WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Realm Entertainment Limited v. Whoisguard, Inc. / ALI USUG, BAHIS

Case No. D2016-0782

1. The Parties

The Complainant is Realm Entertainment Limited of Ta' Xbiex, Malta, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.

The Respondent is Whoisguard, Inc. of Panama / ALI USUG, BAHIS of Antalya, Turkey.

2. The Domain Name and Registrar

The disputed domain names <bets10girisi.com> and <bets10girisi.net> (together the "Disputed Domain Names") are registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 21, 2016, 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 Complainant on April 27, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 2, 2016.

The Center verified that the Complaint together with the amended 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 May 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 24, 2016.

The Center appointed Nick J. Gardner as the sole panelist in this matter on June 1, 2016. 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.

On May 6, 2016 the Panel issued a procedural order which in substance provided as follows:

"According to the Amended Complaint:

'Controls made on the website of the disputed domain name at http://bets10girisi.com/ has concluded that the site is used to discredit Complainants business, see attached source code and screen shot, Annex 4 and 5. Controls made at http://bets10girisi.net show a site without content, se[e] annex 6 and 7. The Complainant has the exclusive right to use the mark Bets10 as is seen by the registered rights above. The usage of the domain names strongly suggests that the domain names [were] registered with the mark Bets10 in mind and to commercially profit from misleading consumers searching for information about the Complainant's business.'

The Complainant is asked to explain more fully this allegation including if applicable (1) explaining what the 'controls' referred to are; (ii) providing translations into English from Turkish of any web site content relied upon; and (iii) explaining what the exhibited source code is said to show, with (if appropriate) a technical explanation. The Complainant is also requested to provide evidence in support of its allegation that the Turkish word 'girisi' translates to 'access' in English.

The Panel orders the Complainant to provide an additional submission in response to the above request by June 10, 2016. If the Respondent, by this date, has indicated an intention to take part in this proceeding, the Panel may issue further procedural steps, as required."

In compliance with this order the Complainant filed a supplemental filing on June 7, 2016 (the "Supplemental Filing"). No communication was received from the Respondent.

4. Factual Background

The Complainant is an online gambling company incorporated in Malta. The Complainant has since 2011 run a website at "www.bets10.com" which offers a wide range of online gambling products and it says it has via that website approximately 18 million active poker players, making it the largest poker network in the world.

The Complainant owns a number of registered trademarks in respect of BETS10 in both word and figurative form (see for example EU trademark 012403713, application date December 9, 2013, registered on May 5, 2014.)

The word "girisi" in Turkish translates to "access" in English.

Each of the Disputed Domain Names was registered on November 27, 2015. <bets10girisi.com> resolves to a website which contains text in Turkish. The text according to the translations provided in the Supplemental Filing appears to be criticism of the Complaint's business created by a disgruntled customer (see further below). <bets10girisi.net> is passively held.

5. Parties' Contentions

A. Complainant

The Complainant's case can be summarized as follows.

(a) The Disputed Domain Names are identical or confusingly similar to the BETS10 trademark.

(b) The Respondents do not have any rights or legitimate interests in the Disputed Domain Names.

(c) The Respondents use the Disputed Domain Names in bad faith as the website to which the Disputed Domain Names resolve makes use of the Complainant's BETS10 trademark to mislead customers and to attract customers to a website which is not that of the Complainant but which contains unjustified and inaccurate criticism of the Complainant.

B. Respondents

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

Preliminary Issue

As a preliminary issue the Panel notes this is a case where one of the Respondents (Whoisguard, Inc.) appears to be a privacy or proxy registration service while the other Respondent (ALI USUG, BAHIS) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9, as follows: "Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant". Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts.

The Panel also notes that no communication has been received from the Respondents. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel again adopts the approach set out in the WIPO Overview 2.0 paragraph 4.9, namely: "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents' failure to file any Response. While the Respondents' failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondents' default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

Substantive Issues

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:

i. the Disputed Domain Names are identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii. the Respondents have no rights or legitimate interests in the Disputed Domain Names;

iii. the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has submitted detailed evidence that it is the owner of various trademarks that include the term "BETS10". The Panel holds that the Disputed Domain Names are confusingly similar to the BETS10 trademarks. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the addition of the generic word "girisi" which means "access" in Turkish. This addition does not suffice to negate the similarity between the Disputed Domain Names and the Complainant's BETS10 trademarks.

It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

It is also established that the addition of a generic term (such as here the word "girisi") to a disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

The ".com" and ".net" Top-Level Domains are typically disregarded when considering the identity or confusing similarity between a disputed domain name and a complainant's trademark – see for example Herbalife International, Inc. v Herbalife.net, WIPO Case No. D2002-0234.

