WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ericius Investments Limited v. Zdorov Iuri IDNP 0972406891242
Case No. DMD2020-0004
1. The Parties
The Complainant is Ericius Investments Limited, Cyprus.
The Respondent is Zdorov Iuri IDNP 0972406891242, Republic of Moldova.
2. The Domain Name and Registrar
The disputed domain name <parimatch.md> is registered with MoldData, SC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2020. On October 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2020, 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 November 5, 2020, 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 November 6, 2020.
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 November 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2020.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 11, 2020. 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. Language of proceedings
According to the Rules, paragraph 11(a) and (b), based on the circumstances of this case, the Panel finds that the language of the proceeding should be English for the following reasons:
- the Complainant requested English to be the language of the administrative proceedings arguing, inter alia, that English is a generally recognized language of international communication, and also the website at which the disputed domain name redirects is in English and has no Romanian version;
- the Center sent all the communications in both languages, Romanian and English;
- the Respondent did not object to English being the language of the proceedings;
- the website at which the disputed domain name resolves included at the date of filing the Complaint references, in English language, that “[t]here are some technical works on the site parimatch.md. This may take some time. We apologise for the inconvenience.”
- it should also be noted that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language. In the present case, although the Registration Agreement for the disputed domain name is in Romanian, the Complainant is not able to communicate in Romanian, while according to the website content the Respondent seems to understand English, as mentioned above.
5. Factual Background
The Complainant is a Cypriot company incorporated in 2014 and acting in the field of online sports betting.
The Complainant is the owner of various registered trademarks that include “PARI MATCH” in various jurisdictions throughout the world, including the following:
- The International trademark registration No. 1298964 for PARI MATCH (logo), registered as of October 26, 2015 for services in Classes 35 and 41;
- The International trademark registration No. 1534210 for PARI MATCH (logo), registered as of April 29, 2020 for services in Classes 35 and 41;
- The Ukrainian trademark registration No. 178808 for PARI MATCH, registered as of November 25, 2013 for services in Classes 35 and 41;
- The Russian Federation trademark registration No. 536717, registered as of March 11, 2015 for services in Class 41;
- The Kazakhstani trademark registration No. 55157, registered as of March 3, 2017 for services in Class 43.
The disputed domain name was registered on June 22, 2010 and does not resolve to any active website at the date of the decision. At the date of the Complaint the disputed domain name redirected to a “technical works” page.
6. Parties’ Contentions
The Complainant argues that the disputed domain name is identical or confusingly similar to its trademarks as the disputed domain name consists of the word “parimatch” which is identical to the verbal element of the Complainant’s trademarks, and the country-code Top-Level-Domain (“ccTLD”) should be disregarded.
With respect to the second element, the Complainant argues that to the best of its knowledge the Respondent has no rights or legitimate interests in respect of the disputed domain name as it does not use the disputed domain name. There is no active website available at the disputed domain name, only a “technical works” page is available, and the same page went blank after the filing of the Complaint. Further, the Complainant contends that the Respondent has not been commonly known by the disputed domain name
As regards the third element, the Complainant argues that the website available at the disputed domain name was at the date of the Complaint a “technical works page” that included the Complainant’s trademark. This may result in an impression to the Internet users that the services provided by the Complainant’s affiliates and franchisees under the Complainant’s trademark are no longer available, which may disrupt the business of the Complainant. The Complainant further argues that the blank page currently available at the disputed domain name may result in the same. In addition, the Complainant argues that it did not grant the Respondent the rights to use its trademarks on the website at which the disputed domain name redirects, therefore the said website is infringing the Complainant’s intellectual property rights and is conducting unfair competition; these facts prove, according to the Complainant, that the disputed domain name was intentionally used to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks.
With regard to registration in bad faith, the Complainant considers that the disputed domain name was registered in bad faith even if the disputed domain name was registered before the registration of the earliest trademarks currently owned by the Complainant. The Complainant shows in this regard that it purchased the two earliest trademarks mentioned above from their previous owner, a Ukrainian company, Pari Match LLC, founded in 1995 which was actively providing services until 2009 and currently conducts social and charity projects connected with sports in Ukraine and worldwide. The Complainant argues that its predecessor’s projects were connected with sport which creates a wide international community, and it is very unlikely that after 15 years of its predecessor’s endeavours its trade name remained unknown, including in Moldova where the Respondent resides. The Complainant concludes that the disputed domain name was registered knowingly and deliberately in bad faith and this is further supported by the fact that to the best of its knowledge, there is no evidence showing that the disputed domain name was used after its registration for any purpose which could show its registration in good faith.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
The Complainant has the burden of proving all three of the following elements under paragraph 4(a) of the Policy:
(i) That the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Failure to prove any one of these factors is fatal to the Complaint.
