WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intralot de Peru S.A. v. Domains By Proxy, LLC / Nikolai Ivanov
Case No. D2016-2231
1. The Parties
The Complainant is Intralot de Peru S.A. of Lima, Peru, represented by Clarke, Modet & Co., Peru.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Nikolai Ivanov of Sliven, Bulgaria, self-represented.
2. The Domain Name and Registrar
The disputed domain name <te-apuesto.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 November 2, 2016 in Spanish. On November 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint and that the registration agreement was in English. The Center sent an email communication to the Complainant on November 8, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent an email communication to the parties on November 8, 2016 informing that the language of the registration agreement was English and inviting the parties to comment on the language of the proceedings. The Complainant filed an amended Complaint in English on November 12, 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 November 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2016. The Response was filed with the Center on December 5, 2016.
The Center appointed Carolina Pina-Sánchez as the sole panelist in this matter on December 19, 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 is a Peruvian company which in accordance with the information provided is authorized by the Peruvian State to provide lottery and sports betting services, identified under the registered Peruvian trademark “TE APUESTO”. The service is made available to the public through the websites “www.teapuesto.pe” and “www.intralot.com.pe/intralotportal/teapuesto”.
The Peruvian trademark TE APUESTO was registered in the National Institute for the Defense of Free Competition and the Protection of Intellectual Property of Peru (“INDECOPI”) with filed number 435490 and certificate number 65204, to protect products and services of the class 41 of the International Classification of Nice (Annex 5 of the amended Complaint) (hereinafter, the “Trademark”). The Trademark application was filed on October 19, 2010 and it was granted on January 27, 2011. According to the information provided and verified by this Panel, no appeal has been lodged against the Trademark, and the Trademark expiry date is January 27, 2021.
The Complaint was initially filed against Domains By Proxy, LLC. The Registrar informed that Nikolai Ivanov is the registrant of the disputed domain name. It is not possible to find further information about the Respondent in the website hosted on the disputed domain name <te-apuesto.com>. The referred website provides information about sports betting services and includes advertising of other betting services providers such as Inkabet and Timberazo.com, as it has been verified by this Panel.
The disputed domain name was registered on June 20, 2014 as it has been stated in the information provided by the Registrar and verified by the Panel.
5. Parties’ Contentions
The Complainant pleads that:
- It enjoys a great reputation in the Peruvian market, being the leader in the management of these lottery services in the territory of Peru;
- The disputed domain name and the Trademark are identical to the point of creating confusion by association with the Complainant because: (i) there is a phonetical and conceptual identity between the terms of the disputed domain name (“te-apuesto”) and the Trademark TE APUESTO; (ii) The punctuation marks and hyphens are irrelevant when performing the confusing similarity analysis; and (iii) The use of the generic Top-Level Domain (“gTLD”) “.com” is not to be considered in the comparative analysis.
- The Respondent has no rights or legitimate interests regarding the Disputed Domain Name, stating the following arguments: (i) The Respondent does not make a good faith offer of products or services; (ii) The Respondent has not been authorized, neither granted a license to register and/or use the Trademark; (iii) The Respondent is not known by the disputed domain name; and (iv) The use of the disputed domain name has the purpose of diverting consumers and generating a profit due to its association with the sports betting service “Te apuesto” and the use of advertisements and hyperlinks to other betting companies.
- The Respondent has registered and it is using the disputed domain name in bad faith, because: (i) The Complainant’s Trademark is prior in time than the disputed domain name, and it is well known in the Peruvian market; (ii) The Respondent is seeking to mislead consumers and to make them believe that there is a commercial relationship, a sponsorship or a license between the Complainant and the Respondent; and (iii) The website hosted under the disputed domain name includes different advertisements and links to services provided by the Complainant’s competitors.
A summary of the Respondent’s submissions reads as follows:
- The disputed domain name is not identical or similar to the Complainant’s trademark, because: (i) The Trademark is formed by generic and non-distinctive terms, such as “te” and “apuesto”, which are currently used in different fields, and especially in the betting world; (ii) The Trademark is only protected in Peru, while the disputed domain name is under the “.com” gTLD; and (iii) The website hosted under the disputed domain name does not include any reference that would make Internet users believe that there is an authorization, a license or any other kind of agreement or relationship between the Complainant and the Respondent, neither that the appearance of both websites would mislead consumers.
- It has rights and legitimate interests regarding the disputed domain name due to its use to host a website which only includes information related to sports betting such as live scores, news or results, and links to all major companies that provide sports betting services in Peru, including the Complainant and other companies (e.g., Betsson, Inkabet, Timberazo, etc.).
