WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Navasard Limited v. Karine Manukyan, Leofon Limited / Christina Chatzidou, Worldwide Tech Investments Co. Ltd

Case No. D2019-2071

1. The Parties

The Complainant is Navasard Limited, Cyprus, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is Karine Manukyan, Leofon Limited / Christina Chatzidou, Worldwide Tech Investments Co. Ltd., Seychelles, internally represented.

2. The Domain Names and Registrar

The disputed domain names <1x.bet> and <1xbet.bet> are registered with 101domain GRS Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2019. On August 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification sent by the Center on August 28, 2019, informing the Parties that the Complaint was administratively deficient due to the wrong identification of the Respondent, the Complainant filed an amendment to the Complaint on August 29, 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 August 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2019. The Response was filed with the Center on September 19, 2019.

The Center appointed Andrew F. Christie as the sole panelist in this matter on September 24, 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 October 4, 2019, the Panel issued Administrative Panel Procedural Order No. 1, requesting the Respondent to supply an Annex referred to in, but missing from, the Response. The Respondent submitted the Annex on October 8, 2019.

4. Factual Background

The Complainant founded a business operating under the brand 1XBET in 2007. The services offered by the Complainant under the 1XBET brand include a selection of betting opportunities on sporting and gaming events. Over 400,000 users are registered with the Complainant to use its 1XBET brand services, accessible through the Complainant’s official website at “www.1xbet.com”. That website allows users to bet on more than 1,000 sporting events every day. The 1XBET brand offers many account currencies, giving it international accessibility. Its official website is available in 47 different languages, and it is listed as 3rd overall amongst international bookmakers for global daily visitors according to the comparative directory “Top100Bookmakers”.

The Complainant is the owner of European Union trademark registration number 014227681 for the word trademark 1XBET (registered on September 21, 2015), and International trademark registration number 1279874 for a design mark including the characters “1XBET” (registered on September 2, 2015).

The Respondent is a company organized and existing under the laws of Seychelles from August 18, 2015.

The first disputed domain name, <1x.bet>, was registered on February 8, 2016; the second disputed domain name, <1xbet.bet>, was registered on March 3, 2016. The disputed domain names were transferred to the Respondent by Leofon Limited sometime in 2016, most likely in March or April. Both disputed domain names currently resolve to a parking page of almost identical appearance, the only apparent difference being the statement at the top of the page. In the case of the first disputed domain name, that statement reads “Future home of… 1x.bet”; in the case of the second disputed domain name, that statement reads “Future home of…1xbet.bet”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the first disputed domain name, <1x.bet>, is confusingly similar to the Complainant’s 1XBET registered trademark as the two are identical except for the “.” [dot] between the second-level portion of the disputed domain name and the Top-Level Domain (“TLD”), and that it is established under the UDRP that panels should take into account both the TLD and the second-level of the domain name in such situations.

The Complainant contends that the second disputed domain name, <1xbet.bet>, is identical to the Complainant’s 1XBET registered trademark because it clearly contains the 1XBET trademark, with neither alteration nor adornment.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because: (i) the Respondent does not have any trademark rights, or unregistered trademark rights, to the term “1XBET”; (ii) the Respondent has not received any license from the Complainant to use domain names featuring the 1XBET trademark; (iii) the Respondent is not currently offering any goods or services from the disputed domain names as they currently resolve to a parking page of the Registrar; (iv) the Respondent has deliberately registered the distinctive term “1XBET” to create an impression of an association with the Complainant; (v) the Respondent is not commonly known by the term “1XBET”; (vi) the non-use of a domain name is not a legitimate noncommercial or fair use of the domain name; (vii) the usage of the Complainant’s distinctive 1XBET trademark to resolve to a website unaffiliated with the Complainant is not a legitimate noncommercial or fair use; and (viii) there is no generic or common usage for the term “1XBET”, nor has any evidence come to light since registration of the disputed domain names that the Respondent has intended to use “1XBET” in a way other than to target the Complainant.

The Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) the Complainant’s earliest trademark registration predates the creation date of the disputed domain names, and the “1XBET” name has gained significant reputation for the provision of online betting since the Complainant’s establishment in 2007; (ii) searches for “1XBET” on popular Internet search engines list the Complainant’s brand and services as the first result, and any average Internet user has access to the 1XBET trademark registrations as they can be found on public trademark databases; (iii) the Respondent owns the disputed domain names as part of the company “Worldwide Tech Investments Co. Ltd.” which is related to, or effectively the same company as, “Leofon Limited”, the initial registrant of the disputed domain names and which controls “Fonbet”, a Russian online sports betting brand operating in the same sector as, and in direct competition to, the Complainant; (iv) given that the Respondent operates in the exact same sector as the Complainant, it is inconceivable that the Respondent was not aware of the “1XBET” brand when registering both the disputed domain names; (v) in April, 2019, the Complainant transmitted by email to “domain@fonbet.com” a cease and desist letter, which elicited a reply from “Worldwide Tech Investment Co. Ltd.”, agreeing to transfer the disputed domain name <1xbet.bet>, and disputing the Complainant’s claim to intellectual property rights over the disputed domain name <1x.bet>, but offering a settlement “based on geography”, however neither the transfer nor settlement has occurred; (vi) the initial registrant, who is the same as, or directly related to, the Respondent, has engaged in a pattern of bad faith conduct by registering many domain names containing the registered trademarks of third-party online betting brands in order to block their competitors’ use of them; and (vii) the Respondent, qua competitor, gains through the confusion caused by the disputed domain names, as it affects the reputation and consumer trust attached to the “1XBET” brand.

