WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merryvale Limited v. Privacy service provided by Withheld for Privacy ehf / WorldWide 360, 360 Blogger
Case No. D2021-4205
1. The Parties
The Complainant is Merryvale Limited, Guernsey, represented by Herzog, Fox & Neeman, Israel.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / WorldWide 360, 360 Blogger, India.
2. The Domain Name and Registrar
The disputed domain name <betwaycasino-aus.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 15, 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 the Complainant on December 17, 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 December 22, 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 December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2022.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 27, 2022. 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 a member of the Betway Group of companies that operates a number of online gaming websites under the brand name “Betway”. The online gaming business had close to 2 million users worldwide in 2021.
The Complainant owns a large number of trademarks that incorporates BETWAY in the United Kingdom and abroad, e.g., United Kingdom trademark No. UK00003234076, registered on August 18, 2017, India trademark No. 3203826, registered on March 19, 2018, and European Union trademark No. 4832325, registered on January 26, 2007. All trademark registrations are prior to when the Respondent registered the Domain Name. The Complainant also owns the domain name <betway.com>.
The Domain Name was registered on November 23, 2020. At the time of drafting the Decision, the Domain Name resolved to a webpage purporting to offer news and articles related to games and casino.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is confusingly similar to its trademark. The Domain Name incorporates the Complainant’s registered trademark in its entirety. The addition of the generic term “casino”, a hyphen, and the geographical term “aus” does not prevent a finding of confusing similarity with the Complainant’s trademark.
The Complainant asserts that it has no association with the Respondent and has never authorized, licensed, or permitted the Respondent to use its trademark. The Respondent is not commonly known by the Domain Name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name is connection with a bona fide offering of goods. The Complainant argues that the Respondent uses the Domain Name to unlawfully benefit from the Complainant’s reputation in order to attract customers to its website. The Complainant points out that the use of the geographical term “aus” increases the risk of customers’ confusion.
Finally, the Complainant submits that the Respondent must have been aware of the Complainant and its trademark when the Respondent registered the Domain Name. The Complainant argues that the Respondent has registered and is using the Domain Name in bad faith by attempting to attract, for commercial gain, Internet users to its website, through creating a likelihood of confusion with the Complainant. The Complainant’s famous trademark and domain name were registered long before the registration of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark BETWAY. The test for confusing similarity involves a comparison between the trademark and the Domain Name. The Domain Name incorporates the Complainant’s trademark in its entirety with the additional elements “casino”, a hyphen, and “aus” at the end. This does not prevent a finding of confusing similarity between the Domain Name and the trademark.
For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domains (“gTLD”), see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name or otherwise make use of its trademark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Panel finds no indication that the Respondent has been commonly known by the Domain Name. The Respondent has not offered any explanation as to the registration of the Domain Name, and not provided any evidence of good faith use. The Respondent’s use of the Domain Name is not bona fide.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainant that the Respondent must have been aware of the Complainant when the Respondent registered the Domain Name. The Complainant’s well-known trademark predates the registration of the Domain Name, and the Respondent’s use of the Domain Name clearly indicates that the Respondent knew of the Complainant and its business.
The Panel cannot see any good faith use to which the Domain Name may be put by the Respondent. The Panel notes that the Respondent has tried to create a false association between the Domain Name and the trademark BETWAY. The Respondent has set up a webpage for gaming and casino services to attract Internet users for commercial gain, by creating confusion with the Complainant’s famous trademark and gaming services, see WIPO Overview 3.0 section 3.1. The Respondent’s use of the Domain Name is evidence of bad faith.
Furthermore, the Respondent has initially concealed its identity and not replied to the Complainant’s contentions. These circumstances may further indicate bad faith.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 <betwaycasino-aus.com> be transferred to the Complainant.
Date: February 4, 2022