WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2018-0050
The Petitioner is MT Secure Trade Limited of Malta, represented by Brimondo AB, Sweden.
2. Domain Holder
The Domain Holder is P. E. of Sweden.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <betspin.se>.
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on August 31, 2018. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder's default on October 1, 2018.
The Center appointed Henry Olsson as the sole Arbitrator in this matter on October 17, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
The Petitioner is a company registered in Malta. It is an affiliated company of Gaming Innovation Group P.L.C. which has offices in Malta and in other places in Europe. It has more than 700 employees and is a leading supplier in the gaming industry offering a variety of games, etc. under its online brands, among them “Betspin”. The Petitioner is the holder of two European Union trademarks, namely BETSPIN and BETSPIN figurative, with registration date April 1, 2015. These two marks have been used on the website “www.betspin.com” and other Top-Level Domains (TLDs) and country code Top-Level Domains (ccTLDs) as from 2015.
The domain name was registered on February 8, 2018, and does not resolve to an active website.
The Petitioner claims that the domain name shall be transferred to the Petitioner.
The Domain Holder has not responded to the claim.
6. Parties’ Contentions
The Petitioner submits that the domain name is identical or at least similar to the two registered European Union trademarks; the domain name includes the trademarks with the addition of “.se” which addition lacks distinctiveness and is not sufficient to give the domain name an individual meaning.
The Petitioner notes that the domain name at issue was registered on February 8, 2018, which is around three years after the registration of the trademarks. According to the Petitioner the Domain Holder knew or should have known the BETSPIN brand which is distinctive and well-known in the online gaming industry. The Petitioner submits that BETSPIN is so closely linked and associated with the Petitioner that the Domain Holder’s use of the mark strongly implies bad faith; at the time of the registration of the domain name the Domain Holder knew, or at least should have known, the existence of the Petitioner’s trademarks.
The Petitioner states that the domain name at issue is linked to an inactive site; the Petitioner submits in this respect that passively holding a domain name may constitute a factor in finding bad faith use.
The Petitioner submits that at least until May 14, 2018, the Domain Holder offered the domain name for sale to the general public at a price of not less than SEK 5,000. The Petitioner notes that the notion “general public” includes also the Petitioner and competitors to the Petitioner.
Furthermore, the Petitioner notes that as of January 1, 2019, the Petitioner will be licensed to channel all Swedish traffic for gaming services through a “.se” domain name. Consequently, the Domain Holder is preventing the Petitioner from using its trademark in a domain name together under the ccTLD “.se”
The Petitioner sent the Domain Holder a cease and desist letter, dated May 28, 2018, to which the Domain Holder never replied.
The Domain Holder has, according to the Petitioner, no rights or justified interest in the domain name at issue. The Petitioner has no relationship with the Domain Holder. There is no evidence that the Domain Holder owns any trademark that reflects the domain name or even the term “betspin”. There is no evidence that the Domain Holder has used the domain name in connection with any bona fide offering of goods or services on the webpage connected to the domain name, which is inactive. Furthermore, the Domain Holder is not commonly known by “betspin.se” or any other use of the term “betspin”.
B. Domain Holder
As mentioned above, the Domain Holder has not submitted any response to the Petitioner’s claim.
7. Discussion and Findings
According to Paragraph 7.2 of the se. Policy a domain name may be deregistered or transferred to the Petitioner if the following three conditions are fulfilled:
1. The Domain Name is identical or similar to a name, including a trade symbol or to certain other intellectual property protected subject matter, which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights,
2. The Domain Name has been registered or used in bad faith, and
3. The Domain Holder has no rights or justified interest in the Domain Name.
A. Identity or confusing similarity
The Petitioner is the holder of two European Union trademarks, the word mark BETSPIN and the figurative mark containing the same word. The registration of these trademarks has legal effect in Sweden. The domain name includes the trademark with the addition of the ccTLD “.se”.
These circumstances constitute a similarity between the protected trademarks and the domain name in the sense of Paragraph 7.2 of the .se Policy.
B. Registration or use in bad faith
As mentioned above, the Domain Holder has not submitted any response to the Petitioner’s claim. The Arbitrator will therefore build his conclusions on the contentions of the Petitioner supported by the written evidence submitted.
In this context the Arbitrator notes that the domain name at issue was registered on February 8, 2018, which is around three years after the Petitioner’s trademarks were registered. The Petitioner has submitted that it had been using the trademarks – which are particularly distinctive ones - and the website “www.betspin.com” as of 2015. The domain name is used for a site which is inactive, and the Domain Holder has been offering the domain name for sale to the public at least as late as on May 14, 2018. The Petitioner sent a cease and desist letter to which the Domain Holder, according to the Petitioner, never replied. Furthermore, the Petitioner has submitted that it will, as from January 1, 2019, be licensed to channel all Swedish traffic for gaming services through a “.se” domain name; the actions of the Domain Holder prevents the Petitioner from using its trademark in a domain name under the ccTLD “.se”.
An assessment of these circumstances leads to the conclusion that the domain name has been registered and used in bad faith in the sense of Paragraph 7.2 of the .se Policy.
C. Rights or justified interest
The circumstances submitted by the Petitioner which have not been contradicted by the Domain Holder lead to the conclusion that the Domain Holder has no rights or justified interest in the domain name in the sense of the .se Policy.
The Arbitrator directs that the domain name <betspin.se> shall be transferred to the Petitioner MT Secure Trade Limited.
The domain name is similar to the two trademarks containing the word “betspin” to which the Petitioner has rights in Sweden. In respect of the bad faith, the Domain Holder has submitted a number of circumstances, for instance that the Petitioner used the trademarks and the website “www.betspin.com” since 2015, that the registration of the disputed domain name took place around three years after the registration of the trademarks, that the Domain Holder has linked the domain name to an inactive site and that he offered it for sale to the public. The Domain Holder has not responded to the Petitioner’s contentions. The circumstances brought forward by the Petitioner, which are supported by written evidence, lead to the conclusion that the Domain Holder has both registered the domain name and used it in bad faith. Furthermore, the Domain Holder has no rights or justified interest in the domain name. In consequence thereof, the Petitioner’s claim for transfer of the domain name to the Petitioner was granted.
Date: October 29, 2018