WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bwin.party digital entertainment plc and ElectraWorks Limited v. B7win Ltd
Case No. D2015-1709
1. The Parties
The Complainants are jointly bwin.party digital entertainment plc and ElectraWorks Limited, both of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, internally represented.
The Respondent is B7win Ltd of Tel Aviv, Israel.
2. The Domain Name and Registrar
The Disputed Domain Name <b7win.com> ("Disputed Domain Name") 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 September 25, 2015. On September 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 25, 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 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 the Respondent of the Complaint, and the proceedings commenced on September 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2015.
The Center appointed Charné Le Roux as the sole panelist in this matter on November 9, 2015, setting a due date for the Decision of November 23, 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.
The Center received a communication from the Respondent on November 18, 2015 and November 22, 2015
4. Factual Background
The Complainants are both part of the bwin.party group of companies, with the First Complainant being "bwin.party digital entertainment plc" and the ultimate parent of the group, and the Second Complainant being ElectraWorks Limited, the registered owner of a number of trade mark registrations worldwide for the trade mark BWIN. The Complainants' business is online gaming, sports betting, casino games and the like. The bwin.party group currently has 2,167 employees located in offices worldwide, with total revenues at December 31, 2012 and 2013, EUR 801.6 million and EUR 652.4 million respectively. The Complainants have an online presence in a large number of countries in Europe, North and South America and Asia.
The Complainants own over 260 trade mark registrations in 54 countries that comprise the BWIN trade mark, including in Australia, Austria, Belarus, Benelux, Brazil, Chile, China, France, Germany, India, United Kingdom and United States America, dating back as early as 2006. These include CTM and International registrations. The Complainants' registrations cover goods and services in classes 9, 16, 35, 36, 41 and 42. The Complainants also own close to 170 BWIN type domain names, including <bwin.com>.
The Disputed Domain Name was registered on July 28, 2014 and the website associated with it promotes software which functions as a prediction game for use during live sporting events.
The Complainants sent two letters of demand, the first to an individual, who was identified as the registrant of the Disputed Domain Name up until September 1, 2015 (and who is also indicated as co-founder and CTO of the website at the Disputed Domain Name) and the second to the Respondent, which was sent subsequent to the transfer of the Disputed Domain Name to the Respondent on September 1, 2015. The Complainant did not receive a response in connection with either of these letters.
5. Parties' Contentions
The Complainants submit that they have acquired rights in their BWIN trade mark by virtue of:
a. Registrations obtained in numerous countries for the said trade mark;
b. Their extensive use of their BWIN trade mark in relation to betting and gaming.
The Complainants also contend that their BWIN trade mark is well-known and has been confirmed as such by several UDRP panels, in particular bwin Services AG v. wang jian aka jian wang, WIPO Case No. D2011-0900; and bwin Services AG v. Brainman Wiaslova / Protected Domain Services, WIPO Case No. D2011-0886.
The Complainants argue that the Disputed Domain Name is confusingly similar to their BWIN trade mark, in that it comprises of a typographical variation of the BWIN trade mark by inserting the number "7" in between the letter "B" and the word "win". They contend that the Disputed Domain Name is visually and aurally similar to the BWIN trade mark and conveys the same overall impression.
The Complainants also submit that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a. The Respondent does not have any registered trade marks or trade names that correspond to the Disputed Domain Name. The Complainants could also not find anything that would suggest that the Respondent has been using the term BWIN that would give it legitimate rights in the Disputed Domain Name;
b. The Complainants have not authorized or licensed the Respondent to register and use the Disputed Domain Name;
c. The BWIN trade mark is well-known within the gaming industry and the Respondent also had knowledge of the Complainants' rights as a consequence of the letter of demand that the Complainants sent to the co-founder and CTO of the website at the Disputed Domain Name, prior to the transfer of the Disputed Domain Name to the Respondent. The Respondent's interests in the Disputed Domain Name cannot therefore have been legitimate.
The Complainants further contend that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainants, the extent of the Complainants' operations and trade mark rights make it impossible for the Respondent to have been unaware that the registration and use of the Disputed Domain Name would violate the Complainants rights. The Complainants point out that the services offered by the Respondent on its website are closely connected with the betting industry, being the licensing of software for application in the sports betting industry and also that the said website displays a screen shot of the Complainants' <bwin.com> website under the headline "TAKE YOUR GAMBLING TO THE NEXT LEVEL". The Complainants submit that this is indicative of the Respondent's awareness of the BWIN trade mark in the betting and gaming industry, as well as its intention to generate confusion amongst Internet users who are not capable of distinguishing the goods and services of the Respondent and the Complainants by exploiting the value and goodwill of the trade mark of the Complainants.
