WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BML Group Limited v. Rikard Beach, Proxy My Whois AB
Case No. D2015-1897
1. The Parties
1.1 The Complainant is BML Group Limited of Ta Xbiex, Malta, represented by Domain and Intellectual Property Consultants, Dipcon AB, Sweden.
1.2 The Respondent is Rikard Beach, Proxy My Whois AB of Malno, Sweden, self-represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <betsaf.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 23, 2015. On October 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 23, 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.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2015. The Response was filed with the Center on November 10, 2015.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 16, 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.
3.5 On November 18, 2015 the Panel issued a procedural order directed to the Complainant asking that it clarify a discrepancy between an assertion made in the Complaint and the evidence filed in support of that assertion. That clarification was provided by the Complainant on November 20, 2015.
4. Factual Background
4.1 The Complainant is a limited liability company incorporated in Malta. It runs a gaming site under the name "Betsafe" from a website using the <betsafe.com> domain name. That website was launched in January 2006 and today has over 450,000 customers in over 100 countries.
4.2 The Complainant is the owner of the following trade marks:
(i) Community trade mark No. 07214059 for the word mark BETSAFE in class 35, applied for on September 5, 2008 and proceeding to registration on February 3, 2011;
(ii) Community trade mark No. 08585648 in classes 9, 28, 35, 38, and 41applied for on September 10, 2009 and proceeding to registration on March 5, 2010 which takes the following form:
(iii) Community trade mark No. 011385036 for the word mark "BETSAFE" in classes 9, 41 and 42 applied for on November 29, 2012 and proceeding to registration on June 17, 2013.
4.3 The Domain Name was registered on February 5, 2006. It has until early October 2015 been used to redirect Internet users to the Complainant's website via, inter alia, the url "http://greatbettinginfo.com/bsf".
4.4 On or about October 5, 2015 the Complainant's representatives sent a cease-and-desist letter to the Respondent demanding that the Domain Name be transferred to the Complainant. The Respondent did not respond to that letter but shortly thereafter the Domain Name was used to display a domain name parking page with sponsored links.
4.5 As at the date of this decision no web page operates from the Domain Name.
5. Parties' Contentions
5.1 The Complainant contends that the Domain Name should be read as the term "Betsafe" with the letter "e" removed, and the fact that this letter is missing does not distinguish the Domain Name from the Complainant's trade marks for that term.
5.2 The Complainant further contends that the Domain Name is an intentional misspelling of the Complainant's trade marks and that the use made of the Domain Name since its registration suggests that the Domain Name was registered to commercially profit from misleading consumers seeking information about the Complainant's business. It claims that there is no evidence that the Respondent has been known by the name "Betsaf" or is making a legitimate noncommercial use of the Domain Name. It therefore contends that the Respondent has no rights or legitimate interests in the Domain Name.
5.3 The Complainant further claims that the Domain Name was registered after the Complainant commenced business and that the Respondent was most likely aware of the Complainant at the time of registration and that this is confirmed by the fact that after registration the Domain Name was used to redirect Internet users to the Complainant's website. It is therefore claimed that the Domain Name was registered to profit from a likelihood of confusion between the Complainant's trade mark and the Domain Name. This is said to demonstrate bad faith registration and use.
5.4 The Respondent denies that the Domain Name is confusingly similar to the Complainant's trade marks. It claims in this respect that the Domain Name is not used in any of the categories of the trade marks, it predates those marks, and that although the Domain Name is used worldwide, the trade marks are not.
5.5 The Respondent also contends that the use made of the Domain Name to date was a noncommercial redirect from which the Respondent did not benefit. It claims that this involved giving "a goodwill link for free" and that this is "[a]s far from bad faith one can be".
5.6 The Respondent further claims that the Domain Name is not indexed in search engines, that "there is no traffic from people typing in wrong domain name and if there was, [it] would not get paid".
5.7 The Respondent points out that there are other domain names that incorporate the term "Betsaf" or "Betsafe" and that have not been complained about or registered by the Complainant. It contends that this suggest the current dispute is "about something else", but what that something else is, is not explained.
5.8 Finally, the Respondent contends that it is in a "completely different business" to that of the Complainant. However, what that different business is and why it should have involved the registration of the Domain Name is not explained.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn.
