WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ericius Investments Limited v. Privacy Service Provided by Withheld for Privacy ehf / Jon Week
Case No. D2021-3380
1. The Parties
The Complainant is Ericius Investments Limited, Cyprus, represented by Olha Koloianidi, Cyprus.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Jon Week, China.
2. The Domain Names and Registrar
The disputed domain names <go-parimatch.com>, <parimatch365.com> and <888parimatch.com> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2021. On October 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 13, 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 the Complainant on October 14, 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 amendment to the Complaint on October 15, 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 October 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2021.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on December 13, 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 is an online gambling company offering a range of betting and gambling services through its website “www.parimatch.com”.
The Complainant has been using the trademark PARIMATCH since 2013 and holds several International Trademark Registration and EU Trademark Registrations.
The Complainant is the owner, among others, of the International Registration no. 1298964 for PARIMATCH trademark registered on October 26, 2015, having the Ukrainian trademark registration (with the registration no. 178808 registered on November 25, 2013) as a basic trademark.
The disputed domain names were registered on September 13, 2021. The disputed domain names resolved to active websites in English and Turkish offering betting and gambling services similar to the Complainant’s activity.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain names.
The Complainant asserts that the disputed domain names are identical or at least confusingly similar to the Complainant’s trademark PARIMATCH and the addition of the generic words and numbers “go”, “365” and “888” are not sufficient to distinguish the disputed domain names from the mark but on the contrary, such additions reinforce the association of the disputed domain names with the Complainant’s mark.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain names, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark PARIMATCH.
Finally, in addressing the question of registration and use of the disputed domain names in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent’s websites clearly suggest that all three websites (under the disputed domain names) belong to the Complainant or are an official affiliated dealer endorsed by the Complainant. In this regard, the Respondent has used privacy shield in order hide their identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three elements, which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
As indicated above, the Complainant holds several trademark registrations for the PARIMATCH trademark. The disputed domain names integrate the Complainant’s PARIMATCH trademark in its entirety. The disputed domain names differ from the registered PARIMATCH trademark by the addition of the descriptive word “go” and the numbers “365 and “888” which are descriptive and non-distinctive, respectively. These additions do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0“) at section 1.8.
As regards the generic Top-Level Domain “.com”, it is typically disregarded under the confusing similarity test under the Policy.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts the Complainant’s submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainant to use its trademark.
The Respondent has not filed a Response.
The Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complainant succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent is using the disputed domain names to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark.
As a matter of fact, considering the striking similarity of the websites under the three disputed domain names and the use of the Complainant’s trademark on the websites, it is clear that the Respondent has targeted the Complainant and its PARIMATCH trademark to further its own commercial activities.
The Respondent’s registration of three similar disputed domain names resolving to a website impersonating the Complainant’s websites clearly constitutes bad faith. Therefore, the only reason for the registrations of the disputed domain names by the Respondent must have been with bad faith intent to use it to exploit, for commercial gain, the Complainant’s reputation. The Respondent has used the disputed domain names for precisely that purpose.
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to 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 disputed domain names, <go-parimatch.com>, <parimatch365.com> and <888parimatch.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: January 25, 2022