WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Navasard Limited v. Humberto DAbreu De Paulo, Duranbah Limited N.V.
Case No. D2017-2414
1. The Parties
The Complainant is Navasard Limited of Limassol, Cyprus, represented by Giorgos Landas LLC, Cyprus.
The Respondent is Humberto DAbreu De Paulo, Duranbah Limited N.V. of Willemstad, Curaçao, represented by MBM Intellectual Property Law, Canada.
2. The Domain Name and Registrar
The disputed domain name <xbet.bet> is registered with 1&1 Internet AG (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 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2018. Further to the Respondent's request for extension of the Response due date and in the light of the Complainant's consent to the request for extension, the due date for Response was extended until January 28, 2018. The Response was filed with the Center on January 26, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 30, 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
Background information about the Complainant and the Respondent is taken from the Complaint and the Response. The Complainant states it has existed since March 9, 2015 and is engaged in the sports betting industry, particularly in Eastern Europe. The Complainant is the registrant of the following trademarks:
European Community trademark for 1XBET (design), filed on April 7, 2015, registered on July 27, 2015, registration number 013914254, classes 35, 41, 42;
European Community trademark for 1XBET (word mark), filed on June 8, 2015, registered on September 21, 2015, registration number 014227681, classes 35, 41, 42.
The Complainant asserts prior rights in the trademark 1XBET under common law.
The Complainant's trademark is leased to a network of associated entities that operate domain names such as <1-x-bet.com> and <1x-bet.com>. The Complainant emailed the Respondent on October 2, 2017, stating its trademark rights and requesting the transfer of the disputed domain name.
The Respondent commenced business in 2014 and was incorporated under its present name on July 1, 2015. The Respondent has been engaged in the online betting industry since September 2014 through the website of the domain name <xbet.ag>, which was registered on August 2, 2014.
The disputed domain name was registered on March 3, 2016 and is presently registered to the Respondent as the registrant organisation and to a director of the Respondent as the registrant name.
5. Parties' Contentions
The Complainant has produced copies of online documentation as evidence of its ownership of the 1XBET trademarks and has provided the trademark identification details at the Trademark Clearinghouse. The Complainant says that an intending registrant of a domain name that conflicts with a trademark receives a warning from the Trademark Clearinghouse, and the trademark holder is informed if a conflicting domain name is registered. The Complainant was so notified of the disputed domain name on October 2, 2017.
The Complainant says that the disputed domain name, omitting the generic Top-Level Domain ("gTLD"), is identical or confusingly similar to a trademark in which the Complainant has rights, and that "xbet" is a misspelling of "1xbet".
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent intends visitors to the corresponding website to believe it is operated under the brand of the Complainant and then to mislead them elsewhere, including to gaming-related pay-per-click links and to search engines.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith, specifically by attempting to attract Internet users to the Respondent's website for commercial gain by confusion with the Complainant's trademark.
The Complainant has submitted a brief Affidavit sworn on December 6, 2017 by the Complainant's representative who is a director of the Complainant, which states, among other things, that a website under the domain name <1xbet.com> was first registered on September 1, 2006, and that the website has throughout kept the same colours, logo and brand name, and hence is widely recognised.
The Complainant has cited Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, for the attention of the Panel.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint. The Respondent's extensive Response is summarised below. Annexed to the Response is an Affidavit in respect of certain evidence and submissions, dated as sworn on January 23, 2017, which should presumably read January 23, 2018.
In reply to the Complainant's Affidavit, the Respondent says it started business in 2014. It was incorporated on July 1, 2015, and has annexed documentation including a copy of the Curaçao Commercial Register showing its field as gaming and sports betting activities. Its online gambling business is conducted principally through the website "www.xbet.ag", which it has operated since at least as early as September 2014. The Respondent says the XBET trademark in word and logo form has been present on the website "www.xbet.ag" since at least as early as September 27, 2014, as evidenced by screen captures from the Wayback Machine ("www.archive.org"). The Respondent says its trademark has appeared in advertising on Twitter and Facebook since September 2014 and it has annexed screen captures. The Respondent says it has acquired significant goodwill in its trademark.
The Respondent says it (or related entities) holds the domain names <xbet.bet> (the disputed domain name), <xbet.football>, <xbet.global>, <xbet.ru.com>, <xbet.fr>, <xbet.com.co>, <xbet.one>, <xbet.be>, <xbet.eu.com> and <xbet.poker>, for each of which (except <xbet.fr>) WhoIs information is annexed showing registration a date between September 6, 2017 and January 22, 2018, and also <xbet.com.pa> and <xbet.hu>, for which the Respondent could not locate the WhoIs information. These were obtained variously to provide additional websites, for redirection purposes, and for the defence of its trademark. Since receipt of the Complaint these domain names have resolved to "www.xbet.ag", except for <xbet.football> and <xbet.poker>.
