Safepay Malta Limited v. Domain Administrator, Fundacion Private Whois
Case No. D2014-1109
1. The Parties
The Complainant is Safepay Malta Limited of Ta’ Xbiex, Malta, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Domain Administrator, Fundacion Private Whois, of Panama.
The disputed domain name is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2014.
The Center appointed Marcin Krajewski as the sole Panelist in this matter on August 4, 2014. 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 is a limited liability company incorporated in Malta which runs a website “www.betsafe.com”, where a wide-range of online gambling products and games are provided. The Complainant is the registered owner of trademarks consisting of or including the word “betsafe”. In particular, the Complainant holds:
- Community Trademark Registration No. 007214059 for the nominative trademark consisting of the word BETSAFE, registered on February 3, 2011, in class 35;
- Community Trademark Registration No. 008585648 for the figurative trademark including the words BETSAFE and COM, registered on May 3, 2010, in classes 9, 28, 35, 38 and 41;
- Community Trademark Registration No. 011385036 for the nominative trademark consisting of the word BETSAFE, registered on June 17, 2013, in classes 9, 41 and 42.
The Respondent registered the disputed domain name on April 23, 2014. It resolves to a website containing information about online betting and gambling as well as sponsored links to the websites of the Complainant and its competitor named “BET365”. The Respondent’s website features the above-mentioned Complainant’s figurative mark.
On May 5, 2014 the Complainant sent a cease and desist letter to the Respondent, which remained unanswered.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:
(i) The disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.
The Complainant claims that apart from the addition of the word “Poland” and a hyphen, the disputed domain name is identical to the Complainant’s registered trademarks. The addition of the mentioned word and character does not distinguish the domain name. The addition of the generic Top-Level Domain “.com” should be considered irrelevant for the assessment of confusing similarity between the Complainant’s trademarks and the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the Respondent does not have any rights to the trademark BETSAFE. No license or permission of any kind has been given by the Complainant to the Respondent to register the disputed domain name.
According to the Complainant, there is no evidence that the Respondent has been commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of it. The Complainant claims that the facts of the case suggest that the disputed domain name was registered to commercially profit on the Complainant’s trademark by misleading consumers searching information about the Complainant’s business.
(iii) The disputed domain name was registered and used in bad faith.
In support of this view the Complainant contends that the Respondent certainly had knowledge of the Complainant’s BETSAFE trademark when registering the disputed domain name. This claim is also implied by the fact that the Respondent’s website contains the Complainant’s figurative trademark.
According to the Complainant, the Respondent is using links on its website in order to commercially profit from the Complainant’s mark. The links are connected to an affiliate network with the purpose of creating revenue when someone uses them.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the remedy requested:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The most distinctive part of the disputed domain name is “betsafe”, which is identical to the Complainant’s trademarks. In determining whether there is confusing similarity between a domain name and a trademark, special attention should be paid to the trademark as compared to the dominant part of the domain name. The Panel agrees with the Complainant’s argument that the addition of the geographic term “Poland” and a hyphen is not relevant. It is a well-established principle that the use of a trademark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark. See, e.g., Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” is typically disregarded as being simply a necessary component of a domain name. However, it is worth noting that one of the Complainant’s trademarks includes the term “com”.
Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which may establish a respondent’s rights or legitimate interests in a domain name. However, it seems that none of the mentioned circumstances are present in this case. In particular, there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Internet users who type the disputed domain name in their browsers are directed to the website, which, as evidenced by copies of the respective pages, contains links to the website of the Complainant as well as other websites providing gambling products and games. Such use of the disputed domain name containing the Complainant’s trademark cannot be considered to be a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has chosen not to respond to the Complaint, and thus has failed to provide any evidence of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds it obvious that the Respondent knew of the existence of the BETSAFE trademarks and had these trademarks in mind at the time of registration of the disputed domain name. The Panel finds that the disputed domain name was registered in bad faith.
It is equally clear that the disputed domain name is also being used in bad faith. In particular, paragraph 4(b) of the Policy gives non-exhaustive illustrations of bad faith registration and use, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The Panel finds that the Respondent is intentionally diverting Internet users to its website by exploiting the confusing similarity between the disputed domain name and the Complainant’s marks. Further, the Panel finds that the Respondent is engaging in this conduct in order to reap commercial gain. The Respondent’s illegitimate use of the Complainant’s marks in order to make profit on links to websites of the Complainant’s competitors is an additional indication of bad faith.
Moreover, in the opinion of the Panel the Respondent’s failure to answer the Complainant’s cease and desist letter can be taken into account in the finding of bad faith
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 name be transferred to the Complainant.
Date: August 8, 2014