The Complainant is Navasard Limited of Limassol, Cyprus, represented by Giorgos Landas LLC, Cyprus.
The Respondent is Alejandro Lopez / Duranbah Limited N.V. of Nicosia, Cyprus, represented by MBM Intellectual Property Law, Canada.
The disputed domain name <xbet.football> is registered with Gandi SAS (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2017. On December 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2017, 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.
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 the Respondent of the Complaint, and the proceedings commenced on December 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2018.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on January 22, 2018.
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 22, 2018, the Respondent’s representative submitted a request for the extension of Response due date alleging that it had recently become aware of the Complaint although as noted in the Center’s Notification of the Complaint the due date for submission was December 31, 2017. The panel notes that under the UDRP Rules paragraph 2(a) the WIPO Center has discharged its obligation to notify the Respondent of the Complaint.
However, noting that the Respondent has opted for being represented by a Counsel, the Panel found its request to submit a response reasonable, so that everything relevant to the case is before the Panel, and granted an extension of three additional days for submission of a response. The Panel issued procedural order no. 1 on January 25, 2018, ordering that the new response due date is January 28, 2018 and the new date for Decision was extended to February 11, 2018.
The Response was received on January 26, 2018.
The Complainant is a limited liability company registered in the Republic of Cyprus on March 9, 2015.
The Complainant is the owner of the following trademarks registered in the European Intellectual Property Office: 1XBET logo, reg. no. 013914254 registered on July 27, 2015 in classes 35, 41 and 42 and 1XBET, reg. no. 014227681 registered on September 21, 2015 in classes 35, 41 and 42.
The trademark 1XBET was licensed to Companies affiliated with the Complainant and are operated by them through a number of domain names incorporating the trademark e.g. 1-x-bet.com, 1x-bet.com.
The disputed domain name <xbet.football> was registered on September 6, 2017.
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent, as mentioned above, got an extension and answered to the Complainant’s contentions. The Respondent denied all the allegations of the Complainant.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in the word XBET.
The mere fact that the Respondent has omitted the number “1” and has added the generic Top Level Domain Name “.football” does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC,WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov,WIPO Case No. D2006-0252; Novasard Limited v. Alex, WIPO Case No. D2017-1995.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <xbet.football> is confusingly similar to the Complainant’s trademark 1XBET.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case:
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute: The Respondent is not making a bona fide offering of goods.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights: In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue: Again, in this case there is no such indication from the record.
In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question.
Where a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 2.10.1, “Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent”.
The Respondent in paragraph 23 of the Response claims that he does not recall seeing any notice from the Trademark Clearinghouse at the time of the registration of the domain name <xbet.football> presenting as evidence Suarez Affidavit paragraphs 16 and 17 of Annex 1. In these paragraphs Mr. Suarez – the current employee of the Respondents and the person who registered the disputed domain name- only repeats what the response states and does not present any tangible and/or sufficient evidence to the Respondent’s claims.
Further, in paragraph 24 of the Response, the Respondent provides evidence as Exhibit G in Suarez Affidavit consisting of screenshots of each step in the registration process of the domain name <xbet.poker>. Obviously, the domain name <xbet.poker> and any evidence submitted by the respondent as to that domain name is irrelevant with the disputed domain name of the present case. By not submitting evidence sufficient to support his allegations, the Respondent has failed to establish that he had a legitimate interest or right in the disputed domain name in such manner.
The Panel notes that Respondent's evidence also fails to establish that he is a licensee of Complainant or that his registration of the <xbet.football> domain name predates Complainant’s rights in the 1XBET trademark.
The Respondent does not seem to have any trademark registrations including the term ‘xbet’. Additionally, it is to be noted that the Respondent did not present evidence of any license and/or consent by the Complainant, with whom there seems to exist no relationship whatsoever.
The Respondent presents evidence (Suarez Affidavit paragraphs 9 & 10, Exhibits E & F, Annex 1) that the Respondent’s asserted trademark XBET is commonly known with the website located at “www.xbet.ag” and that the Respondent has advertised the XBET Trademarks in association with its services including on Twitter and Facebook since at least as early as September 2014. However it seems from both the Respondent’s pages on Twitter and Facebook that he has only 202 followers and 44 likes respectively, which suggests that he cannot be considered as commonly known.
