WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merryvale Ltd. v. onuma mongsupeng
Case No. D2021-0099
1. The Parties
The Complainant is Merryvale Ltd., Guernsey (hereinafter, “Complainant”), represented by Herzog, Fox & Neeman, Israel.
The Respondent is onuma mongsupeng, Thailand (hereinafter, “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <betwaykings.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 January 13, 2021. On January 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2021, 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 Complainant on January 15, 2021 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 18, 2021.
The Center verified that the Complaint together with the amended Complaint (hereinafter 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 January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 19, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on March 12, 2021. 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
Complainant is a group of companies which offer online gaming and sports betting websites under the BETWAY trademark. Complainant began using the BETWAY mark online in conjunction with such gaming websites in 2006 with its operation of the website at “www.betway.com” and has used the mark continuously since then, making significant investment in the registration of its word and logo mark in countries around the world. Complainant also owns Australia trade mark BETWAY Registration No. 1094468, registered on January 13, 2006. Complaint, Annex 5. Complainant’s website is a leading gaming website with 2.3 million users worldwide in 2020. In that year Complainant had 217,209 customers. Complaint, Annex 1.
Complainant invests significant sums in the marketing of the BETWAY brand. In 2019 Complainant invested EUR 134 million in the marketing of the BETWAY brand. In 2020 it increased that amount to EUR 136 million, and the projected budget for 2021 is EUR 141 million. Complaint, Annex 1.
A well-known example of Complainant’s promotion of its BETWAY mark is the branding of the football shirts of West Ham United, a world-recognized football club based in London. Complainant has invested more than GBP 60 million in the display of its BETWAY brand on the West Ham shirts, visible in stadia and on television around the world. Complaint, Annexes 2 and 3.
Respondent registered the disputed domain name on March 1, 2020. Respondent is using the disputed domain name to resolve to a website at which gaming services identical to those operated by Complainant are advertised. Complaint, Annex 4
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to its BETWAY mark; Complainant alleges that Respondent no rights or legitimate in respect to the disputed domain name; Complainant asserts that Respondent’s <betwaykings.com> domain name has been registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
“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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s trademark registered in countries around the world together with the English word “kings”. The Panel finds that the disputed domain name is confusingly similar to Complainant’s BETWAY trademarks.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Respondent is using the disputed domain name to resolve to a web site at which Respondent offers gambling services virtually identical to those offered by Complainant under Complainant’s BETWAY registered trademarks. Accordingly, noting Complainant’s continuous use of its BETWAY mark since 2006, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
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, <betwaykings.com>, be transferred to Complainant.
M. Scott Donahey
Date: March 20, 2021