WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Duranbah Limited N.V. v. Registry Domain ID: bc983081afc94940b9adc86174a09a5c-DONUTS / [Name Redated], My Bookie News

Case No. D2021-2703

1. The Parties

The Complainant is Duranbah Limited N.V., Netherlands, represented by MBM Intellectual Property Law, Canada.

The Respondent is Registry Domain ID: bc983081afc94940b9adc86174a09a5c-DONUTS / [Name Redacted], My Bookie News, United States of America (“United States” or “US”).¹

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2021, the Registrar transmitted by email to the Center its verification response:

(a) confirming it is the Registrar for the disputed domain name;

(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;

(c) confirming that English is the language of the registration agreement; and

(d) confirming that the disputed domain name was registered on April 30, 2020.

The Center sent an email communication to the Complainant on September 15, 2021, 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 September 20, 2021.

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 September 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 28, 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

The Complainant provides an online gambling and betting service. According to the Complaint, the Complainant and its predecessor have been doing so continuously since 2014 under and by reference to the trademark My Bookie from a website to which the domain name <mybookie.ag> resolves. The domain name <mybookie.ag> was registered in July 2014.

Statistics collected via the “Similar Web” service at “www.similarweb.com” indicated that the Complainant is ranked fifth in the United States in the gambling/sports betting category. Those statistics also show that over 92 per cent of the traffic to the Complainant’s website comes directly from entering the URL <mybookie.ag> into the browser address bar. There appear to have been 12.57 million visits to the website in the six months prior to the Complaint being filed.

The Complainant includes printouts of captures from the Wayback Machine at <archive.org> showing the website:

(a) in 2014 and 2015 featured a banner or logo “MYBOOKIE.AG” in block capitals where the “my” is red and the other letters are white against a black background;

(b) in 2016, 2017, and 2018, there is no banner or logo but the name “MyBookie” appears numerous times in bold text to differentiate from other text;

(c) in 2019, 2020, and 2021, there is a banner or logo “MYBOOKIE” in block capitals in which the letters “my” are in orange and the remaining letters are in white, against a black background.

Similar logos to the orange MYBOOKIE logo, depicted superimposed on a black circle or disc with an orange border, appear on the Complainant’s Instagram, Facebook, and Twitter accounts.

The Complainant’s primary Instagram account has over 44,000 followers; its Instagram_mma account has over 20,000 followers, and three other Instagram accounts have more than 2,000 followers each.

The Complainant’s primary Twitter account has more than 56,600 followers; a MyBookieCFB account has over 9,600 followers and three other accounts have between 2,100 and 4,600 followers each.

The Complainant has a Canadian Trademark Application No. 1887552, MYBOOKIE, for online gaming and betting services. This application was filed on March 12, 2018 but appears to be still pending.

The Respondent registered the disputed domain name on April 30, 2020.

It has resolved to a website which features the Complainant’s circular logo described above with the word “exposed” superimposed over it in red.

The website included text under headings “Who Owns MyBookie?”, “Why are you exposing MyBookie?”, “What are you going to expose”, “Access to Every Employee from MyBookie (including Social Media Profiles)” and newspaper reports in 2007 and 2009 about the criminal conviction of one of the owners.

Under the heading “Why are you exposing MyBookie?”, the author(s) claim to be a group of current and former employees objecting to physical and mental abuse allegedly caused by the Complainant. The text alleges the Complaint engages in financial malpractices. This section then continues:

“If MyBookie does not adhere to our demands, all the information we have on their operations will be exposed to US Authorities, Costa Rican Authorities, Interpol, and made available online for everyone to see.”

The text then claims the group has access to detailed information about the Complainant’s personnel and its allegedly criminal activities, including financial records.

The text concludes with the following threats and demands:

“We have already have [sic] been in contact with several organizations that will have a field day with the information we have already provided them. Just pay us what we deserve and all this goes away, really fast. You will be notified shortly with more details.” (emphasis supplied)

The Respondent’s website has been taken down following the Complainant’s complaints to the hosting service.

5. Parties’ Contentions

A. Complainant

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

B. Respondent

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

6. Discussion and Findings

No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The physical address provided by the Respondent to the Registrar does not exist so the courier attempting delivery of the Written Notice was unable to complete delivery. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, and that the Center has met its obligations of attempting notice as per the Rules therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

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

(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.

As the Registrar has confirmed English is the language of the Registration Agreement, English is the language of the proceeding. See paragraph 11 of the Rules.

Redaction of Respondent’s name

The name in which the disputed domain name has been registered is the name of one of the Complainant’s employees. The employee, who appears to have a senior position in the Complainant, denies that he has had any involvement in the registration of the disputed domain name.

