WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BPG SRL v. Fu De Wei
Case No. D2016-2202
1. The Parties
The Complainant is BPG SRL of Rome, Italy, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).
The Respondent is Fu De Wei of Mudanjiang, Heilongjiang, China.
2. The Domain Name And Registrar
The disputed domain name <netbet.vip> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2016. On November 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2016, 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.
On November 7, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 7, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 November 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on December 9, 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.
4. Factual Background
The complainant and its related company, cosmo gaming ltd, are the operators of an online casino, bearing the netbet trade mark. The complainant states that it is a leading online betting service in both Italy, its home country, and also in neighboring European countries. Since 2006, the complainant has held a European licence from Malta enabling it to offer over 450 state-of-the-art casino games. The netbet online gaming service is renowned in Europe due in part to the website’s availability in multiple languages.
The complainant owns trade mark registrations for the netbet word mark and other figurative marks containing the term “netbet” in the European union, France, and the united kingdom, the earliest of which dates back to 2010.
The complainant also owns domain names containing the netbet trade mark, e.g., <netbet.com> (linked to the complainant’s website since 2010), <netbet.co.uk>, <netbet.ro> and <netbet.it>.
The netbet trade mark is used in relation to a variety of games including variations of blackjack, roulette and poker, and themed slot machines and arcade games. In addition to online use, the netbet trade mark is also used in relation to applications, which feature more than 30 games and enables users to use netbet services on the move.
The complainant states it is active on social media websites such as twitter. It has also operated an extensive advertising program featuring its netbet trade mark, airing in, inter alia, the UK, Romania and France. It has also been featured online on popular video channels such as youtube. It has also been featured on London taxis and the complainant has sponsored shirts of European football clubs.
The complainant has received various awards including “best overall sports betting operator” in 2016.
The dispute domain name was registered on May 28, 2016 and does not resolve to an active website.
5. Parties’ Contentions
The disputed domain name is identical to the NETBET trade mark in which the Complainant has rights. The generic Top-Level Domain (“gTLD”) extension “.vip” is relevant in that the Complainant offers VIP services for its customers. The Complainant has a VIP (referring to “very important people”) club attached to its online betting services, which offers VIP customers the added benefit of obtaining rewards and exclusive services.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established goodwill in the NETBET brand for several years, predating the registration date of the disputed domain name. The Complainant has a legal right to the disputed domain name whereas the Respondent does not. There is no active use of the disputed domain name and no demonstrable preparations to use the disputed domain name for a legitimate purpose or for a bona fide offering of goods or services. There is no evidence that the Respondent has been known as “netbet”. There is no relationship between the Complainant and the Respondent and there is nothing which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Complainant’s NETBET trade mark has been in active use for many years, before the date of registration of the disputed domain name. The only plausible reason for registering the disputed domain name was to take advantage of the Complainant’s goodwill and reputation in the NETBET trade mark.
The Respondent appears to be an experienced domainer, with a portfolio of over 80 domain names. Such experience in the domain name market would mean that it is not unreasonable for the Respondent to have exercised diligence and undertaken checks such as trade mark searches and general web browsing, which would have revealed the Complainant as the owner of the NETBET trade mark at the time of registration. Moreover, the Complainant’s NETBET trade mark was registered with the Trademark Clearinghouse (“TMCH”). The extension “.vip” had a claims notification period from May 17, 2016 to August 15, 2016. This means that the Respondent would have known of the Complainant’s rights in and to the NETBET trade mark before registering the disputed domain name.
The Respondent has shown a propensity to register domain names corresponding to third-party trade marks, in particular rights belonging to casino and betting-related companies, e.g., SKY VEGAS (“skyvegas.vip>) and PLATINUM PLAY (<platinumplay.vip>). This shows that the Respondent is fully aware of some of the key brands within the betting market and has chosen to register domain names featuring these trade marks in order to take advantage of the goodwill and reputation associated with them. The addition of the suffix “.vip” by the Respondent is a clear attempt to create an association with the NETBET trade mark and its VIP services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
Preliminary Issue: Language of the Proceeding
The Registration Agreement in this instance is Chinese but the Complainant requested that English be the language of the proceeding. The reasons are:
(i) A review of the Respondent’s portfolio of domain names shows that the Respondent has a working knowledge of the English language. The Respondent has many domain name registrations comprising English terms, e.g., <barbeque.vip>, <coffeebean.vip>, <lipstick.vip>, <asmallworld.vip>, <aspirelifestyles.vip>, <customized.vip> and <tailormade.vip>.
