WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Navasard Limited v. Ahmet Yilmaz, work

Case No. D2021-1064

1. The Parties

Complainant is Navasard Limited, Cyprus, represented internally.

Respondent is Ahmet Yilmaz, work, Turkey.

2. The Domain Name and Registrar

The disputed domain name <1xbet.software> (the “Disputed Domain Name”) was registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 14, 2021.

The Center verified that the Complaint together with the amendment to 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 April 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2021.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on May 11, 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 owns European Union Trade Mark (“EUTM”) Registration No. 013914254, registered on July 27, 2015, for 1XBET (Stylized) in International Classes 35, 41, and 42; and EUTM Registration No. 014227681, registered on 21 September, 2015, for 1XBET (word mark) in International Classes 35, 41, and 42.

The Disputed Domain Name was registered on January 11, 2021 and resolves to a webpage with pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has existed since March 2015, and that its sports betting brand 1XBET is one of the most recognized online sports betting brands in Europe. The services offered through Complainant’s official 1XBET website, “www.1xbet.com”, allows Internet users to bet on more than 1,000 sporting events every day. Complainant asserts that its 1XBET brand has received considerable exposure through sponsorships of various high profile sports teams, and that its brand is listed among the top 20 international book makers for global daily visitors. Complainant asserts that it invested substantial amounts of time, funds, and effort in marketing Complainant’s 1XBET trademark to identify and distinguish its services worldwide and resulting from those efforts Complainant’s 1XBET trademarks constitute a valuable asset. Complainant’s 1XBET trademarks had been registered prior to the registration of the Disputed Domain Name. Prior to Complainant’s incorporation, its brand name 1XBET was a common law trademark held by Complainant’s predecessors.

Complainant asserts that it licenses its marks and corporate logo to affiliate companies under common control on the basis of a license agreement. Complainant asserts that the Disputed Domain Name was not registered by it nor by any of its affiliated companies or licensees. Rather, the Disputed Domain Name was registered without any authorization or consent by Complainant. Complainant asserts that Respondent specifically used Complainant’s trademark in order to mislead potential clients of Complainant on the basis of similarity to Complainant’s trademark, as well as Complainant’s inability to use the Disputed Domain Name in the future.

Complainant asserts that when it learned of the registration of the Disputed Domain Name in January of 2021, it sent a detailed abuse report to the registrar and to Respondent, and requested a transfer of the Disputed Domain Name to Complainant. Respondent did not comply with Complainant’s demand, nor did it respond to Complainant’s communication.

Complainant asserts that the Disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights because the Disputed Domain Name is identical to the alpha-string of Complainant’s word trademark, excepting the generic Top-Level Domain (“gTLD”) “.software”. The Disputed Domain Name contains Complainant’s 1XBET word mark, in its entirety, with no alteration.

Complainant asserts that Respondent has no rights or legitimate interest in respect of the Disputed Domain Name because the Disputed Domain Name was registered without any authorization or consent by Complainant, Respondent received no license from Complainant to use the Disputed Domain Name, and there is no evidence that Respondent has trademark rights in the Disputed Domain Name.

Complainant asserts that Respondent has no intent to make a legitimate use of the Disputed Domain Name and there is no actual offering of goods and services by Respondent, as there is no actual website created by Respondent that is linked with the Disputed Domain Name. Rather, the Disputed Domain Name is linked to a parking page that displays searches for, among others, betting websites.

Complainant asserts that Respondent’s non-use of the Disputed Domain Name is not a bona fide offering of goods or services, in particular because the Disputed Domain Name is an exact match to Complainant’s trademark. Complainant further asserts that Respondent’s non-use of the Disputed Domain Name is not a legitimate noncommercial or fair use of the Disputed Domain Name.

Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because the Disputed Domain Name was registered in order to prevent Complainant from reflecting its mark in a corresponding domain name. Further, Complainant asserts that Respondent aims at effectively illegally using the Disputed Domain Name for purposes of reselling it at a profit by taking advantage of the confusing similarity of the Disputed Domain Name with Complainant’s popular sports betting trademark. Complainant asserts that Respondent’s registration of the Disputed Domain Name prevents Complainant as the owner of the 1XBET trademark from reflecting the mark in a corresponding domain name.