Further, the Respondent’s address provided to the Registrar is fake.

The Respondent has not contested these matters.

Accordingly, the Panel considers it appropriate to order pursuant to paragraph 10(a) of the Rules the name of the Respondent be redacted to protect the privacy of the employee whose name has been falsely used.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven it has made an application to register its trademark in Canada. A pending application, however, does not qualify as appropriate rights under the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.1.4.

The Policy, however, is not restricted only to registered trademarks. Reliance may be placed on unregistered trademarks if the Complainant can show they have become distinctive of it or its goods or services.

The Complainant claims that the expression “MyBookie” has become distinctive of it through its use and promotion and, accordingly, the Complainant claims to have rights in “MyBookie” as an unregistered trademark. In this respect, WIPO Overview 3.0, section 1.3 explains the general position for establishing such rights:

“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.”

“Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”

“Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”

The Panel notes that the expression “Mybookie” does have considerable descriptive connotations in respect of the relevant services. Having regard to the length and manner of the Complainant’s use and the statistical information set out in section 4 above, however, the Panel finds that the Complainant has established a prima facie case of rights in “MyBookie” as an unregistered trademark sufficiently for the purposes of the Policy. The Respondent has not contested this, and the chosen disputed domain name as well as its content would seem to affirm an understanding by the Respondent of the source-identifying capacity of the claimed mark.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the relevant trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0, section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. See WIPO Overview 3.0, section 1.11. To the extent that the Complainant has used its trademark in a stylised coloured form, it is also usual to disregard such elements of a trademark under the first requirement as such elements are generally incapable of representation in a domain name. See for example, WIPO Overview 3.0, section 1.10.

Disregarding the “.news” gTLD, the disputed domain name consists of the Complainant’s trademark, therefore, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

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

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it (at least in any sense from which the Complainant’s consent to the registration and use of the disputed domain name could be inferred). The disputed domain name is not derived from the Respondent’s name so far as that has been disclosed. Further, the name the Respondent has used is false.

These matters indicate a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name.

The content of the website, however, suggests that the disputed domain name could be being used in connection with a genuine protest site, critical of the Complainant and its business practices.

The Complainant strenuously denies the allegations made against it on the website. It further contends that the allegations are false and involve what it alleges is criminal conduct and so could not qualify as legitimate noncommercial or fair use.

The Panel is not in a position to determine whether the allegations made on the website are true or false.

However, two factors in particular lead to the conclusion that the Respondent does not have rights or legitimate interests in the disputed domain name. First, as the Complainant points out, the general right to legitimate criticism does not usually extend to registration of a domain name which is identical to the Complainant’s trademark as, where the disputed domain name consists solely of the Complainant’s trademark (apart from the gTLD) there may be an impermissible risk of user confusion through impersonation. See e.g., WIPO Overview 3.0, section 2.6.1.

Secondly, to qualify for the purposes of paragraph 4(c)(iii), the criticism must be genuine and noncommercial. As noted in section 4 above, the Respondent after threatening exposure of personal details and evidence of allegedly illegal activities, concludes with the demand “Just pay us what we deserve and all this goes away, really fast.”

This indicates that the Respondent (or the purported group of present and former employees) is really using the threat of exposure and public embarrassment – and worse – as a lever for payment.

The Panel does not consider that qualifies as genuine noncommercial or fair use. Rather, it indicates the registration and the use of the disputed domain name for ulterior, commercial purposes. The Panel does not know whether the Respondent may have a legitimate claim to monies owed it by the Complainant, but even if it does, such use of the disputed domain name cannot be supported for such purposes.

Taking these matters together, therefore, the Panel finds that the Complainant has established the Respondent does not have rights or a legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

There can be no doubt that the Respondent was aware of the Complainant and its trademark when registering the disputed domain name. The point of adopting the disputed domain name was to attract, or have the potential to attract, people to the Respondent’s website ostensibly to “expose” the Complainant’s alleged wrongdoing, but primarily it would seem to leverage the claim for money alleged to be owed by the Complainant to the Respondent. Moreover, the Respondent used the name of one of the Complainant’s employees to register the disputed domain name.

In circumstances where the Panel has found that the Respondent does not have rights or a legitimate interest in the disputed domain name, the registration and use of the disputed domain name to potentially tarnish the Complainant’s trademark and reputation whilst seeking payment from the same constitutes registration and use in bad faith under the Policy.

Accordingly, the Complainant has established all three requirements under 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, <mybookie.news>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: November 11, 2021

¹ As a result of the Panel’s finding in section 5.A. of this decision, the name used by the Respondent to register the disputed domain name has been redacted.