B. Respondent

The Respondent contends that it is not, and has never been, involved in business activities that are similar to those of the Complainant while using the disputed domain names. In relation to the disputed domain name <1xbet.bet>, the Respondent does not contest the statements by the Complainant in regard to the Complainant’s trademark rights relating to that disputed domain name, and it has informed the Complainant of its willingness to transfer that disputed domain name to the Complainant. In relation to the disputed domain name <1x.bet>, the Respondent contends that the characters in the second-level portion – that is, the characters “1x” – are very generic and do not carry a reference to the trademarks of the Complainant. In addition, the Respondent contends that since the TLD “.bet” is not specific to any particular jurisdiction – whereas the Complainant’s registered trademarks are protected in particular jurisdictions – it is not infringing the intellectual property rights of the Complainant in any way.

The Respondent contends that it has rights and legitimate interests in the disputed domain names because: (i) prior to the Respondent receiving notification from the Complainant of alleged intellectual property rights abuse and the notice of this dispute, the Respondent had been developing and made preparations for a bona fide offering of “on-line services connected with movies and other media content made available to potential customers of such services in its Jurisdiction of incorporation and a few other”; (ii) the Respondent is “developing a business plan and designing a pertinent trademark” but is unable to provide details “due to confidentiality obligations with the respective consultant and partners”; (iii) the allegations that the Respondent has used the Complainant’s 1XBET trademark to target the Complainant and use its goodwill and reputation have no grounds and no evidence of such has been provided; and (iv) the Respondent’s current and planned activity is in no way connected with the services rendered by the Complainant.

The Respondent contends that the disputed domain names could not be considered as registered or being used in bad faith because: (i) they were not registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to the Complainant; (ii) the Respondent has never been involved in any domain name procedures under the UDRP or otherwise; (iii) since acquiring the disputed domain names in 2016, the Respondent has never contacted the Complainant, or a competitor of the Complainant, with any offerings; (iv) the Complainant has not presented any evidence of the Respondent’s acquisition of the disputed domain names for the purposes of commercial gain; (v) the disputed domain names were not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and the Respondent has not engaged in a pattern of such conduct; (vi) the Complainant and the Respondent are not competitors, and the disputed domain names were not registered by the Respondent primarily to disrupt the Complainant’s business; (vii) the Respondent is involved in investment activities, and the main objective of acquisition of the disputed domain name <1x.bet> is for use in services different from the business of the Complainant; (viii) the Complainant has not provided any evidence that “Worldwide Tech Investment Co.” is related to, or even the same company as, “Leofon Limited”; (ix) the Respondent has not created any websites which are identical or confusingly similar to the trademarks of the Complainant; and (x) as the Complainant operates numerous websites, and the Respondent is willing to transfer the disputed domain name <1xbet.bet> to the Complainant, the Respondent’s holding of the disputed domain name <1x.bet> could not be seen as “disrupting the business of the Complainant”.

The Respondent states that it consents to the remedy requested by the Complainant for the disputed domain name <1xbet.bet>, being transfer of it to the Complainant.

6. Discussion and Findings

A. Identity of the Respondent

The information provided by the Registrar for the disputed domain names disclosed that the registrant contact is “Worldwide Tech Investments Co., Ltd” with an email address the first part of which is “worldwide.tech.investments”. That is to say, both the registrant contact name and email address as provided by the Registrar contain the plural word “investments”.

The Respondent filed a Response in which it states its name is “Worldwide Tech Investment Co., Ltd.” with an email address the first part of which is “worldwidetechinvetstmentco”. That is to say, both the Respondent’s name and email address as provided by the Respondent contain the singular word “investment”.

The Panel notes that the Account Transfer form for the disputed domain name <1x.bet>, as supplied by the Respondent in the Response, identifies the transferee’s account login as being the email address that is the registrant contact email address provided by the Registrar – that is, with the first part “worldwide.tech.investments” – yet the company seal of the transferee stamped on the form is of “Worldwide Tech Investment Co., Ltd.”. The Panel is of the view that the entities named “Worldwide Tech Investments Co., Ltd.” and “Worldwide Tech Investment Co., Ltd.” are the same entity in fact.

B. Respondent’s Consent to Transfer of One of the Disputed Domain Names

In its Response, the Respondent states: “Given the agreement between the Parties to transfer the domain name <1xbet.bet> prior to appointment of an Administrative Panel the Respondent agrees that the Parties shall complete and submit a Standard Settlement Form.” The Panel interprets this to be a request that the Panel effectively suspend the Complaint in so far as it relates to the disputed domain name <1xbet.bet>, and make an order for transfer of that disputed domain name to the Complainant without making any findings in relation to it.

