WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BPG SRL v. BjLiz Global

Case No. D2016-2324

1. The Parties

Complainant is BPG SRL of Rome, Italy, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).

Respondent is BjLiz Global of Port Harcourt, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <netbeting.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2016. On November 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 17, 2016, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2016.

Respondent submitted an informal communication on November 19, 2016 but did not submit a formal response. Accordingly, the Center notified Respondent’s default on December 8, 2016.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 12, 2016. 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 and its related company, Cosmo Gaming Ltd, are the operators of the NETBET brand, which is an online casino providing online betting service, especially throughout Europe. Since 2006, Complainant has held a European license from Malta enabling it to offer over 450 casino games and become a market leader for online betting services. NETBET brand is known in Europe due to its website’s availability in multiple languages, including French, Spanish, Italian and English. The NETBET brand offers a variety of games, including multiple variations of blackjack, roulette, and poker, as well as themed slot machines and arcade games. NETBET also offers an app, which features more than 30 games and enables customers to use NETBET services on the move.

Complainant owns registered trademarks for the NETBET mark in multiple jurisdictions, as follows:

Complainant has used the NETBET mark in its domain names including: <netbet.com>, <netbet.co.uk>, <netbet.ro>, <netbet.ng> and <netbet.it>.

The Domain Name was registered by Respondent on August 9, 2016. The Domain Name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant relies on its registered NETBET trademarks as prima facie evidence of rights in the NETBET mark. Complainant further relies on its recognition in the betting market, which is supported by advertising, promotional videos and partnership deals throughout Europe. Complainant states that the NETBET brand is the first hit on the Google search engine when you enter the word “Netbet”, including in Nigeria where Respondent is based, and is also the first hit on many public trademark databases. Complainant claims that this online presence demonstrates that the brand is well known to the general public as a supplier of online betting services. Complainant states it is also active on social media websites, such as Twitter. Complainant’s Twitter account is specific to sporting news and has been active since August 2013, with over 2,500 followers.

Complainant states it has also operated an advertising program featuring the NETBET brand, with material aired in Europe and accessed globally on channels such as YouTube since 2013. In addition, Complainant has taken active steps to expand its marketing strategies for the NETBET brand, and examples of this can be seen in the 2015 London Black Cabs campaign in the United Kingdom, where the NETBET brand was featured on many London taxis. The NETBET brand has also been featured on several football shirts due to sponsorship deals with football clubs, including West Bromwich Albion, AS Saint-Etienne and Steaua Bucuresti. In addition, Complainant has engaged the well-known football figure, Dan Petrescu, as the brand ambassador for NETBET operations in Romania. NETBET has also received awards, including the award for “Best Overall Sports Betting Operator at CEEGA 2016”.

Complainant owns the domain name <netbet.com>, which has been active as the location for Complainant’s company website and main business portal since 2010. The domain name is an important part of Complainant’s business operations. Complainant urges that any attempt to take advantage of the NETBET mark is likely to cause detriment to Complainant’s business.

Complainant contends that the Domain Name is confusingly similar to Complainant’s NETBET mark, as it incorporates the mark, with the addition of “ing” at the end. Complainant claims the additional letters do not detract from the overall impression of the Domain Name containing Complainant’s dominant mark, because NETBET is still fully incorporated in the Domain Name and the “ing” at the end does not materially affect the overall impression to create a new meaning in the eyes of the Internet user. In sum, Complainant requests that the Panel find that the Domain Name is confusingly similar to its well-known NETBET trademark.

(ii) Rights or legitimate interest

Complainant submits that Respondent lacks rights and legitimate interests in the Domain Name.

Complainant maintains it has a legal right to the Domain Name, based on the statutory protection in and to the NETBET trademarks. Any individual who has access to the Internet can find the NETBET marks on public databases, including, but not limited to, TM View. Complainant also relies on the goodwill that has been associated with the NETBET brand for several years, which predates registration of the Domain Name, which took place on August 9, 2016. The NETBET brand is solely associated with Complainant’s services on search engines, such as Google, and with its website located at <netbet.com> ranked as a first hit. In addition to evidence found on search engines and in trade mark databases, Complainant has put forward evidence to show that it is widely known as NETBET, as shown by its marketing materials. In light of Complainant’s widespread reputation in the online betting market, it is highly likely that Respondent had knowledge of the NETBET brand.

Complainant argues that it has a legal right to the Domain Name, and Respondent does not hold such right. Complainant submits that the Domain Name is inactive and appears to have been in this state since the initial registration, which shows that there is no evidence to support that Respondent has used or made any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Furthermore, following Complainant’s cease-and-desist letter dated August 31, 2016, Respondent’s reply did not explain why the company, BjLiz Global, chose to register the Domain Name, other than to sell it at an inflated price of USD 7 million.

Complainant submits that Respondent is not known as Netbet, or even Netbeting, and no supporting evidence or explanation has been provided by Respondent to substantiate its claim, made in an email response (dated September 13, 2016) to Complainant’s cease-and-desist letter, that Respondent has a legal right to the Domain Name. Merely registering the Domain Name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. Therefore, Respondent cannot make a claim that it is known by the Domain Name.

Complainant also claims that the Domain Name is not being used for a legitimate noncommercial or fair use purpose. The Domain Name is currently inactive and there is no evidence of use since its initial registration. Respondent stated in its email dated September 15, 2016 that the Domain Name was available for sale at an inflated value of USD 7 million, which is evidence of registration with the intention of making a commercial benefit.

In light of the above, Complainant submits that Respondent lacks rights and legitimate interests in the Domain Name.

