WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Folkspel Partner i Sverige AB v. marcus2479-00001/Marcus Edvardsen
Case No. DNU2013-0006
1. The Parties
The Complainant is Folkspel Partner i Sverige AB of Mölndal, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is marcus2479-00001/Marcus Edvardsen of Onchan, Isle of Man, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <bingolotto.nu> (the “Disputed Domain Name”) is registered with Loopia AB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2013. On November 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the registration authority of .NU (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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2013. The Response was filed with the Center on December 5, 2013.
The Center appointed John Swinson as the sole panelist in this matter on December 16, 2013. 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 Folkspel Partner i Sverige AB of Mölndal, a Swedish limited liability company. The Complainant operates in the lottery business in Sweden.
The Complainant owns the following trademarks:
- Swedish National Trademark No. 0330631 for BINGO LOTTO logo mark, filing date April 16, 1992;
- Swedish National Trademark No. 0340043 for BINGOLOTTO word mark, filing date October 25, 1996;
- Swedish National Trademark No. 0366393 for BINGO LOTTO logo mark, filing date September 9, 2003;
- Swedish National Trademark No. 0505243 for BINGO LOTTO logo mark, filing date November 17, 2011; and
- Swedish National Trademark No. 0515004 for BINGOLOTTO word mark, filing date June 19, 2013, (collectively, the “Trade Mark”).
The Respondent is marcus2479-00001/Marcus Edvardsen, an individual of the United Kingdom of Great Britain and Northern Ireland. The Respondent operates forums and discussion groups relating to strategies for playing bingo and lotto from the website at the Disputed Domain Name.
The Respondent registered the Disputed Domain Name with the Registrar on May 9, 2011.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is identical to the Trade Mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Complainant has not given the Respondent any permission or license to use the Trade Mark;
- the website at the Disputed Domain Name is used to host sponsored links, some of which are to the same type of business that the Complainant conducts. This suggests that the Respondent registered the Disputed Domain Name to profit from misleading Internet consumers who search for the Trade Mark; and
- there is no evidence that the Respondent has been commonly known by the Disputed Domain Name.
Registered and Used in Bad Faith
The Respondent has registered and is using the Disputed Domain Name in bad faith due to the following:
- the Respondent did not reply to the Complainant’s cease and desist letter;
- the Trade Mark was registered well before the Disputed Domain Name was registered, the Respondent would have been aware of the Trade Mark when registering the Disputed Domain Name; and
- the website at the Disputed Domain Name contains links which are similar to the Complainant’s business, evidencing that it was registered to commercially profit from the likelihood of confusion with the Trade Mark.
The Respondent makes the following submissions.
Reverse Domain Name Hijacking
The Complainant is attempting to take over all high value domains containing the words bingo and lotto for economic gain. The Disputed Domain Name contains two generic words and there are thousands of trade mark registrations which contain these words. The Complainant does not have the right to stop others from using these words.
Identical or Confusingly Similar
The Respondent does not dispute that the Disputed Domain Name is identical to the Trade Mark. It submits that Disputed Domain Name is registered under “.nu” which is a ccTLD assigned to the island state of “Niue” in the South Pacific Ocean. The .nu domain is commonly used as a short form for "new" and in some countries for "now" (eg. in Dutch). The Complainant and the Trade Mark are not represented in any of the most commonly known TLDs (eg. .com, .net, .org).
Rights or Legitimate Interests
The Respondent has used the Disputed Domain Name to run a website since the time of registration. The website now has around 3,000 users. The website allows users to access forums and discussion groups (by invitation only) which relate to strategies for playing bingo and lotto, both online and offline, all over the world.
Registered and Used in Bad Faith
The Complainant has not provided evidence of bad faith. The Respondent has no interest in bad faith commercial gain. The fact that the Respondent did not respond to the Complainant’s offer to purchase the Disputed Domain Name shows that the Respondent is not interested making money by selling the website to the Complainant.
The Disputed Domain Name was registered on a first come, first served basis 2.5 years ago and the Complainant has not shown any interest in it until now. During this time, the Respondent has built up a user base.
The Respondent is not a competitor to the Complainant and the generic domain name registration could in no way have disrupted the business of the Complainant. There have been no attempts to make the website look confusingly similar to the Complainant's website, business or logo.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 and is being used in bad faith.
The Complainant bears the onus of proving these elements.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to one of the Complainant’s trade marks.
