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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Navasard Limited v. Petar Ivanov

Case No. DMD2021-0001

1. The Parties

The Complainant is Navasard Limited, Cyprus, represented by SafeNames Ltd., United Kingdom.

The Respondent is Petar Ivanov, Georgia.

2. The Domain Name and Registrar

The disputed domain name <1xbet.md> is registered with Information Technology and Cyber Security Service (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2021. On November 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 16, 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 November 17, 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 November 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on December 22, 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. Language of the proceedings

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

In this case the language of the registration agreement is Romanian. The Complainant has submitted its Complaint in English language and has requested the proceedings to be held in English, arguing, inter alia, that (i) the disputed domain name has redirected to websites which consist of content entirely in the English language; (ii) the entity in control of the disputed domain name has replied to the Complainant’s cease and desist letter in English; (iii) the Respondent is part of an entity which controls the disputed domain name and the later entity has been involved in numerous past decisions under the UDRP which were in the English language; (iv) the commission of a translator would add unnecessary costs to the Complainant and cause a delay in the commencement of proceedings. The Center has sent all its messages to the Respondent in both English and Romanian and has invited the Respondent to express its views on the language of the proceeding. The Respondent has provided no answer to the Center’s email related to the language of the proceedings and has thus not objected to the Complainant’s request for the proceedings to be held in English.

In the above circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.

5. Factual Background

According to information provided by the Complainant, it provides online sport betting services under the trademark 1XBET. The services offered through the Complainant’s official website, located at <1xbet.com>, allow users to bet on more than 1,000 sporting events every day, and over 400,000 users are registered to use the online services offered by the Complainant. The Complainant’s website garners over 2 million visits globally per month and is listed as 6th overall for online traffic within the category of sport betting. The Complainant’s official website is available in 47 different languages and its trademark 1XBET is listed as one of the most popular online bookmakers in the jurisdiction of Moldova and in the top 20 international bookmakers for global daily visitors, according to comparative directory Top100Bookmakers.

The Complainant has registered several trademarks consisting of 1XBET including the European Union trademark registration No. 014227681 registered on September 21, 2015.

The disputed domain name was registered on April 29, 2020 and according to unrebutted information from the Complainant it was used to redirect users to third-party websites, which involve online betting and gambling services, which are directly competitive to the Complainant’s offering of services under the 1XBET trademark. At the date of the decision, the website at the disputed domain name does not resolve to an active website.

6. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical to its distinctive 1XBET trademark as the disputed domain name does not contain any additions or alterations. The country-code Top-Level Domain (“ccTLD”) “.md” should be disregarded under the first element as it is a standard registration requirement.

As regards the second element, the Complainant argues that the Respondent does not have any trademark rights to the term 1XBET. There is also no evidence that the Respondent retains unregistered trademark rights to the term 1XBET. Neither has the Respondent received any license from the Complainant to use domain names featuring the 1XBET trademark. The Complainant further contends that the disputed domain name is used by the Respondent to redirect Internet users to third-party websites in direct competition with the Complainant. The Complainant submits that this is neither a bona fide offering of goods or services, nor a legitimate non-commercial use of the 1XBET trademark. Also, the Respondent is not commonly known by the distinctive term 1XBET.

In what concerns the third element, the Complainant argues that its trademarks predate the creation date of the disputed domain name by five years and that 1XBET is well-known in the field of online betting services. Also given the distinctive nature of the Complainant’s trademark, it argues that the Respondent was most likely aware of the Complainant’s trademark when it registered the disputed domain name. The Complainant further shows that the Respondent asked for a “fair price” for the disputed domain name in response to a cease-and-desist letter from the Complainant and that, as held by previous panels, this is evidence of bad faith registration, as the Respondent must have acquired the disputed domain name for the purpose of selling the disputed domain name to the Complainant.

As regards the use, the Complainant contends that by automatically redirecting online users to websites displaying the same type of services as offered under the 1XBET trademark (namely sports betting), the Respondent is intentionally attempting to create a false impression of association with, or endorsement by, the Complainant for the Respondent’s own commercial gain. It is highly likely that the Respondent earns revenue via the traffic directed to third-party websites, and/or the websites where online users are redirected are making a commercial gain by having users intended for 1XBET services redirected to their own competitive offering. Moreover, the Complainant contends that the Respondent (who shares control over the disputed domain name with Tool Domains) has been involved in 15 prior domain name disputes, all of which found that the Respondent had acted in bad faith, therefore, the Respondent has engaged in a pattern of bad faith registration and use of domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

No communication has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant address disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its rights over the 1XBET trademarks. The trademark 1XBET is reproduced in its entirety in the disputed domain name, which is sufficient to establish confusing similarity. It is well accepted by UDRP panels that a ccTLD, such as “.md”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

From the unrebutted evidence put forward by the Complainant, the website to which the disputed domain name resolved redirected Internet users to third-party websites in direct competition with the Complainant. In the Panel’s view, this cannot be qualified as a bona fide offering of goods or services. The Complainant contends that it has never licensed or otherwise permitted the Respondent to use the trademark 1XBET.

Also, there is no evidence that the Respondent is commonly known by the disputed domain name in the meaning of the second circumstance of paragraph 4(c) of the Policy. Moreover, the use of the disputed domain name is not a legitimate non-commercial or fair use as contemplated by the third circumstance of paragraph 4(c) of the Policy.

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

The Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The disputed domain name was registered many years after the Complainant has obtained registration of its 1XBET trademarks. The disputed domain name consists of the Complainant’s trademark in addition to the ccTLD “.md”. According to unrebutted evidence in the case file, the website at the disputed domain name redirected to third-party websites offering services in competition with those of the Complainant. Under these circumstances and given the distinctive character of the Complainant’s trademark, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant and its trademark and that it targeted that trademark.

As regards the use of the disputed domain name, paragraph 4(b)(iv) of the Policy has direct bearing to the present case:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.”

The conduct of the Respondent falls under the above provisions. The Respondent conduct, to use a renowned trademark to attract visitors to websites of direct competitors of the Complainant, strongly suggests bad faith.

Moreover, the Respondent has exhibited a pattern of bad faith registration and use of domain names that contain well-known trademarks. The Panel conducted a reverse WhoIs search and found that the Respondent has registered 251 domain names, many of which include well-known trademarks, such as <buypandoraearrings.com>, <louisvuitton-outleti.com>, <viagrawithoutprescriptionhere.com>. While not conclusive in this matter, such pattern of cybersquatting further suggests bad faith.

As to the arguments of the Complainant that another entity that allegedly shares control over the disputed domain name with the Respondent was involved in other UDRP cases, the Panel does not consider these as necessarily leading to a finding of registration and use in bad faith within the meaning of paragraph 4(b)(ii) of the Policy in the present case. Each case under the Policy must be taken on its own merits and the Complainant has not pointed out any notable features of the present case, being common to the previous cases which it cites, that would be evidence of any pattern of cybersquatting activities incorporating the disputed domain name. In any event, it is not necessary for the Panel to decide this issue, as the Panel finds, for the reasons set out above, that the registration and use of the disputed domain name amounts to bad faith in the circumstances of the case.

In the Panel’s view, the above circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

8. 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, <1xbet.md> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: January 5, 2022

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