The Complainants also submit that the fact that the individual (who was the registrant of the Disputed Domain Name prior to its transfer to the Respondent on September 1, 2015 and who is the current CTO of the Respondent), ignored the Complainants' first letter of demand and subsequently simply transferred the Disputed Domain Name to the Respondent, who also did not reply to a subsequent letter of demand, is indicative of bad faith.
The Complainants request that the Disputed Domain Name be transferred to them.
The Respondent did not reply to the Complainants' contentions. Instead, it asks for an extension of time to respond, which it submitted well after this Panel's appointment and three days prior to the decision deadline. The only reason submitted for the request was: "We check the complaint with our lawyers, and ask for more time to respond".
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainants must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Late filing of Response
The Respondent requested an extension to file its Response almost a month after the expiry of the deadline to do so. It provided no reason for the delay or the extension that it sought, other than that it needed more time to consult with its lawyers.
Extensions may be granted and late responses accepted by a panel in its discretion on the basis of a panel's general powers pursuant to paragraph 10(b) of the Rules. This paragraph requires that the parties be treated with equality and that each party be given a fair opportunity to present its case. In the following cases, late responses were accepted, namely: where the response was not filed substantially late and before commencement of the decision making process; where failure to take the response into account would have led to a miscarriage of justice; where the response was late by only one day and where the late response did not prejudice the complainant. See AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v Guillermo Lozada, Jr., WIPO Case No. D2005-0485. None of the circumstances above apply in this instance. The Respondent was given ample warning of the Complainants' concern with respect to the Disputed Domain Name both in the letters that the Complainants sent and in these proceedings. The Respondent was also well aware of its obligations to respond to the Complaint timeously following notifications that it received from the Center in this regard. Panels who have disregarded late responses and refused extensions to file responses late have made it clear that it is important to apply the Rules, absent very good reason. See Museum of Science v Jason Dare, WIPO Case No. D2004-0614.
In view of the Respondent's substantial delay in coming forward with a request for an extension and in the absence of any good reason, the Panel refuses any extension, notes that no late Response has been received from the Respondent in any event, and proceeds with the Decision.
B. Identical or Confusingly Similar
The Complainants have furnished evidence of trade mark registrations for the mark BWIN in a large number of countries, as indicated above. The Complainants also claim that the BWIN trade mark is famous and one of the well-known trade marks in the gaming industry, a fact confirmed by a number of other panels in connection with complaints lodged by the Complainant in the following cases: bwin Services AG v. wang jian aka jian wang, supra; bwin Services AG v. Brainman Wiaslova / Protected Domain Services, supra; bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167; and bwin International Entertainment AG v. wp, WIPO Case No. DES2009-0018.
Consequently, the Panel finds that the Complainants have succeeded in proving they have rights in their BWIN trade mark and also that the trade mark has such a high degree of renown attaching to it that it can be considered famous in the gaming industry.
Ignoring for this purpose the generic domain suffix, as the Panel is entitled to do, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants' BWIN trade mark. The only difference between the Disputed Domain Name and the Complainants trade mark is the addition of the number "7" to the Disputed Domain Name. This does not change the overall impression created by the Disputed Domain Name. The essence of the BWIN trade mark remains, particularly when taking into account that BWIN has been well reputed for many years.
The Complainants have satisfied this Policy requirement.
C. Rights or Legitimate Interests
The Complainant asserts that their BWIN trade mark is well-known in the betting and gaming industry and that the Respondent was aware of this, that they have not granted the Respondent any rights in respect of the Disputed Domain Name, that the Respondent is not known by the Disputed Domain Name and has not made any legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel finds that the Complainants have made a prima facie case under paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer. The Respondent has not disputed any of the claims made by the Complainants and has not provided any answer in respect of the cease and desist letters that the Complainants have sent, or in these proceedings. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
D. Registered and Used in Bad Faith
The Respondent has clearly registered the Disputed Domain Name primarily with an intention to capitalize on the reputation that attaches to the Complainants' mark, and to divert Internet users to the Respondent's website in order to obtain financial reward for the licensing of its sports betting software. The subsequent use that the Respondent has made of the Disputed Domain Name corresponds with its intentions at registration. The Respondent has targeted the Complainants and its BWIN trade mark to further its own commercial activities, which is borne out by the reference on the Respondent's website to the Complainants' <bwin.com> website.
The Respondent had opportunities both when the Complainants sent cease and desist letters to it and its predecessor, and in this administrative proceeding, to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainants' intentions, but it elected not to take up these opportunities.
Taking all the above circumstances into account, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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, <b7win.com>, be transferred to the Complainants.
Charné Le Roux
Date: November 23, 2015