(ii) The disputed domain name incorporates the Complainant’s NETBET trade mark. It features the English word “bet” which shows that the Respondent has some competence in English.
(iii) Requiring the Complainant to translate the Complaint would not be in keeping with the aims of the Policy which is to provide a cost-effective and expedited resolution process.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Having considered the circumstances of this case including the interests of the parties (i.e., to ensure that they are treated with equality and given a fair opportunity to present their case, per paragraph 10(b) of the Rules), and that the administrative proceeding takes place with due expedition (per paragraph 10(c) of the Rules), the Panel determines that it would be appropriate for English to be the language of the proceeding.
The Panel assesses from the Respondent’s portfolio of domain names that the Respondent has an understanding of the English language. In any event, the Respondent has been notified in the Chinese language by the Center of the nature of the proceedings and relevant deadlines for responding to the Complaint and on the issue of the language of the proceeding. The Respondent has therefore been given the opportunity to, but elected not to respond.
The Panel is of the opinion that the Respondent would not be prejudiced if English were the language of the proceeding. Requiring the Complainant to translate the Complaint and supporting documents into Chinese would be contrary to the Policy aim of ensuring that the administrative proceeding take place with due expedition. A significant delay would be caused by such a requirement, which does not appear to be merited in the circumstances of this case.
The Panel therefore determines that English shall be the language of the proceeding.
A. Identical or Confusingly Similar
The Complainant is the owner of the registered trade mark NETBET. The trade mark has been incorporated in its entirety in the disputed domain name.
The Panel therefore finds that the disputed domain name is identical to the Complainant’s trade mark NETBET, and consequently, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy indicates how a respondent can demonstrate his rights or legitimate interests to the disputed domain name, namely by establishing any of the following circumstances (which is not exhaustive):
“(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 organization) 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.”
Although a complainant is required under the Policy to establish all three elements of paragraph 4(a) of the Policy, the general consensus view of panellists is that complainants are required, in relation to paragraph 4(a)(ii) of the Policy, to establish a prima facie case in support. Thereafter, the burden shifts to the respondent to establish, with evidence, showing that he has rights or legitimate interests in the domain name in dispute. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
The Panel is of the view that the Complainant has satisfied its burden of establishing a prima facie case. There is no evidence of a relationship between the Complainant and the Respondent or that the Respondent has been commonly known by the disputed domain name. Neither is there evidence of the Respondent’s fair use of the disputed domain name or use for a legitimate noncommercial use, without intent for commercial gain to misleadingly divert consumers or to tarnish the NETBET trade mark.
The Respondent has chosen not to file a response to demonstrate its rights or legitimate interests in the disputed domain name.
In the circumstances and in the absence of contrary evidence, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Panel is fully persuaded that the Respondent had knowledge of the Complainant and its NETBET trade mark when registering the disputed domain name, in particular because the NETBET mark had been registered with the Trademark Clearinghouse (“TMCH”). Further, taking into account the Respondent’s apparent propensity to register domain names corresponding to third-party trade marks (which has not been rebutted by the Respondent), the Panel is of the view that the current passive holding of the disputed domain name under the circumstances does not prevent the Panel’s finding that the Respondent has registered and used the disputed domain name in bad faith.
The evidence on record strongly indicates that the ultimate motivation for the Respondent’s registration and choice of the disputed domain name has been devoid of good faith. The Respondent appears to be familiar with the key brands in the betting market. Further, the choice of the gTLD “.vip” in the context of the existence and feature of club/VIP benefits offered to customers in relation to online betting and casino services further suggests bad faith on the Respondent’s part. The Panel concludes that the Respondent registered the disputed domain name in an attempt to confuse Internet users into thinking that the disputed domain name relates to VIP services offered by the Complainant in relation to its NETBET online betting services. The Respondent has not provided any rebuttal evidence. Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
The Complainant has accordingly satisfied the requirements of 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 name <netbet.vip> be transferred to the Complainant.
Date: December 19, 2016