WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corvee Limited, East Pioneer Corporation B.V. v. International Domains Holdings Limited, Domains By Proxy, LLC/ Webpals
Case No. D2012-2427
1. The Parties
The Complainants are Corvee Limited, of Saint Peter Port, Guernsey, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and East Pioneer Corporation B.V. of Curacao, Overseas Territory of the Kingdom of the Netherlands, represented by Nabarro LLP, United Kingdom.
The Respondents are International Domains Holdings Limited of Victoria, Mahe, Seychelles; Domains By Proxy, LLC of Scottsdale, Arizona, Unites States of America; and Webpals of Glasgow, Lanarkshire, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <superbahisbonus.com>, <superbahisbonus.net>, <superbahiscasino.net>, <superbahiscom.com>, <superbahisgiris.net>, <superbahisler.org>, <superbahisoyunlari.com>, <superbahispoker.net>, <superbahistekazan.com>, <superbahisturkce.com> and <superbahisuye.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 12, 2012. On December 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <superbahiscasino.net> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 2012 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 December 18, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2013.
The Center appointed Torsten Bettinger as the sole panelist in this matter on January 25, 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.
On January 21, 2013, noting the impending expiry of two of the disputed domain names, the Center contacted the Registrar to confirm that the disputed domain names would remain under registrar-lock for the remainder of the pending proceeding. The Registrar replied on the same date, indicating that the disputed domain names would remain “in status quo” for the duration of the case and, pursuant to paragraph 22.214.171.124. of the ICANN Expired Domain Deletion Policy (part of the Registrar Accreditation Agreement), that the Complainant would be offered the opportunity to renew the disputed domain names on the same commercial terms as the Respondent. The Center forwarded the Registrar’s email to the Parties, and on January 22, 2013, the Complainant confirmed that it had paid the requisite renewal fees.
4. Factual Background
The Complainants in this matter are two separate enterprises who share commercial interests in an online gaming and betting business under the name Superbahis. The first complainant’s parent company sold the business concern to the second Complainant in November 2011. At the same time, ownership of the trademark SUPERBAHIS, which had been owned by the aforementioned parent company since 2006, was transferred to the first Complainant. The second Complainant was granted a license to use the SUPERBAHIS mark in connection with its business activities, as well as the <superbahis.com> and <superbahis438.com> domain names, owned by the first Complainant. Accordingly, both Complainants appear to have interests in the present action, and as they have brought the Complaint jointly, they will hereinafter be referred to as “the Complainants.”
The eleven disputed domain names were all registered between March 2010 and May 2011, and have been used in connection with a series of websites which are identical in format, and which appear to be part of a broader scheme of domain name registrations. Each disputed domain name connects to a website, all of which follow the same lay-out and display the text of the domain name as a header (e.g., “Superbahis Bonus,” etc.) and provide text relating to the Complainants’ business activities and, in some instances, the activities of the Complainants’ competitors. At the bottom of each page, one or more small advertising logos are also displayed which, when clicked, lead visitors to external websites offering search functions and PPC advertising.
5. Parties’ Contentions
The Complainants assert that each of the elements required by paragraph 4(a) of the Policy is satisfied.
With regard to the first requirement, under paragraph 4(a)(i) of the Policy, the Complainants state that the disputed domain names are confusingly similar to their SUPERBAHIS trademark, and that the addition of the dictionary terms “bonus,” “casino,” “poker,” “com,” “oyunlari” (“games” in Turkish), “giris” (“introduction” in Turkish), “tekazan” (“win” in Turkish), “turkce” (“Turkey” in Turkish), and “uye” (“users” in Turkish) do nothing to distinguish the domain name from their mark. Furthermore, the Complainants state that the addition of these terms which are logically related to the business industry of the Complainants serves heightens the risk of Internet user confusion.
With regard to the second element of the Policy, the Complainants confirm that they have not licensed or in any other way authorized the Respondents to use the SUPERBAHIS trademark, that none of the Respondents appear to be known by a name corresponding to any of the domain names, that the Respondents do not appear to be making any bona fide offering of goods or services, and that the Respondents’ use of the domain names cannot be said to constitute any form of noncommercial or fair use.
Concerning the third element of the Policy, the Complainants allege that the Respondents both registered and have used the disputed domain names in bad faith. The Complainants’ websites active at the <superbahis.com> and <superbahis438.com> domain names are available in Turkish, and similarly all of the Respondents’ websites are written in Turkish, indicating that the Respondents were aware of the Complainants at the time they selected the domain names for registration. Moreover, several of the websites active at the disputed domain names contain graphic logos utilized on the Complainants’ sites. Furthermore, the Complainants note that several of the Respondents’ websites contain references to the Complainants’ competitors, and the Complainants have expressed concern that the Respondents may be intending to link these pages to competitive offerings in the future. The Complainants conclude that the disputed domain names were either registered with the intent to sell them to the Complainants or one of their competitors for a profit, or to realize commercial gain in line with the types of activities contemplated by paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Issue: Respondent Identity
Before moving to a consideration of the three elements of the Policy, it is necessary to address the question of the proper Respondents in this matter. It is clear from the Registrar’s confirmation, as well as from the Complainants’ prior attempts to resolve this dispute via a cease-and-desist letter, that the registrant of ten of the disputed domain names is International Domains Holdings Limited. Similarly, as the privacy service Domains by Proxy was displayed in the WhoIs records as the domain name holder at the time the Complaint was filed, it is appropriate for the Complainant to have included this information in its filing. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.
