Cube Limited v. Domain Administrator / Super Privacy Service LTD c/o Dynadot / xinping wang / chongqing huang / lihong chen / ribiao xie
Case No. D2019-2901
1. The Parties
The Complainant is Cube Limited, United Kingdom, represented by Farrer & Co., United Kingdom.
The Respondents are Domain Administrator, United States of America (“United States”) / xinping wang, China / chongqing huang, China / lihong chen, China / ribiao xie, China / Super Privacy Service LTD c/o Dynadot, United States.
(NameSilo, LLC and Dynadot, LLC are each a “Registrar” and collectively the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2019. On November 26, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 27, 2019, the Registrar NameSilo LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On November 27, 2019 and December 11, 2019, the Registrar Dynadot, LLC transmitted by email to the Center its verification response confirming the Respondent is the registrant and providing the contact details. On December 13, 2019, the Center received two email communications from an unidentified third party. The Center sent an email communication to the Complainant on December 19, 2019, 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 December 23, 2019. On January 16, 2020, the Center sent a request for clarification to the Complainant, to which the Complainant responded via email on January 16, 2020.
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 January 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2020. No Response was received by the Center.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 10, 2020. 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 provides a range of betting products and services. It also specializes in live and traditional casino entertainment services online. The Complainant has a significant global customer base. The majority of the Complainant’s customers are based in Asia, where, the Complainant asserts, the Complainant’s trademarks and brand are recognized.
The Complainant owns the trademarks 188 and 188BET, which it has used in connection with its products and services since 2005. It has obtained registrations for word marks and device marks containing these elements in many jurisdictions around the world, including registrations in the European Union for the word marks 188 and 188BET, which are subject to EU Registration Nos. EU008390379 and EU008425324, respectively (both registered March 22, 2010). The Complainant also owns the word marks JBB and JBBBET, which are subject to UK Registration Nos. UK00003421782 and UK00003421785, respectively (both registered on November 15, 2019).
The origins of the JBB mark require some elaboration. The Complainant states that the mark 188BET translated into traditional or simplified Chinese script characters, is “188金寶博” and/or “188金宝博”. This can be translated as “188Jīnbǎo bó” in words, or “188JBB” as an acronym for short. The Complainant has provided evidence (screenshots from the Wayback Machine) from at least as early as June 30, 2011 showing use of the mark 188金宝博 in connection with the Complainant’s products and services. (Hereinafter, references to the marks using script letters will be to the “Translated Mark”.)
All of the disputed domain names were registered between October 27, 2011 and September 20, 2019. Many of the disputed domain names were registered on the same day or in close proximity – 126 were registered on two separate days, 62 were registered on May 18, 2017 and 64 were registered on November 2, 2017.
As of the date of the original Complaint, each of the disputed domain names directed to active betting or gaming websites that displayed:
(i) the Complainant’s 188 and 188BET trademarks, as well as the Complainant’s logo and associated branding (e.g. the look and feel of the Complainant’s official, authorized website or earlier versions thereof);
(ii) the Translated Mark;
(iii) the same popup advertisement that displays the Translated Mark;
(iv) the Complainant’s name and previous company address;
(v) the logo of the betting/gaming licensing authority that regulates the Complainant; and
(vi) the logos of two EPL football clubs with whom the Complainant has been associated through sponsoring.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondents did not file a Response.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. All three of these elements are discussed below.
Before getting into the substantive elements under the Policy, it is appropriate to address the consolidation of the Respondents. Five different Respondents each hold a portion of the set of disputed domain names. The Complainant argues the Respondents should be consolidated into this one case because the standards set out in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) are met. That provision advises that one complainant may bring a single complaint against multiple respondents when the disputed domain names or websites to which they resolve are subject to common control, and the consolidation would be fair and equitable to all parties. The Complainant has put forth commendable detail supporting consolidation in this case, comprised of the following:
(i) There are similarities and patterns among the disputed domain names.
(ii) All the websites found at the disputed domain names have the same content, namely, they all share the same design, graphics, layout, text, favicons, set of games, pop-up advertisements and footer information about the site’s ownership.
(iii) There are similarities among the nature of the marks at issue, and among how the Respondents have targeted the specific sector in which the Complainant has done business since 2005.
(iv) As of the date of the original Complaint, 121 of the 496 disputed domain names automatically redirected Internet users to the same website, www.JBB222.cc, which is one of the disputed domain names.
(v) The large set of disputed domain names is associated with a relatively small set of IP addresses – all 496 of them direct to one of eight IP addresses.
(vi) The Respondents exhibit many common behaviors, including:
- Using one of two privacy services; - Being all located in the same territory in China; - Patterns and themes of behavior: of the five registrants, four used the same privacy service provided by NameSilo and one of these registered 349 of the NameSilo Domain Names; all of the other three responsible for registering the remaining 10 NameSilo Domain Names used “gmail.com” email addresses, two in strikingly similar formats (hzb[...]@gmail.com and hzbh[...]@gmail.com), and the other relating to a domain (<jbb22.com>) which is not only strikingly similar to those registered by other Gmail‑using registrants (e.g. <jbb222.com>) but which also resolves to sites at <188015.cc> and <188188300.net>, hosting the same content; - All 137 Dynadot Domain Names use the same service (Super Privacy Service) and are linked to some 124 “superprivacyservice.com” email addresses; and - Since submission of the original Complaint on November 26, 2019, common and apparently coordinated efforts have been made to change the Internet service providers for the disputed domain names, using a limited number of new hosting companies in territories outside of the United States and European Union.