- The disputed domain name was not registered neither is being used in bad faith, because: (i) There is no intention to sell, rent or transfer the disputed domain name to the Complainant or to a competitor; (ii) The Respondent is not a competitor of the Complainant – it has never run betting services – neither there is a commercial relationship between them; and (iii) The mere use of a domain privacy service does not mean bad faith.
6. Discussion and Findings
According to the Policy, the registration of a domain name is considered abusive or illegitimate if: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.
To decide the case, this Panel will take into consideration the Policy, the decisions adopted in previous UDRP disputes, the Rules and the Supplemental Rules.
It would be analyzed whether the Complainant fulfills or not the requirements above mentioned.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Trademark was registered before the disputed domain name. As shown in the table below, the Trademark includes a figurative element and the text TE APUESTO:
Although the Trademark and the disputed domain name are not identical, the degree of similarity between them, from an overall perspective, is sufficient to conclude that the disputed domain name is confusingly similar to the Trademark as required by paragraph 4(a)(i) of the Policy. In the Panel’s view reproducing the textual element of the Complainant’s Trademark TE APUESTO in the disputed domain name is sufficient for a finding of confusing similarity because:
- The mere addition of a hyphen does not avoid the confusing similarity between the disputed domain name and the Trademark.
- The applicable top-level suffix in the domain name gTLD “.com” should be disregarded due to its consideration as a technical requirement and not as an argument to support the different market to which the trademark and the disputed domain name are directed. The Panel in Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749, stated that due to the conception of the Internet as an international medium, the trademark rights cannot be restricted to the territory to which they have been registered.
- Even though the Trademark includes a figurative or design element, those elements should be disregarded for the purpose of assessing identity of confusing similarity because of the impossibility of representing them in a domain name, especially if those are not dominant neither relevant on the trademark, as it is in this case where the logo is just a non-distinctive football ball (eg. Deutsche Post AG v. NJ Domains, WIPO Case No. D2006-0001; Yell Ltd. V. Ultimate Search, WIPO Case No. D2005-0091; and Asset Loan Co. Pty Ltd v. Gregory Rogers,WIPOCase No. D2006-0300).
Besides, the confusing similarity increases when considering that both the Trademark and the disputed domain name are used to identify betting related services focused in the Peruvian market. From the content provided by the Complainant in Annexes 6, 7 and 8 of the amended Complaint, it can be inferred that an average user could reasonably believe that there is a commercial relationship between the website hosted under the disputed domain name and the sports betting services provided by the Complainant under the Trademark.
The Respondent contends that the Trademark is generic. Nevertheless, as concluded in Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058: “Paragraph 4(1) (i) of the Policy does not focus on how strong or weak those trademarks rights may happen to be. Action Sports Videos v. Jeff Reynolds WIPO Case No. D2001-1239. The Action Sports Videos decision is relevant because it demonstrates that rights under the Policy can exist in marks which are descriptive and which have no secondary meaning”.
Therefore, the Panel finds that the Complainant has rights over the Trademark and that the disputed domain name is confusingly similar to the Trademark as required by paragraph 4(a) (i) of the Policy.
B. Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and legitimate interests in the disputed domain name by showing, in particular but without limitation, any of the following circumstances:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known – as an individual, business or other organization – by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent’s use of the disputed domain name in a legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this Panel’s view, the Complainant has shown, prima facie, that the Respondent has no rights or legitimate interests over the disputed domain name because it has not been authorized to register and use the Trademark as a domain name. Secondly, because the Respondent is not commonly known by the disputed domain name. Finally, because there are relevant indicia showing that the Respondent is using the disputed domain name for commercial gain, with the intent of misleadingly divert consumers to its website where it displays ads and links to the websites of the Complainant’s competitors.
In the light of the above, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo v. WACHEM, WIPO Case No. D2004-0110).
The Respondent’s sole assertion to show its rights and legitimate interests lies on the fact that the disputed domain name is not being used to offer betting services but only for providing information related to betting operators in Peru. This defense shall be rejected. From the analysis of the concerned website it can be inferred that its content cannot be classified as noncommercial. The Panel agrees with the analysis made in Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, concluding as follows:
“Respondent’s claim to use of Complainant’s mark for legitimate news dissemination purposes is a serious one, since the Panel is greatly concerned to assure that rights of the public to freely communicate their views on the Internet are protected and preserved. However, in balancing the rights of Complainant in its mark, and the rights of Respondent to freely express its views about Complainant’s services, the Panel concludes that Respondent has impermissibly taken advantage of Complainant’s commercial interests in the mark.
… [T]he right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine.” (seealso Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.
It is this Panel’s view that the Respondent is using the disputed domain name with the intention of conveying an association with the Complainant and the final and sole aim of misleading Internet users to its website. Therefore, it is the Panel’s view that the Respondent is using the disputed domain name to misrepresent itself as related to the Complainant and attract users to its commercial website by trading off the Complainant’s goodwill on its Trademark. This behavior shall be considered an illegitimate commercial use of the disputed domain name to misleadingly divert consumers to its own website.
