WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tombola Limited v. JongJin Zhang

Case No. D2019-1201

1. The Parties

The Complainant is Tombola Limited, United Kingdom, represented by Eversheds Sutherland (International) LLP, United Kingdom.

The Respondent is JongJin Zhang, China.

2. The Domain Name and Registrar

The disputed domain name <tombola.game> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2019. On May 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2019, the Registrar transmitted by email to the Center its verification response:

(a) it is the Registrar for the disputed domain name;

(b) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name;

(e) 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 June 3, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 7, 2019.

The Center verified that the Complaint together with the amended 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 June 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2019.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 12, 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.

On August 8, 2019, the Panel visited the website at the disputed domain name and identified in the Terms and Conditions an email address using the disputed domain name. Upon the instruction of the Panel, the Center issued a communication to the Parties requesting the Respondent to indicate if he or she had an intention to participate in the proceeding. The Respondent did not submit any comment.

4. Factual Background

The Complainant is a company founded in the United Kingdom in 1999. According to the Complaint, the Complainant has used the mark TOMBOLA in the Complainant’s business since then. Its business is the provision of online gaming. Its website at <tombola.co.uk> has become one of the largest bingo website in the United Kingdom. It also operates one of the largest bingo websites in Spain and Italy. In 2018, the Complainant’s business recorded revenues of some GBP 90 million.

According to the Complainant it operates in highly regulated markets with regulatory requirements designed to provide customers with some element of assurance.

The Complainant has provided evidence of registered trademarks for, or based on, TOMBOLA. These include:

- European Union Trademark No. 006793772, TOMBOLA, which was filed on March 31, 2008, and registered on February 5, 2010, in respect of a range of goods and services in International Classes 9, 16, 21, 25 and 41; and

- European Union Trademark No 013741971, TOMBOLA, which was filed on February 13, 2015, and registered on December 7, 2015, in respect of a range of goods in International Classes 9, 16, 21, 24 and 25.

According to the WhoIs information submitted with the Complaint, the disputed domain name was registered on June 11, 2018. It resolves to a website at which various “pay-per-play” games are offered.

5. Discussion and Findings

No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of 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 respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks for TOMBOLA referred to in section 4 above.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top‑Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.

Disregarding the “.game” gTLD, the disputed domain name is identical to the Complainant’s registered trademarks. Accordingly, the Panel finds that requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it in any way. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.

Historically, a “tombola” is a game in which people pick tickets out of a revolving drum and certain tickets win immediate prizes, typically played at a fete or fair. That is a different game to the games offered by the Complainant on its website and very different to the “pay-per-play” games available at the Respondent’s website which include a kind of racing game where the player bets on “black” or “white” to win, “Turtle Chase”, “Three Dice”, “Holdem Poker”, and “5/20 Lotto” (which appears to be a simplified version of games like bingo).

The word “tombola”, therefore, is not a natural description of the types of games the Respondent is offering at his or her website. Rather, the word “tombola” would appear to have significance in relation to online “pay-per-play” games of the kind in question because of its adoption and use by the Complainant. Furthermore, it is notable that the Complainant’s trademark has been in use for so many years prior to the Respondent’s adoption of it. As the Respondent is not using the word “tombola” for its directly descriptive meaning and noting the way the disputed domain name is being used, the fact that it does have an ordinary meaning in English does not by itself confer rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.10. The adoption of the Complainant’s trademark for a competing “pay-per-play” online gaming site in these circumstances, therefore, does not qualify as a good faith offering under the Policy.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement despite service of the Complaint on the addresses confirmed by the Registrar as correct, including also via the communication sent by the Center on August 8, 2019 to the address set out on the Respondent’s website.

Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

The Complainant claims to have begun operating in the United Kingdom in 1999 and to have been using the TOMBOLA trademark consistently since that time. In addition, the Complainant has submitted evidence that its 2018 annual turnover is in excess of GBP 90 million. Furthermore, the Panel has conducted its own research, pursuant to its general powers, on the website “archive.org” and found that Complainant appears to have been operating a website at <tombola.co.uk> since at least October 18, 2000 and, in addition, from <tombola.com> since at least May 2000, from which it was offering a variety of online gambling games. Both of those website prominently displayed its TOMBOLA. See WIPO Overview 3.0, section 4.8.

As outlined above, it appears likely that the Respondent did adopt the disputed domain name with knowledge of the Complainant and its trademark. Bearing in mind how long the Complainant has been using its trademark and the fact that the word “tombola” is not directly descriptive of the types of online “pay-per-play” games the Respondent is offering, but has significance in relation to on-line gaming because of its adoption and use by the Complainant, the inference is open that the Respondent registered the disputed domain name with knowledge of the Complainant and to take advantage of the fact it is the Complainant’s trademark.

In addition, the Panel notes that the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name and has not denied the Complainant’s case that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark.

Therefore, the Panel finds the Respondent has registered the disputed domain name in bad faith.

The use of the disputed domain name for a rival “pay-per-pay” gaming website which competes in the same, or a similar, on-line field as the Complainant is clearly use in bad faith under the circumstances outlined above.

Accordingly, the Complainants have established all three requirements under the Policy.

7. Decision

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 <tombola.game> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: August 18, 2019