ADMINISTRATIVE PANEL DECISION
CeltonManx Limited v. Pham Dinh Nhut
Case No. D2014-0109
1. The Parties
The Complainant is CeltonManx Limited of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by SafeNames Ltd., United Kingdom.
The Respondent is Pham Dinh Nhutof Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <sbobet.net> (the “Disputed Domain Name”) is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2014. On January 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 28, 2014, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Registrar also confirmed that the language of registration agreement was made in Vietnamese.
The Center sent an email communication to the Complainant on January 29, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Also, on the same day January 29, 2014, the Center sent another email communication concerning the Language of Proceedings in English and in Vietnamese to the Complainant, copied to the Respondent. On February 4, 2014, the Complainant filed an amended Complaint and a request for English to be the language of proceedings in this case, indicating the reasons for it.
The Center verified that the Complaint, together with the amended Complaint and the request concerning language of proceeding made on February 4, 2014, 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 February 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2014.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on March 10, 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 in this matter is CeltonManx Limited, a company incorporated pursuant to the laws of the Isle of Man and registered with the Companies Registry of the Isle of Man under Company No. 121580C. The Complainant operates the sports betting brand SBOBET, an online bookmaker which was founded in 2004.
SBOBET has a reputation for offering “over 500 sporting events every week”. These services are offered in several languages including English, Chinese, Indonesian, Vietnamese, Spanish and German. SBOBET’s service has been recognised in its accolades such as receipt of the Asian Operator of the year in 2009 and 2010 at the eGaming Review Magazine Operator Awards. SBOBET has contracted lucrative sponsorships with five large English Premier League clubs for this 2013 -2014 football season: West Ham United, Norwich City Football Club, Hull City, Swansea City FC and Southampton FC.
SBOBET is also the benefactor of the Bobby Moore Fund’s charity golf day in aid of Cancer Research for three consecutive years. The Complainant has also supported a Relay for Life in Aid of Cancer Research and aided with food banks during the Christmas period.
The Complainant’s trademark SBOBET was registered with the OHIM as a Community Trademark on January 21, 2009 and has been used for the sport betting services since the establishment of the Complainant in 2004.
The primary websites which the Complainant operates its services from are “www.sbobet.com” and “www.casinosbobet.com” and they have a linked informational website at “www.sbobettimes.com”.
The Disputed Domain Name <sbobet.net> was created on July 8, 2005. The Disputed Domain Name resolves to a parking site used to host website links, most of which relates to soccer predictions and sport betting.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant asserts that it is well known as SBOBET, a leader in online betting industry. The trademark SBOBET has been in continuous use by the Complainant in Asia and across the world since 2004. The Complainant is the owner of two (2) Community Trademarks, namely SBOBET under Registration No. 006639397 dated January 21, 2009, and SBO under Registration No. 006639215 dated January 20, 2009.
The Complainant further contends that the Disputed Domain Name encompasses the whole of the Complainant’s trademark SBOBET without any additional letters, numbers or characters. Thus, the Disputed Domain Name is identical to the Complainant’s trademark SBOBET by virtue that the only component is the mark SBOBET. The suffix “.net” is irrelevant when analysing whether a domain name is identical or similar to a trademark. An Internet user would more than likely believe that the Disputed Domain Name consisting of the Complainant’s trademark would lead to an official site of the Complainant.
The Complainant affirms that it has rights in the trademark SBOBET and the Disputed Domain Name is identical to that trademark SBOBET.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant contends that the trademark SBOBET has been coined by the Complainant, referring to Sports Bookie Online Bet. The trademark therefore is an original name, not a generic or descriptive or dictionary word. It has no meaning other than that attained by association with the Complainant as a betting company.
The Complainant avers that the Respondent has made use of a privacy service and the WhoIs record does not note the Respondent as SBOBET or a similar name. The use of the privacy shield for the WhoIs information suggests that the Respondent does not operate a business named SBOBET, is not and has not been known by the name.
