WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ladbrokes Betting & Gaming Limited v. mehdi bouksila

Case No. D2021-3381

1. The Parties

Complainant is Ladbrokes Betting & Gaming Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

Respondent is mehdi bouksila, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <eurobetglobal.com> 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 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 name. 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 Complainant on October 15, 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 on October 19, 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 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. Respondent did not submit a formal response. The Center received Respondent’s communications by email on October 16, 2021, October 17, 2021, October 21, 2021, and October 22, 2021. On November 16, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Phillip V. Marano as the sole panelist in this matter on December 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 is a British betting and gambling company based in London, United Kingdom. Complainant owns valid and subsisting registrations for the EUROBET trademark in numerous jurisdictions, including the trademark for EUROBET (European Union Trade Mark No. 001936376, registered on January 14, 2002) and EUROBET CORAL (Singapore Registration No. T0019760G, registered on November 11, 2000). Complainant’s website is hosted through the <eurobet.it> domain name, which is managed by Complainant’s Italian affiliate, Eurobet Italia SRL.

The disputed domain name was registered on January 28, 2021. At the time this Complaint was filed, the disputed domain name resolved to an Afternic.com website advertising that “This domain is available for sale!”

5. Parties’ Contentions

A. Complainant

Complainant asserts ownership of the EUROBET trademark and has adduced evidence of trademark registrations in numerous jurisdictions around the world including in the European Union, and in Singapore, with the earliest registration dating back to 1998. The disputed domain name is confusingly similar to Complainant’s EUROBET trademark, according to Complainant, because it appears in its textual entirety in the disputed domain name with the addition of the descriptive and intentionally confusing term “global”.

Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any evidence that Respondent is commonly known by the term “eurobet”; Complainant’s extensive rights in, and the considerable reputation of, Complainant’s EUROBET trademark; Respondent’s passive holding of the disputed domain name; and Respondent’s offer to sell the disputed domain name on Afternic.com for USD 1,000.

Complainant argues that Respondent has registered and is using the disputed domain name in bad faith for numerous reasons, including: Respondent’s passive holding of the disputed domain name, coupled with the longstanding and widespread reputation of Complainant’s EUROBET trademark; and Respondent’s offer to sell the disputed domain name on Afternic.com for USD 1,000.

B. Respondent

Respondent did not submit any formal response. The Center received informal Respondent communications by email on October 16, 2021, October 17, 2021, October 21, 2021, and October 22, 2021.

In salient part, Respondent’s informal emails assert that: Respondent is a website developer; the disputed domain name was registered by Respondent for a client project; Respondent’s client didn’t end up using the disputed domain name, so Respondent put it up for sale; and Respondent objects to the disclosure of his personal data despite privacy settings with the Registrar. Furthermore, upon commencement of these proceedings, Respondent asserts he unsuccessfully attempted to terminate the disputed domain name. Respondent’s final email concludes with, “[I] won’t answer any [further] email out of this topic.”

6. Discussion and Findings

To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:

i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;

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.

UDRP panels typically treat a respondent’s submission of a so-called “informal response” (merely making unsupported conclusory statements and/or failing to specifically address the case merits as they relate to the three UDRP elements, e.g., simply asserting that the case “has no merit” and demanding that it be dismissed) in a similar manner as a respondent default. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.

Although Respondent did not file a formal response to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview 3.0, section 4.3 (“A respondent’s default 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 […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the EUROBET trademark has been registered numerous jurisdictions (including in close geographic proximity to Respondent) with priority dating back to 1998, more than twenty years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the EUROBET trademark have been established pursuant to the first element of the Policy.

The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s EUROBET trademark. In this Complaint, the disputed domain name is confusingly similar to the textual elements of Complainant’s EUROBET and EUROBET CORAL trademarks because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the dominant textual EUROBET element is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name […] [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar [...]”). In regards to gTLDs, such as “.com” in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.