Generally speaking, bad faith registration cannot be found if the disputed domain name was registered before the Complainant acquired trademark rights. The consensus view of WIPO UDRP panelists is that “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 3.8.1)
According to the WIPO Overview 3.0, as an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application. (WIPO Overview 3.0, section 3.8.2)
The disputed domain name was registered on June 22, 2010. The Complainant was incorporated on January 17, 2014. The earliest trademarks that the Complainant acquired from its predecessor were filed on October and November 2012 respectively. The Complainant itself described the above facts and did not claim that it, or a predecessor, has ever actually used the trademark PARI MATCH before the registration of the disputed domain name.
The evidence submitted to the Panel is scarce. Nevertheless, the Panel in its discretion under its general powers pursuant to paragraph 10 of the UDRP Rules has reviewed the archived pages for the disputed domain name which are available through the Internet Archive at <archive.org>. WIPO Overview 3.0, section 4.8. The Panel found no evidence that the website at the disputed domain name was actively used between the registration date and the beginning of 2013, respectively after mid-2016. However, the Panel found that the website at the domain name appears to have been used in the period May 2013 to June 2016 to provide services similar to those of the Complainant. It is not clear though if the said website was or not related with or controlled by the Complainant or the Ukrainian company Pari Match LLC from which the Complainant acquired certain PARI MATCH trademarks. The website included the PARI MATCH trademark with logo, and also a reference that Parimatch is “No 1 in Ukraine” and “16 years on the market” (Web Archive, snapshots of May 6, 2013; July 21, 2013; January 6, 2014). Later, it appears that the website included a copyright notice to the effect that “© 1995-2014 Pari-Match N.V. - the best online betting company” and also that “Parimatch - it is: 18 yrs on the market [..]” (Web Archive, snapshots of: December 18, 2014). The copyright notice was slightly changed in 2015 and 2016, as follows:
- “© 1995-2015 Pari-Match N.V. - the best online betting company”, Web Archive, snapshots of November 7, 2015; January 11, 2016.
- “© 1994-2016 Pari-Match N.V. - the best online betting company. “parimatch.com” is owned and operated by Pari-Match N.V., Curacao”, Web Archive, snapshots of e.g. March 13, 2016; April 16, 2016; May 19, 2016; June 21, 2016.
The Panel found no evidence that the Respondent registered the disputed domain name in bad faith. As noted above, the disputed domain name was registered years before the first trademark of the Complainant’s predecessor was filed for registration. The Complainant did not argue that it or its predecessor had acquired common law trademark rights before the registration of the disputed domain name. The Complainant merely argued that its predecessor, an Ukrainian company was actively providing services until 2009 and as of today conducts “social and charity projects connected with sport in Ukraine and worldwide”. There is no evidence as to the type of services the Ukrainian company offered before 2009 or afterwards, and no evidence of the trademark used in connection to such services. The Complainant also argued that its predecessor was founded in 1995 and it is very unlikely that its tradename remained unknown including in Moldova where the Respondent resides. The Panel is not convinced, as the Complainant did not argue that PARI MATCH was used as a trademark, and it submitted no evidence as to the degree of distinctiveness of the tradename of its predecessor or of the fact that it was used as a trademark.
Having in mind the above and the evidence in the case file, there is no proof that the Respondent specifically targeted the Complainant or its trademarks (or those of its predecessor) at the date of the registration of the disputed domain name. If there was such evidence, it would be for the Complainant to provide it; that it has not provided such information means that the Panel cannot conclude that the Respondent registered the disputed domain name in bad faith with the intent of taking advantage of the Complainant’s trademark (even if nascent) or interfering with Complainant’s use of its mark. See for similar findings SHL Medical AG v. Jacobus Petrus Elisabeth Antonius Swalen and Jacques Swalen, SHL Technologies, WIPO Case No. D2020-2333; Dreamgirls, Inc. vs. Dreamgirls Entertaiment, WIPO Case No. D2006-0609; Philip Colavito v. Domain Management, Oceanside Capital Corp., WIPO Case No. D2020-2295; MD On-line, Inc. v. Yenta Marketing, Inc., WIPO Case No. D2014-1468.
Given the above, the Panel considers that the Complainant has not discharged its burden of proof, and the Complaint must fail.
The Panel is mindful of the possibility that the disputed domain name was used in bad faith at some point after registration. However, even if at a later stage it would be a problem of bad faith use, the Complainant may not find satisfaction under the Policy, since the requirements of bad faith registration and bad faith use should be cumulatively proven. Also, the Panel does not rule out the possibility that the disputed domain name was registered with the approval of the Complainant’s predecessor, and the possibility of a contractual dispute between the involved parties. These situations are outside the scope of the Policy, which does not, however, preclude the Complainant from seeking redress in a court of competent jurisdiction or through the alternative dispute resolution methods.
Because the Panel finds that Complainant did not establish the third element necessary to succeed in its Complaint (bad faith registration and use), the Panel does not need to address the other factors under the Policy.
For the foregoing reasons, the Complaint is denied.
Date: December 25, 2020