With regard to the disputed domain name <superbahiscasino.net>, however, the registrar confirmed that a different underlying registrant (a company named Webpals) was behind the privacy registration. Noting that all of the disputed domain names resolve to websites utilizing a common format, including identical header styles (the text of each respective domain name is displayed on the page, in the format “Superbahis Bonus,” with the Complainant’s mark in black and the second word in red), font formatting and colors, and general content (reviews and commentary on the Complainant’s services and those of its competitors), the Complainants have alleged that the first and third Respondents (International Domains Holdings and Webpals) are acting in concert or are under common control.
The Center, acting in its capacity as a neutral provider and “gatekeeper,” accepted the Amended Complaint with the Complainants’ additional arguments following the disclosure by the Registrar. The Complaint was duly notified to all named Respondents, and each entity was provided with a period in which to reply to the Complainants’ allegations. No Response was received, either to refute the substantive points of the Complaint or to make any comment on the identity of the proper parties.
Having reviewed the evidence on record, and having visited the disputed domain names for comparative purposes, the Panel is convinced that the domain names subject to this Complaint are being operated in connection with a common scheme, and that they are subject to common control. Accordingly, the Panel finds that the Respondents were properly identified in the Amended Complaint, and will proceed accordingly. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
6.2. Substantive Elements of the Policy
A. Identical or Confusingly Similar
The test for identity or confusing similarity under the Policy is confined to a comparison of the disputed domain names and the trademark alone. Moreover, it is well-established that the addition of a dictionary word or term, particularly where such additional element is logically connected to a complainant’s business activities, will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd., WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
Finally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Panel thus finds that the disputed domain names <superbahisbonus.com>, <superbahisbonus.net>, <superbahiscasino.net>, <superbahiscom.com>, <superbahisgiris.net>, <superbahisler.org>, <superbahisoyunlari.com>, <superbahispoker.net>, <superbahistekazan.com>, <superbahisturkce.com> and <superbahisuye.com> are confusingly similar to the Complainants’ SUPERBAHIS mark and that the Complainants have established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name. It is the consensus view among UDRP panelists, however, that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainants have made a prima facie showing that the Respondents lack rights or legitimate interests in the disputed domain names. The Complainants confirm that they have not licensed or authorized the Respondents to use the SUPERBAHIS mark in any fashion and that there is no connection between the parties. There is no evidence on the present record, on the website active at the disputed domain name, or in the publicly-available WhoIs records to indicate that any of the Respondents are commonly known by the disputed domain names or a name corresponding to the disputed domain names.
Although the primary text shown on each of the websites associated with the disputed domain names appears to consist of editorial reviews and comments on the services offered by the Complainant and some of its competitors, at the bottom of each page one or more graphic ions are displayed. These icons, when clicked, redirect Internet visitors to search engine landing pages replete with PPC advertising links. Some examples (translated from Turkish) include: “stainless steel railing,” “mesotherapy-acupuncture-center,” “eu grant projects,” “Relax & Tone Order Hotline,” etc. These icons appear on each of the Respondents’ websites, and appear to provide the Respondents with click-through revenue. Accordingly, in the Panel’s view, the Respondents are clearly not making a noncommercial or fair use of the disputed domain names.
Despite having been provided notice of the pending case and copies of the pleadings, none of the Respondents have elected to reply to the Complaint, and as such they have not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain names.
Under these circumstances, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Complainants provided evidence of their trademark registrations for the SUPERBAHIS mark, which has enjoyed protection since 2006. The disputed domain names were all registered between 4 and 5 years later, and given that the Respondents utilized each and every one of these domains in connection with a network of websites which discuss the Complainants’ services in some manner, it is clear the Respondents were aware of the Complainants’ activities. All of the disputed domain names selected by the Respondents contain dictionary terms which are descriptive of the Complainants’ services, indicating that they knew of the Complainants and their SUPERBAHIS mark. Moreover, given the fact that the Respondents elected to register eleven different domain names containing the Complainants’ trademark, it is apparent to the Panel that the Respondents specifically intended to target the mark.
By fully incorporating the SUPERBAHIS mark in the disputed domain names and using the disputed domain names in connection with a PPC monetization mechanism, the Respondents were, in all likelihood, trying to divert Internet traffic intended for the Complainants’ websites to their own for commercial gain by creating a likelihood of confusion with the Complainants’ mark. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See F. Hoffmann-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
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 names <superbahisbonus.com>, <superbahisbonus.net>, <superbahiscasino.net>, <superbahiscom.com>, <superbahisgiris.net>, <superbahisler.org>, <superbahisoyunlari.com>, <superbahispoker.net>, <superbahistekazan.com>, <superbahisturkce.com> and <superbahisuye.com> be transferred to the Complainants.
Date: February 12, 2013