WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merryvale Limited v. Liang Zhuge
Case No. D2018-2811
1. The Parties
The Complainant is Merryvale Limited of Belize City, Belize, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Liang Zhuge of Prince Edward Island, Canada.
2. The Domain Name and Registrar
The disputed domain name <betwayas.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2018. On December 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2018, 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 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2019.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 9, 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is a member of the Betway Group and operates a number of online gaming websites under the website “www.betway.com”. The Complainant alleges that the monthly average number of registered and active customers accessing their website is approximately 300,000 customers, with an annual average of 1.25 million customers in 2016-2017 and thus the Betway Group gained substantial worldwide reputation in the field of online gaming.
The Complainant owns several trademark registrations for BETWAY, such as the Canadian trademark word registration No. TMA702542 filed on January 16, 2006 and registered on December 7, 2007 for goods and services in classes 9, 28 and 41 and the European Union trademark word registration No. 004832325 filed on January 12, 2006 and registered on January 26, 2007 for goods and services in classes 9 and 41.
The Betway Group’s budget investment in promoting the BETWAY branded goods and services was of EUR 70 million in 2017, EUR 100 million in 2018 and is budgeted to EUR 155 million in 2019.
The Complainant asserts it is one of the world’s leaders in the field of online gaming.
According to the information provided in its Complaint, this Panel agrees that BETWAY trademark is well known in its field of activity. See also Merryvale Limited v. men xia, WIPO Case No. D2016-1928.
The disputed domain name <betwayas.com> was registered on June 1, 2018 and, according to the evidence provided in the Complaint, it was used in connection with online gaming activities and unauthorized representations of the Complainant’s figurative BETWAY trademark appeared on the main webpage corresponding to the disputed domain name. Before commencing the present procedure, on June 27, 2018, the Complainant send a letter to the Respondent asking to voluntarily transfer the disputed domain name to it. No response was received, however the content on the website corresponding to the disputed domain name was removed. At the time of filing the Complaint the disputed domain name was kept inactive.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its well known trademark BETWAY with an obvious and intentional misspelling, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds rights in the BETWAY trademark.
The disputed domain name <betwayas.com> incorporates the Complainant’s trademark BETWAY in its entirety, with the addition of the letters “as” at the end. However, such addition or misspelling does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. Also, a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element. See sections 1.8 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <betwayas.com> is confusingly similar to the Complainant’s trademark BETWAY, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark BETWAY, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “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 Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent has used the disputed domain name in connection with a website promoting competing services to those offered by the Complainant and displaying without authorization the Complainant’s trademark. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name.
After receiving the Complainant’s letter to cease from using the disputed domain name, the Respondent removed the content and kept the website corresponding to the disputed domain name inactive. This, again, is not a legitimate noncommercial or fair use of a domain name in the circumstances of the present case.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark rights since 2006 and it is well known in its field of activity. The disputed domain name was created in 2018 and incorporates the Complainant’s mark. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
At the time of filing the Complaint the disputed domain name resolves to an inactive website. The passive holding or non-use of a domain name does not prevent a finding of bad faith. See section3.3 of the WIPO Overview 3.0.
Furthermore, according to the Complaint and unrebutted by the Respondent, prior to being approached by the Complainant, the Respondent was using the disputed domain name to provide competing online gaming services and was displaying the Complainant’s trademark to increase the confusion.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s well known trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. This false impression was increased by the incorporation of the Complainant’s entire trademark in the disputed domain name, the similar services offered on the website corresponding to the disputed domain name and the featuring of the BETWAY figurative mark on such website.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <betwayas.com> be transferred to the Complainant.
Date: January 17, 2019