The Respondent provides evidence of screenshots of the website “www.xbet.ag” since September 2014 (Annex 3). The Panel considers Respondent has not provided convincing evidence that he satisfies the criteria in paragraph 4(c)(i) of the Policy, or that he is commonly known by the <xbet.football> domain name (Pirelli & C. S.p.a. v. Cristian Bello, WIPO Case No. DCO2011-0002). Even if the Respondent has produced documents dating back to 2014 establishing its project to use the disputed domain name in connection with a certain business activity, it remains that the disputed domain name has not been actively used since then and is as of today still not actively used, as it is stated in paragraphs 20 and 21 of the Response. The Respondent expressly admits that the domain name <xbet.football> is used for defensive purposes and that he had not decided at that time how he would use the disputed domain name. This may not be sufficient to create rights or legitimate interests of the Respondent in the disputed domain name based on the opinions of previous panels (Publicare Marketing Communications GmbH v. G.E.D. Faber / GAOS BV, WIPO Case No. D2012-1580, Physik Instrument GmbH & Co. v. Stefan Kernen, WIPO Case No. D2000-1001, World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306, but see Docler IP S.à r.l., Docler S.à r.l. and WebMindlicenses Korlátolt Felelösségü Társásag v. Su Xing, WIPO Case No. D2016-2201). However, the Complainant affirmed that its website “www.1xbet.com” was first registered in 2006 (Annex 2.4). Noting the longstanding registration of the Complainant’s website which was conspicuously not addressed by the Respondent, and the close similarity of the Complainant’s trademark to the Respondent’s domain name, the Panel finds on the balance of probabilities that the Respondent registered the disputed domain name in order to target the Complainant’s trademark. The Panel thus finds that the Respondent does not establish any of the criteria in paragraph 4(c) of the Policy.
As a conclusion on this point, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which the Respondent has not rebutted to the satisfaction of the Panel. The Panel finds on the basis of the submissions that The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Paragraphs 4(b)(i) to 4(b)(iv) of the Policy mention circumstances in order to demonstrate bad faith registration and use of a disputed domain name.
In paragraph 19 of the Complaint, the Complainant states that the Trademark Clearinghouse sent a warning notice to both parties at the moment the Respondent was trying to register the disputed domain name. The Respondent in paragraph 23 has provided affidavit evidence from the employee responsible for obtaining the disputed domain name, attesting that he does not recall seeing any such notice at the time of Registration (Annex 1, Suarez Affidavit at paragraphs 16 and 17). In those two paragraphs of Suarez Affidavit the exact same content is repeated, as in paragraph 23 of the Response. Even though the Complainant omitted to provide the warning notice he received from the Trademark Clearinghouse as evidence, at the same time the Respondent did not provide any evidence other than the affidavit of Mr. Suarez to oppose the Complainant’s position, as it is just a repetition of what the Response states. The Panel finds that both Parties have made conflicting assertions which are not supported by evidence, which does not resolve the Panel’s decision as to the existence of bad faith.
The Respondent is maintaining the disputed domain name as a parking service. In paragraphs 20 and 21 of the Response, the Respondent expressly admits that the domain name <xbet.football> is used for defensive purposes and that he had not decided at that time how he would use the disputed domain name. Bad faith can be found where the Respondent makes no use of the domain name in question and where there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose (Pirelli & C. S.p.a. v. Cristian Bello, WIPO Case No. DCO2011-0002, Alitalia-Linee Aeree Italiane S.p.A. v. Colour Digital, WIPO Case No. D2000-1260). The Panel notes that in certain circumstances defensive registrations have been found to provide a right or legitimate interest to a registrant (Docler IP S.à r.l., Docler S.à r.l. and WebMindlicenses Korlátolt Felelösségü Társásag v. Su Xing, WIPO Case No. D2016-2201).
The Panel is of the opinion that this case involves a slight misspelling of the Complainant’s mark. The Respondent provided evidence of its use of the “www.xbet.ag” domain name prior to the registration of the Complainant’s company and trademark 1XBET, and referenced other similar terms used by competitors in the field. However, the Complainant affirms that the original website under the domain name <1xbet.com> has been registered since 2006, and for the reasons explained above the Panel considers on the totality of the evidence that the Respondent selected the disputed domain name due to the similarity with the Complainant’s mark.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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 <xbet.football> be transferred to the Complainant.
Christos A. Theodoulou
Date: February 16, 2018
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