Provent Holdings Ltd. / Harmony Park International Inc. v. Toto Haryanto, Found / Registration Private, DomainsByProxy.com

Case No. D2017-0602

1. The Parties

The Complainants are Provent Holdings Ltd. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and Harmony Park International Inc. of Belize City, Belize, represented by Lee Wei-Jin, People’s Republic of China (“China”).

The Respondent is Toto Haryanto, Found of Lampung, Indonesia / Registration Private, DomainsByProxy.com of Scottsdale, Arizona, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <livem88.biz>, <livem88.com>, <livem88.info>, <livem88.net> and <livem88.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2017. On March 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 24, 2017, 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 5, 2017 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 April 10, 2017.

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 April 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2017.

The Center appointed Jon Lang as the sole panelist in this matter on May 5, 2017. 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 first Complainant is Provent Holdings Ltd. (“Provent” or “First Complainant”) and has applied for and/or registered several marks in many countries in relation to “M88” and “M88.COM”, including in Indonesia under Application Number: J00 2012 038676 (August 8, 2012), Registration Number: IDM000461628 (March 4, 2015). A list of 46 applications/registrations (the “m88 Marks”) has been included in the Amended Complaint.

The second Complainant is Harmony Park International Inc (Harmony Park or Second Complainant) and is a licensee of the First Complainant. It has been granted a licence to use the M88 Marks.

The First Complainant has also licensed the use by the Second Complainant of domain names incorporating “M88” including <m88.com>.

The Second Complainant operates an international online casino, poker, sports book and sports exchange gaming website and carries on its business at the website “www.m88.com” and “www.mansion88.com” amongst others. The Second Complainant is a fully licensed online gambling operator and was granted a licence under the First Cagayan Leisure & Resort Corporation to operate its business in the Philippines.

In June 2016, the Complainants discovered that the domain name <livem88.com> had been registered by the Respondent on October 30, 2015 and that it resolved to a website that featured an almost identical look, feel, font, usage of colour and layout to the Complainants’ websites. The Complainants subsequently discovered that the domain names <livem88.net>, <livem88.org>, <livem88.info> and <livem88.biz> were registered on March 5, 2016. These domain names redirect visitors to the website “www.livem88.com” (the “Respondent’s Website”), the text of which is in the Bahasa Indonesian language. All five domain names the subject of this Complaint will, hereafter, where the context permits, be referred to collectively as the Domain Names.

5. Parties’ Contentions

A. Complainant

The following is a brief summary of the key contentions of the Complainants.

The Complainants have invested substantial time, effort and resources in advertising and marketing their online casino and sports exchange gaming business. For instance, as a result of various agreements with third parties, the M88 Marks were prominently displayed on the LED pitch-side perimeter advertising system at the City of Manchester Stadium (where Manchester City Football Club plays its home league matches).

The Complainants also held or hold various sponsorship deals with sporting events and professionals such as Tiger Street Football, the Guinness 9 ball tour, World 5's Futsal and the 2012 professional drifting champion, Daigo Saito, in connection with which the M88 Marks were prominently displayed.

As result, the Complainants have acquired substantial goodwill and reputation internationally in relation to the M88 Marks (as well as certain other trademarks). The public and the business community have come to associate and identify the First Complainant's trademarks with the Complainants exclusively.

It would appear that a licensed online casino, poker and sports exchange gaming business is being conducted from the Respondent’s Website using the M88 Marks and also a stylised “M” Device (i.e. “logo“) which is also owned by and associated with the Complainants.

It appears to the Complainants that the Respondent is an unlicensed gambling operator.

The Complainants have rights in the M88 Marks

The Complainants have both registered and unregistered rights in the M88 Marks.

The Domain Names are confusingly similar to the Complainants’ M88 Marks

A visual comparison of the elements in the Domain Names shows that they are nearly identical to the M88 Marks.

The gTLD suffixes are to be treated as “generic” and do not add any element of distinctiveness to the Domain Names or detract from the overall impression given by them.

The Respondent has used the M88 mark in conjunction with the generic terms “live”. The term “live” makes reference to a broadcast or transmission at the time of occurrence and is a term that does not purport to offer any distinctive character to the Domain Names.

The Respondent has no rights or legitimate interests in respect of the Domain Names

Addressing the non-exhaustive list of circumstances which demonstrate that a respondent may have rights to or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) of the Policy, the Complainant contends:

“the Respondent has never used, or appears to have made preparations to use, the Domain Names in connection with a bona fide offering of goods and services before the Respondent had notice of the dispute.”

It is submitted that the Respondent’s Website masquerades as being related to the registered proprietor of the M88 Marks (an act compounded by use of other marks owned by the Complainants).

The Complainants have not licensed or authorised the Respondent to use the M88 Marks. The Respondent only uses the Domain Names as a means to deceive visitors into thinking that the Respondent’s Website and the Domain Names are related to the businesses operated under the Complainants’ trademarks.

Further, there is a clear lack of good faith in the use of the Domain Names as users who rely on <livem88.net>, <livem88.org>, <livem88.info> and <livem88.biz> are redirected to the Respondent’s website at <livem88.com> and will see the Complainants’ M Device (logo) mark which is used with the M88 Marks by the Complainants in connection with their business.

