WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
mSolutions Holdings Ltd. v. Park.io Privacy, Privacy.cc
Case No. DIO2021-0021
1. The Parties
The Complainant is mSolutions Holdings Ltd., Seychelles, represented Greenberg & Lieberman, United States of America (“United States”).
The Respondent is Park.io Privacy, Privacy.cc, United States.
2. The Domain Name and Registrar
The disputed domain name <sportbet.io> 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 August 31, 2021. On September 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 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 September 3, 2021. The Complainant filed an amended Complaint on September 14, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 18, 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 a company with its principal place of business in Curacao. The Complainant operates a website at “www.sportsbet.io”. As submitted by the Complainant, and subsequently verified by the Panel,1 the corresponding domain name was registered on October 30, 2013. The Complainant submits that the said website was launched shortly thereafter, and has been in continuous commercial operation ever since. The Complainant’s said website advertises online sports gaming and live online casino services, permitting consumers in certain non-restricted countries to place wagers on professional sporting events and games of chance using various cryptocurrencies. The Complainant contends that it is the “largest Internet sportsbook in the world”.
The Complainant maintains an affiliate program through which owners of websites and domain names can advertise the Complainant’s services via banner advertising and web links. Said owners are paid a referral fee for every active user who generates revenue at the Complainant’s said website. The Complainant has engaged in marketing and developing the mark SPORTSBET.IO by way of investing significant resources, including sponsorship of professional football clubs, such as certain clubs in the English Premier League. According to the Complainant, it has spent some GBP 12 million on this activity, whereby the SPORTSBET.IO mark will be displayed on football club digital advertising and jerseys. The Complainant asserts that as a result, its SPORTSBET.IO mark has acquired a secondary meaning in the minds of the relevant consuming public. The Complainant claims to have spent over GBP 30 million in total over the past eight years to build said mark. According to its website, the Complainant became the headline shirt sponsor of English Premier League football team Watford FC, as part of a three year deal, in June 2019.
The disputed domain name was registered on July 10, 2018. The Registrar notes that the disputed domain name “was registered to this registrant since at least July 4, 2019”. The Complainant states in its submissions that the disputed domain name is no longer resolving to a website. However, when the Panel visited the disputed domain name,2 it noted that it presently redirects to a website at <saibo365.bet> which appears to be in the Chinese language, with an appearance similar to that shown in the Complainant’s Annex 9. Such website features two possible links for the Internet user to click on. In either case, the resulting site features the image of a football player wearing one of the Complainant’s sponsored Watford FC jerseys featuring the Complainant’s SPORTSBET.IO mark, partially obscured by the player’s arm, together with an advertisement for the disputed domain name. As far as the Panel can tell from a machine translation, the Respondent’s said site features advertisements for other gaming sites. The legend beneath a Watford FC logo, when machine translated, appears to show a claim to be the official partner to Watford FC. Finally, said site also appears to promote the disputed domain name in a style and with a similar logo to that with which the Complainant promotes its <sportsbet.io> domain name.
5. Parties’ Contentions
A. Complainant
The Complainant contends as follows:
Identical or confusingly similar
The Complainant has prior rights to those of the Respondent to the SPORTSBET.IO mark, being of some eight years standing, and dating from 2013. The disputed domain name incorporates the Complainant’s mark with a single change, being the deletion of a letter “s”. The Respondent uses the Complainant’s mark on the website associated with the disputed domain name and copies multiple pages from the Complainant’s website wholesale. The Respondent has also fraudulently communicated with the Complainant’s affiliates, under the pretense of being the Complainant, in an attempt to direct those affiliates to its own domain name, <agent-sportsbet.io>.
Rights or legitimate interests
The Respondent has no relationship with the Complainant and has not been authorized or licensed to use the SPORTSBET.IO mark. The Respondent registered the disputed domain name to divert traffic from the Complainant’s website to its own site. There is no evidence that the Respondent is commonly known by the disputed domain name and the relevant WhoIs data contains no registrant information beyond a privacy service. The Respondent has taken the Complainant’s own website content and placed it on its own webpage, demonstrating that the sole purpose of the disputed domain name is to garner income from confusing the public into thinking that the Respondent is the Complainant.