A. Identical or Confusingly Similar
6.3 The Panel accepts that a sensible reading, and the most plausible reading, of the Domain Name is of the term "Betsafe" with the letter "e" removed. Further, the Complainant clearly has trade mark rights in the term "Betsafe" in the form of at least two word marks. Given this, the Panel accepts that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
6.4 It does not matter for the purposes of this first head of the Policy that the Domain Name was registered before the registered trade marks relied upon, where the registered trade marks are registered, and that they may be registered in respect of different goods or services for which the Domain Name is used; see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
6.5 The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Complainant claims it is obvious given the use that the Respondent has made of the Domain Name that the Respondent has no rights or legitimate interests in the Domain Name.
6.7 For the reasons that are explained in greater detail under the heading bad faith registration and use below, the Respondent has failed to put forward any explanation as to why it registered the Domain Name, and in the absence of that explanation (and notwithstanding the fact that it is for the Complainant to prove its case in respect of each element of the Policy), the Panel concludes that the reason why the Domain Name has been registered and thereafter held, was to take some form of unfair commercial advantage of the Complainant's marks.
6.8 To have registered and held a domain name for the purpose of taking an unfair advantage of the trade marks of another does not provide a right or legitimate interest in the domain name. The Complainant has, therefore, made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.9 There are a number of remarkable features of this case. The first is the timing of the registration of the Domain Name. In particular, according to the Complainant, it was registered just after the Complainant had launched its own business from its domain name. The second is that although the Respondent has filed a detailed Response in this case in which it alleged that it is engaged in a completely different business to the Complainant, no attempt is made to explain what that different business is. The Respondent contends that the Domain Name has been used from time to time for "non-commercial testing", but there is no explanation of what that "non-commercial testing" is or for what purpose that "testing" is conducted.
6.10 In the recent case of Nexans S.A. v. Mr. Edip Özdemir / MXN Kablo San. Tic. Ltd. Sti. WIPO Case No. D2015-1056 the three person panel stated (at para 6.21) as follows:
"The stance that the Respondent has taken in the Response on this issue also speaks volumes. A complainant bears the burden of proof under the Policy. However, it is striking that although the Respondent obviously knows its own motives for choosing the term [that was used in the Domain Name], it has failed to offer any explanation for that choice in this case. Where a respondent decides to participate in proceedings under the Policy but fails to address head on what is often the most important issue in proceedings under the Policy; i.e., why the domain name was registered, a panel is entitled to draw an inference adverse to the respondent from that failure. The Panel draws such an adverse inference in this case. As a piece of evidence, the Respondent's failure is the dog that did not bark (for an explanation of this canine reference see Credit Industriel et Commercial S.A. v. Demand Domains, Inc., WIPO Case No. D2009-1184 and Lisa Migliore Black, Migliore and Associates LLC v. Kentuckiana Reporters, WIPO Case No. D2012-1588)."
6.11 The Panel similarly draws an adverse inference from the Respondent's silence in this case. Further, the term "betsaf" is not obviously generic or descriptive.
6.12 In light of all of these factors, the Panel accepts that the Domain Name was more likely than not registered because of its similarity to the Complainant's marks.
6.13 Why exactly the Domain Name was registered is not clear, but again in the absence of any explanation from the Respondent in this respect, the Panel concludes (even if the Panel accepts at face value the Respondent's claim that it has not financially gained from the registration to date) that the Domain Name was registered and held with the intention of taking some unfair commercial advantage of those marks. This is sufficient for a finding of bad faith registration and use (see, for example, Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
6.14 It does not on this occasion matter that the Domain Name was registered prior to the date that the Complainant applied for any registered trade mark. The question of whether there can be bad faith registration and use of a Domain Name that predates any registered trade mark relied upon is addressed in paragraph 3.1 of the WIPO Overview 2.0. That section includes the following statements:
"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. …"
"There are cases that suggest that what actually matters here is (a) whether at the time of registration of the domain name the relevant term embodied in the domain name was being (or about to be) used in a trade mark sense by the complainant and (b) whether the domain name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use (see for example St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601 and the cases cited in paragraph 3.1 of the WIPO Overview 2.0). On this approach although the proposition to be found in paragraph 3.1 of the WIPO Overview 2.0 is 'generally speaking' correct, this is not so much because 'the registrant could not have contemplated the complainant's then non-existent right' but because in the absence of such rights or trade mark use, it is likely to be very difficult to show that the registration was with the complainant's trade mark use of that term in mind.'"
6.16 The Panel accepts that in the present case there had been trade mark use of the term "betsafe" prior to the time that the Domain Name was registered and that the Domain Name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use. Therefore, the fact that at that time the Complainant had not applied for or obtained a registered trade mark for that term, does not prevent a finding of bad faith registration and use.
6.17 The Complainant has therefore made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <betsaf.com> be transferred to the Complainant.
Matthew S. Harris
Date: November 21, 2015