WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merryvale Limited v. Registration Private, Domains By Proxy, LLC / Nick Shepherd
Case No. D2019-2951
1. The Parties
The Complainant is Merryvale Limited, United Kingdom, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Nick Shepherd, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <betwaytrading.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 2, 2019. On December 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2019, 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 December 4, 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 December 8, 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 December 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2020. The Respondent sent an email communication on December 9, 2019. The Center notified the Commencement of Panel Appointment Process on January 13, 2020.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 24, 2020. 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 company registered in Guernsey and is part of a corporate group named the “Betway Group” which claims a pre-eminent reputation in the field of online gaming. The Complainant says that the Betway brand entered the online gaming market in 2006 via the website at “www.betway.com”, which features approximately 8 million registered users worldwide and a current monthly average of approximately 195,000 registered and active customers. The Complainant says that its marketing budget associated with the Betway brand was EUR 134 million for the year 2019, which will rise to a projected level of EUR 150 million for the year 2020. The Complainant produces evidence of its advertisements featuring said brand, including press advertising and its prominent football shirt sponsorship of West Ham United, an English Premier League football club.
The Complainant is the owner of a variety of registered trademarks for BETWAY across multiple territories including, for example, (1) United Kingdom registered trademark no. 3234076 for the word mark BETWAY in use classes 9 (computer systems relating to gaming and sports betting) and 41 (entertainment, online gaming, gambling and betting services), registered on August 18, 2017 and (2) United States of America registered trademark no. 3393148 for the word mark BETWAY in use class 41 (information relating to gaming provided via a global computer information network) registered on March 4, 2008.
The disputed domain name was created on October 19, 2019. The Complainant provides evidence that the website associated with the disputed domain name has used material taken from the Complainant’s own website including images of the use of the Complainant’s BETWAY mark on said football shirts. Said website also identified its operator as the “Betway Group”, which is the name of the Complainant’s corporate group.
Little is known regarding the Respondent, other than material contained in an email to the Center dated December 9, 2019, from a person indicating that they were the Respondent’s managing director. Said email used an email address under the disputed domain name. In said email, it was stated that the Respondent was a new company and would remove references to the Complainant, which were caused by the Respondent creating a quick landing page and its website being a “work in progress”. The Respondent signed off its email as “Betway Trading Ltd”, albeit without any company number or registration details, at an address in London, United Kingdom. The Panel, on its own initiative, searched the publicly available website of United Kingdom Companies House for the existence of such an entity but found no applicable records.
As at the date of this Decision, the website associated with the disputed domain name relates to a business named “Betway Trading”, which states that it provides a managed trading service to offset bookmakers’ risk.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that its BETWAY mark is recognizable in the disputed domain name and differs only by the addition of the generic and descriptive word “trading”, which it submits does not detract from the confusing similarity between the disputed domain name and the mark. The Complainant argues that the dominant and distinctive element of the disputed domain name is the term “betway”.
The Complainant notes that the Respondent is not affiliated with it and has never been licensed or otherwise authorized to use its BETWAY mark. The Complainant asserts that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor is it commonly known by the disputed domain name, adding that the Respondent’s use of materials taken from the Complainant’s own website was done without its knowledge and permission. The Complainant states that it is difficult to fathom how the Respondent’s alleged trademark and copyright infringement could be interpreted as a legitimate interest or a bona fide offering of goods or services. The Complainant submits that users of the Respondent’s website will be confused into believing that it is offered by the Complainant and contends that the Respondent is using the disputed domain name to benefit unlawfully from the Complainant’s reputation and to attract its customers or potential customers.
The Complainant asserts that it had a world-famous brand with millions of global users long before the disputed domain name was created. The Complainant submits that the Respondent knew or should have known about the Complainant’s marks and operation. The Complainant states that the use by the Respondent of the disputed domain name, which features the Complainant’s BETWAY mark in its first part, is clear evidence that the Respondent attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with such mark. The Complainant concludes that the registration of a domain name such as the disputed domain name, which contains a well-known mark for online gaming services, is indicative of bad faith.
The Respondent did not reply to the Complainant’s contentions. However, as noted above, a person sent an email to the Center on December 9, 2019, apparently on behalf of the Respondent, indicating that it was a relatively new business and that its operator was not aware of the law on “brand and corporate conflict”. It added that it used generic logos and information to get its site swiftly online but had since removed all photos, email, and content which would conflict with the Complainant.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has UDRP-relevant rights in its BETWAY registered trademark. The Panel notes in passing that the Complainant merely provided a list of some 73 marks, leaving the Panel to verify their existence. This the Panel did in respect of the two examples of registered marks cited in the factual background section above, having taken the view that it is reasonable for it to undertake limited factual research into matters of public record according to the Panel’s general powers articulated inter alia in paragraphs 10 and 12 of the Rules. The Complainant should in no way assume that all panels would take this step and the better course is to supply one or two examples of trademark certificates or prints of the relevant entries from the official trademark offices/registries for a panel’s consideration.
Comparing the disputed domain name with the Complainant’s mark, the applicable Top-Level Domain, in this case “.com”, is typically disregarded. The second level of the disputed domain name consists of the Complainant’s BETWAY mark together with the dictionary word “trading”. It is clear to the Panel that the Complainant’s mark, which is fully recognizable, forms the first and most dominant part of the disputed domain name. The word “trading” in no way renders the disputed domain name distinctive from the Complainant’s mark.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent has no permission or license to use its BETWAY mark in the disputed domain name, that it is not commonly known by the disputed domain name, and that the Respondent appears to have copied certain aspects of the Complainant’s website for use in association with the disputed domain name without permission or reasonable explanation.
The Respondent has not filed any formal Response in this matter and there is nothing in its informal email to the Center which appears to disclose any rights or legitimate interests in the disputed domain name. The Respondent claims to have recently started up in business but does not explain what this business is or how it would not conflict with the Complainant’s trademark or the reason for its use of the name of the Complainant’s corporate group. As far as the Respondent’s current website is concerned, this appears to the Panel to be offering services related to gaming or bookmaking which, in light of the Respondent’s apparent prior knowledge of the Complainant, could not be regarded as a bona fide offering of goods and services.
In these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(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 web site 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 your web site or location or of a product or service on your web site or location.”
The Panel is satisfied in the present matter that the Complainant has made out an adequate case in terms of paragraph 4(b)(iv) of the Policy. The screenshots of the associated website taken by the Complainant appear to the Panel as though the Respondent wished to give the impression to online visitors that its website was that of the Complainant. For example, the website was headed up with the Complainant’s principal domain name and corresponding logo.
The Respondent’s statement in its informal email that this was essentially placeholder content is unconvincing. Unbranded placeholder content or website templates are easily available online without it being necessary to clone elements of the site of an entity with a similar name in the same or a similar line of business. The selection of such content by the Respondent is therefore unlikely to be coincidental or accidental in the Panel’s opinion. Furthermore, given the use to which the Respondent’s website is currently being put, namely, to offer a service concerned with bookmaking, and given that the Complainant is a prominent company in the world of online gaming, the Panel makes the reasonable inference that the Respondent could not have selected the disputed domain name without knowledge of the Complainant and its rights.
The Respondent has not filed any formal Response and there is no indication on the present record of any apparent good faith motivation in its selection of the BETWAY mark for use as the first and most dominant element of the disputed domain name. No reasonable explanation is to be found in its informal email to the Center for its registration and use of the disputed domain name and there is no evidence before the Panel that this is genuinely the Respondent’s corporate name.
In all of these circumstances, the Panel finds on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <betwaytrading.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: February 7, 2020