Registered or used in bad faith
The website at the disputed domain name uses the Complainant’s mark repeatedly along with whole pages from the Complainant’s website. This is a clear effort to confuse consumers into believing that the Respondent is associated with the Complainant. The Respondent has used the Complainant’s mark to contact the Complainant’s affiliates while pretending to be the Complainant. The Complainant’s representative issued a demand letter to the Respondent on May 5, 2021. Although the Respondent did not reply to said letter, days after it was sent, the Respondent took down its infringing pages and the disputed domain name either returns an error or does not resolve.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In terms of paragraph 4(a) of the Policy, for the Complaint to succeed, the Complainant must prove 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 or is being used in bad faith.
A. Preliminary matter: identity of the Respondent
In an email to the Center dated October 10, 2021, a person using the registrant email address associated with the disputed domain name indicated that it was not the Respondent but was the previous registrar of record for the disputed domain name. Said email noted that the Respondent had not updated their contact information having transferred the disputed domain name to the Registrar.
Paragraph 1 of the Rules defines the respondent as “the holder of a domain-name registration against which a complaint is initiated”. In the present case, the holder of the disputed domain name as disclosed by the Registrar is “park.io privacy, privacy.cc” with an address in Philadelphia, United States. While the name of this holder might suggest that it is a privacy service, no underlying registrant details have been provided either by the Registrar or the author of the email to the Center dated October 10, 2021. In all of these circumstances, the Panel is content that the current holder of the disputed domain name, as disclosed by the Registrar, should be treated as the Respondent in these proceedings.
The Panel notes that the Center has attempted to notify the Complaint to the Respondent by email to the registrant email address associated with the disputed domain name and to “postmaster@[the disputed domain name]”. The Center also attempted to notify the Complaint to the Respondent via the notification facility provided by the Registrar on its website, which returned “Success” responses indicating that the messages concerned would be forwarded to the registrant, administrative and technical contacts associated with the disputed domain name respectively. Finally, the Center issued written notice of the Complaint to the postal address for the registrant noted on the WhoIs record, as provided by the Registrar.
In all of the above circumstances, the Panel is content that the Center has used reasonably available means calculated to achieve actual notice to the Respondent in accordance with paragraph 2(a) of the Rules.
B. Identical or Confusingly Similar
The Complainant has not put forward details of any registered trademark rights in the mark SPORTSBET.IO. However, the Complainant’s submissions effectively amount to a claim of unregistered trademark rights in said mark under the Policy. Section 1.3 of the WIPO Overview 3.0 discusses what a complainant needs to show to assert unregistered trademark rights successfully. The section notes that a 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 is required and conclusory allegations, even if undisputed in the case concerned, would not normally suffice to show secondary meaning.
In the present case, the Complainant has produced an Affidavit from its major shareholder, which sets out the past use of the SPORTSBET.IO mark since 2013. The Affidavit describes high value sponsorship deals which the Complainant has concluded with certain prominent football clubs. These deals result in the Complainant’s SPORTSBET.IO mark being featured on the clubs’ digital advertising and jerseys. The Complainant also produces images of the jerseys and digital advertising concerned, showing that the said mark features prominently. In addition to this evidence, the Complainant produces evidence of its own announcement of its three year sponsorship deal with English Premier League football club Watford FC in June 2019. None of this evidence has been contested by the Respondent.
The Panel is prepared to accept the Affidavit and related materials as evidence of the duration and nature of the Complainant’s use of the SPORTSBET.IO mark, and the nature and extent of advertising using the mark. The Panel notes in passing that the Affidavit refers to a different domain name other than the disputed domain name and does not make clear exactly how this domain name is related to the disputed domain name. Accordingly, when the Affidavit refers to “the Respondent’s website” the Panel is unclear whether the reference is to the website associated with the disputed domain name or to the other domain name mentioned. As far as the Panel is concerned, however, this anomaly does not affect the evidential value of the Affidavit on the topic of the Complainant’s unregistered trademark rights because the relevant averments discussed above are supported by additional extrinsic evidence.
