ADMINISTRATIVE PANEL DECISION
1Bet2U is dedicated to providing a variety of online casino products to our customers. Take your pick as you play and win the following areas! Online Sport Bet Malaysia Looking for a great place to go all out on your favorite sport betting games? There are so many cities in Malaysia, but one city that you should definitely visit (aside from Kuala Lumpur) is. Top 6 Affordable Rolex Models. Rolex Submariner The Rolex Submariner with a black dial and bezel is always a worthy investment. What marketing strategies does Ibet2u use? Get traffic statistics, SEO keyword opportunities, audience insights, and competitive analytics for Ibet2u. As an international leading online game company, we have world-class game information experts, helpful and experienced customer service teams, professional marketing and state-of-the-art technical team to ensure that our customers can enjoy playing in a safe environment.
Celton Manx Limited v. D C, Dragon City Internacional Limitada
Case No. D2014-0916
1. The Parties
The Complainant is Celton Manx Limited of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland ('United Kingdom'), represented by SafeNames Ltd., United Kingdom.
The Respondent is D C, Dragon City, Dragon City Internacional Limitada of Heredia, Costa Rica.
2. The Domain Names and Registrar
The disputed domain names <sbobetcasino.com>, <sbobetgames.com>, <sbobet.mobi> and <sbocasino.com> are registered with eNom (the 'Registrar').
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the 'Center') on May 30, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 2, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center, the Complainant filed an amended Complaint on June 5, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2014. On June 24, 2014, the Respondent requested an extension of the Response due date. On June 25, 2014, the Complainant submitted a reply to the Respondent's request. On June 25, 2014, the Center extended the Response due date to June 30, 2014. On July 1, 2014, the Respondent requested a further extension of the Response due date. On the same day, the Center declined the Respondent's request, and noted that it would be in the Panel's discretion whether to admit and/or consider any late-filed response.
The Center appointed Luca Barbero as the sole panelist in this matter on July 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.
On July 8, 2014, the Respondent sent to the Center its late Response, that was transmitted by the Center to the Complainant and to the Panel on the same day.
On July 10, 2014, the Complainant submitted a supplemental filing ('Supplemental Filing'), that was transmitted to the Panel by the Center on the same day. On July 14, 2014, the Respondent sent an email communication to the Center requesting to be allowed to submit an additional response.
The Panel issued an Administrative Panel Procedural Order (Panel Order No. 1) on July 18, 2014, granting the Respondent a seven day period from the Center's notification of the Panel Order to submit its reply to the Complainant's Supplemental Filing, provided that such reply be limited solely to the issues raised by the Complainant in its Supplemental Filing. The Center notified the Panel Order to the parties on July 18, 2014. The Respondent submitted its reply to the Complainant's Supplemental Filing on July 24, 2014. The Panel accordingly extended the due date for its decision to August 7, 2014.
4. Factual Background
The Complainant is an online bookmaker which was founded in 2004 and operates sports betting services under the trademark SBOBET at the domain names <sbobet.com> (registered on September 26, 2003) and <casinosbobet.com> (registered on July 3, 2009). The Complainant also operates a linked informational website at 'sbobetimes.com' (registered on May 31, 2011).
The Complainant is the parent company of Sports Bookie Online Inc, which is the owner of the following Community trademark registrations:
No. 6639397 for SBOBET (word mark), filed on February 4, 2008 and registered on January 21, 2009, in classes 9, 28, 41 and 42;
No. 6639215 for SBO (word mark), filed on February 4, 2008 and registered on January 20, 2009, in classes 9, 28, 41 and 42.
The disputed domain names <sbobetcasino.com>, <sbobetgames.com> and <sbocasino.com> were registered on November 27, 2008, while the disputed domain name <sbobet.mobi> was registered on December 1, 2008.
At the time of the drafting of the decision, the disputed domain names <sbobet.mobi>, <sbobetgames.com> and <sbocasino.com> resolve to a web site which provides online live betting and casino games using the name and logo 'SBO Casino', while the disputed domain name <sbobetcasino.com> is redirected to the web site 'www.ibet2u.com', offering the same kind of services but using the name and logo 'Lucky2u'.
5. Parties' Contentions
The Complainant states that it is well known as SBOBET and that the trademark SBOBET has been in continuous use by the Complainant in Asia and across the world since 2004.
The Complainant informs the Panel that the English football team West Ham United is sponsored by SBOBET and states that, since the English Premier League, to which this team belongs, is growing in popularity across Asia, any football fan that watches a game against West Ham United or is indeed a West Ham United fan will have seen the SBOBET trademark on the football shirts of the West Ham United players and on the advertisements screened during a match.
The Complainant contends that the disputed domain names are confusingly similar to the Complainant's trademarks SBO and SBOBET, as they all encompass the whole of the trademarks SBOBET or SBO and three of the Domain Names include a generic descriptive suffix, either 'casino' or 'games', both of which relate to the industry in which the Complainant operates. In view of the above, the Complainant asserts that an Internet user would naturally make the association between the disputed domain names and the Complainant, thus believing that the disputed domain names would lead to official sites of the Complainant. The Complainant also states that the Top-Level Domain suffix is irrelevant when assessing whether a domain name is identical or confusingly similar to a mark as it is not a distinguishing factor.
