WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merryvale Limited v. 莫静宜 (Mo Jing Yi)
Case No. D2021-1559
1. The Parties
Complainant is Merryvale Limited, Guernsey, represented by Herzog, Fox & Neeman, Israel.
Respondent is 莫静宜 (Mo Jing Yi), China.
2. The Domain Name and Registrar
The disputed domain name <betway11.com> (the “Domain Name”) is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 27, 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 in English on May 31, 2021.
On May 27, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 31, 2021, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.
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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 28, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 6, 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 member of the Betway Group, which operates a number of online gaming websites under the brand name “Betway”. The Betway brand was introduced to the online gaming market in 2006, via the website located at the domain name <betway.com>, which has provided gaming to 1.47 million users worldwide so far in 2021. The current monthly average number of registered and active customers accessing the Betway branded services is approximately 259,154 customers, with an annual average of 161,308 customers in 2019 and 213,452 customers in 2020, and 402,703 customers in 2021 to date.
Complainant, as part of the Betway Group, has invested, and continues to invest, substantial sums in promoting the Betway Group’s offerings under the Betway brand and trademarks around the world. In 2019 the relevant marketing budget in connection with the Betway brand has been EUR 134 million, in 2020 it has increased to EUR 136 million, and the projected budget for 2021 is EUR 141 million. One particular example of the promotion of the Betway brand by Complainant is its sponsorship of the West Ham United Club with a shirt sponsorship arrangement for over GBP 60 million.
Complainant is also the owner of numerous trademark registrations worldwide for the word mark BETWAY in, inter alia, Argentina, Australia, Brazil, Canada, China (where Respondent resides), India, Mexico, New Zealand, South Africa, the European Union, the Russian Federation, and the United Kingdom. For example, Chinese Trademark Registration No. 14428000, registered on May 28, 2015, and the European Union Trade Mark Registration No. 004832325, registered on January 26, 2007.
Respondent registered the Domain Name on August 2, 2017. According to the archived website screenshots provided by Complainant, on June 27, 2019, the Domain Name redirected to a website of what appeared to be “金沙娱乐场” (Sands Casino) located at the domain name <007731.com>, which offered services identical to some of the services offered by Complainant. At the time of the filing of the Complaint, the website was inactive.
5. Parties’ Contentions
Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the BETWAY marks and owns domain names incorporating the BETWAY marks. Complainant contends that Respondent registered and is using the Domain Name, to confuse Internet users looking for bona fide and well-known BETWAY products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue – Language of the Proceeding
The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Complainant submits in its email communication to the Center on May 31, 2021 and in the Complaint and the amended Complaint, that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the disputed domain name is in Chinese.
Complainant contends that the Domain Name is comprised exclusively of English/Latin characters. In addition, Complainant notes that the script of the Domain Name is identical to Complainant’s trademark. Complainant also contends that it would involve unfairly high costs and delay for Complainant to translate and conduct the proceeding in Chinese. Complainant notes that it conducts its business in the English language, and is not in a position to conduct the proceeding in Chinese without an additional large expense and delay due to the need for translation.
In exercising its discretion to use a language other than that of the Registration Agreement for the disputed domain name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in both Chinese and English of the language of the proceeding as well as notify Respondent in both Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a response. The Panel also notes that the Domain Name was registered in characters using Latin characters.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(i) the 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 Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the BETWAY marks, which have been registered since at least as early as 2007, well before Respondent registered the Domain Name on August 2, 2017 as noted above. Complainant has also submitted evidence, which supports that the BETWAY marks are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the BETWAY marks.
With Complainant’s rights in the BETWAY mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s BETWAY mark. The BETWAY mark is recognizable in the Domain Name. The incorporation of the BETWAY mark with the addition of the number “11” in the Domain Name <betway11.com> does not prevent a finding of confusing similarity between Complainant’s trademark and the Domain Name registered by Respondent.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the BETWAY marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the BETWAY trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the BETWAY marks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Complainant provided evidence that the Domain Name previously redirected to a competing website of what appeared to be “金沙娱乐场” (Sands Casino) located at the domain name <007731.com>, which offered services identical to some of the services offered by Complainant. At the time of the filing of the Complaint, the website was inactive. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the BETWAY marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s BETWAY marks and related services are widely known and recognized. Therefore, and also noting the previous use of the Domain Name offering services identical to some of the services offered by Complainant, the Panel finds that Respondent knew or should have known the BETWAY marks when it registered the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007.
As discussed above, the Domain Name previously redirected to a website of what appeared to be “金沙娱乐场” (Sands Casino) located at the domain name <007731.com>, which promoted and offered services identical to some of the services offered by Complainant. Such use is misleading to Internet users, creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website. It is also potentially disruptive to Complainant’s business activities and may result in tarnishing Complainant’s reputation and good will. At the time of the filing of the Complaint, the website was inactive. However, this would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <betway11.com> be transferred to Complainant.
Kimberley Chen Nobles
Date: July 14, 2021