WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Provent Holdings Ltd., Upper Assets Limited, Harmony Park International Inc. v. Do Mai
Case No. D2017-1824
1. The Parties
The Complainants are Provent Holdings Ltd. of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”); Upper Assets Limited of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom and Harmony Park International Inc. of Belize City, Belize (hereafter referred to as “Complainant”), represented by Wei-Jin Lee, China.
The Respondent is Do Mai of Ho Chi Minh City, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <m88uk.com> and <m88vnn.com> (the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2017. On September 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 22, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 28, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On September 28, 2017, the Center also notified the Complainant that the Complaint was administratively deficient. The Complainant filed an amended Complaint on October 2, 2017.
The Center verified that the Complaint together with amended Complaint (hereafter referred to as 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 October 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2017. The Respondent did not submit any response save for a series of email communications dated September 28 and 29, 2017. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on October 25, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 3, 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
Harmony Park International Inc. is the operator of a series of online casino poker, sports book and sports exchange gambling websites from online locations including at “www.m88.com” (“Complainant’s Website”) and “www.mansion88.com”. Harmony Park International Inc. has extensively promoted its online gambling websites since 2011 by sponsoring various teams playing in the English football competition, including Manchester City, Crystal Palace FC (which played in the FA Cup Finals in 2016, wearing a shirt displaying Harmony Park International Inc’s licensed trademarks (referred to below)) and AFC Bournemouth.
Harmony Park International Inc. is the licensee of various trade marks presently registered to Provent Holdings Ltd. Provent Holdings Ltd. is in the process of assigning its registered and unregistered trade marks to Upper Assets Limited. The trade marks that are owned and used by the Complainant include the word mark M88 (the “M88 Mark”) which has been registered in various countries, including China. The Complainant also owns and uses a mark consisting of the stylized letters M88.COM, a device consisting of the letter M, set out at the bottom of this paragraph (the “M Device”) and sometimes certain Chinese characters, which has been registered in various countries, including Viet Nam, the location of the Respondent. While the registration certificates provided in the Complaint to support the Complainant’s claims of trade mark ownership are untranslated, it is apparent that most, if not all, of the registered marks referred to above were registered prior to June 2017, with a majority being applied for in 2012-13. The M Device is also a registered trade mark in numerous jurisdictions, including China, United States of America and Europe, with filing dates in March 2006.
The Domain Name <m88uk.com> was registered on June 8, 2017. It is presently inactive but prior to the commencement of the proceeding redirected to a website in the Vietnamese language that offered gambling services (the “Respondent’s First Website”). The Respondent’s First Website offered gambling services on a website that contained images that are of strikingly similar design to the Complainant’s Website and reproduces the M Device. The Domain Name <m88vnn.com> was registered on August 1, 2017. It redirects to a website (the “Respondent’s Second Website”) that also offers gambling services, contains images that are of similar design to the Complainant’s Website and reproduces the M Device. The Respondent’s First and Second Websites are collectively referred to as (“Respondent’s Websites”).
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s M88 Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the M88 Mark having registered the M88 Mark in various jurisdictions. Each of the Domain Names incorporates the M88 Mark and adds the generic Top-Level Domain (“gTLD”) “.com” and the geographical references “uk” (short for the United Kingdom) or “vnn” (short for Viet Nam). In each case the additions do not distinguish the Domain Names from the M88 Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as any of the Domain Names, nor does the Respondent have any authorization or license from the Complainant to use the M88 Mark. The Domain Names are used to operate gambling websites that deceive visitors into thinking the Respondent has a connection with the Complainant when in fact there is no relationship between the parties. This can particularly be seen by the use of the M Device on the Respondent’s Websites. Such use is not a bona fide offering of goods and services or legitimate noncommercial use.
The Domain Names were registered and are being used in bad faith. The only reason for the Respondent’s registration and use of the Domain Names is to divert Internet users for the Respondent’s own benefit to websites that replicate the Complainant’s Website and display the M Device. This conduct amounts to registration and use of the Domain Names in bad faith.
The Respondent did not formally reply to the Complainant’s contentions. The relevant portion of the Respondent’s statements in its communications of September 28 and 29, 2017 is extracted below:
“1. if the domains(m88uk.com, m88vnn.com) belong to you, why you haven’t bought them??? until now the domains are good for business
2. I hold these domains when they're free, no have any disputes before. is it clear to you?
3. You can’t be over my rights of these domains if no have my permit
4. submit proof that domains are yours?”
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the M88 Mark, having registrations for M88 as a trade mark in various jurisdictions.
The Domain Names <m88uk.com> and <m88vnn.com> each incorporate the M88 Mark in its entirety with the addition of a term that could evoke a geographical location. Neither of these additions dispels the overall impression that both of the Domain Names comprise of variants of the Complainant’s M88 Mark.
An individual viewing either of the Domain Names may be confused into thinking that the each of the Domain Names would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names are confusingly similar to the Complainant’s M88 Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.” (Policy, paragraph 4(c))”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the M88 Mark or a mark similar to the M88 Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use any of the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Domain Names either resolve or have resolved to websites that, without the permission of the Complainant:
(a) make reference to the Complainant’s M88 Mark and reproduce the M Device, potentially indicating that the Respondent and its websites are in some way connected with the Complainant or offer its products; and
(b) purport to offer gambling services in direct competition with the Complainant.
Such use is not a bona fide offering of goods or services. The use of a domain name that contains the Complainant’s M88 Mark offer gambling services in competition with the Complainant does not amount to a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of 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 Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the M88 Mark at the time each of the Domain Names were registered. The Respondent’s Websites contain material that mimics the Complainant’s Website and reproduce the Complainant’s M Device, something that would not have occurred if the Respondent was unaware of the Complainant. The registration of the Domain Names in awareness of the M88 Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the M88 Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent uses or has used the Domain Names to operate websites offering gambling services in direct competition with the Complainant that likely generate revenue for the Respondent. Furthermore the Respondent’s Websites reproduce the design and devices used by the Complainant on its website. The Respondent therefore is likely to receive revenue from Internet users who happen to come across the Respondent’s Websites by means of confusion with the M88 Mark.
The Panel finds that the Respondent has registered and is using each of the Domain Names in bad faith under 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 Domain Names <m88uk.com> and <m88vnn.com> be transferred to the Complainant.
Date: November 14, 2017