The Respondent denies knowledge of the Complainant's trademark prior to the Complaint. The person who registered the disputed domain name, being the deponent of the Respondent's Affidavit, therein states that he does not recall seeing any notice from the Trademark Clearinghouse. Annexed to the Respondent's Affidavit are screen captures of the 5-step registration procedure in respect of the domain name <xbet.poker>, throughout which no notice from the Trademark Clearinghouse was displayed. The Respondent says the disputed domain name does not match the Complainant's trademark.
The Respondent says it cannot locate the email requesting transfer that the Complainant says it sent on October 2, 2017.
The Respondent draws attention to the Complainant's trademark registration dates and says it is not sufficiently proven that the Complainant held unregistered rights in the trademarks before they were registered.
The Respondent contends that it chose the term and trademark XBET independently as being relevant, catchy, short and suitable for clothing endorsement, and available as the domain name <xbet.ag>.
The Respondent denies that it has displayed the trademark 1XBET, has engaged in the registration of domain names that include known trademarks, or has ever intended to lease or to sell a domain name.
The Respondent contends that the disputed domain name is not identical to the trademark 1XBET, nor is it confusingly similar. The Respondent says many gaming websites are centred on the word "bet", and has produced screen captures of the websites of 15 examples: "www.x-bet.co", "www.mrxbet.com", "www.1bet.com", "www.10bet.com", "www.12bet.uk", "www.18bet.com", "www.188bet.com", "www.vbet.com", "www.lvbet.com", "www.slbet.com", "www.lsbet.com", "www.bet90.com", "www.betn1.com", "www.bet3000.com" and "www.bet365.com". Clients are accustomed to this and would know the difference between the disputed domain name and the Complainant's trademark. The Respondent says the Complainant's trademark is inherently weak and denies that the disputed domain name is a deliberate misspelling.
The Respondent contends that it has rights or legitimate interests in respect of the disputed domain name. Since at least as early as September 2014 the Respondent has held unregistered rights in the trademark XBET through its use on the Internet. Before receiving notice of the Complaint, the Respondent had decided to obtain the disputed domain name for defensive purposes, to use independently, or to redirect traffic to its operational business website.
The Respondent contends that through its business at "www.xbet.ag", and it presence on Twitter and Facebook, it has been commonly known as XBET or XBET.AG.
The Respondent says the disputed domain name has not been registered or used in bad faith with intent to attract Internet users for commercial gain by confusion with the Complainant's trademark. There is no confusion with the Complainant's weak trademark, and clients in this area of business are discerning. The Respondent has not done any of the things that amount to registration or use in bad faith. It is reiterated that the Respondent did not receive any notice from the Trademark Clearinghouse, and that the Complainant's trademark does not match the disputed domain name. The generation of pay-per-click advertising revenue, while the disputed domain name is parked, is not in itself illegitimate if the Complainant's trademark is not targeted.
The Respondent has cited a number of previous decisions under the Policy that it considers to support its position.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The question of whether the disputed domain name <xbet.bet> is identical or confusingly similar to the Complainant's trademark 1XBET is made by an objective comparison of the two, including how they read and how they sound. Other matters such as relative registration dates do not enter into the comparison. The gTLD, in this case ".bet", need not be taken into account.
The disputed domain name and the Complainant's trademark each comprise the readable word "bet" preceded by one or two characters making no particular sense and which would be pronounced separately, so that the disputed domain name comprises "xbet" and the Complainant's trademark comprises 1XBET. The Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark for the purposes of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(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 a 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".
The disputed domain name was parked prior to the Complaint. Paragraph 4(c)(i) of the Policy does not require the use of the disputed domain name itself, but the use of a corresponding name. The Respondent relies on its usage of a different domain name registered under the Antigua and Barbuda country code Top-Level Domain, namely <xbet.ag>. Evidence produced by the Respondent includes screen captures of the website "www.xbet.ag" made by the Wayback Machine on 13 dates between September 27, 2014 and July 8, 2017. The websites feature sports betting and gaming, with headings such as "Information", "Sportsbook", "Casino" and "Racebook", with sub-headings such as "NFL Betting Lines" and "Play Online Blackjack". Deposit account facilities and a welcome bonus are offered. The screen captures feature the stylised logo XBET. On the basis of this evidence it appears that the Respondent has used a "name corresponding to the [disputed] domain name", i.e., "xbet", in connection with an offering of goods or services; whether that offering was bona fide under paragraph 4(c)(i) of the Policy is subject to the disputed domain name not having been registered and used in bad faith.
