WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Better Collective USA, Inc. v. Domains By Proxy, LLC / Andrew Franklin
Case No. D2021-3221
1. The Parties
Complainant is Better Collective USA, Inc., United States of America (“United States”), represented by Sellars Legal, United Kingdom.
Respondent is Domains By Proxy, LLC, United States / Andrew Franklin, United States.
2. The Domain Name and Registrar
The disputed domain name <vegasinsiders.net> 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 September 29, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 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 October 4, 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 October 8, 2021.
The Center verified that the Complaint, together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 2, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on November 9, 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 acquired the domain name <vegasinsider.com> and the ongoing business that was conducted at the website to which the domain name resolved as a going concern from its previous owners in an acquisition worth some USD 20 million (Complaint, Annex 7; Complaint, Annex 6 screenshots of Complainant’s website contents as of 1998 and presently are attached to the Complaint as Annex 14). Complainant and its predecessors in title have continuously used the website to which the domain name <vegasinsider.com> resolves since the domain name was registered in February 1997 (Complaint, Annexes 5 and 6). From 2017 through 2019 the website to which Complainant’s <vegasider.com> resolves has received over 400 million hits per year generating revenues of more than USD 1.4 million per year.
Complainant’s website is frequently referenced in stories of various print and Internet media by such media companies as Forbes, Sports Illustrated, the Washington Post, and Yahoo! News (Complaint, Annexes 9, 10, 11 and 12). Complainant’s predecessor in title applied the United States trademark registration number 4449776 for VEGASINSIDER.COM on May 10, 2012, and the trademark was registered on December 17, 2013 (Complaint, Annex 4), and its “www.vegasinsider.com” website has been in continuous use since that time (Complaint, Annexes 5 and 6).
Respondent registered the disputed domain name on March 5, 2019 (Complaint, Annex 1). Respondent has been using the disputed domain name to resolve to a website, which is very similar to that of Complainant. Both websites provide sports betting information, and Respondent’s website has a similar look and feel to that of Complainant (Complaint, Annexes 13 and 14).
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to that of Complainant. Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant contends that Respondent registered and is using the disputed domain name 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 15(a) of the Policy).
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 VEGASINSIDER.COM, differing only in the addition of an “s” at the end to form the plural version of Complainant’s mark, and it is registered in the “.net” generic Top-Level Domain (“gTLD”) rather than in the “.com” gTLD. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
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
The disputed domain name was registered long after Complainant and its predecessor had established its website and after Complainant had established an online betting service that was referenced and reported on by national and international press sources and which had been generating millions of dollars to Complainant. The disputed domain name consists of a plural version of Complainant’s trademark replacing “.com” with “.net” and is also an Internet site for sports betting, whose online presence is strikingly similar to Complainant’s website. Accordingly, the Panel finds that the disputed domain name has been registered and is being used 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, <vegasinsiders.net>, be transferred to Complainant.
M. Scott Donahey
Date: November 13, 2021