In these circumstances, the Panel finds that the Complainant has unregistered trademark rights in its SPORTSBET.IO mark for the purposes of the Policy. Comparing this mark to the disputed domain name, it may be seen that the mark is identical to the entirety of the disputed domain name with the exception of the fact that the latter is missing the second letter “s”. Given that the Complainant’s mark itself takes the form and appearance of a domain name, complete with Second and Top-Level Domain, therefore “spanning the dot”, the Panel considers that it is appropriate to compare such mark to the entirety of the disputed domain name rather than to disregard the country code top-level domain (ccTLD) “.io” in the latter. On this topic, the Panel notes that where the applicable Top-Level Domain is part of the relevant trademark, UDRP panels may consider the domain name in its entirety for purposes of assessing confusing similarity under the Policy (see section 1.11.3 of the WIPO Overview 3.0).
On the basis of this comparison, the Panel notes that the disputed domain name appears to be an intentional typographical variation of the Complainant’s mark (see section 1.9 of the WIPO Overview 3.0). This is further affirmed by the website content associated with the disputed domain name which appears prima facie to make reference to and target the Complainant’s SPORTSBET.IO mark (see section 1.15 of the WIPO Overview 3.0). The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s mark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive set of circumstances, any of which, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is recognised in cases under the Policy that it suffices for a complainant to make a prima facie case under this element of the Policy, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the domain name concerned (see, for example, Linkedin Corporation v. Privacy service provided by Withheld for Privacy ehf / Scrap Linkedin, WIPO Case No. DIO2021-0019; Bayerische Motoren Werke AG v. Domain Privacy Ltd/ DNS Admin, WIPO Case No. DIO2021-0012; and the discussion in section 2.1 of the WIPO Overview 3.0).
In the present case, the Panel finds that the Complainant has established such a prima facie case based upon its submissions that the Respondent has no relationship with the Complainant and has not been authorized or licensed to use the Complainant’s SPORTSBET.IO mark, that there is no evidence that the Respondent is commonly known by the disputed domain name and that the Respondent has registered the disputed domain name to divert traffic from the Complainant’s website to its own site to garner income from confusing the public into thinking that the Respondent is the Complainant.
The Respondent has not filed any Response and has not put forward any submissions or evidence from which it could be established that it has rights or legitimate interests in the disputed domain name, whether on the basis of the non-exhaustive examples set out in paragraph 4(c) of the Policy or on any other basis. It has not escaped the Panel’s notice that the Respondent might have argued that its domain name is being used in connection with gambling on sporting events, whereby its selection of the dictionary words “sport” and “bet” in a domain name might have been considered to be descriptive and unrelated to the Complainant’s mark. Nevertheless, the Complainant has made out a sufficient case under the Policy that its SPORTSBET.IO mark has acquired a secondary meaning through the use of prominent sponsorship and advertising, including the sponsorship of Watford FC and the disputed domain name reproduces that mark in its entirety, absent the second letter “s”.
The content on the website associated with the disputed domain name demonstrates to the Panel’s satisfaction that the use of the disputed domain name is directly targeted to the Complainant’s SPORTSBET.IO mark. Said website displays a prominent football player image in which said player is wearing a Watford FC jersey bearing the Complainant’s said mark. The image appears to have been selected because the mark is partially obscured by the player’s arm, enabling the Respondent to suggest that the jersey features the disputed domain name rather than the Complainant’s mark. This has done by placing the text of the disputed domain name side-by-side with the said football player image. Furthermore, through the use of the corresponding logo, the Respondent’s site appears to claim an official partnership with Watford FC, thus effectively impersonating the Complainant. In all of these circumstances, the Respondent’s website content affirms the fact that it is using the disputed domain name to masquerade as the Complainant. This form of direct targeting of the Complainant’s mark means that any potential argument that the Respondent was making a descriptive use of the words “sport” and “bet”, independent of and unrelated to the Complainant’s rights, would not have prevailed.