The combination with the term “gobal” does not prevent a finding of confusing similarity between Complainant’s EUROBET trademark and the disputed domain name. WIPO Overview 3.0, section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity under the first element”); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”). OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam, WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark”).

In view of Complainant’s registrations for the EUROBET trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with any actual evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1. It is evident that neither Respondent, identified by WhoIs data for the disputed domain name as “mehdi bouksila”, or Respondent’s putative website development client, is commonly known by the disputed domain name or Complainant’s EUROBET trademark.

There is no evidence in the record to confirm Respondent’s conclusory and informal assertion that Respondent is a website developer. There is no credible evidence of any website development at all, such as an invoice from Respondent to Respondent’s client for such services. In contrast, Complainant has provided evidence that Respondent has passively held the disputed domain name since registration, and Respondent has listed the disputed domain name for sale on the Afternic.com platform for USD 1,000. Passively holding a domain name in and of itself does not constitute a bona fide offering of goods or services. Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779.

Furthermore, the nature of the disputed domain name, comprising Complainant’s EUROBET trademark and the term “global”, suggests that the disputed domain name is some form of authorized, global version of Complainant’s official <eurobet.it> website and domain name, and so cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant. See WIPO Overview 3.0, section 2.5.1.

In view of the evidenced claims in the Complaint, Respondent’s failure to offer any evidence supporting any rights or legitimate interests in the disputed domain name or the term “eurobet”, Respondent’s passive holding of the disputed domain name, and Respondent’s open offer to sell the disputed domain name, the Panel concludes that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:

i. circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s 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 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 Respondent’s website or other online location, by 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 or location.

Registration of the disputed domain name with intent to profit by exploiting Complainant’s EUROBET trademark and selling that domain name constitutes axiomatic bad faith registration and use under paragraph 4(b)(i) of the Policy. As in this case, bad faith is evident where Respondent (or Respondent’s putative client) most likely had knowledge of Complainant’s EUROBET trademark, the trademarks at issue well predate registration of the disputed domain name by more than twenty years, and Respondent offers to sell the disputed domain name to the general public. WIPO Overview 3.0, section 3.1.1. Specifically, Respondent placed the disputed domain name on the Afternic.com marketplace with an open offer to the public to sell the disputed domain name for USD 1,000. By Respondent’s own admission that the disputed domain name was offered for free at the time Respondent registered it, USD 1,000 is far in excess of any conceivable or apparent registration cost and it falls well within paragraph 4(b)(i) of the Policy. Respondent’s offer at this price is clear evidence of Respondent’s opportunistic bad faith intention to acquire and sell the disputed domain name, which is identical or confusingly similar to Complainant’s EUROBET trademark.

Passively holding a domain name does not prevent a finding of bad faith. WIPO Overview 3.0, section 3.3. This includes domain names that are parked with a “This domain is available for sale!” advertisement. Where a domain name is being passively held, as alleged in this case, bad faith registration and use exists based upon: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit any response or offer any credible evidence of rights or legitimate interests; (iii) the respondent’s concealing its identity or use of false contact details; and (iv) the implausibility of any good faith use which the domain name may be put. See Id. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“A remedy can be obtained under the Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”). To that end, the Panel acknowledges Complainant’s longstanding rights in the EUROBET trademark, which predate Respondent’s registration of the disputed domain name by more than twenty years and subsist in Singapore in close geographic proximity to Respondent in Indonesia. The Panel further acknowledges the complete lack of any evidence submitted by Respondent, as well as Respondent’s intentional use of the Registrar’s privacy settings to conceal its identity.

In view of Respondent’s continued attempts to sell the disputed domain name in excess of its out-of-pocket costs, Respondent’s passive holding of the disputed domain name in bad faith, and Respondent’s failure to provide any evidence of actual or contemplated good faith use, the Panel concludes that Complainant has established the third element 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 <eurobetglobal.com> be transferred to Complainant.

Phillip V. Marano
Sole Panelist
Date: December 20, 2021