Accordingly the Panel finds that the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that may demonstrate a right or legitimate interest in a domain name:

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 organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

iii. you are 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.

The only one of these that might apply in the present case is (iii). Whether it does so depends on the content of the websites to which the Disputed Domain Names resolve. The translation that has been provided of the content at the website under <bets10girisi.com> is not easy to understand and verges on the unintelligible. The Panel does not know whether this is because the original Turkish is similarly poorly written, or because the translations themselves are very poor. Thus to take one typical example paragraph:

"I advse you to stay away from bets10. Current Youwin 'I play have invested document thankfully they did not ask for higher rates of customer service quality, although the weekend my money in oneday. It is Melgar document in my head did not ache with them. I wish I were already members of Youwe ağrıtmas in bets10l in my head". [all errors present in translation as filed]

Having reviewed this material the Panel will proceed on the basis that (1) this commentary relates to the Complainant's business; and (2) it represents the views of a customer of the Complainant's business that are honestly held by that customer. Whether such views are factually correct is not a matter that the Panel can determine and it makes no findings in this regard. Accordingly the Panel proceeds on the basis that the Disputed Domain Name <bets10girisi.com> is being used to link to a bona fide criticism site directed at the Complainant's business. The Panel will also proceed on the basis that this criticism site is not generating any commercial revenue for the Respondents, given there is no clear evidence on this issue.

The Panel will adopt the approach that is discussed in WIPO Overview 2.0, paragraph 2.4. It provides as follows (omitting citation references):

"Can a criticism site generate rights and legitimate interests?

See also the relevant section in the WIPO Legal Index.

This section only concerns sites that practice genuine, noncommercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage.

In the event that a domain name identical or confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there are two main views. In cases involving only US parties or the selection of a US mutual jurisdiction, panelists tend to adopt the reasoning in View 2 (though not universally).

View 1: The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., <trademarksucks.tld>), some panels have applied View 2 below.

View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial."

The present case does not concern US parties or US jurisdiction and this Panel considers View 1 to be applicable. Thus if the name of the Disputed Domain Names had made clear, expressly or by implication, that they linked to a criticism case there would possibly be a legitimate interest. However the names comprise a combination of the Complainant's trademark with the Turkish word for "access". As such they are in the opinion of the Panel likely to be taken as linking directly to the Complainant's websites and in the Panel's view amount to impersonating the Complainant. This fails to establish a legitimate interest.

Further the Panel notes that that the Respondents have failed to file a Response and accordingly have not produced any evidence to establish any rights or legitimate interests in the Disputed Domain Names.

The Passive holding of <bets10girisi.net> does not give rise to any rights or legitimate interests.

Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

The Panel considers that the issues discussed above in relation to legitimate interests apply equally to bad faith. Registration and use of a domain name which is of a nature (e.g., by inclusion of a derogatory term such as "sucks") that makes clear it is being used to link to a criticism site is likely to amount to registration and use in good faith, assuming the criticism site is noncommercial and contains views that are honestly held. Conversely where, as here, the name contains a complainant's trademark in combination with generic terminology, it is likely to amount to impersonation of the complainant. Such impersonation is not in good faith.

As the panel in Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev, WIPO Case No. D2009-1416 noted:

"It is clear both from the Respondent's informal communication and from the content of the website associated with the disputed domain name that the Respondent's intention from the outset was to express on the Internet certain views that are critical of the Complainant's business practices. As noted above, this in itself is a potentially legitimate and good faith activity. Nevertheless, for that purpose, the Respondent selected a domain name which is not its own name and which the Respondent evidently was aware was identical to the Complainant's corporate and trading name. In so doing, the Respondent would also have been aware that the disputed domain name would be likely to make a misrepresentation to the typical Internet user that any associated website was owned and operated by the Complainant and that, as the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 puts it, the disputed domain name would 'catch by surprise' visitors intending to reach the Complainant's website. In the Panel's view, the consequence is that the Respondent's actions are tainted, no matter whether it genuinely believed the criticisms or opinions expressed on the website associated with the disputed domain name and whether it was acting out of non-commercial or, as the Complainant asserts, commercial motives."

The same reasoning applies to <bets10girisi.com>.

Further, the Panel notes the Respondents have not filed a Response and hence have not availed themselves of the opportunity to present any case of legitimate use that they might have. The Panel infers that none exists.

In the overall circumstances of this case, including the bad faith use by the same registrant of an almost identical domain name, the passive holding of <bets10girisi.net> does not prevent a finding of bad faith registration and use.

As a result the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all 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 <bets10girisi.com> and <bets10girisi.net> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: June 15, 2016