The Respondent intends to draw and deceive Internet users who identify with the goodwill and branding that is associated with the M88 Marks to the Respondent’s Website, where the offering is of a similar nature to the services that the M88 Marks are associated with, i.e. online gaming, casino and sportsbook services.

In these circumstances, any goods or services supplied at the Respondent’s Website would not be regarded as bona fide.

Given the almost identical website layout, it is also the Complainants’ belief that the Respondent has created the Domain Names to be used for phishing.

It is impossible that the Respondent was not aware of and did not associate the “M88” name with the Complainants, particularly given that the Complainants’ trademarks and domain name <m88.com> are well known throughout the online gambling community.

The Respondent has not been commonly known by the Domain Names

The Complainants have not licensed, authorised or permitted the Respondent to use the Complainants’ trademarks. There is no good or legitimate reason for the Domain Names to be registered by the Respondent.

The Respondent is making an unfair use, if any, of the Domain Names to misleadingly divert consumers

The Domain Names direct visitors to the Respondent’s Website which provides services identical to those provided under the M88 Marks. It is apparent that the Respondent is intending to use or is using the Domain Names to misleadingly divert Internet users who are searching for information on “M88” to the Domain Names which deceive Internet users into assuming that the Respondent is the same as, or related to, the Complainants.

Finally, it cannot be said that there is a legitimate noncommercial or fair use of the Domains Names in the present circumstances.

The Domain Names have been registered and are being used in bad faith

With the non-exhaustive list of circumstances set out in paragraph 4(b) of the Policy in mind (which evidence that the registration or use of a domain name may have been in bad faith), the Complainant contends as follows:

Given that there is no bona fide use of the Domain Names, the only inference to be drawn is that the Respondent acquired the Domain Names for the sole purpose of exploiting the M88 Marks for commercial gain.

It is submitted that the Respondent has deliberately registered or acquired the confusingly similar Domain Names to divert Internet users for the Respondent’s own commercial gain or benefit and/or criminal purposes.

The Respondent’s use of the Domain Names is designed to cause Internet users to mistake the Respondent’s Website for one that belongs to or is associated with the Complainants, a mistake which the Respondent will exploit and seek to profit from. This is particularly so, given that the Respondent is offering an identical service to that of the Complainants.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the M88 Marks.
The Domain Names comprise the Complainant’s M88 mark and also (except in the case of <livem88.com>) an important, perhaps dominant part of the M88.com mark as well. In the case of <livem88.com>, the entire M88.com mark is incorporated. Whilst the Panel may ignore the generic Top-Level Domains (“gTLDs”) for comparison purposes, where a facsimile of a gTLD is incorporated into a trade mark, it is perfectly proper to include that gTLD in any comparison exercise.

Within the Domain Names, the M88 Marks are preceded by the word “live”. As the M88 Marks and Domain Names are not therefore identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.

The well-known M88 Marks are clearly recognizable within the Domain Names. The only real issue therefore is whether the word “live” which precedes them, renders the Domain Names something other than confusingly similar (to the M88 Marks). In the Panel’s view, it does not.

Indeed, given the nature of the activities with which the M88 Marks are associated, inclusion of the word “live” in the Domain Names may well enhance the risk of confusing similarity.

Accordingly, the Panel finds that the Domain Names are confusingly similar to the M88 Marks for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainants, that the Respondent indeed lacks rights or legitimate interests in the Domain Names. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

Despite a respondent not having been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.

The Respondent is not known by any of the Domain Names. The website to which the Domain Names resolve (directly or indirectly) does not appear “noncommercial” in nature. Even if it was, such use would have to be without intent (for commercial gain) to misleadingly divert consumers. The Respondent would likely fail in this regard, as it would likely do in any attempt to demonstrate “fair use”.

A respondent can also show that before any notice of dispute, it was using or had made 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. Given the Respondent’s lack of engagement in this proceeding, there is no evidence available which could go to demonstrate use or preparations to use the Domain Names before notice of a dispute. In any event, such use as might be shown, would have to be in connection with a bona fide offering of goods or services. It is unlikely any offering by the Respondent using Domain Names confusingly similar to the M88 Marks could be regarded as bona fide, particularly given that such offering is similar or identical to that of the proprietors of the M88 Marks. The Panel is entitled to draw an inference that there is nothing much the Respondent could have said to support an argument that it did have rights or legitimate interests in the Domain Names. In any event, it is unlikely that the Respondent could maintain an argument that it was unaware at the outset, that registration of the Domain Names which were to be used for activities similar or identical to those of the Complainants, might spark a dispute.

There is no evidence before this Panel which suggests that the Respondent has rights or legitimate interests in the Domain Names or that there would be anything inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainants have fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. That appears to be the case here. (The Complainant has raised the possibility of use of the Domain Names for more nefarious activities but the Panel need not consider that particular issue further).

If a UDRP proceeding is commenced in circumstances where a well-known mark (of which a respondent must have been aware) is used in a confusingly similar domain name, it is incumbent on the respondent to come forward with an explanation if it is to avoid, or attempt to avoid, the risk of an adverse finding. Indeed, a respondent’s non-participation is a factor that can be taken into account, along with others, in considering bad faith under the Policy.

The Respondent has chosen not to participate in these proceedings. Given the use to which the Domain Names have been put and in all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <livem88.biz>, <livem88.com>, <livem88.info>, <livem88.net> and <livem88.org> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: May 16, 2017