P

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ericius Investments Limited v. Christina Devito

Case No. D2020-1379

1. The Parties

The Complainant is Ericius Investments Limited, Cyprus, internally represented.

The Respondent is Christina Devito, United States of America.

2. The Domain Name and Registrar

The disputed domain name <parimatch.tech> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2020, 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 June 10, 2020 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 12, 2020.

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 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2020.

The Center appointed David Stone as the sole panelist in this matter on July 20, 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 the owner of one of the most well-known online sports betting brands in Eastern Europe and has been on the market for more than twenty years. The Complainant is the registered owner of a number of active international trademarks comprising the word “Pari Match” (the “PARI MATCH Marks”). These include the following trademarks:

- PARI MATCH: international registration number 1298964, registered on October 26, 2015 for Nice classes 35 and 41;

- PARI MATCH: international registration number 1534210, registered on April 29, 2020 for Nice classes 35 and 41;

The Complainant also holds a Ukrainian trademark:

- PARI MATCH: registration number 178808, registered on November 25, 2013 for Nice classes 35 and 41;

The Complainant also holds a Russian Federation trademark:

- PARI MATCH: registration number 536717, registered on March 11, 2015 for Nice class 41;

The Complainant also holds a Kazakhstani trademark:

- PARI MATCH: registration number 55157, registered on March 3, 2017 for Nice class 43.

The disputed domain name was registered on August 6, 2019 and does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

First, the Complainant contends that the disputed domain name <parimatch.tech> is identical to the PARI MATCH Marks because it incorporates the terms “Pari Match” in full. The presence of the generic Top-Level Domain (gTLD”) “.tech” has no distinguishing effect and has to be ignored in comparing a domain name with a trademark.

Second, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. To the best of the knowledge of the Complainant, the Respondent does not and is not preparing to use the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name and is not making any use of the disputed domain name.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent’s absence of respective rights and legitimate interests in using the disputed domain name, together with a lack of explanation for the Respondent’s choice of the disputed domain name indicate a registration in bad faith. The Complainant states the PARI MATCH Marks are widely known owing to the Complainant’s highly rated products and submits that the Respondent likely knew of the PARI MATCH Marks, particularly when considering the fact that the word “Pari Match” is a fictitious word. Further, the Complainant asserts that the Respondent used privacy and proxy services, which is also indicative of registration and usage of the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant owns rights in the PARI MATCH Marks. The disputed domain name incorporates the Complainant’s PARI MATCH mark in its entirety. As pointed out by the Complainant, the presence of a gTLD in a domain name is a requirement of registration and as such is disregarded under the first element confusing similarity test. Therefore the existence of the Complainant’s registered PARI MATCH Marks suffices to satisfy the condition in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a 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) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or

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

The disputed domain name is not currently in use and the Respondent does not appear to run any business activity in connection with the disputed domain name. It follows that the disputed domain name is not used by the Respondent in connection with a bona fide offering of goods or services.

The Panel accepts the Complainant’s submissions that the Respondent is not commonly known by the disputed domain name. Further, the name involved in the disputed domain name is identical to the PARI MATCH Marks and the Respondent cannot be reasonably held to be developing a legitimate activity using the disputed domain name. The Complainant has therefore made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complaint and thus has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name.

There is no indication that any of the circumstances described in paragraphs 4(c)(i) - (iii) of the Policy could apply to the present matter. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith can be defined as the intention to register and use a domain name in order to:

(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;

(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct;

(iii) disrupt the business of a competitor; or

(iv) divert Internet traffic for commercial gain.

The website at the disputed domain name currently has no content. Previous UDRP panels have found that passive holding of a disputed domain name does not prevent a finding of bad faith (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421) and that UDRP panels should consider all the circumstances of the Respondent’s behavior in considering whether passive holding satisfies the requirements of paragraph 4(a)(iii) of the Policy.

In the absence of any evidence as to why the Respondent’s registration and passive holding of a domain name that is identical to the Complainant’s trademark could be considered bona fide, and considering the prior registration, distinctiveness and fame of the Complainant’s PARI MATCH Marks, the Panel concludes the Respondent’s behavior constitutes bad faith registration and use under the circumstances of this case.

Accordingly, the Panel finds that the Complainant has established the Respondent’s bad faith in registering and using the disputed domain name.

Based on the above, the Panel concludes that the Complainant has satisfied the condition in paragraph 4(a)(iii) of 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 <parimatch.tech> be transferred to the Complainant.

David Stone
Sole Panelist
Date: August 3, 2020