In this scenario, the Respondent’s defense on the allegedly descriptiveness of the Trademark shall also be rejected. Thus, when the Respondent fails to demonstrate its rights or legitimate interests in the disputed domain name, the consensus view of previous UDRP panels is that the Respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of dictionary words or phrases (see Mobile’s Republic v. Kwangpyo Kim, WIPO Case No. D2014-0089).
Although the disputed domain name is comprised of dictionary terms, the Panel finds that the particular combination of the terms is not so obvious that the Respondent would have independently chosen the disputed domain name to merely offer live sports news and scores and provide information as it claims. The disputed domain name is used to offer services directly related to those offered by the Complainant – sports betting – and, more importantly, focused only in the territory of Peru. The Complainant offers a solid proof of this fact on Annex 8 of the Complaint, which contains a list of football statistics elaborated by the Complainant but hosted on the Respondent’s site. The list, which has been taken by the Respondent from the Complainant’s site, is currently positioned as the fourth result offered by Google under the search terms “Te apuesto” (Annex 9). This behavior cannot be considered, by any means, as a bona fide offering of services.
Therefore, it can be inferred that the Respondent’s sole intention was to take advantage of the Complainant’s goodwill on the territory of Peru by offering advertising services to the Complainant’s main competitors. Moreover, the Panel also shares the conclusions reached in Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, supra: “Whilst the Complainant’s trading name ‘Complete Sports Betting’ may be descriptive, the Respondent knew of the reputation and goodwill that the Complainant had established in this name and registered the domain name with knowledge of the Complainant’s rights and reputation. Under these circumstances, it cannot be concluded that the Respondent is offering bona fide services or making a fair use of the disputed domain name when the goods and services that the Respondent intends to offer using the disputed domain name are in direct competition with those of the Complainant. The intention appears to be to cause confusion amongst the gaming community so that those who are interested in the Complainant’s services are diverted to a web site of the Respondent or a competitor of the Complainant”.
In this case, the relevant point is that users that enter the website hosted under the disputed domain name are probably looking for the services offered by the Complainant but can end up accessing the banners that will lead them to the websites of the Complainant’s main competitors in Peru, such as Inkabet or Timberazo.com.
Accordingly, the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name as required by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the domain name has been registered or acquired 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) the domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the domain name has been registered primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its own web site or other online 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.
According to this Panel’s opinion, there are various circumstances that lead us to assert that the disputed domain name has been registered and is being used in bad faith with the sole intention of attracting Internet users to the Respondent’s website, for commercial gain, and by creating a likelihood of confusion with the Complainant’s Trademark.
On the one side, several UDRP decisions have stated that the previous knowledge of the trademark is considered as bad faith (The Gap Inc. v. Deng Youqian, WIPO Case No. D2009-0113; and Research In Motion Limited v. Privacy Locked LLC / Nat Collicot, WIPO Case No. D2009-0320). Taking into account the Complainant’s reputation in the Peruvian market, and the fact that the website under the disputed domain name is focused precisely on this market, there are sound grounds to infer that, when registering the disputed domain name, the Respondent knew or should have known about the Complainant’s prior rights over the Trademark before registering the disputed domain name (SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092 and The Nasdaq Stock Market, Inc. v. H. Pouran, WIPO Case No. D2002-0770. Therefore, the Panel finds that the Respondent registered the disputed domain name with knowledge of the Complainant’s business and reputation and with the intention to mislead Internet users to a site which advertises the services offered by its main competitors. This conduct is contrary to paragraph 4(b) (iv) of the Policy (World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).
On the other side, the advertising services provided by the Respondent to the Complainant’s main competitors show that the Respondent is well aware of the fact that Internet users associate the Trademark with the betting services provided by the Complainant. This is the only reasonable explanation to the fact that the Respondent has designed a website focused only on Peruvian betting services instead of opening the scope of the services offered to the whole Spanish-speaking market. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content. Considering that the presence of certain banners may constitute evidence of bad faith use of the disputed domain name, such presence would usually be attributed to the respondent unless it can show some good faith attempt toward preventing such practices, which did not happen at the present case (Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315 and Owens Corning v NA, WIPO Case No. D2007-1143). Therefore, there are sound grounds to conclude that the Respondent is using the disputed domain name with the sole intention to divert Internet users to its own website by creating a likelihood of confusion with the Trademark as to the existence of a commercial relationship between the parties.
For the reasons outlined, this Panel finds 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, <te-apuesto.com>, be transferred to the Complainant.
Date: January 2, 2017