The Panel does not consider it necessary to determine whether the Respondent would qualify as having been commonly known, as a business, by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, of which the Complainant has relied upon the last:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
In order to succeed the Complainant must establish "a likelihood of confusion" between the disputed domain name and the Complainant's trademark. The standard required in order to do so is higher than that conventionally adopted under paragraph 4(a)(i) of the Policy and takes into account additional considerations.
The Respondent argues there is no likelihood of confusion for a number of reasons, including the existence of a plethora of gaming websites each consisting of the word "bet" with brief elements of distinction:
"www.x-bet.co", "www.mrxbet.com", "www.1bet.com", "www.10bet.com", "www.12bet.uk", "www.18bet.com", "www.188bet.com", "www.vbet.com", "www.lvbet.com", "www.slbet.com", "www.lsbet.com", "www.bet90.com", "www.betn1.com", "www.bet3000.com" and "www.bet365.com". The apparent authenticity of each of these is supported by the evidence of screen captures. To this list may be added the Complainant's website "www.1xbet.com" and those of its affiliates at "www.1-x-bet.com" and "www.1x-bet.com".
On its face, the Complainant's trademark 1XBET comprises the generic, unoriginal word "bet", to which the prefix "1X" appears to add little in the way of distinction. It differs from the disputed domain name by only the digit "1". Previous decisions under the Policy are not binding precedent, however the Panel notes, for instance, the decision in Webvan Group, Inc. v. Stan Atwood, WIPO Case No. D2000-1512: "when the mark is a relatively weak, non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion". The decision in ADITO Software GmbH v. Domain Admin, Mrs. Jello LLC, WIPO Case No. D2008-1771, stated: "descriptive marks are entitled to very limited protection and 'small differences' are sufficient to establish the lack of confusing similarity". The decision in Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230, reads "... Respondent has registered nine domain names which contain the descriptive term and common English word 'match' in combination with other common English words or numbers in the generic Top Level Domain (gTLD) '.com'. This Respondent is entitled to do. By registering the service mark MATCH.COM, Complainant cannot thereby preclude anyone else from ever registering the common term 'match' in combination with other common words in the '.com' gTLD".
Conversely, different considerations may apply to adaptations of a well-known and distinctive trademark, for instance, SONY (Sony Kabushiki Kaisha v. Inja Kil, WIPO Case No. D2000-1409).
The disputed domain name was registered on March 3, 2016, which was after the Complainant first acquired rights in its 1XBET trademark on July 27, 2015. The evidence establishes that the Respondent was using the business name "xbet" earlier, however, by September 27, 2014, for the gaming website "www.xbet.ag". The Complainant says in the body of the Complaint that its brand name was a common law trademark that was "vested into the Complainant by its founders and owners", and says in its Affidavit, "The original website under the domain name <1xbet.com> was first registered on 1 September 2006". No supporting evidence of this is annexed to either the Complainant's Affidavit or the Complaint. A mere assertion without evidence is insufficient. The chronology and available evidence could be open to an alternative interpretation, that the Complainant's first trademark application for 1XBET was filed on April 7, 2015, after "xbet" had been in use for some months by the Respondent in the same field of business.
The Complainant has not produced any evidence of actual confusion of Internet users between its trademark and the disputed domain name. In the context of the narrow if competitive and popular field of online gaming, the Panel is not persuaded by the evidence produced that punters are likely to be confused in navigating their way around the wide choice of "...bet..." websites, or sufficiently confused that the Respondent's registration and use of the disputed domain name should be inferred as having been with bad faith intent.
The disputed domain name was parked with pay-per-click links prior to the Complaint. In combination with other indicators of bad faith, in certain cases, the effective non-use or passive holding of a domain name has been held to be a factor contributing to a finding of registration and use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel finds in this case that the Respondent, as the operator of an apparently thriving business through the website "www.xbet.ag", seeking to protect a family of related domain names, does not approach the criteria of bad faith intent contemplated in Telstra. Moreover, since the filing of the Complaint, the Respondent has redirected the disputed domain name to its site at "www.xbet.ag".
On the totality of the evidence and on the balance of probabilities, the Panel finds that the Complainant has failed to prove registration and use of the disputed domain name in bad faith by the Respondent under paragraph 4(a)(iii) of the Policy. The Panel finds that, in the absence of bad faith, the Complainant has failed to prove that the Respondent does not have rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Date: February 9, 2018