WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tipico Co. Ltd. v. JInsoo Yoon
Case No. D2019-1961
1. The Parties
The Complainant is Tipico Co. Ltd., Malta, represented by Boehmert & Boehmert, Germany.
The Respondent is JInsoo Yoon, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <tipicoo.com> is registered with DropCatch.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2019. On August 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 August 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2019.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on October 4, 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 is a Maltese provider of sports betting services and casino games founded in 2004, which operates across Europe and internationally through various websites, as well as betting shops, an associated franchise network, and several branches in Germany, Austria, Croatia, Gibraltar, Colombia and Malta. It operates under authorization of the Malta Gaming Authority, being member of the Association of European Betting Enterprisers.
The Complainant provides its gambling and betting services under the mark TIPICO, which coincides with its company name, holding various registered trademarks including this term (“tipico”) alone or in combination with other figurative elements, of which the following are sufficiently representative for the present proceeding:
European Union Trademark No. 003939998 TIPICO, word mark, registered September 23, 2005, in class 41;
International Trademark No. 863984 TIPICO, word mark, registered May 25, 2005, in class 41;
International Trademark No. 1040604 TIPICO, word mark, registered April 29, 2010, in class 41;
European Union Trademark No. 011339835 TIPICO, figurative mark, registered May 3, 2013, in classes 3, 7, 9, 14, 16, 25, 28, 32, 33, 34, 35, 36, 38, 41, 42, 43 and 45.
The Complainant further owns a domain name portfolio comprising the mark TIPICO, which includes <tipico-group.com> and <tipico.com>, linked to its corporate website in connection with its products and services.
The disputed domain name was registered on May 25, 2019. It resolves to a parked website, which offers the selling of the disputed domain name for a minimum price of USD 4,950, and lists various links to third parties’ websites that change regularly related to different sectors, including clothing, insurance and financial services, entertainment and betting services, as well as information about Comcast and the country of Guatemala.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
Through its intensive use and promotion, due to the Complainant’s marketing efforts, the trademark TIPICO has acquired reputation in Europe and internationally. For example, in Germany, the Complainant sponsors the German Football League FC and Bayern Munich football club and, in Austria, it sponsors the first football division therefore called “TIPICO-Bundesliga”, as shows various extracts of the Complainant’s corporate website (linked to <tipico-group.com>).
The disputed domain name reproduces the Complainant’s trademark TIPICO, with the addition of a second letter “o” to it, which is a common misspelling of the mark, being confusingly similar. A domain name consisting of a common, obvious, or intentional misspelling of a trademark is to be confusingly similar to the relevant mark for purposes of the first element. Further, the applicable Top-Level Domain (“TLD”) in a domain name is considered as a standard registration requirement and, as such, is disregarded under the first element confusing similarity test.
The Respondent has no rights or legitimate interests in the disputed domain name, as he has not been licensed or otherwise authorized to use the Complainant’s trademarks or to register the disputed domain name. The Respondent has not used the disputed domain name in connection to a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it. The Respondent intents to obtain unfair commercial gain by misleadingly diverting consumers, tarnishing the Complainant’s marks. The website provided under the disputed domain name does not meet the requirements for a bona fide offering of goods or services under the requirements established by Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, as it is not offering the Complainant’s betting services but promoting competing betting services, with a pay-per-click (“PPC”) system that does not directly offer any goods or services but included links competing with or capitalizing the Complainant’s marks reputation and goodwill, or otherwise mislead Internet users. Furthermore, the disputed domain name has been registered or acquired by the Respondent primarily to sell it to the Complainant (or any of its competitors) for a value exceeding its costs (a minimum price of USD 4,950), which is further evidence for the Respondent’s bad faith.
The disputed domain name is a typosquatting case, which aims to take advantage of a common accidental misspelling of the Complainant’s trademark, being evident that the Respondent knew or should have known of the Complainant and its mark when registering the disputed domain name, targeting this mark. A simple search over the Internet for the term “tipico” would have revealed the Complainant’s well-known mark and domain names (i.e., <tipico.com> and <tipico.de>); their ignorance should be considered willful blindness. Further, the website provided under the disputed domain name includes PPC links partially related to the Complainant’s business, and the word “tipico”, as such, has no inherent descriptive meaning with regard to betting services. It is evident from the disputed domain name’s use that it was registered or acquired primarily for selling it to the Complainant (or any of its competitors) for a price exceeding the Respondent’s costs, with the additional intention to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. These circumstances constitute registration and use in bad faith under paragraph 4(b) of the Policy.
The Complainant has cited previous decisions under the Policy as well as various paragraphs of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(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 authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8, WIPO Overview 3.0.