Complainant also asserts that Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor, because the Disputed Domain Name is almost identical to Complainant’s mark and Respondent is using it to host an inactive website to create initial interest confusion and to disrupt Complainant’s business. Complainant asserts that Respondent’s inactive website could lead Internet users to conclude that Complainant is no longer in business or has suffered a system failure that has rendered it unable to perform its business operations.

Complainant also asserts that Respondent’s use of the Disputed Domain Name constitutes bad faith because the Disputed Domain Name is inactive and has no plausible legitimate use. Complainant further asserts that its registration of its 1XBET trademarks sufficiently predates registration of the Disputed Domain Name such that Respondent was aware of the existence of Complainant’s trademarks at the time Respondent registered the Disputed Domain Name. Complainant asserts that any search with a popular search engine lists Complainant’s brand and services as the first result. Under the circumstances, Complainant asserts that Respondent’s use of a privacy service to hide Respondent’s identity is also clear evidence of Respondent’s bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Applicable Policy Provisions

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) [Respondent has] registered the Disputed 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.

According to paragraph 4(c) of the Policy, a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, 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 customers or to tarnish the trademark or service mark at issue.”

Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b).

6.2 Findings

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Name <1xbet.software> is identical to Complainant’s 1XBET word and stylized trademarks. The Disputed Domain Name reproduces Complainant’s 1XBET word mark in its entirety, adding only the gTLD “.software”. The Panel finds that combining Complainant’s identical mark 1XBET with the gTLD “.software” does not avoid a finding of identity or confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1 (“The applicable Top Level Domain in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”). The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent had no authorization, license, or consent from Complainant to register the Disputed Domain Name, that there is no evidence that Respondent has trademark rights in or is known by the Disputed Domain Name, and that Respondent has no intent to make a legitimate use of the Disputed Domain Name because there is no actual offering of goods or services by Respondent. Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See Adidas AG v. Domain Manager, WIPO Case No. D2014-1414,WIPO Overview 3.0, section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name.

As a result, the Panel finds that Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel cannot find that the Disputed Domain Name was registered in order to prevent Complainant from reflecting its mark in a corresponding domain name, because Complainant has not shown a pattern of such registrations by Respondent. See Policy, paragraph 4(b)(ii). Similarly, Complainant has not demonstrated that Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor (Policy, paragraph 4(b)(iii)) because, contrary to Complainant’s assertions, the Disputed Domain Name links not to an “out-of-service” or “404 page”, or even to a blank page, but to a parking page listing PPC links for betting websites. The Panel does not believe that Internet users encountering the parking page linked to the Disputed Domain Name will conclude that Complainant is no longer in business or has suffered a system failure that has rendered it unable to perform its business operations.

Nevertheless, the Panel finds bad faith registration and use because of the identity of the distinctive portion of the Disputed Domain Name to Complainant’s mark. From the length of time Complainant asserts to have been using its mark and the Complainant’s top-20 ranking in the field of bookmakers, the Panel concludes that Complainant’s mark has achieved a degree of notoriety in its European Union market area sufficient to raise a strong inference of bad faith where there is identical copying. See TracFone Wireless, Inc. v. PIPHY Productions, WIPO Case No. D2006-1459. Furthermore, Respondent’s parking page includes various searches for betting websites, indicating that Respondent is receiving PPC revenue from those searches, another indicator of bad faith where the Disputed Domain Name is identical to the Complainant’s trademark. SeeWIPO Overview 3.0, section 2.9 (“the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”). Finally, Respondent failed to respond to Complainant’s detailed abuse report, or to the Complaint, which provided two opportunities for Respondent to explain its actions and the registration of the Disputed Domain Name. Considering all of the circumstances in this proceeding, and the inferences the Panel may draw as a result of the Respondent’s default, the Panel concludes that the Disputed Domain Name was registered and used in bad faith.

Thus, the Panel finds that Complainant has established 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 <1xbet.software> be transferred to Complainant.

Jordan S. Weinstein
Sole Panelist
Date: May 25, 2021