WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merryvale Limited v. xushuaiwei, Xu Shuaiwei
Case No. D2015-0124
1. The Parties
The Complainant is Merryvale Limited of Belize City, Belize, represented by Herzog, Fox & Neeman, Israel.
The Respondent is xushuaiwei, Xu Shuaiwei of Kunming, China.
2. The Domain Name and Registrar
The disputed domain name <casinobetway.com> is registered with Hangzhou AiMing Network Co., LTD (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 26, 2015. On January 26, 2015, the Center transmitted by email to NameSilo, LLC, the former registrar of the disputed domain name, a request for registrar verification in connection with the disputed domain name. On January 27, 2015, NameSilo, LLC transmitted an email to the Center advising that the disputed domain name had been transferred to the Registrar on January 27, 2015, before NameSilo, LLC had been able to respond to the Center's email. On January 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 23, 2015.
On February 3, 2015 the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. The Complainant included in the amended Complaint a request that English be the language of the proceeding. On February 24, 2015, the Respondent submitted its request that Chinese be the language of the proceeding.
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 in English and Chinese, and the proceeding commenced on February 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2015. The Response was filed with the Center (in the Chinese language) on March 18, 2015.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 30, 2015. 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
A. Complainant
The Complainant is a company incorporated in Belize and the owner of trade mark registrations for the trade mark BETWAY (the "Trade Mark") in the European Union, Canada and Australia, dating from 2006.
B. Respondent
The Respondent is an individual based in China.
C. The Disputed Domain Name
The disputed domain name was registered on October 8, 2013.
D. The Website at the Disputed Domain Name
The disputed domain name is linked to a website providing sponsored links relating to casinos and gambling (the "Website").
5. Parties' Contentions
A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a member of the Betway Group of companies ("Betway"). Betway has used the Trade Mark continuously since 2006 in relation to a number of online gaming websites, including "www.betway.com", which is considered one of the leading gambling websites in the world, with over 1.4 million registered users.
The disputed domain name is confusingly similar to the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Respondent is not using the disputed domain name in respect of a bona fide offering of goods or services.
The disputed domain name has been registered and used in bad faith. It has been used in order to intentionally attract Internet users for commercial gain to the Website, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Website.
B. Respondent
The Respondent made the following submissions in the Response.
The Complainant registered the <betway.com> domain name in 2002 and the Trade Mark in 2006, yet chose not to register the disputed domain name, which was registered by the Respondent in October 2013.
The Respondent did not register the disputed domain name with the intention to cause any harm to the Complainant.
The Trade Mark is not a well-known trade mark in China.
Before receiving notice of this proceeding, the Respondent was in the process of constructing a Chinese language lottery website. The services to be provided by the proposed website are different to those provided by the Complainant under the Trade Mark.
The Respondent has not registered and used the disputed domain in order to intentionally lure consumers to the Respondent's website and, accordingly, the disputed domain name has not been registered and used in bad faith.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
However, paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances of the administrative proceeding. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceedings.
The Complainant has requested that English be the language of the proceedings for the following reasons:
(1) At the time of filing of the Complaint, the language of the Registration Agreement for the disputed domain name (with NameSilo, LLC) was English;
(2) The disputed domain name is an English language domain name and the Website is an English language website;
(3) The Respondent has apparently registered approximately 160 domain names with registrars providing English language registration agreements;
(4) For all the above reasons, the Respondent is able to understand English;
(5) The Complainant would incur substantial expenses and the proceedings would be significantly delayed if the Complainant were to be required to translate the Complaint into Chinese.
The Respondent has requested that Chinese be the language of the proceedings for the following reasons:
(1) The Respondent speaks Chinese;
(2) The language of the Registration Agreement is Chinese; and
(3) The Respondent does not understand English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest that the Respondent is proficient in the English language. The Panel notes that the Website is an English language website.
The Panel further finds some force in the Complainant's submissions that, in transferring the disputed domain name to another Registrar during the pendency of the proceedings, the Respondent has acted in breach of paragraph 8(b) of the Policy, which proscribes registrants from changing registrars once UDRP proceedings have been commenced. In circumstances where, at the time of filing of the Complaint, the language of the registration agreement for the disputed domain name was English, and where the Respondent has acted in breach of paragraph 8(b) of the Policy in changing registrars after the commencement of the proceeding, the Panel considers the Respondent should not be entitled to rely on the language of the current Registration Agreement.
The Panel is also mindful of the need to ensure that UDRP proceedings are conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render this Decision in English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by approximately eight years.
UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name.
It is also established that the addition of generic terms to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark. The mere addition of a generic or descriptive term does not generally exclude the likelihood of confusion.
The disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the use of the generic word "casino" does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name by approximately eight years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. The Panel finds the Respondent's unsubstantiated submissions regarding the Respondent's proposed Chinese language lottery website unconvincing. The disputed domain name has been used in respect of the Website, which has not been authorised by the Complainant, and which provides sponsored links relating to casinos and gaming. In all the circumstances, the Panel concludes such use does not amount to a bona fide offering of goods or services under the Policy.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce satisfactory evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct evidences registration and use of a domain name in bad faith on the part of a respondent:
"By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online 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."
The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name by approximately eight years. The disputed domain name has been used in respect of the Website, which has not been authorised by the Complainant, and which provides sponsored links to casino and gaming related websites, which are likely to be in direct competition with those operated by the Complainant under the Trade Mark.
The Panel considers it is noteworthy that the Respondent has not, in the Response, denied prior knowledge of the Complainant and of its rights in the Trade Mark.
The Panel further considers that the Respondent's actions in changing registrars after the commencement of the proceeding provides further grounds in support of a finding of bad faith.
The Panel is therefore convinced that this is a clear case of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <casinobetway.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: April 13, 2015