There being no rebuttal of the Complainant’s prima facie case on this topic, the Panel finds that the Complainant has carried its burden with regard to paragraph 4(a)(ii) of the Policy.
D. Registered or Used in Bad Faith
On this topic, the Complainant requires to prove that the disputed domain name was registered or that it was used in bad faith. Paragraph 4(b) of the Policy sets out four non-exhaustive examples of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present case, the Complainant’s submissions relate to paragraph 4(b)(iv) of the Policy. Uncontradicted evidence on the record shows that in June 2019, the Complainant was engaged in concluding a major three year sponsorship deal with a very well-known football team whereby the Complainant’s SPORTSBET.IO mark would be displayed on the jerseys of the team concerned. The disputed domain name is a typographical variant which is merely a single letter different from this mark. The website associated with the disputed domain name has been used to link to a website at <saibo365.bet> which displays a prominent image featuring a player wearing what appears to be one of the Complainant’s sponsored jerseys, thus suggesting that it is the website of the Complainant. The site appears to promote various commercial gaming services. Furthermore, the Complainant has produced evidence suggesting that actual confusion has resulted. An online newspaper has directed traffic to the disputed domain name when reporting news of the Complainant’s sponsorship activities. Additionally, a Google search produced by the Complainant suggests that similar confusion has been caused to online magazines. In the Panel’s opinion, all of these circumstances point in the direction of use in bad faith.
For its part, the Respondent has chosen to remain silent in the face of the Complainant’s submissions and evidence, and offers no explanation for its conduct as regards either the registration and/or use of the disputed domain name. In all of the above circumstances, the Panel considers that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website in terms of paragraph 4(b)(iv) of the Policy. The Panel therefore finds that the disputed domain name has been used in bad faith.
The Panel notes that in making the above finding of use in bad faith it has not relied upon the Complainant’s averments in its shareholder’s Affidavit that the Respondent allegedly reproduced the Complainant’s website content or that the Complainant allegedly “has been informed” that the Respondent communicated with the Complainant’s affiliates using the Complainant’s mark. Insufficient evidence was provided to support these particular contentions. For example, no side-by-side comparisons of the Parties’ website content or copies of the alleged communications between the Respondent and the Complainant’s affiliates were provided. The Complainant also referred to various matters relating to another domain name, namely <agent-sportsbet.io>. The evidence before the Panel was insufficient to link this particular domain name to the disputed domain name and the Panel has disregarded the Complainant’s references to <agent-sportsbet.io> in reaching its findings.
It is not necessary for the Panel to consider whether or not the disputed domain name was also registered in bad faith as the Complainant has already carried its burden with regard to paragraph 4(a)(iii) 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 <sportbet.io> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: November 1, 2021
1 The Complainant’s representative failed through oversight to provide a copy of the corresponding WhoIs record. According to the Complainant’s principal shareholder’s Affidavit, such record was intended to be provided at Exhibit 1 to the Affidavit. While the Affidavit was produced, its Exhibits were not. The Panel duly requested via the Center that the Complainant supply the missing Exhibits. In response, the Complainant’s representative indicated that said Exhibits were reproduced in the Annexes to the Complaint. In particular, it indicated that Exhibit 1 had already been supplied at Annex 10 to the Complaint. This was not correct, as Annex 10 contains the WhoIs data for the disputed domain name, not for the Complainant’s own domain name. Rather than revert to the Complainant again in order to verify the Complainant’s submission regarding the date of registration of <sportsbet.io>, the Panel consulted the WhoIs record itself.
Considering the similarities between the .IO Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) where appropriate. On the subject of the Panel engaging in limited factual research into matters of public record, such at the consulting of a WhoIs record or visiting the website associated with the disputed domain name, see section 4.8 of the WIPO Overview 3.0.
2 The Panel visited the disputed domain name by way of a limited factual research into matters of public record – see preceding footnote.