WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bwin Services AG v. Domains by Proxy, Inc./ Ukraine-Host

Case No. D2011-0902

1. The Parties

The Complainant is bwin Services AG, Vienna, Austria, represented by Brandl & Talos Rechtsanwaelte GmbH, Austria.

The Respondent is Domains by Proxy, Inc. Scottsdale, Arizona, United States of America and Ukraine-Host, Kiev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <4bwin.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2011. On May 26, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 27, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification 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 May 31, 2011 providing the registrant and contact information disclosed by GoDaddy.com, Inc, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 1, 2011.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2011.

The Center appointed Ladislav Jakl as the sole panelist in this matter on July 19, 2011. 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.

As the Registrar is located in the United States of America and the registration agreement provided by the registrar on its website under ”godaddy.com/agreements/-showdoc.aspx?pageid=REG_SA” is drafted in English, the Complainant assumes that the language of the registration agreement is English. As stated in paragraph 11(a) of the Rules the Complaint therefore was submitted in English. The Respondent did not submit in this question any response. The registrar indicated that the specific language of the registration agreement as used by the Respondent for the disputed domain name is English. Pursuant the Rules, paragraph 11, in absence of an agreement between the parties, the language of the administrative proceeding shall be the language of the registration agreement. Therefore the Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the administrative proceedings is English.

4. Factual Background

The Complainant is a company of the bwin.party group of companies. The bwin.party group was formed through the merger of bwin Interactive Entertainment AG and PartyGaming Plc in April 2011 to create the world’s largest listed online gaming company. The group parent company bwin.party digital entertainment plc is listed on the London Stock Exchange under the ticker BPTY and is a member of the FTSE250 Index. The Complainant is a wholly owned subsidiary of bwin.party digital entertainment plc and provides various services to other group companies such as marketing, software development, customer support, regulatory services and business development services.

Before the merger, bwin Interactive Entertainment AG, who acted as the complainant in many UDRP cases before and was the owner of the BWIN trademarks described below, demerged its business to the Complainant. Therefore the Complainant is the universal successor in the business of bwin Interactive Entertainmant AG. This leads to all the trademark rights of former bwin Interactive Entertainment AG passing through to the Complainant by universal succession (although in various trademark registers there is still bwin Interactive Entertainment AG mentioned as owner).

The bwin.party-group offers sports betting, poker, casino games, bingo, soft games and skill games, an online market, and audio- and video streaming on top sports events to its customers. Important parts of these services are provided under the Complainant's trademark BWIN via Internet and many of them are also available via other digital distribution channels, such as mobile phones. One of the most important websites of the bwin.party group is operated under the domain name <bwin.com> on the basis of licenses issued in Gibraltar to group companies.

The Complainant has trademark and name rights for BWIN. BWIN was registered as an international trademark on February 3, 2006 and the logo BWIN was registered as an international trademark on March 16, 2006 (IR No. 886220 and IR No. 896530). Those international trademarks grant protection for, amongst others, Australia, China, Japan, Norway, Turkey, the United States and lots of countries of the European Union. Moreover, the Complainant is the owner of the community trademarks number 007577281 (BWIN) and 007577331 (logo BWIN), which grant protection for each jurisdiction of the European Union. Additionally, both, BWIN and its logo are registered in various countries, amongst others, in Argentina, Austria, Andorra, Brazil, Chile, Columbia, India, Japan, Macedonia, Mexico, Peru, United States and the Republic of South Africa as national trademarks.

The BWIN trademarks are registered for class 9: Computer software; class 16: Paper, cardboard and goods made from these materials not included in other classes, printed matter; class 35: Advertising; class 36: Financial affairs, monetary affairs; class 38: Telecommunications, in particular news transmission via Internet in context with sport bets and games, provision of communications engineering access to electronic data bases; class 41: Entertainment, in particular performance of sport bets and games, performance of sport events and class 42: Design and development of computer hardware and software.

Due to the comprehensive marketing activities of the Complainant and its affiliated companies the trademark BWIN is very famous (already acknowledged by former panels, see per example bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167, bwin International Entertainment AG v. wp, WIPO Case No. DES2009-0018; and bwin Interactive Entertainment AG v. qushaobing WIPO Case No. D2011-0090).

