WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Navasard Limited v. Дионис Джамбулович Кулиев (Dionis Dzamboulovich Kouliev)
Case No. D2018-1689
1. The Parties
The Complainant is Navasard Limited of Limassol, Cyprus, represented by Giorgos Landas, Cyprus.
The Respondent is Дионис Джамбулович Кулиев (Dionis Dzamboulovich Kouliev) of Minsk, Belarus.
2. The Domain Name and Registrar
The disputed domain name <1xbet.moscow> is registered with Regtime Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2018. On July 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2018, 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 the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center sent an email to the Parties in English and Russian with regards to the language of the proceedings. The Complainant filed an amendment to the Complaint on August 6, 2018 and requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings.
The Center verified that the Complaint together with the amendment to 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 August 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2018. On August 14, 2018, the Respondent requested instructions how to transfer the disputed domain name to the Complainant. On August 16, 2018, the Complainant requested the suspension of the proceeding in view of the Respondent’s statement. On the same date, the Center suspended the proceeding until September 15, 2018 for the purposes of settlement discussions concerning the disputed domain name. On September 14, 2018, the Complainant requested the extension of the suspension period due to technical reasons. On the same date, the Center extended the suspension period until October 14, 2018. On October 23, 2018, the Center reinstituted the proceeding and informed the Parties that the due date for the Response was November 6, 2018. On October 24, 2018, the Complainant requested an additional extension of the suspension period. On October 25, 2018, the Center suspended the proceeding until November 23, 2018. On November 23, 2018, the Complainant requested a further extension of the suspension period due to technical issues. On November 26, 2018, the Center informed the Parties that unless the Center received an appropriately signed standard settlement form or any other instructions from the Complainant by December 7, 2018, the Center might reinstitute the proceeding. Neither of these was received by the Center, and on December 14, 2018, it reinstituted the proceeding and granted the Respondent until December 23, 2018 to submit a Response. The Respondent did not submit any formal response. Accordingly, on December 26, 2018 the Center notified the Parties about the commencement of the panel appointment process.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 2, 2019. 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 was established on March 9, 2015 and is the owner of the 1XBET trademark used as a sport betting brand in Eastern Europe by companies affiliated to the Complainant.
The Complainant is the holder of the following trademark registrations for 1XBET (the “1XBET trademark”):
- the word trademark 1XBET with registration number 014227681, registered as the European Union trademark on September 21, 2015 for services in International Classes 35, 41 and 42; and
- the figurative trademark 1XBET with registration number 013914254, registered as the European Union trademark on July 27, 2015 for services in International Classes 35, 41 and 42.
The Complainant has also registered the 1XBET trademark with the Trademark Clearinghouse with handle numbers 01183214604479851460447985-1 and 01183214600283191460028319-1.
The disputed domain name was registered on May 24, 2018. It is currently inactive.
5. Parties’ Contentions
According to the Complainant, the disputed domain name is identical to the 1XBET trademark in which the Complainant has rights.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, and is illegally using it for the purpose of reselling it at a profit by taking advantage of the confusing similarity of the disputed domain name with the 1XBET trademark, which is a popular sports betting trademark. According to the Complainant, the Respondent is not making any legitimate or fair use of the disputed domain name and is not offering any goods or services.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. According to the Complainant, the apparent lack of active use of the disputed domain name and lack of active attempts to sell it or to contact the trademark holder does not as such prevent a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name”.
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contentions of the Complainant and the evidence submitted by it.
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant has submitted its Complaint in English language, and has requested the proceeding to be held in English in order to ensure fairness to the Parties. According to the Complainant, the conduction of the proceeding in another language would create an unfair burden to the Complainant and would delay the proceeding, while the Respondent has the ability to respond to the present Complaint in English without the help of translator or any other administrative burden. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has refrained from doing so, and has thus not objected to the Complainant’s request the proceedings to be held in English.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will consider all evidence in the case file available in English or Russian languages.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the 1XBET trademark.
The Panel notes that as summarized in section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable generic Top-Level Domain (“gTLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD, including generally with regard to “new gTLDs”; the ordinary meaning ascribed to a particular gTLD would not necessarily impact assessment of the first element. The Panel sees no reason not to follow the same approach here, so it will disregard the “.moscow” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the section “1xbet”. This section is identical to the 1XBET trademark. The Panel also notes that, it is likely that the public would perceive the disputed domain name as designating an official location where the sports betting products of the Complainant are being offered for consumers in Moscow, the Russian Federation (see the Panel’s analysis under the second and the third element).
In view of the above, the Panel finds that the disputed domain name is identical to the 1XBET trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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. See section 2.1 of the WIPO Overview 3.0.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is illegally using it for the purpose of reselling it at a profit by taking advantage of the confusing similarity of the disputed domain name with the 1XBET trademark, which is a popular sports betting trademark, and is not making any legitimate or fair use of the disputed domain name and is not offering any goods or services. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. In its message to the Center it has expressed its consent to the transfer of the disputed domain name. This appears to support a finding that the Respondent does not have rights and legitimate interests in the disputed domain name.
The disputed domain name incorporates the 1XBET trademark entirely and is identical to it. This makes it likely that consumers would perceive the disputed domain name as being an official online location of the Complainant for its sport betting products offered under the 1XBET trademark for consumers in Moscow, the Russian Federation.
In view of the above, and in the lack of any arguments or evidence to contrary by the Respondent, the Panel is satisfied that the Respondent, being well aware of the Complainant, registered and used the disputed domain name in an attempt to exploit the popularity of the 1XBET trademark to attract the attention of Internet users and to mislead them that the disputed domain name represents an official online location of the Complainant for its sport betting products. In the Panel’s view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name is identical to the 1XBET trademark. It was registered several years after the Complainant registered its distinctive 1XBET trademark in 2015 and more than 10 years after the Complainant’s website at “www.1xbet.com” was activated, according to the affidavit provided by the director of the Complainant. The Respondent has not disputed any of the Complainant’s contentions in this proceeding.
In view of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel is satisfied that the Respondent is more likely than not to have registered the disputed domain name with knowledge of the Complainant and targeting the 1XBET trademark in an attempt to acquire rights over a domain name that would be attractive to Internet users who may regard it as an online location of the Complainant where its sport betting products focused on consumers in Moscow are offered.
The disputed domain name is inactive. As discussed in section 3.3 of the WIPO Overview 3.0, the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The Panel considers that most of these factors are present in this case. The Complainant’s trademark has a sufficient level of distinctiveness, and since the Respondent has not submitted a Response and has not brought any evidence of actual or contemplated good-faith use of the disputed domain name, the Panel is not aware of any use of the disputed domain name that would not be illegitimate under the Policy. Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith under 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 <1xbet.moscow> be transferred to the Complainant.
Date: January 16, 2019