The Panel declines the request. It does for the reason that a substantive decision on the merits in relation to both of the disputed domain names is relevant to reaching a conclusion on a ground expressly pleaded by the Complainant as establishing bad faith registration and use – namely, that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of a trademark or service mark from reflecting the mark in corresponding domain names. Accordingly, the Panel exercises its discretion to proceed to a substantive decision on the merits in relation to the disputed domain name <1xbet.bet>, as well as in relation to the disputed domain name <1x.bet>.

C. Identical or Confusingly Similar

While the TLD of a domain name is generally disregarded in assessing confusing similarity, it may be taken into account where the TLD and the second-level portion of the domain name in combination contains the relevant trademark – see section 1.11.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). That is the situation in this case in relation to the first disputed domain name, <1x.bet>, and so the Panel has considered the entirety of the domain name (i.e., including the TLD). Having done that, the Panel notes that the entirety of the disputed domain name is the whole of the Complainant’s word trademark 1XBET, with the addition of a “.” [dot] (which the Panel considers should be ignored in this case). Accordingly, the Panel finds that the disputed domain name <1x.bet> is identical to a trademark in which the Complainant has rights.

The second disputed domain name, <1xbet.bet>, contains the whole of the Complainant’s 1XBET word trademark in the second-level portion, with the TLD repeating the latter part of the trademark. If the TLD is ignored, the disputed domain name is identical to the Complainant’s trademark; if the TLD is considered, the disputed domain name is confusingly similar to the Complainant’s trademark. Either way, therefore, the requirement of paragraph 4(a)(i) of the Policy is satisfied in relation to the disputed domain name <1xbet.bet>.

D. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its 1XBET trademark. The evidence provided by the Complainant shows that each of the disputed domain names resolves to a generic parking page of the Registrar at which the Registrar’s registration and hosting services are promoted. This is not a bona fide offering of goods or services in connection with the disputed domain names, or a legitimate noncommercial or fair use of the disputed domain names.

The Respondent asserts that it has rights or legitimate interests in respect of the disputed domain names on the basis that is has been developing “a bona fide offering of on-line services connected with movies and other media content”. The assertion is fanciful. No explanation is offered as to why either of the disputed domain names has been chosen for such a business offering. In the Panel’s view, that is because none plausibly could be given. The TLD of the disputed domain names, “.bet”, self-evidently is suited to an offering of betting services, but wholly unsuited to an offering of “movies and other media content”. Furthermore, “1xbet” does not seem in anyway connected to such an offering.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in either of the disputed domain names.

E. Registered and Used in Bad Faith

The disputed domain names were registered after the Complainant registered its 1XBET trademark, and many years after the Complainant began operating its business under that brand. The evidence on the record provided by the Complainant with respect to its business operations and use of its trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain names, the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain names.

The Panel believes that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trademark in those domain names. According to paragraph 4(b)(ii) of the Policy, this is evidence of the registration and use of the domain names in bad faith, provided the Respondent has engaged in a pattern of such conduct. Section of 3.1.2 of the WIPO Overview 3.0 states: “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.… Panels have however been reluctant to find a pattern of abuse where a single UDRP case merely contains two domain names registered simultaneously by the same respondent directed at a single complainant mark.”

In this case, the Respondent has registered two domain names that consist of or contain the Complainant’s trademark. These disputed domain names were initially registered on two separate occasions, and subsequently transferred to the Respondent. The Respondent did not specify whether those transfers took effect on the same date (it provided an Account Transfer form for only one of the disputed domain names). Even if the dates of the transfers were the same, the Panel is not reluctant to find that the Respondent’s registration of the two disputed domain names evidences a pattern of conduct of registering domain names in order to prevent the Complainant from reflecting its trademark in the domain names. The reason for this is that each disputed domain name consists solely of the Complainant’s trademark – in one case, across a combination of the second-level portion and the TLD; and in the other case, in the second-level portion alone (with the TLD being a repetition of the last part of the trademark). In the Panel’s view, even just two registrations of this particular type is a pattern of conduct.

In any event, the Complainant has provided persuasive evidence that the Respondent is either related to, or effectively the same company as, Leofon Limited, which controls an online sports betting brand operating in the same sector as, and in direct competition to, the Complainant. Leofon Limited was the initial registrant of the disputed domain names, and is or has been the registrant of numerous domain names that consist of, or contain, the trademarks of third-party online betting operators. When the actions of Leofon Limited are attributed to the Respondent, it is clear that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of a trademark from reflecting its mark in a corresponding domain name.

For all of the above reasons, the Panel is satisfied that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its 1XBET trademark in the domain names, and that the Respondent has engaged in a pattern of such conduct. Accordingly, the Panel finds that each of the disputed domain names has been registered and is being used in bad faith.

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 names, <1x.bet> and <1xbet.bet>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: October 14, 2019