WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Realm Entertainment Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Onur Oztas
Case No. D2018-0369
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, Kozan, Turkey.
2. The Domain Name and Registrar
The disputed domain name <greatbets10.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2018 and stated incorrectly that GoDaddy Operating Company, LLC (“GoDaddy”) was the registrar for the Domain Name. On February 20, 2018, the Center transmitted by email to the Registrar as indicated as the registrar of record for the Domain Name a request for registrar verification in connection with the Domain Name. On February 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name. On February 27, 2018, the Center transmitted by email to the Complainant a request for it to submit by March 5, 2018 an amendment to the Complaint or an amended Complaint clarifying the proper registrar. The Complainant filed an amended Complaint on February 28, 2018 identifying the Registrar as the registrar for the Domain Name. Beyond forming part of the Procedural History of the Complaint, nothing of substance turns on the reference to an erroneous registrar in the original Complaint or the filing of the amended Complaint. Importantly, the Respondent was afforded the requisite opportunity to participate in and respond to the Complaint.
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 March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2018.
The Center appointed Gareth Dickson as the sole panelist in this matter on April 11, 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 a limited liability company that offers online gambling products and games. The Complainant is the registered proprietor of European Union trade mark numbers 9941139, registered on September 14, 2011, and 12403713, registered on May 5, 2014, for a word mark (the “Mark”) and a figurative mark for BETS10 respectively. Both marks are registered in classes 36, 38 and 41 of the Nice Classification.
The Registrant registered the Domain Name on August 18, 2017. Currently, the Domain Name does not resolve to an active website.
5. Parties’ Contentions
The Complainant argues that the Mark is distinctive and a famous brand. It asserts that it is identical to the Domain Name.
It states that the Respondent does not have any rights in the BETS10 trade marks, nor is it a licensee of the Complainant or have the Complainant’s permission to use the Mark in a domain name. The Complainant further notes that the Domain Name is being held passively and is not being used in relation to a bona fide offering of goods or services. It contends that the Respondent is not making legitimate or fair use of the Domain Name, nor is the Respondent commonly known by the name BETS10 nor does he appear to be making any plans to use the Domain Name for any legitimate business. This leads the Complainant to assert that the Respondent registered the Domain name to take advantage of the Complainant’s rights in the Mark.
Finally, the Complainant contends that it is “obvious” that the Respondent was well aware of the Complainant’s business when he registered the Domain Name, arguing that the Mark was registered and was being used by the Complainant before the Respondent became the owner of the Domain Name and that BETS10 is a “famous” brand. It alleges that Internet users will be directed to the Domain Name when searching for the Complainant’s website and that the circumstances indicate that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant, or alternatively to prevent the Complainant from reflecting its mark in a corresponding domain name. This, says the Complainant, amounts to bad faith registration and use of the Domain Name, as does the Respondent’s failure to respond to the Complainant’s cease and desist letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of the Mark.
The Panel also accepts that the Mark (BETS10) is confusingly similar to the Domain Name <greatbets10.com>. It is appropriate to ignore the generic Top-Level Domain suffix “.com” when assessing similarity between a trade mark and a domain name since “.com” is viewed as a standard registration requirement. The addition of the common adjective “great” does not distinguish the Domain Name from the Mark in any meaningful way and the Mark remains recognizable within the Domain Name.
The Panel therefore accepts that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of a domain name, this does not mean that it has to prove a negative to succeed in its complaint.
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, the consensus view is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established their prima facie case. The evidence before the Panel is that the Respondent has not been licensed or authorized by the Complainant to use the Mark and, since the Domain Name is not being used at all, the Domain Name is not being used in relation to a bona fide offering of goods or services. Similarly, there is no evidence that the Respondent has any plans to use the Domain Name for any legitimate business. Had the Respondent produced evidence to convince the Panel that it had acquired the Domain Name for resale on the secondary market as a simple combination of a dictionary word and a two-digit number, without any reference to the Complainant, the Panel may have had to consider this matter more thoroughly, but in this instance the Respondent failed to produce any evidence or response.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complainant has filed no evidence to support its claim that BETS10 is a “famous” brand or that Internet users searching for the Mark would be redirected to the Domain Name instead of the Complainant’s website. Nonetheless, “BETS10” is not a phrase that has any inherent meaning aside from the Complainant. As a result, and in the absence of evidence from the Respondent that the similarity to the Mark is coincidental or unintended, the Panel must conclude that the Respondent knew of the Complainant’s rights in the BETS10 trade mark when it registered the Domain Name. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorization of the Complainant, rights in the Complainant’s BETS10 trade mark.
On the basis of the information available to it, the Panel finds that in this Complaint the Respondent’s passive holding of the Domain Name under the totality of the circumstances, amounts to use of the Domain Name in bad faith.
The Panel finds that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <greatbets10.com> be transferred to the Complainant.
Date: April 25, 2018