WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Realm Entertainment Limited v. WhoisGuard Protected / WhoisGuard, Inc. Onur Oztas
Case No. D2017-1482
1. The Parties
The Complainant is Realm Entertainment Limited of Ta' Xbiex, Malta, represented by Ports Group AB, Sweden.
The Respondent is WhoisGuard Protected / WhoisGuard Inc. of Panama, Onur Oztas of Adana, Turkey.
2. The Domain Name and Registrar
The disputed domain name <europebets10.com> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2017. On July 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2017, 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. The Center sent an email communication to the Complainant on August 1, 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 two amendments to the Complaint on August 3 and August 10, 2017.
The Center verified that 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 August 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 5, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 15, 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 Complainant runs a game website available at <bets10.com> since 2011. It is the owner of the following European Union trademark registrations in international classes 36, 38 and 41:
- No. 009941139 for BETS10, filed on May 6, 2011 and registered on September 14, 2011; and
- No. 012403713 for BETS10 (and device) filed on December 9, 2013 and registered on May 5, 2014.
The disputed domain name was registered on July 2, 2017. Currently no active webpage resolves from the disputed domain name.
5. Parties' Contentions
The Complainant asserts to provide the largest poker network in the world under the BETS10 trademark, counting 18 million active poker players at its online gambling and games website available at <bets10.com>.
As to the disputed domain name, the Complainant asserts that it is confusingly similar to its BETS10 trademark, being the only difference between them the addition of the word "Europe" in an attempt to create a likelihood of confusion with Internet users, thus conveying the false and misleading impression that the disputed domain name is connected with the Complainant, targeting the Complainant's European customers.
Also, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
- the Respondent does not have any rights in the trademark BETS10, nor is it a licensee of the Complainant, not having the Complainant given the Respondent any permission to register the disputed domain name;
- the Respondent did not make a legitimate commercial or noncommercial use of the disputed domain name since it has been used to target the Complainant's website, thus misleading the Complainant's consumers and Internet users, in an attempt to create confusion with the Complainant's mark and domain name; and
- there is no evidence that the Respondent has been commonly known by the disputed domain name or is making a legitimate non-commercial or fair use thereof.
Bad faith in the registration of the disputed domain name arises, according to the Complainant, in view of the fact that when registering the disputed domain name, the Complainant's trademarks had already been registered and in use as early as 2011. Furthermore, by having used the disputed domain name in connection with a website that exploited the same kind of business as the Complainant implies knowledge of the Complainant's trademarks and business, what suggests that the disputed domain name was registered and used to commercially profit from an undue association with the Complainant and its trademark.
Lastly, another element to corroborate with the bad faith of the Respondent is that, in an attempt to solve the matter amicably the Complainant sent a cease-and-desist letter to the Respondent requesting the transfer of the disputed domain name, to which no reply was received.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the BETS10 trademark as set out in Section 4 above.
The Panel finds that the disputed domain name <europebets10.com> reproduces the Complainant's trademark in its entirety. As recognized in past decisions such as ELS Educational Services, Inc. v. Domaincar, WIPO Case No. D2005-1348, the addition of the geographically descriptive term "Europe" is not sufficient to distinguish a mark from the disputed domain name.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exhaustive list of circumstances that may indicate the Respondent's rights to or legitimate interests in the disputed domain name. These circumstances are:
(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; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, despite not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark or service.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant's side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not granted a license nor given the Respondent any permission to register the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name at the time of the filing of the Complaint, corroborate with the Panel's finding of the absence of rights or legitimate interests.
According to the print-outs attached to the Complaint (Annex 4) the disputed domain name has been used in connection with a website that exploited the same kind of business as the Complainant. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name since it was used to target the Complainant's website, in an attempt to create confusion with the Complainant's trademark and domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intention to attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Respondent's knowledge of the Complainant appears to be evident from the choice of the disputed domain name <europebets10.com> which incorporates the Complainant's BETS10 trademark in its entirety in connection with the use made of the disputed domain name with a website that exploited the same kind of business as the Complainant, creating a likelihood of association of Internet users between the disputed domain name and the Complainant's services.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstances which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, three other circumstances of this case further support the Panel's finding of bad faith:
(i) Respondent's choice to retain a privacy protection service in an attempt to hide its true identity;
(ii) the use of what may be false physical contact information, the Center not having been able to contact the Respondent through such, in the WhoIs information after the shield was lifted; and
(iii) the absence of reply to the cease-and-desist letter sent to the Respondent prior to the filing of the Complaint.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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, <europebets10.com>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: September 28, 2017