September 17, 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
Complainants, Newcote International Limited and BetVictor Limited (formerly known as Victor Chandler (International Limited), are members of the same group of companies and are active in the betting and gambling business. In this case, Complainants have a specific common grievance against Respondent and it is equitable and fair to permit the consolidation. First Complainant, Newcote International Limited, is the holder of several trademarks including the following:
- BETVICTOR (word mark), registered as a Community Trademark which designates all EU member states, in classes 9, 41, and 42 under number 009608332 on December 17, 2010 ;
- BETVICTOR (word mark), registered as an Israeli trademark in classes 9, 41, and 42 under number 234414 on December 22, 2010; and
- BETVICTOR (word mark), registered as a Russian trademark in classes 41 and 42 under number 462614 on May 25, 2012.
Second Complainant is the holder of the domain name <betvictor.com>.
According to the information provided by the Registrar, the registrant of the disputed domain name <betvictories.com> is Bet Victories / Betvictories, Respondent in this case. The disputed domain name was registered on January 27, 2015.
Respondent has been using the disputed domain name to refer to a website offering betting and gambling services. On July 24, 2015, Complainants sent a cease-and-desist letter to Respondent via email. Respondent did not reply to the cease-and-desist letter or the Complaint.
5. Parties’ Contentions
Complainants consider the disputed domain name to be confusingly similar to trademarks and service marks in which they claim to have rights. Complainants further claim that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainants, Respondent has not used the disputed domain name in connection with any legitimate use. Also, according to Complainants, Respondent has not been commonly known by the disputed domain name.
Finally, Complainants consider that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainants to make out their case and it is apparent, both from the terms of the Policy and previous UDRP decisions, that Complainants must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for Complainants to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) 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.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element, Complainants must first establish that there is a trademark or service mark in which they have rights. Complainants have clearly established that there is a BETVICTOR trademark in which First Complainant has rights. The trademark has been registered in various countries, including the EU, Israel, and the Russian Federation.
The disputed domain name <betvictories.com> reproduces First Complainant’s trademark BETVICTOR in its entirety with the mere addition of the letters “ies”.
Complainants refer to paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which states that in order to find confusing similarity between a domain name and a trademark, “the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion”.
In this case, the Panel notes that although the disputed domain name contains the relevant trademark BETVICTOR in its entirety, the addition of the letters “ies” creates a separate dictionary word, namely “victories”. According to the Panel, the relevant trademark is less recognizable within the disputed domain name due to the fact that Internet users can identify two dictionary words, “bet” and “victories”.
However, First Complainant’s trademark remains recognizable in the disputed domain name and the similarity between both signs may lead to confusion. In view of the circumstances of this case, which are further explained below, the Panel finds that Respondent deliberately took advantage of the similarity between the disputed domain name and First Complainant’s trademark to confuse Internet users. Moreover, Respondent did not reply to Complainants’ contentions.
Accordingly, Complainants have made out the first of the three elements that they must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainants have the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for Complainants to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal on Respondent (See, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
Respondent has apparently not been commonly known by the disputed domain name and Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by Complainants. There are no indications that a connection between Complainants and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not “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” (Policy, paragraph 4(c)(iii)). Respondent uses the disputed domain name to refer to a website offering gaming and betting services in direct competition with those offered by Second Complainant.
Moreover, Respondent replicates the “look and feel” of Second Complainant’s website by using an almost identical colour scheme and layout. Respondent’s website also contains a “Betvictories” logo which is virtually identical – both in font and colour – to the “Betvictor” logo used by Second Complainant on its website. Respondent clearly aims at creating a further likelihood of confusion on the part of Internet users.
According to the Panel, such use of the disputed domain name is detrimental to Complainants and cannot be considered to constitute a bona fide commercial or fair use (See Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783).
Finally, Respondent did not reply to Complainants’ arguments and decided not to take part in the administrative proceedings. This is a further indication of the absence of its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainants have established that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainants must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
In the present case, it is inconceivable that Respondent was unaware of Complainants and their trademark rights when it registered the disputed domain name. The disputed domain name includes the first Complainant’s BETVICTOR trademark in its entirety. As mentioned above, the website that is linked to the disputed domain name copies essential elements of Complainants’ website and trademarks. As a result, it is apparent that Respondent had Complainants in mind when registering the disputed domain name.
Respondent is using First Complainant’s trademark without authorization to offer services that are similar to Complainants’ services. In doing so, Respondent tries to intentionally attract Internet users to visit its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location and of the products offered for sale on the web site (see Simyo GmbH v. José Castrellón, CyberCast, WIPO Case No. D2014-1660).
Finally, Respondent did not respond to Complainants’ cease-and-desist letter and did not take part in the administrative proceedings. According to the Panel, these are additional indications of Respondent’s bad faith.
Therefore, the Panel finds that, on the balance of probabilities, Complainants have shown that the disputed domain name was registered and is being used in bad faith.
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 <betvictories.com> be transferred to First Complainant, Newcote International Limited.
Flip Jan Claude Petillion
Date: October 1, 2015