WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bwin Services AG v. Xia Wang, team manager
Case No. D2011-0905
1. The Parties
Complainant is bwin Services AG of Vienna, Austria, represented by Brandl & Talos Rechtsanwaelte GmbH, Austria.
Respondent is Xia Wang, team manager of Liufang, Whanchui, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <bwin3.com> is registered with Misk.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 and May 31, 2011, the Center transmitted by email to Misk.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 31, 2011, Misk.com, Inc. transmitted by email to the Center its verification response confirming that 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 (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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 11, 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.
4. Factual Background
Complainant is a company of the bwin.party group, resulting from the merger of bwin Interactive Entertainment AG and Party Gaming Plc in April 2011. The group is one of the largest listed online gaming companies. The bwin.party-group offers sport betting, poker, casino games, bingo, soft games and skill games. These services are covered by the BWIN trademark.
By the end of the third quarter of 2010, the former bwin-Group had about 20 million registered customers. The gross gaming revenues in business year 2009 amount to EUR 423 million.
Complainant and its group are sponsoring the Real Madrid soccer club, the BA-CA Tennis Trophy, and MotoGP in Brno, Jerez, Barcelona and Valencia, and have sponsored numerous other sport clubs and sport events in the past.
Before the merger with Party Gaming Plc, bwin Interactive Entertainment AG was the owner of the BWIN trademarks described below. As the universal successor in the business of bwin Interactive Entertainment AG, Complainant and its business group own several registrations for the BWIN mark, inter alia:
BWIN, international registration No. 886220, registered on February 3, 2006, and BWIN, international registration No. 896530, registered on March 16, 2006, covering computer software of class 9, paper etc of class 16, advertising of class 35, financial affairs of class 36, telecommunications of class 38, entertainment, in particular performance of sports bets and games, of class 41, and design and development of computer hardware and software of class 42.
Complainant also owns a Community Trademark registration for BWIN, registration No. 007577331, registered on September 2, 2009, covering products and services of international classes 9, 16, 35, 36, 38, 41 and 42.
The disputed domain name was registered on April 30, 2009.
On April 21, 2011, Complainant sent a cease and desist letter to Respondent. By the time the Complaint was submitted, no reply to this letter was received from Respondent.
On June 3, 2011, the website at the disputed domain name contained an only webpage. The webpage consisted of picture showing the public of a sport event, and included two fields to allow the user to enter its user name and password. On July 25, 2011 the Panel visited this website, typed at random character chains into both fields, and then clicked on the “Enter” frame. As a result, its browser was automatically redirected to “www.163.com”, a website in Chinese, of presumably commercial nature.
5. Parties’ Contentions
In its Complainant, Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s mark.
Respondent is not commonly known under the term bwin3 or any part of it. Respondent has no trademark rights in this term. Complainant has neither licensed Respondent to use its trademark nor has it authorized Respondent to register the disputed domain name. Respondent is in no way linked with the Complainant or its group. Respondent is neither a supplier, nor a customer marketing or other business partner of Complainant and its group, and is of course not entitled to use the BWIN trademark. The disputed domain name is not used for a bona fide offering of goods or services and it not making a legitimate noncommercial or fair use of the disputed domain name. In fact, Respondent does not make any use of the disputed domain name. The fact that Respondent does not provide any serious content more than two years after the registration of the disputed domain name justifies the assumption that Respondent does not intend to provide any serious content and that the sole intention of the registration was to block Complainant from using the disputed domain name. This is no legitimate interest.
The fact that Complainant’s BWIN mark is very famous, and has been very famous at the time of the registration of the disputed domain name is a strong argument that the registration and use of the disputed domain name is in bad faith. Considering the numerous marketing activities there can be no doubt that Respondent was aware of Complainant’s mark when registering the domain name. The BWIN trademark is also well known in China, the country of residence of Respondent. Complainant’s group has an own subsidiary with seat in Beijing, Bwin Beijing Management & Consulting Co. Ltd.
Since Respondent is not making any serious use of the domain name, this behavior is a case of passive holding. Respondent did not reply to Complainant’s cease and desist letter, which is further evidence of bad faith.
Respondent did not reply to Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As seen above, Complainant has trademark rights in the BWIN trademark.
The disputed domain name consists of the BWIN mark, with the addition of the number “3” and the gTLD “.com”. It is well established that the addition in a domain name of a generic term and a gTLD such as “.com” to a mark does nothing to distinguish one identifier from the other.
The Panel believes that the addition in the disputed domain name of the number 3 is inapt to distinguish the domain name from the mark. See Pfizer Inc. v. David Lavery, WIPO Case No. D2004-0581, relating to <1viagra.com> (“It is an established principle that the mere addition of a common term or number does not create a different trademark in which Respondent has rights and cannot be considered sufficient to avoid confusion between the Domain Name and Complainant’s trademark”).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
Complainant contends that Respondent is not commonly known under the term “bwin3” or any part thereof, that Respondent has no trademark rights in this term, that Complainant has neither licensed Respondent to use its trademark nor authorized Respondent to register the disputed domain name, that Respondent is in no way linked with Complainant or its group, that the disputed domain name is not used for a bona fide offering of goods or services, that Respondent is not making a legitimate noncommercial or fair use of the domain name, and that in fact, Respondent does not make any use of the domain name.
The Panel finds that considered together, these contentions and supporting evidence provided with the Complaint amount to a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once a complainant makes out a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Since Respondent is in default and has not submitted any comments or evidence in its own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As seen above, Complainant’s mark BWIN was registered years before the registration of the disputed domain name. Also, given the extensive international marketing actions of Complainant’s group of companies to promote the BWIN mark, it is likely that this mark was known in China at the time of the domain name registration. Further, at least a previous panel has found that the BWIN mark is well known. See bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167 (“it appears that Complainant's BWIN mark and associated businesses are well known in Europe”). Additionally, the only content of the website at the disputed domain name consists of an image showing what appears to be public of a sport event, i.e. the target of Complainant’s marketing activities to promote the BWIN mark. The Panel concludes that Respondent was well aware of, and aimed precisely at, Complainant’s mark BWIN when it registered the disputed domain name.
It appears that the only use of the disputed domain name by Respondent is the website at “www.bwin3.com”. See “Factual Background” above. As confirmed by the Panel in his visit to the website on July 25, 2011, Internet users searching either for Complainant, or Complainant’s group of companies, or Complainant’s mark BWIN, are being redirected to a website in Chinese at “www.163.com”, of presumably commercial nature. The Panel believes this is exactly the behavior described in Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”), which is a circumstance of bad faith registration and use of the domain name.
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 <bwin3.com> be transferred to Complainant.
Date: July 25, 2011