The Disputed Domain Name is identical to the Trade Mark. The addition of generic top-level domains (the “.nu” suffix) can be disregarded when comparing the similarities between a domain name and a trade mark (see e.g. Banco Bradesco S/A v. Compevo, WIPO Case No. D2013-1059).
Accordingly, the Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- there is no evidence that the Respondent is commonly known by the Disputed Domain Name; and
- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark.
The Respondent seeks to overcome the Complainant’s prima facie case by showing that it is using the Disputed Domain Name in connection with a bona fide offering of services, or that it is making a legitimate non-commercial 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.
The Respondent submits that it runs a website from the Disputed Domain Name which allows Internet users, by invitation, to access forums and discussion groups regarding bingo and lotto strategy. The Respondent provided evidence of its user login page and statistics regarding number of members (about 3,000), logins, threads (about 25,000) and posts. However, no evidence was provided that showed any of the posts or threads themselves, and because the forum is by invitation only, the Panelist could not check the content of the forum himself. Thus, there is no evidence that the discussion forum is a noncommercial forum that discusses “bingo” or “lotto”, or is otherwise making a fair use of the term “bingolotto”.
The landing page at the Disputed Domain Name has changed since the filing of this dispute. On November 15, 2013, the landing page was in Swedish, and contained what appears to be two sponsored links (or pay-per-click advertisements) to dot se websites, as well as a number of links to other websites. These links include links titled “Antivirusprogram” and “How to build a poker table”. It is noted that, according to WhoIs records, the Respondent is the owner of domain names <antivirus-program.info>, <antivirusprotection.org> and <howtobuildapokertable.net>.
Currently, the landing page at the Disputed Domain Name is in English, and contains no such advertisements or links. It allows invited users to log on. The landing page states:
“Welcome to the Bingo and Lotto society: BingoLotto.nu
BingoLotto.nu is the base for the international soceity where we, the members, are discussing Bingo and Lotto related topics in every form.”
The Respondent provided no evidence regarding this international society, and did not mention this Society in his Response. The Respondent provided no explanation why the language of the landing page changed to English.
The Respondent states, in his Response:
“The page shown in annex 4 provided by the Complainant is a default place holder page, but it does not contain sponsored links; especially not to websites in the same business as the Complainant. The Respondent has since the screenshot was taken, changed the main page, to further clarify that there are no sponsored links.”
The Panel has reviewed the annex 4 screenshot, and it appears to contain two sponsored links, and well as links to other websites.
The Panel is of the view that the Respondent has not provided sufficient evidence to demonstrate that he is using the Disputed Domain Name for a legitimate purpose. His offering of services under the Disputed Domain Name is not, on the evidence before the Panel, bona fide, in that it trades off the reputation of the Complainant. Because of the sponsored links, the website is not a non-commercial website. In any event, the Response does not assert that the Respondent’s website is non-commercial.
In light of the above, the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
In view of the links on the landing page at the Disputed Domain Name, discussed above, the Panelist has conducted WhoIs and other Internet searches, and discovered that:
- The Respondent owns a number of domain names, including <manxhotels.com>,
- <apartmentrentalagency.net>, <pagerankme.com>, <howtobuildapokertable.net>, <onlinexxxx.com> (that links to a Forex currency website), <antivirus-program.info>, and <antivirusprotection.org>, amongst others.
- These websites are used to market a variety of products, include virus protection software, currency exchange services and poker related products and services.
- In some WhoIs records, the Respondent’s address is listed as Stockholm, Sweden, and in others, in the Isle of Man.
- The Respondent appears to work for PokerStars.
From reviewing the Respondent’s websites, the Panel concludes that the Respondent was likely aware of the Complainant and the Complainant’s Trade Mark when he registered the Disputed Domain Name. The Panel also concludes that the Respondent is a sophisticated person when it comes to Internet marketing, advertising programs and affiliate programs.
Based on the original landing page for the website at the Disputed Domain Name and on the evidence provided in the Complaint, one could easily conclude that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site 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 Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
For these reasons, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith.
D. Reverse Domain Name Hijacking (“RDNH”)
The Respondent requested that the Panel make a declaration of RDNH. The Rules define RDNH as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The onus of proving this is generally on the Respondent.
This is not an appropriate case for a declaration of RDNH. The Complainant was ultimately successful.
For the foregoing reasons, the domain name <bingolotto.nu> be transferred to the Complainant.
Date: January 6, 2014