WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Realm Entertainment Limited v. mark engels / PrivacyProtect.org

Case No. D2013-0830

1. The Parties

The Complainant is Realm Entertainment Limited of Ta’Xbiex, Malta, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.

The Respondent is mark engels of Essen Germany; PrivacyProtect.org of Nobby Beach, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <bets10e.com> 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 May 13, 2013. On May 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2013, the Registrar transmitted by email to the Center its verification response 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 15, 2013 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 May 20, 2013.

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 May 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2013.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on July 1, 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.

4. Factual Background

The Complainant is a limited liability company which is incorporated in Malta. The Complainant runs a game site at “www.bets10.com”using the trademark BETS10.

The Complainant’s Community Trademark BETS10 with registration no. 009941139 and application date May 4, 2011 is registered in classes 36, 38, 41.

The Respondent is based in Germany. The disputed domain name <bets10e.com> was registered on April 1, 2013 and it is currently directed to “www.oyunklavuz.net” a website in Turkish that includes advertisements which link to other websites offering online betting services. The website of the disputed domain name is directed to a guide to gaming sites and includes information and review on the Complainant’s website “www.bets10.com”. The website contains numerous pages which include “Bets10”. Further, website pages such as “enter bets10” (“"bets10 giriş”) state that the services provided in “www.bets10.com” are no longer recommended and that they recommend another online betting site. There are also links such as “the link to enter Bets10 site” (“Best10 sitesine giriş linki”) which are directed to a competitor website.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(a) of the Policy, the Complainant requests that the disputed domain name <bets10e.com> be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant has a Community Trademark BETS10 with registration no. 009941139 and application date May 4, 2011 registered in classes 36, 38, 41. The Complainant is the owner of the well-known game site “www.bets10.com” which has 50 million page views per month.

The Complainant states that the disputed domain name is confusingly similar to its trademark as it contains the trademark in its entirety, apart for the mere addition of the letter “E”. The Complainant asserts that this addition of a single letter is not enough to distinguish the wording in the domain name from the wording in the registered trademark. The Complainant further asserts that the addition of a top level domain, for example “.com”, is irrelevant for the assessment of confusing similarity between a trademark and a domain name.

Rights or Legitimate Interests

The Complainant asserts that the Respondent does not have any rights in the trademark BETS10, nor is the Respondent a licensee of the Complainant and the Complainant has not given the Respondent any permission to register the trademark as domain name.

The Complainant contends that the disputed domain name resolves to a website which is used for linked advertisements related to the same kind of services as the Complainant’s trademark comprises and information in Turkish. The Complainant further contends that these facts suggest that the Respondent’s motive in registering the disputed domain name is to commercially profit from misleading consumers searching for information about the Complainant’s business.

The Complainant further asserts that there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent is commonly known by the disputed domain name.

Registered and Used in Bad Faith

The Complainant contends that the Respondent was well aware of the Complainant’s trademarks and business when registering the disputed domain name and that the fact that the website of the disputed domain name includes links with services related to those provided by the Complainant implies knowledge of the Complainant’s trademarks and business.

The Complainant states that the official launch of the Turkish market of “bets10” by the Complainant was made before the Respondent registered the disputed domain name and the fact that the disputed domain name resolves to a website in Turkish suggests that the Respondent was aware of the Complainant's trademark.

The Complainant notes that it sent a cease and desist letter to the Respondent on June 5, 2012, however has not received a response. The Complainants contends that these circumstances strongly suggest that the disputed domain name has been registered and used in bad faith by the Respondent.

B. Respondent

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

6. Discussion and Findings

As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from the Respondent's default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

According to paragraph 4(a) of the Policy, the following three elements must be proven by the Complainant, to merit a finding that the disputed domain name be transferred to the Complainant:

(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.

A. Identical or Confusingly Similar

The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark BETS10 as evidenced in the annexes to the Complaint.

In relation to the disputed domain name <bets10e.com>, it is clear that the disputed domain name fully incorporates the Complainant’s trademark and the only difference between the disputed domain name and the Complainant’s trademark is the addition of the letter “e” and the “.com” extension. The Panel is of the opinion that the addition of a letter does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark and finds that the addition of the “.com” extension is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2010-1941. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is confusingly similar to the Complainant’s BETS10 trademark.

The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP panel decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Once the complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the domain name shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which a respondent may demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Respondent has failed to file a response, therefore if the Complainant makes a prima facie case that the Respondent lacks rights or legitimate interests in a domain name, the requirements of paragraph 4(a)(ii) of the Policy are fulfilled.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name; the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant alleges the Respondent’s reason for registering the disputed domain name is to commercially profit from misleading consumers searching for information about the Complainant’s business.

The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.

The Panel visited the disputed domain name on July 12, 2013 and found that the disputed domain name

is directed to “www.oyunklavuz.net” a website in Turkish that includes advertisements which link to other websites offering online betting services. The use of a domain name containing a complainant’s trademark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not to be a bona fide offering of goods and services, Entertainment Shopping AG v. Nishal Soni, Sonik Technologies, WIPO Case No. D2009-1437. Therefore, the Panel finds that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.

There is no evidence that the Respondent has made any effort or has any intention to use the disputed domain name for any purpose or legitimate activity consistent with having rights or legitimate interests for purposes of the Policy. Furthermore, the Respondent may generate income from the links contained in its website. Therefore the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent did not submit a response and therefore the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website 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 the respondent's website or location or of a product or service on the respondent's website or location.

First of all, the Panel notes that the cease and desist letter dated April 10, 2013 (although the Complaint states that the letter was sent on June 5, 2012, the attachment is dated April 10, 2013) sent by the Complainant to the Respondent will not be taken into consideration as there is no proof of receipt.

The Complainant’s trademark BETS10 was registered and was being used before the Respondent’s registration of the disputed domain name. The website associated with the disputed domain name includes links to other websites offering online betting services. Additionally, the website the disputed domain name is directed to claims to be a guide to gaming sites and includes information and review on the Complainant’s website “www.bets10.com”. The website contains numerous pages which include “Bets10”. Therefore the Panel is of the opinion that it is clear that the Respondent was well aware of the Complainant’s trademark BETS10 at the time the disputed domain name was registered. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith. ParfumsChristian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

Further, the website associated with the disputed domain name holds itself out to be an objective guide to gaming sites and states that the services provided by the Complainant at “www.bets10.com” are no longer recommended and that they recommend another online betting site. These statements strongly suggest that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, namely the Complainant.

Furthermore, the fact that the Respondent’s website contains links directed to a competitor website providing related services to those provided by the Complainant such as “the link to enter Bets10 site” (“Best10 sitesine giriş linki”) which includes the Complainant’s trademark BETS10 suggests that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other on-line 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.

Additionally, the Panel finds that the Respondent’s failure to respond to the Complaint reinforces the inference of bad faith registration and bad faith use, The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915.

As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on 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 disputed domain name <bets10e.com> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Date: July 15, 2013