In the circumstances, noting the infringing content common to all the websites, and also the many common behaviors suggesting a large-scale effort to escape detection or liability, the Complainant argues it would be fair and equitable to all parties to have the disputed domain names dealt with under one Complaint. The Complainant also argues that in these circumstances, it would be procedurally more efficient for the Panel to consider the disputed domain names as part of one Complaint, rather than multiple complaints.
The Panel agrees with the Complainant’s arguments in favor of consolidation and orders that all 496 of the disputed domain names be subject to disposition in this case.
B. Identical or Confusingly Similar
This element requires the Panel to consider two issues: first, whether the Complainant has rights in any relevant marks; and, second, whether the disputed domain names are identical or confusingly similar to those marks. The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention,
WIPO Case No. D2001-0505.
The Complainant has established rights in the marks 188, 188BET, JBB, and JBBBET based on the Complainant’s use of those marks as well as trademark registrations in various jurisdictions around the world. Every one of the disputed domain names is comprised of at least one of these marks in its entirety. None of the additional words or numbers found in any of these disputed domains avoids the confusing similarity. The Complainant has established this first element under the Policy.
C. Rights or Legitimate Interests
The Complainant will succeed under this second element of the Policy if it establishes, prima facie, that the Respondents lack rights or legitimate interests under the Policy. The Complainant has made that showing and the Respondents have not overcome it. The following facts establish the Complainant’s prima facie case:
- Each of the disputed domain names point to websites purporting to be operated by the Complainant when in fact they are not;
- These websites use the Complainant’s trademarks without permission;
- The Respondents are neither licensees of the Complainant nor do they have any connection or affiliation with the Complainant for the use of its trademarks or logos;
- The Respondents have no rights to use the Complainant’s trademarks (or confusingly similar trademarks) in the disputed domain names, and have not received any consent, express or implied, to do so;
- The Respondents do not, to the best of the Complainant’s knowledge after a reasonable search of relevant registers, own any registered rights that are identical or confusingly similar to the Complainant’s trademarks;
- The Respondents are not providing their own bona fide goods or services under their own trademarks but rather they are seeking to confuse Internet users into thinking each website is owned by or affiliated with the Complainant and hence are seeking to fraudulently trade off goodwill attaching to the Complainant’s trademarks;
- The websites accessible at the disputed domain names do not direct Internet traffic to the Complainant’s website, but seek advantage from the goodwill and reputation in the Complainant’s trademarks for commercial gain by directing Internet users to pages for counterfeit services competing with those of the Complainant which have no affiliation, connection, sponsorship, approval, or association with it;
- The Respondents are not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain, but are using the disputed domain names to deliberately mislead or divert Internet users from the Complainant’s website, or to tarnish the Complainant’s trademarks, brand and business; and
- The Respondents are not commonly known by the disputed domain names and the registration and use of the disputed domain names containing the Complainant’s trademarks took place without the consent of the Complainant.
The Complainant has successfully established this second element under the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. VF Corporation v. Vogt Debra,
WIPO Case No. D2016-2650. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
The record shows that the Respondents registered the disputed domain names before the Complainant obtained its registrations (in the UK) for the marks JBB and JBBBET. Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. WIPO Overview 3.0, section 3.8.1. Nothing in the record demonstrates the Complainant’s use of either the JBB or JBBBET marks prior to registration of the disputed domain names. So the finding of accrued trademark rights that support a conclusion of bad faith registration and use merits an explanation.
The circumstances of this case, in their entirety, demonstrate in a number of ways that the Respondents targeted the Complainant’s products and services when they registered and used the disputed domain names in a manner that constitutes bad faith registration and use under the Policy. First, the content of all the websites at the disputed domain names is the same, and that content demonstrates an intentional, orchestrated effort to trade off the goodwill of the Complainant’s marks for commercial purposes. Second, the Panel credits the Complainant’s assertions that the Translated Marks – JBB and JBBBET – have taken on a reality tied to the phonetic pronunciation of “188金寶博” and/or “188金宝博”. One can reasonably look at (or say) “188Jīnbǎo bó” as pronounced and arrive at “188JBB” as an acronym. Third, it is clear that the Respondents had JBB and JBBBET asmarks in mind when they registered the disputed domain names and used them to publish the same kind of content across all the disputed domain names. Such content bears on the Panel’s assessment hereunder of the third UDRP element, namely, on whether there was an intent to create user confusion. See WIPO Overview 3.0, section 1.15. Looking at the circumstances as a whole, the intent to create user confusion is clear.
For the reasons discussed under this and the preceding headings, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondents were well aware of the Complainant and had the Complainant's marks in mind when registering the disputed domain names. The record convincingly demonstrates that the Respondents’ primary motive in relation to the registration and use of the disputed domain names was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of user confusion. In view of all of the foregoing, the Panel concludes that the Respondents registered and have used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to the websites for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc.,
WIPO Case No. D2001‑1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of the third element of the Policy.
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: