WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr Green Ltd / Evoke Gaming Ltd v. Sondre Sagstuen, Rush Partners Ltd
Case No. D2018-2494
1. The Parties
The Complainant is Mr. Green Ltd / Evoke Gaming Ltd of Silema, Malta, represented by Ports Group AB, Sweden.
The Respondent is Sondre Sagstuen, Rush Partners Ltd of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Rush Partners Ltd., United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <redsbet.com> (the “Domain Name”) is registered with Domeneshop AS dba domainnameshop.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2018. On November 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 2, 2018 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 November 5, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2018. The Response was filed with the Center on November 25, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 4, 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.
4. Factual Background
The Complainant Mr. Green Ltd (“Mr. Green”), a limited company established under the law of Malta, is an online casino company founded in 2007. Mr. Green launched its first online casino in 2008. The Complainant’s parent company is Mr. Green & Co AB of Stockholm, Sweden (“MRG”), publicly traded on the Nasdaq Sweden stock exchange, with over 300 employees in thirteen markets and 2017 annual revenues of SEK 1,192 million. The MRG Group website is found at “www.mrggroup.com”.
In 2017 Mr. Green acquired all of the ownership shares of the Complainant Evoke Gaming Ltd (“Evoke”), a limited company formed under the law of Malta, which operates several gaming sites. One of these is “Redbet,” at “www.redbet.com” (the “Complainants’ Redbet website”), which offers casino and sports betting and is licensed and regulated by the Malta Gaming Authority and the Gambling Commission of the United Kingdom. The Complainants’ Redbet website is presented in eight languages, but the Complaint indicates that it has a particularly strong position in the online gaming market in the United Kingdom and Sweden.
The Complainant Evoke holds European Union Trademark Registration Number 012711421 (registered July 29, 2014) for REDBET as a word mark.
According to the Registrar, the Respondent, a limited company with a postal address in London, United Kingdom, registered the Domain Name on June 24, 2016. The Domain Name resolves to a casino and sports gambling website in English and Norwegian versions (the “Respondent’s website”). The Respondent’s website appears in a red and black color scheme, as does the Complainants’ Redbet website. The Respondent’s website identifies the website operator as Viral Interactive Limited, a limited company registered in Malta and licensed by the Malta Gaming Authority and the Gambling Commission of the United Kingdom. The “About Redsbet” page of the website explains that the site is part of the “Fansbet network of websites” but with a particular focus:
“Set up specifically for Liverpool fans, Redsbet, is a new, innovative, safe, secure, brilliantly designed betting platform, which partners with you, the supporters, to share half of its profits, meaning that now, for the very first time, it’ll be possible to engage in what we call ‘Win-Win betting’, where if you win you get paid out immediately, but if your bet isn’t successful you can be safe in the knowledge 50% of the company's profits will find their way back to help both you and like-minded Liverpool supporters.”
After discovering the website, the Complainants’ representative sent the Respondent cease-and-desist letters but received no substantive replies. This proceeding followed. The Respondent reports an unsuccessful mediation meeting in November 2018.
5. Parties’ Contentions
A. Complainants
The Complainants contend that the Domain Name is confusingly similar to their registered REDBET trademark and that the Respondent has no permission to use the mark or other relevant rights or legitimate interests.
The Complainants infer that the Respondent was well aware of the mark and chose a similar Domain Name, associated with similar website content, colors, and layout, in order to hinder the Complainants’ business, mislead Internet users for commercial gain, prevent the Complainants from reflecting the mark in a corresponding domain name, or ultimately sell the Domain Name to the Complainants.
B. Respondent
The Respondent asserts that the Complainants’ REDBET trademark registration was “abusive” but acknowledges that it has not formally objected to it. The Respondent argues that “redsbet” is not confusingly similar to the mark, as it is pronounced differently and refers to the Liverpool FC football team, the “Reds”, whose fans are the target audience for the associated website. The website highlights Liverpool matches and the fact that a portion of losing bets are to be donated to causes and initiatives chosen by Liverpool fans. The Respondent’s website features the red and black colors of the Liverpool Reds and also the team’s “Liver Bird” crest and images of the team, its stadium, banners, and other emblems. Thus, the Respondent suggests that neither the Domain Name itself nor the associated content engender confusion.
The Respondent itself is not known by the name “Redsbet” but has applied for European Union trademark registrations for REDSBET as a dominant element of figurative marks. The Complainant has filed oppositions; the Respondent has replied. Those proceedings are pending.
The Respondent argues that it has a legitimate interest in creating gaming sites catering to fans of particular teams, which is a different market than the Complainants’. The Respondent denies any intent to create confusion with the Complainants’ mark, disrupt its business, or otherwise cause it injury.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Preliminary Matter: Multiple Complainants
The Rules, paragraph 3(c), contemplate that a complaint may relate to more than one domain name, provided that the domain names are registered by the same person, while paragraph 10(e) also gives panels the authority to consolidate multiple domain name disputes. In assessing whether a complaint may be filed by multiple complainants, as in this proceeding, panels consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.
Both Complainants in this instance are part of the MRG Group of companies. The Complainant Evoke holds the REDBET trademarks and operates the Complainants’ Redbet website as a subsidiary of the Complainant Mr Green. The Panel finds that the Complainants have a common grievance against the Respondent and that it is equitable and efficient to permit the consolidation of their complaints in this proceeding.
B. Identical or Confusingly Similar
The Complainant indisputably holds a registered REDSBET trademark. The Domain Name is very similar, with an “s” appearing between the dictionary words “red” and “bet”. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. See WIPO Overview 3.0, section 1.11.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant's trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy, as the Domain Name string is visually almost identical to the trademark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark 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 trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainants have established a prima facie case by establishing trademark rights, confusing similarity, the lack of permissive use, and the use of the Domain Name for a similar commercial purpose, online sports and casino gaming. This shifts the burden of production to the Respondent.
The Respondent has taken steps to acquire relevant trademark rights, over the Complainants’ objections, but those arguments are still pending before the European Union Intellectual Property Office. The Respondent relies, then, on the Policy, paragraph 4(c)(i), with the argument that it has been using the Domain Name in connection with a bona fide offering of goods or services predating this dispute. Certainly, the Respondent’s website is a licensed commercial enterprise. But it could not be considered a bona fide use of the Domain Name for purposes of this element of the Complaint if the Domain Name was chosen in order to conduct trade unfairly by misleading consumers and exploiting the Complainants’ trademark, rather than for the reasons advanced by the Respondent, to appeal to fans of the Liverpool Football Club. As that determination relies on essentially the same facts that must be considered in assessing bad faith, it will be reserved for the discussion below.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
(i) circumstances indicating that you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The Complainants refer to all of these examples, without elaboration in some instances. There is no substantial evidence, for example, that the Respondent acquired the Domain Name primarily to sell it for an exorbitant price to the Complainants, to disrupt the Complainants’ business, or to prevent the Complainants from registering a corresponding domain name.
The likeliest charge against the Respondent is that paragraph 4(b)(iv) applies and that the Respondent hoped to benefit from the Complainants’ success. The Respondent does not deny prior knowledge of the Complainants’ Redbet website or the REDBET mark. The Respondent has plausible reasons for choosing a domain name that refers to the Liverpool “Reds” as well as betting, for a gambling website designed to attract Liverpool team fans, and the website content is indeed tailored to a Liverpool audience. The logical question is whether it was coincidental, or necessary, to select a domain name that differs by only a single letter from that used for one of the more popular online gambling websites in the United Kingdom. The choice may well have brought the Respondent some additional business, although the unsuspecting visitors who are not Liverpool fans will not be impressed, presumably, with the benefits that accrue to the Liverpool fan club.
Besides the heavy Liverpool emphasis on the Respondent’s website, there are some facts that tend to support the Respondent’s assertions that it selected and used the Domain Name because of its relevance for the intended purpose in appealing to a narrow market of Liverpool sports punters. The Respondent’s website is part of the FansBet network, which uses the same approach of donating a portion of lost sports bets to causes selected by the related fan clubs (see “www.fansbet.com”), and it is therefore natural to extend the practice to a Liverpool site using the team nickname and the term “bet”. The Panel notes that the FansBet network gaming website devoted to Manchester United football fans, which has a very similar layout to the Respondent’s website, is at “www.redarmybet.com”, presumably because fans of that football team are sometimes called the “Red Army” (see the Wikipedia article, “Red Army (football)”). Thus, the Respondent’s choice of Domain Name is plausible for reasons other than attacking the Complainants’ mark.
As the Complainants bear the ultimate burden of persuasion on each element of the UDRP Complaint, the Panel concludes on this record that the Respondent prevails on both the second and third elements of the Complaint. The Parties may, of course, test their respective trademark challenges in other fora.
7. Decision
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: December 11, 2018