The Complainant further avers that when searching for the Respondent via Internet search engines, there is no mention of SBOBET, the search automatically includes results for “Pham Dinh Nhat” and SBOBET is not suggested as a related search. It is clear from these results that the Respondent is not known by the name SBOBET, nor has the Respondent acquired goodwill in that name.
The Complainant confirms that the Respondent is not affiliated and not authorised by the Complainant to use the mark SBOBET.
The Complainant further argues that the Disputed Domain Name is redirected to another site under another domain name <playpokerz.net>, which is a parking page used to host website links with no email or website content. When an Internet user enters the site, it generates pay-per-click (“PPC”) links aimed at diverting the user to other websites, some of which are related to the Complainant’s services and others are unrelated.
The Complainant further contends that the redirection to another site which has links to competitors and services related to those of the Complainant shows an apparent intent to divert the Complainant’s consumers. The sole purpose for such links is commercial gain by the Respondent as well as domain name parking service providers. The Respondent would have been aware of the links on the page and will be receiving revenue derived from the PPC links. Even if the Respondent is not aware of the links, it cannot negate responsibility simply by stating that it has employed the services of a third party in order to host the site. Therefore, the Respondent cannot claim a bona fide offering of goods nor a legitimate interest in respect of the Disputed Domain Name, but rather to mislead Internet users into assuming an affiliation with the Complainant.
(iii) The Disputed Domain Name was registered and is being used in bad faith
The Complainant contends that the Disputed Domain Name was registered on August 7, 2005, one year after the launch of the SBOBET website. Even in 2005 the Complainant was a well-known Asian bookmaker. It can be inferred that the original registrant purposely registered the Disputed Domain Name in order to take advantage of the Complainant’s goodwill.
The Complainant further contends that although the Respondent did not originally register the Disputed Domain Name but has purchased it, this does not exempt the Respondent from liability as at the date of purchase, he has affirmed the representation under paragraph 2(d) of the Policy that the Disputed Domain Name is not infringing someone else’s intellectual property. A failure to check for other’s trademarks would be an indication of bad faith.
The Complainant submits that investigations into the Respondent’s background have shown that the Respondent is a known cyber squatter as it has been involved in eleven (11) known UDRP disputes. This conduct shows a pattern of abusive registration that the Respondent has made in bad faith.
The Complainant contends that the only use of the Disputed Domain Name is to redirect users to “www.playpokerz.net” to take advantage of their capture by way of PPC links on this other website. The operation of a site as a parking page, or PPC page, is accepted by UDRP panels as use of the domain name, even where the respondent engages the services of a third party to generate revenue. The Respondent is not making use of the site in a good faith manner, but instead is using the Disputed Domain Name as a means for profit generated use of the Complainant’s mark SBOBET.
The Complainant avers that the misappropriation of the Complainant’s trademark is evidence of the Respondent’s intent in both registering the Disputed Domain Name consisting solely of the mark SBOBET and in that it resolves to a website of a similar nature to the Complainant’s. The registration of a domain name which incorporates another’s mark, with no authorisation or relationship to the trademark, is an attempt to trade on the goodwill associated with the trademark. This is evidence of bad faith registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural issues
– The Panel finds that the Disputed Domain Name has been registered since July 8, 2005, but the Complaint was not filed with the Center until January 23, 2014, more than eight years later. In this regard, the Panel is of the same views as that mentioned in paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0 ”) that “the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay in bringing a complaint does not of itself prevent the Complainant from filing under the UDRP, or from being able to succeed under the UDRP, where the Complainant can establish a case on the merits under the requisite three elements”. However, the Panel will take into account this delay when considering the second and third element requiring the Complainant to establish that the Respondent lacks rights and legitimate interests and that the Respondent registered and used the Disputed Domain Name in bad faith.
– The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to such trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has trademark rights in SBOBET. Also, the Complainant has sufficiently demonstrated and evidenced that it has a lengthy use of its trademark for its commercial activities, and in particular for online betting services, since 2004. It is noteworthy that the trademark registration for SBOBET does not appear to predate the registration of the Disputed Domain Name. However, the date of trademark registration is irrelevant in considering the establishment of this first element (see e.g. Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598)
Second, the Disputed Domain Name comprises the Complainant’s registered trademark SBOBET in its entirety, without any additional letters, numbers and characters. There is nothing which alters the trademark in any way, and it is an exact phonetic and visual representation of the trademark.
Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (gTLD) “.net” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds and concludes that the Disputed Domain Name is confusingly similar to the Complainant’s SBOBET trademark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent can show that it has a right or legitimate interest in a disputed domain name in the following circumstances:
(i) before any notice to the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s prima facie case.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademark SBOBET.
Further, the Complainant has submitted relevant evidence showing that the Disputed Domain Name resolves to a parking page with PPC links that redirect Internet users to other online locations. In this regard, Paragraph 2.6 of the WIPO Overview 2.0 holds that “use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder”.
In this present case, the Panel finds that the PPC links in question are referring to both services of the Complainant and those of the Complainant’s competitors. So, in light of foregoing viewpoint and similarly to a number of well-established precedents, the Panel upholds that operating a PPC parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish bona fide offering of goods or services (see, e.g., VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy – NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537).
Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that despite that the Disputed Domain Name has been registered since 2005, and may have been put into use for a rather lengthy period, the Respondent has, for most of the time made use of a privacy service, until that shield was lifted by the Registrar. This suggests that the Respondent, as an underlying registrant that has been under a privacy service for most of the time, is not able to be commonly known by the Disputed Domain Name. Further, there is no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name or under the trade name SBOBET. Therefore, it is not evidenced that the Respondent is identified by SBOBET or that it has any right in it.
Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(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 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 your website or location or of a product or service on your website or location.
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
First, the Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
Second, the Panel considers the fact that the Disputed Domain Name was created on July 8, 2005, four (4) years prior to the date of registration of the Complainant’s trademark SBOBET at the OHIM. While it is not clear on what date the Respondent acquired the Disputed Domain Name, in this regard, the Panel finds that:
– The Complainant has evidenced through its Google historical search, and the Respondent has no counter-statement, that even in 2005, the Complainant was already a known Asian bookmaker;
– The trademark SBOBET is a coined word, which refers to Sports Bookie Online Bet according to the contention of the Complainant. It is not a generic of the online betting services or a dictionary word with descriptive meaning;
– The Complainant has also held the domain name <sbobet.com> since September 23, 2003, to which the Disputed Domain Name is identical except the generic Top-Level Domain. This domain name has been put into use by the Complainant since 2004. The registration and use of this domain name for the Complainant’s website predates the Disputed Domain Name.
– The PPC links presented on the webpage to which the Disputed Domain Name resolves are all related to online betting services, which is exactly in the industry that the Complainant has been working in since 2004 under the Complainant’s domain name <sbobet.com>.
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and the Complainant’s website and domain name <sbobet.com> before his registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
Third, the Respondent’s use of a privacy service in combination with a continued concealment of the “true” or “underlying” registrant, in the Panel’s opinions, further evidences bad faith.
Fourth, as discussed earlier, the Respondent is using the Complainant’s trademark SBOBET in its entirety as the unique and distinctive element in the Disputed Domain Name. The Disputed Domain Name resolves to a PPC parking site, where the PPC links are also referring the services of the Complainant’s competitors.
The Panel finds that by using the Disputed Domain Name in this manner, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain, and earning. Numerous UDRP panels have held that a respondent who intentionally diverts Internet users through a likelihood of confusion with a complainant’s mark to its website constitutes bad faith.
The Panel is well aware that this situation may not be directly addressed by paragraph 4(b) of the Policy. Paragraph 4(b), however, is a non-exhaustive enumeration of circumstances that may prove the existence of bad faith of the disputed domain name holder. Thus, taking into account the whole context of the Respondent’s behaviors in this present case, the Panel finds that the third element of bad faith registration and use of the Disputed Domain Name is satisfied.
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 <sbobet.net> be transferred to the Complainant.
Pham Nghiem Xuan Bac Sole Panelist Date: March 24, 2014