WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BML Group Limited v. Kabir S Rawat

Case No. D2020-1606

1. The Parties

Complainant is BML Group Limited, Malta, represented by CSC Digital Brand Services Group AB, Sweden.

Respondent is Kabir S Rawat, India.

2. The Domain Name and Registrar

The disputed domain name <betsson.org> is registered with Go Montenegro Domains, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 24, 2020, Complainant submitted an amended Complaint reflecting the correct registrar information.

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 Respondent of the Complaint, and the proceedings commenced on June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. Respondent submitted a response on July 15, 2020.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 23, 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

Complainant is a Swedish company that forms part of the Betsson Group, one of the largest online gaming companies in Europe. Complainant offers digital and mobile gaming entertainment services through a multitude of casino games, sportsbook betting, poker, bingo and scratch tickets under the BETSSON trademark (“Complainant’s Mark”). Complainant has 1,600 employees worldwide, reported a revenue of SEK 5,173 million in 2019, and provided services to 15,115,000 registered customers. Complainant has also been the recipient of numerous awards and recognitions, including the “Online Sportsbook Operator of the Year” award by the International Gaming Awards, “Best Sport Betting App” in the Gaming App Awards, and “Excellence in Customer Service” in the Wig Awards and the EGR Awards, among others.

Complainant owns various registrations for the BETSSON trademark, including Benelux registration number 0781698 (registered on December 6, 2005) and International Registration number 962854 (registered on December 19, 2007). Complainant also owns and operates the website located at its primary domain name <betsson.com>, which was visited over 2.3 million times between November 2019 and April 2020.

The disputed domain name, <betsson.org>, was registered on July 22, 2016. The disputed domain name resolved to a parked page which advertised its sale.

Complainant sent a communication to Respondent on May 22, 2020, seeking the transfer of the disputed domain name and offering to pay any out-of-pocket expenses related to its registration. Respondent refused to transfer the disputed domain name for that amount and told Complainant that it can purchase the disputed domain name directly with the registrar. On May 25, 2020, Respondent notified Complainant that he updated the disputed domain name’s purchase price to USD 5,000. Respondent eventually revised the purchase price to USD 2,500 on April 22, 2020, after following up with Complainant numerous times about the potential sale.

Respondent has been involved in prior UDRP proceedings in relation to various domain names corresponding to third-party trademarks. See Frey Wille GmbH & Co. KG v. Kabir S Rawat, WIPO Case No. D2018-1925; Cantor Fitzgerald Securities v. Kabir S Rawat, WIPO Case No. D2013-1257.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name is confusingly similar to its BETSSON mark because it reproduces identically and entirely the BETSSON mark. Complainant also alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainant in any way and was never licensed or authorized to use Complainant’s Mark. Furthermore, Complainant argues Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it falsely suggests an affiliation with Complainant and the passive holding of the disputed domain name cannot confer any rights or legitimate interests. Complainant also argues that Respondent’s attempt to sell the disputed domain name in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests.

Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had actual knowledge of Complainant’s rights in the BETSSON trademark given its worldwide notoriety, the complete incorporation of the BETSSON mark in the disputed domain name and Respondent’s attempt to sell the disputed domain name to Complainant. Complainant also contends that Respondent’s attempt to sell the disputed domain name for valuable consideration in excess of out-of-pocket expenses is also evidence of Respondent’s bad faith use and registration. Furthermore, Complainant argues that there is no plausible good-faith reason or logic for Respondent to have registered the disputed domain name. Lastly, Complainant asserts that Respondent is a well-known cyber-squatter that has been the subject of a number of UDRP proceedings, which provides further evidence of Respondent’s pattern of bad faith behavior.

B. Respondent

Respondent indicates in an informal email that as a domain name investor, he registers domain names comprised of a combination of dictionary words, trends and attractive combinations, using customized software. Accordingly, Respondent registered the disputed domain name adopting the terms “bets” and “son”, and it had no knowledge of Complainant’s Mark at the time.

Respondent also claims that “Complainant does not have any international trademark for the term ‘betsson’ and that Complainant runs its ‘business mostly in Europe’. Respondent indicates that he “has no connection to that zone, and the time he got his domain name he was not familiar about this brand as it is unknown in his country”.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainant has provided evidence that it has rights in the BETSSON mark through its Benelux and International registrations.

With Complainant’s rights in the BETSSON mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s BETSSON mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.

Here, Complainant’s Mark is fully and identically incorporated in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is identical or confusingly similar to Complainant’s BETSSON mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent is claiming that he registered the disputed domain name because of the terms “bets” and “son”. However, UDRP 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. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning. See section 2.10.1 of the WIPO Overview 3.0.

Respondent is not using the disputed domain name in connection with any bonafide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name because it does not resolve to any active website. Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950, citing KOC Holding A.S. v. VistaPrint Technologies Ltd, Domain Administrator, VistaPrint, WIPO Case No. D2015-1910; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320.

Furthermore, there is no evidence on record suggesting that Respondent is commonly known by the disputed domain name. Lastly, Respondent’s attempt to sell the disputed domain name in excess of out-of-pocket costs cannot be considered a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s Mark. See Kabushiki Kaisha ASICS v. SC Gaticonstruct, WIPO Case No. DRO2008-0010.

Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(i) that bad faith registration and use can be found when a respondent registered or has 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.

Paragraph 4(b)(ii) of the Policy indicates that bad faith use and registration can also be found if a respondent is shown to have registered the domain 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.

In addition, from the very inception of the UDRP, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Factors considered relevant in applying the passive holding doctrine include the degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit any evidence of actual or contemplated good-faith use and the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3; see also Altria Group Distribution Company Altria Group, Inc. v. sb ani, WIPO Case No. D2019-0407 (“Bad faith can be found in a situation involving a passive holding of the domain name registration.”); Philip Morris USA Inc. v. Dante Credaro, Two2face Corp., WIPO Case No. D2016-01627 (“The disputed domain name isnot linked to an active website. However this inactivity does not prevent a finding of bad faith use.”).

In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations of the BETSSON mark that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the BETSSON trademark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000−0163. Here, the disputed domain name completely incorporates the BETSSON mark, meaning that bad faith registration of the disputed domain name can be presumed.

Furthermore, the passive holding doctrine applies in this case given the worldwide notoriety of Complainant’s Mark, , and the implausibility of any conceivable good faith basis to which the disputed domain name could be put by Respondent. The Panel finds it more likely that Respondent selected the disputed domain name with the intention to take advantage of Complainant’s reputation by registering a domain name fully containing Complainant’s Mark with the intent to ultimately use the domain name for illegitimate purposes.

Complainant provided clear evidence that Respondent attempted to sell the disputed domain name for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name, which is evidence of bad faith under Policy, paragraph 4(b)(i).

Furthermore, Respondent has also engaged in a pattern of registering and using domain names that are variations of known third-party trademarks, as found in prior UDRP proceedings against Respondent, which is further evidence of bad faith use and registration of the disputed domain name under Policy, paragraph 4(b)(ii). UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names. Id. Complainant cited at least four other proceedings where Respondent was found to have been engaging in bad faith conduct targeting trademarks. The Panel independently confirmed that Respondent has been the losing respondent in those proceedings.

For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith, pursuant to paragraphs 4(b)(i) and (ii) 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 <betsson.org> be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: August 6, 2020