WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Navasard Limited v. WhoisGuard Protected, WhoisGuard, Inc / Dmytro Susidko, DC
Case No. D2017-2411
1. The Parties
The Complainant is Navasard Limited of Limassol, Cyprus, represented by Giorgos Landas LLC, Cyprus.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc of Panama, Panama / Dmytro Susidko, DC of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <1xbet.agency> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 6, 2017. On December 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 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 December 8, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. An email with an attached letter was received from the Complainant on December 18, 2017. However, no amendment was filed to the Complaint. Accordingly on December 19, 2017, the Center transmitted an email to the Complainant noting that in the Notice of Change in Registrant Information of December 8, 2017 the Center provided the Complainant with the registrar-identified registrant and contact detail information. As the deadline had passed, the Center would proceed to formal Complaint Notification. Further as was indicated in the Center's email, the Center would send all communications to both the named Respondent and to the registrant contact details disclosed by the registrar to ensure proper notice is provided to the registrant.
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 December 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 16, 2018.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 31, 2018. 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 the owner of trademarks which are used to promote online sports betting. It holds:
- the European Union trademark registration for the 1XBET (word) mark (no. 014227681), registered on September 21, 2015 for goods and services in classes 35, 41, 42;
- the European Union trademark registration for the 1XBET (figurative) mark (no. 013914254), registered on July 27, 2015 for goods and services in classes 35, 41, 42.
The Complainant has registered the 1XBET marks with Trademark Clearinghouse.
The 1XBET marks are leased to companies affiliated with the Complainant which use them in domain names such as <1-x-bet.com> and <1x-bet.com>.
The disputed domain name was registered on September 5, 2017 and currently resolves to a website which features the 1XBET marks. Furthermore, there is a "REGISTRATION" button ("Регистрация" in Russian) which leads to a website offering online sports betting.
On September 20, 2017, the Complainant received a notification from the Trademark Clearinghouse about registration of the disputed domain name.
On September 20, 2017, the Complainant sent the Registrar an email informing of its rights in respect to the 1XBET marks and asking for the transfer of the disputed domain name.
5. Parties' Contentions
Firstly, the Complainant contends that the disputed domain name is identical to the 1XBET mark as the disputed domain name includes the Complainant's mark in its entirety.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is illegally using it to make the Internet users believe that the website linked to it is operated by the Complainant or its affiliates. The Complainant emphasizes that the Respondent appears to be involved in the business of selling Internet traffic through "pay per click" scheme.
Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith. In particular, the Complainant believes that by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation and endorsement of its website or of a product or service on its website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements are the following:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The disputed domain name <1xbet.agency> contains the 1XBET mark in its entirety. The mere adjunction of the generic Top-Level Domain ".agency" is insufficient to distinguish the disputed domain name from the Complainant's mark (Heineken Italia S.p.A. v. xiongmiao, WIPO Case No. D2016-2193 and Les Laboratoires Servier v. miller / JunZe zhang, WIPO Case No. D2016-2029).
Given the above, the Panel finds that the disputed domain name is identical to the 1XBET mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1 and cases cited therein).
The Panel believes that the use of the disputed domain name to create a website mirroring the Complainant's mark and connecting visitors to the website of a competitor of the Complainant cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant's unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, based on the record, the Panel finds that the disputed domain name was registered in bad faith.
Secondly, the Respondent, by using the Complainant's mark at the website under the disputed domain name creates the impression that it belongs to the Complainant or its affiliates. Creating such a website by the Respondent involves registration and use in bad faith (see The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki, WIPO Case No. D2017-0388).
In addition, the Respondent used a privacy shield for the registration of the disputed domain name. While the use of a privacy shield cannot be considered in itself as use of bad faith, once connected with additional elements, it may support the bad faith finding (see Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571).
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.
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 <1xbet.agency> be transferred to the Complainant.
Date: February 14, 2018