Furthermore, the Complainant respectively its affiliated companies own numerous domain names containing the term "bwin".

The Respondent is the registrant of the disputed domain name <4bwin.com>, which was registered on February 2, 2010. This domain name expires on February 2, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark BWIN, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

The Complainant introduces that the the Respondent has fully integrated the Complainant's trademark BWIN in its domain name, which is the distinctive part of the domain name and that the number "4", which is added directly before "bwin", does not provide additional specification or sufficient distinction from the Complainant's trademark BWIN . As mentioned in countless former panel decisions, the addition of a descriptive term does not eradicate the danger of confusion (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694; Deutsche Telekom AG v. Kaththea Sias, WIPO Case No. D2008-1665; Société Nationale des Chemins de Fer Francais v. Sinclare Vabalon, BHG, WIPO Case No. D2008-1613; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194). In determining whether a domain name and a trademark are identical or confusingly similar, the gTLD suffix shall be disregarded (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

For all the reasons stated above there is no doubt that the disputed domain name is confusingly similar to the Complainant's trademark.

As to legitimate interests in respect of the disputed domain name, the Complainant essentially contends that the Respondent is not commonly known under the term "4bwin" or any part of it. A search in the databases for community and international trademarks and a search in the TMView of OANMI did not show any registered trademarks consisting of or containing BWIN. This indicates that the Respondent has no trademark rights BWIN. The Respondent has no name rights to the term "4bwin" either, and therefore the Respondent has no private interest in holding the domain name <4bwin.com>. The Complainant has neither licensed the Respondent to use its trademark nor has it authorized the Respondent to register the domain name. The Respondent is no supplier, customer, marketing or business partner of and in no way linked to the Complainant.

Moreover the Complainant argues that the disputed domain name is not used for a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial or fair use of the domain name. Namely, the Respondent appears to provide an online gaming offer under the disputed domain name, therefore it abuses the trademark of the Complainant to market its competing services. In addition, the Respondent uses the trademark BETANDWIN (which belongs also to the Complainant) on its website and by imitating the design and colours of the Complainant's website tries to create the impression that it is the Complainant or a company of its group, what is of course not true. This enforces the assumption that the Respondent is very well aware of the Complainant's trademarks. There is a consensus amongst the panels that such behaviour cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use (The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong, WIPO Case No. D2005-0819; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162).

For all the reasons shown above, the Complainant made out at least a prima facie case that the Respondent lacks rights or legitimate interests. According to the consensus view of the UDRP panels, once such prima facie case is made, the Respondent carries the burden of demonstrating rights to or legitimate interests in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Kraft Foods Global Brands, LLC v. Jet Stream Enterprises Limited, Jet Stream, WIPO Case No. D2009-0547).

Furthermore, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name <4bwin.com> on February 2, 2010. Numerous marketing activities in the years 2007, 2008 and 2009 led to the trademark BWIN being very famous at the time the Respondent registered the disputed domain name. Solely the fact that the Complainant's trademark is very famous (and has been very famous already at the date of registration) is a strong argument for the Respondent's registration and use of the domain in bad faith (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). When considering the numerous marketing activities of Complainant there can be no serious doubt that the Respondent was aware of the Complainant's trademark when registering the disputed domain name.

Moreover the Complainant has a substantial presence in the world-wide-web, a fact that can easily be assessed by entering "bwin" or "4bwin" in a search engine. It is the duty of a domain owner to assess, if it is violating trademark rights with the registration of the desired domain name before the registration (Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384).

In accordance with paragraph 4(b)(iv) of the Policy it shall be considered evidence of the registration and use of the domain in bad faith if it is indicated that the Respondent acquired the disputed domain primarily for the purpose of intentionally attempting to attract, for commercial gain, Internet users to the Respondents website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.

The Complainant further argues that the Respondent is offering online gaming on its website. Thus, it provides services competing with the services of the Complainant. For these competing services, the Respondent uses a domain name confusingly similar with the Complainant's trademark and furthermore tries to copy the Complainant's website by using an almost identical layout and colour design. Therefore it is clear that paragraph 4(b)(iv) of the Policy is fulfilled here.

