WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Newcote International Limited v. Ke Lei

Case No. D2017-0527

1. The Parties

The Complainant is Newcote International Limited of Nassau, Bahamas, represented by SILKA Law AB, Sweden.

The Respondent is Ke Lei of Wuhan, Hubei, China.

2. The Domain Names and Registrar

The disputed domain names <betvictor666.com>, <betvictor888.com> and <betvictor999.com> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was originally filed involving 19 domain names with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2017. On March 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with 19 domain names. On March 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain names <betvictor666.com>, <betvictor888.com> and <betvictor999.com> and providing the contact details, and informing that the remaining domain names were under redemption period.

On April 3, 2017, the Complainant informed the Center that due to complexity to renew the 16 domain names that were in redemption period, the Complainant decided to proceed with the disputed domain names <betvictor666.com>, <betvictor888.com> and <betvictor999.com>. In response to a notification by the Center regarding the Registrar information, the Complainant filed an amendment to the Complaint on April 3, 2017.

On April 3, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amendment to 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 the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on April 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2017.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 5, 2017. 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

The Complainant, Newcote International Limited of Nassau, Bahamas, is the parent company of BetVictor and the holder of several BETVICTOR trademarks and the domain name <betvictor.com>.

The Complainant is in the gambling and betting industry. The BetVictor brand was founded in 1946 and is focused on sports betting, online casino and poker. The Complainant has customers in more than 160 different countries, including in China.

The Complainant is the owner of multiple trademark registrations for the BETVICTOR marks around the world, including in China where the Respondent is located. For example: Chinese trademark registration number 9133980, with the registration date of February 28, 2012; European Union Trademark registration number 009608332, with the registration date of April 28, 2011; Israeli Trademark registration number 234414, with the registration date of April 4, 2012, and more.

The Complainant owns numerous domain names containing its trademark, for example <betvictor.com>, which is used as the official website of the BetVictor brand.

The disputed domain name <betvictor666.com> was registered on February 4, 2015.

The disputed domain name <betvictor888.com> was registered on February 4, 2015.

The disputed domain name <betvictor999.com> was registered on February 4, 2015.

Currently, the disputed domain names are inactive.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names consist of the trademark BETVICTOR in its entirety coupled with the addition of numbers and the generic Top-Level Domain (“gTLD”) “.com” that does not add any distinctiveness to the dispute domain names.

The Complainant further argues that it has previously successfully challenged several BetVictor domain names through the UDRP process.

The Complainant further argues that the Respondent has not rights or legitimate interests in respect of the disputed domain names.

The Complainant further argues that the Respondent is not commonly known by neither one of the disputed domain names.

The Complainant further argues that there is no evidence that the Respondent has a history of using, or preparing to use the disputed domain names in connection with a bona fide offering of goods and services.

The Complainant further argues that it did not license or authorize the usage of its trademarks to the Respondent. The Complainant further argues that the Respondent is not known by any of the disputed domain names, nor does the Respondent claim to have made legitimate, noncommercial use of the disputed domain names.

The Complainant further argues that the disputed domain names were registered and are being used in bad faith.

The Complainant contends that it seems to be unlikely that the Respondent was not aware of the trademark BETVICTOR and of the unlawful nature of the disputed domain names registrations.

The Complainant further contends that the Respondent’s failure to response to the cease-and-desist letter sent to him, and the fact that the disputed domain names are inactive are clear indication to the Respondent’s bad faith use of the disputed domain names.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural Issue – Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain names is Chinese, as confirmed by the Registrar in its verification email to the Center.

The Complainant requested that the language of the proceeding be English.

The Respondent did not respond to the Complainant’s language request.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain names consists of Latin letters, rather than Chinese characters;

(ii) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comment on the language of the proceeding, or to provide any response to the Complaint;

(iii) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.

Upon considering the above, the Panel determines that English shall be the language of the proceeding.

6.2 Discussion

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of multiple trademark registrations for the BETVICTOR marks around the world, including in China where the Respondent is located. For example: Chinese trademark registration number 9133980,with the registration date of February 28, 2012; European Union Trademark registration number 009608332, with the registration date of April 28, 2011; Israeli trademark registration number 234414, with the registration date of April 4, 2012, and more.

Also, the Complainant’s rights in the BETVICTOR marks have been established in numerous UDRP decisions (Newcote International Limited and Victor Chandler International v. Jamie Howard, WIPO Case No. D2013-0185; Newcote International Limited, Victor Chandler International Limited v. Isen Murtishi, WIPO Case No. D2013-0198; Newcote International Limited, Victor Chandler International v. Sally Hill, WIPO Case No. D2013-1171; Newcote International Limited, BetVictor Limited (formerly known as Victor Chandler (International Limited) v. Bet Victories / Betvictories, WIPO Case No. D2015-1435.

The disputed domain name <betvictor666.com> differs from the registered BETVICTOR trademark by the additional numerical term “666” and the additional gTLD “.com”.

The disputed domain name <betvictor888.com> differs from the registered BETVICTOR trademark by the additional numerical term “888” and the additional gTLD “.com”.

The disputed domain name <betvictor999.com> differs from the registered BETVICTOR trademark by the additional numerical term “999” and the additional gTLD “.com”.

The disputed domain names integrate the Complainant’s BETVICTOR trademark therein entirety, as a dominant element.

The additional terms “666”, “888” and "999” with the gTLD “.com” do not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s trademark. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “the incorporation of the Complainant’s SWAROVSKI trademark in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s marks” (Swarovski Aktiengesellschaft v. cao zhiming, WIPO Case No. D2012-1028).

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain names. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the BETVICTOR trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark, which is widely known. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the BETVICTOR trademark since at least 2011. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant. Also, the disputed domain names are currently inactive which can, in appropriate circumstances, indicate the Respondent’s bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.)

Thus, it would have been pertinent for the Respondent to provide an explanation of his choice in the disputed domain names. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain names were registered and are being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefore and/or disrupt the business of the Complainant.

Indeed, “when a domain name is so obviously connected with a Complainant, it’s very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc./Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Respondent’s lack of response to the cease-and-desist letter sent by the Complainant, is a further indication of the Respondent’s bad faith registration and use of the disputed domain names.

Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the use of the Complainant’s trademark in the disputed domain names and the similarity between the disputed domain names and the Complainant’s mark, and failure to answer the cease-and-desist letter and the Complaint, the Panel draws the inference that the disputed domain names were registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 disputed domain names <betvictor666.com>, <betvictor888.com>, <betvictor999.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: May 18, 2017