A. Identical or Confusingly Similar
Regarding the confusing similarity test, it is important to note that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, a domain name consisting of a common, obvious, or intentional misspelling of a trademark (containing sufficiently recognizable aspects of that mark), is considered confusingly similar to the relevant mark for the purposes of the first element, and employing a misspelling in this way normally signals an intention to confuse users seeking or expecting the complainant. See sections 1.7 and 1.9 of the WIPO Overview 3.0.
Further, the applicable TLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered mark TIPICO. The disputed domain name incorporates the mark TIPICO in its entirety duplicating its last letter “o” (“tipicoo” instead of “tipico”), which may be considered a common misspelling not avoiding the direct perception of the mark. The Complainant’s mark TIPICO is therefore recognizable in the disputed domain name, and the TLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has alleged that the Respondent is not a licensee nor have him been otherwise authorized to use the trademark TIPICO. Furthermore, as the Complainant has asserted the disputed domain name resolves to a parked page comprising PPC links belonging to third parties, some related to the Complainant’s sector, which suggests an attempt to use a name materially identical to the mark in an effort to divert Internet users or potential customers to alternative businesses for commercial gain.
This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has chosen not to reply to the Complaint, not providing any explanation and evidence of rights or legitimate interests in 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 the 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.
A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety with a sole common misspelling (duplicating its last letter “o”). The Panel considers that this common misspelling points to an intention to confuse Internet users seeking for or expecting the Complainant, as corroborates the website content linked to the disputed domain name, which includes, among others, rotating PPC links to third parties’ websites in the entertainment sector or to the same Complainant’s betting business. An extract provided by the Complainant shows that some PPC links included in the website linked to the disputed domain name refer to competing websites in the same betting sector. Therefore, the Panel considers that there is a risk of implied affiliation and confusion.
The Panel further considers that the use of the disputed domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services. Such links are partially referring to the Complainant’s business (sports betting services) redirecting to competitors’ websites offering competing services, and, therefore, competing with and capitalizing the reputation and goodwill of the Complainant’s mark, as well as potentially misleading Internet users. See section 2.9, WIPO Overview 3.0.
The Panel further notes the quite high presence over the Internet of the trademark TIPICO in connection to betting services in sports or other similar events.
It is further remarkable the Respondent has chosen not to reply to the Complaint, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interests in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
At the time of the registration of the disputed domain name, this Panel considers it unlikely that the Respondent did not know about TIPICO mark, and did not have it in mind. Several factors in this case lead to this conclusion. Particularly, the nature of the disputed domain name as a common misspelling of the mark TIPICO, and the extensive use and promotion, as well as the high presence of this mark over the Internet, which leads to conclude that it is notorious in the sports betting services sector, particularly, taking into consideration the sponsorship activities of the mark.
The Panel further considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the Complainant’s trademark TIPICO in its entirety, introducing a common misspelling (duplicating its final letter “o”), which intrinsically creates a likelihood of confusion and affiliation; (ii) the Complainant’s trademark is notorious in its sector, and the Complainant operates internationally; (iii) the disputed domain name has been used to host a parked page comprising PPC links partially belonging to competitors in the same Complainant’s business; (iv) the website linked to the disputed domain name further offers its selling with a minimum price that exceeds the standard registration costs (USD 4,950); (v) the trademark TIPICO predates in several years the registration of the disputed domain name; (vi) the Complainant owns the domain name <tipico.com> corresponding to the trademark TIPICO under the TLD “.com” (which is also similar to the disputed domain name); and (vii) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name, deliberately choosing not to reply to the Complaint.
All these circumstances lead the Panel to conclude that the Respondent registered the disputed domain name targeting the Complainant’s trademark with the intention to attract Internet users to its website for a commercial gain or any other sort of benefit derived from the links included in the website associated to the disputed domain name, under a PPC system. Further, the Respondent had a second intention related to the potential transfer of the disputed domain name to the Complainant or to a third party, for a value that seems to be exceeding the out-of-pocket costs directly related to its registration.
It is important to note that the Respondent cannot deny responsibility for the content that appears on the website linked to the disputed domain name. The fact that such content or any links included in the disputed domain name have been generated by a third party, such as a registrar, or that the Respondent has not directly benefited, is not sufficient to prevent a declaration of bad faith. See section 3.5, WIPO Overview 3.0.
All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith, targeting the Complainant’s trademark and creating a likelihood of confusion with the Complainant and its mark to misleadingly attract Internet users, disrupting the Complainant’s business. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of 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 <tipicoo.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: October 20, 2019