(iii) Registered and used in bad faith

Complainant submits that Respondent has both registered and used the Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

Complainant states that it is the sole operator of the NETBET brand and the brand was established many years before registration of the Domain Name. Complainant has successfully promoted the brand online and has been the first hit on many popular search engines for many years, including in Nigeria. Complainant cites the UDRP case All Saints Retail Limited v. Wang Ya Ya, WIPO Case No. D2016-1809, where the panel stated:

“In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the ALL SAINTS trade mark and its extensive use by the Complainant. As such, a presumption arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name”.

Complainant contends this decision illustrates that in “the age of the Internet” Respondent would have been exposed to the existence of Complainant’s NETBET mark at the time the Domain Name was registered.

In addition, Complainant claims that the spelling of the Domain Name is also evidence of bad faith registration as it is made up of Complainant’s NETBET trademark, with the addition of the letters “ing” at the end. Complainant asserts that by adding “ing”, Respondent has attempted to pass the Domain Name off as “Netbetting”, featuring the generic word “betting”, but has purposefully omitted the additional “t”, so that it is spelled “beting”. This indicates that Respondent has intentionally chosen to fixate on the brand value of Complainant’s NETBET mark.

Complainant further contends that Respondent has engaged in bad faith registration and use under paragraph 4(b)(i): “circumstances indicating that you have acquired the domain name primarily for the purposes of selling, renting, transferring the domain name to the Complainant for valuable consideration in excess of the out of pocket costs related to the domain name.” As illustrated in Respondent’s response to Complainant’s cease-and-desist letter dated September 15, 2016, Respondent offered to sell the Domain Name to Complainant for the inflated sum of USD 7 million, which is substantially in excess of out of pockets expenses and illustrates that Respondent’s primary purpose for registering the Domain Name was to extort a benefit from the trademark owner, Complainant. Based on these submissions, Complainant requests the Panel to make a finding of bad faith registration and use under paragraph 4(a)(iii).

B. Respondent

Respondent did not submit a formal Response to Complainant’s contentions. Respondent did send an email to the Center, dated November 19, 2016, in which Respondent stated that the Domain Name “is legally registered and owned by BjLiz Global and we have total right on this property”. Respondent further stated that “If the owner of NETBET.com is interested in our own domain name NETBETING.com, they should be polite enough to approach us for a deal, if the price they are willing to offer to us is ok by us, then we will transfer the ownership of this property to them.” (Errors in original).

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has submitted evidence to show that it owns multiple trademark registrations dating from as early as 2010 for its NETBET trademarks. Complainant has also provided evidence that its NETBET marks have been widely promoted by Complainant in the online gaming and betting industries. The Domain Name incorporates Complainant’s NETBET mark in its entirety, adding the suffix “ing.” The Panel considers that this suffix does not sufficiently distinguish the Domain Name from Complainant’s mark. The term “netbeting” as incorporated in the Domain Name appears to be a play on Complainant’s mark with a misspelling of the word “betting.” Further, the overall impression created by the Domain Name <netbeting.com> raises questions about whether there is an association between the Domain Name and Complainant and its NETBET marks. See Red Bull GmbH v. Paul Battista, WIPO Case No. D2010-0353 (quoting SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648) (“[c]onfusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“[t]he threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion.”).

Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s NETBET marks. Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent has the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has never authorized or licensed Respondent to incorporate Complainant’s NETBET trademark in the Domain Name or to use it in any capacity. Complainant is not affiliated with, and has never endorsed or sponsored, Respondent. Respondent has not been commonly known as “Netbet” or “Netbeting”. Further, the evidence presented by Complainant shows that Respondent’s use of the Domain Name has not given rise to any right or legitimate interest in the Domain Name on the part of Respondent. The Domain Name appears to have been held inactive since the time of registration. The Respondent only submitted a short email, where it claims rights to the Domain Name without any explanation. The record in this case contains no evidence to support any plausible reason for why Respondent registered the Domain Name in August 2016, other than with Complainant’s NETBET mark and online betting services in mind. Further, Respondent offered the Domain Name for sale to Complainant for USD 7 million, an exorbitant price. Thus, Respondent’s use of the Domain Name since its registration does not give rise to any rights or legitimate interests in it.

Respondent has not responded to the Complaint and therefore has offered nothing to establish any rights or legitimate interests in the Domain Name. Accordingly, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name, and Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In view of the discussion above, the Panel also determines, on the balance of the probabilities, that Respondent has opportunistically registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy provides four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. However, the circumstances set out in paragraph 4(b) of the Policy are illustrative and non-exclusive. In this case, particularly where Complainant’s NETBET mark is strong in its industry, the Panel finds that Respondent registered and is using the Domain Name in bad faith in order to exploit Complainant’s reputation in its NETBET mark. The fact that the Domain Name is currently not in use, does not prevent a finding of bad faith.

As noted above, Respondent registered the Domain Name, which is confusingly similar to Complainant’s NETBET mark and makes a misspelling of the word “betting” so as to pass off on Complainant’s mark, more than 10 years after Complainant began using its NETBET mark in relation to gaming and online betting services. Under paragraph 2(b) of the Policy a domain name registrant must represent and warrant that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”. In this case, Respondent, perhaps without having an adequate understanding of trademark law, has failed to satisfy this representation and warranty. Further, when Complainant’s legal counsel wrote to Respondent, Respondent did not offer any explanation for why it registered the Domain Name and instead offered to sell the Domain Name to Complainant for USD 7 million. Respondent has filed no response in this case. In the Panel’s view, Respondent’s Domain Name creates a likelihood of confusion, is potentially disruptive of Complainant’s business, and has been offered for sale at a price well in excess of out-of-pocket costs.

Accordingly, the Panel finds, in view of all of the above circumstances and the allegations and evidence submitted in this case, that the Domain Name was registered and is being used in bad faith, satisfying the third element of the Policy.

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, <netbeting.com>, be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: December 21, 2016