On April 21, 2011 the Complainant's representative sent a cease and desist letter to the email address indicated in the WhoIs database and requested the transfer of the disputed domain name by April 28, 2011. The Respondent did not reply, which is further evidence for its bad faith (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).

In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests the Panel, appointed in these administrative proceedings, to issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(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 and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Panel finds that the the Respondent has fully integrated the Complainant's trademark BWIN in its domain name, which is the distinctive part of the disputed domain name. The number "4", which is added directly before “bwin”, does not provide additional specification or sufficient distinction from the Complainant's trademark BWIN. The addition of the “.com” suffix does not serve to distinguish the domain name from the trademark BWIN. It is a well-established principle that nondistinctive addition of a descriptive term to a trademark as well as the inclusion of the gTLD suffix “.com” do not avoid confusing similarity of domain names and trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310; DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694; Deutsche Telekom AG v. Kaththea Sias, WIPO Case No. D2008-1665; Société Nationale des Chemins de Fer Francais v. Sinclare Vabalon, BHG, WIPO Case No. D2008-1613; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194; DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademark. Moreover, it is likely that this domain name could mislead Internet users in thinking this is in some way associated with the Complainant.

For all the above-cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant’s trademarks in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

The Panel accepts the arguments submitted by the Complainant unchallenged by the Respondent, that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. Therefore, the Respondent would not legitimately choose this combination or any variation thereof, unless seeking to create an association to the Complainant. Apparently, the Respondent has registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant, trying to exploit the fame and reputation of the Complainant’s trademarks.

Moreover the Panel finds that the disputed domain name in question is not used for a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Namely, the Respondent appears to provide an online gaming offer under the domain name, therefore it abuses the trademark of the Complainant to market its competing services. There is a consensus that such behaviour cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use (The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong, WIPO Case No. D2005-0819; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162).

For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed 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 source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The disputed domain name <4bwin.com> was registered on February 2, 2010. Numerous marketing activities in the years 2007, 2008 and 2009 led to the Complainant's trademark BWIN being very famous at the time the disputed domain name was registered. Solely the fact that the Complainant's trademark is famous (and has been famous already at the date of registration) is a strong argument for the Respondent's registration and use of the domain name in bad faith (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). When considering the numerous marketing activities of Complainant there can be no serious doubt that the Respondent was aware of the Complainant's trademark when registering the domain name. Moreover the Complainant argues that it has a substantial presence on the Internet, a fact that can easily be assessed by entering "bwin" or "4bwin" in a search engine and that it is the duty of a domain name owner to assess, if he is violating trademark rights with the registration of the desired domain name before the registration (Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384).

The Panel finds that, in accordance with paragraph 4(b)(iv) of the Policy, it shall be considered evidence of the registration and use of the domain in bad faith if it is indicated that the Respondent acquired the disputed domain name primarily for the purpose of intentionally attempting to attract, for commercial gain, Internet users to the Respondents website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. Due to the fact that the disputed domain name directs Internet users to a web page relating to the Complainant’s business and history, the Respondent cannot have ignored the Complainant’s business reputation at the time of registration of the domain name. The disputed domain name used by the Respondent suggests that it is aware of the Complainant and that the Respondent’s use of the disputed domain name will cause consumers to believe that the domain name is affiliated with or owned by the Complainant. The Panel finds that by using the Complainant’s trademark to draw Internet users to a site offering what appears to be competing or at least related goods, the Respondent is attempting to divert customers from the Complainant and thus to disrupt the Complainant’s business. Such conduct has been found to signal bad faith in other cases (Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658).

On April 21, 2011 the Complainant's legal counsel sent a cease and desist letter to the email address indicated in the WhoIs data and requested the transfer of the disputed domain name until April 28, 2011. The Respondent did not reply until the date of today, which the Panel finds is further evidence for its bad faith (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).

For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith.

Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 domain name <4bwin.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Dated: August 2, 2011