The Complainant points out that the trademarks SBOBET and SBO have been coined by the Complainant, referring to Sports Bookie Online Bet, and that, therefore, 'sbobet' and 'sbo' are not words which would legitimately be chosen unless to create an impression of an association with the Complainant, which is the only plausible basis for the registration of the disputed domain names, as the Complainant was already in operation within the gambling industry at the time of registration.
With reference to the Respondent's rights or legitimate interests, the Complainant states that the Respondent has not been authorized or licensed by the Complainant to use its trademarks in any manner, including as part of a domain name.
The Complainant also underlines that a search conducted on the Google search engine for the marks SBOBET and SBO yields results primarily for the Complainant or secondary results which directly relate to the Complainant and its services, while, searching for the Respondent's name 'Dragon City International Limitada' under their various names, there is no mention of SBOBET or SBO. The Complainant therefore concludes that the Respondent is not known by the name SBOBET or SBO, nor has the Respondent acquired goodwill in the name to be able to rely on paragraph 4(c)(ii) of the Policy.
As to the disputed domain name <sbobetcasino.com>, the Complainant highlights that it is being used to redirect traffic to the web site 'www.ibet2u.com', another gambling website owned by the Respondent displaying the name and logo Luky2u.net and links to competitors or related services. The Complainant states that the Respondent cannot claim to be making a bona fide offering of goods or service or to have a legitimate interest, as the sole purpose of the inclusion of the trademark SBOBET within the disputed domain name is to take advantage of the goodwill attached to it by using it to capture and redirect Internet users to another web site, by misleading Internet users into falsely assuming an affiliation with the Complainant.
As to the other disputed domain names, the Complainant alleges that, according to its verifications, three of the disputed domain names do not resolve to working web sites, which is suggestive that the Respondent has no legitimate interest or right in said domain names as they are not in use. However, the Complainant states that, up until recently, two of the disputed domain names resolved to a web site showing the name Sbo Casino which offered competing services to the Complainant's. The Complainant asserts that the non-use of the disputed domain names does not provide the Respondent with a legitimate interest or right in the disputed domain names and that, even if they were being used, the use of the expression bona fide in paragraph 4(c)(i) of the Policy is sufficient to prevent a respondent who knowingly adopted another's well-known mark as a domain name from claiming the benefit of mere use of or demonstrable preparations to use a domain name in connection with the offering of goods or services prior to notice of a dispute.
With reference to the bad faith requirement, the Complainant states that, at the time of the registration of all of the disputed domain names, the Complainant was already well established and had been in operation for four years, as its web site was launched in 2004 and it had acquired a reputation and significant goodwill in the marks SBOBET and SBO for the purposes of trademark law, as corroborated by the printouts of the Google searches attached as Annexes A and F to the Complaint.
The Complainant informs the Panel that the Respondent has a portfolio of domain names that includes other gambling-related domain names such as <ibcgames.com> and <ibcball.com> referring to IBCBET, which is another Asian focused gambling platform and a competitor of the Complainant. Therefore, the Complainant concludes that the Respondent's registration of multiple infringing domain names suggests that it has engaged in a pattern of conduct of registering domain names in order to prevent the trademark holders from reflecting their marks in the corresponding domain names.
The Complainant also states that the Respondent is not making good faith use of the disputed domain name <sbobetcasino.com>, but instead is using it as a means to generate profit via the use of the Complainant's trademark, chosen specifically for its ability to attract Internet users. The Complainant points out that the content of the web site to which the user is being redirected indicates that the Respondent is aware of the Complainant's business and industry in which it trades and that it is feasible that this redirection is causing a false association between the Respondent and the Complainant in the average Internet user's mind, conduct which is considered bad faith under paragraph 4(b)(iv) of the Policy.
The Complainant asserts that the fact that three of the disputed domain names are not in use is not sufficient to conclude that there has been no bad faith use of these domain names.
As a further circumstance evidencing bad faith, the Complainant submits that its investigations into the Respondent's activities highlighted that it is using multiple aliases in order to conceal its true identity, in an attempt to evade the ambit of the Policy and to put the disputed domain names outside of the reach of any potential legal action. The Complainant notes that the WhoIs data shows the Respondent having an address in Costa Rica but contends that it is likely that it may in fact be a company registered in Hong Kong.
The Complainant also asserts that the Respondent should have conducted a trademark search to ensure that it was not infringing on another's mark as affirmed in Guccio Gucci S.p.A. v. Bo Zhou,WIPO Case No. D20131624 and that the registration of a domain name which incorporates another's mark, with no authorization or relationship to the mark, is an attempt to trade on the goodwill associated with the mark.
The Complainant therefore requests the transfer of the disputed domain names to the Complainant as it has satisfied the requirements of paragraph 4(a) of the Policy.
In its late Response, the Respondent agrees to the cancellation of the disputed domain names <sbobet.mobi>, <sbobetcasino.com> and <sbobetgames.com>, while it asserts right and legitimate interest in the disputed domain name <sbocasino.com>.
The Respondent notes that the registration of the disputed domain name <sbocasino.com> was made before the registration of the two Community trademark registrations, and highlights that the two trademark registrations on which the Complainant relies upon are registered in the name of the company Sports Betting Online Inc. and not in the name of the Complainant.
The Respondent alleges that SBO is merely an abbreviation of the descriptive phrase of the services provided by the Complainant that cannot alone qualify as trademark usage to distinguish the Complainant. It also highlights that SBO is a common mark which is used and is registered by several parties legitimately and that the Respondent's domain name <sbocasino.com> is also known in English as Sky Bet Online Casino, as can be seen in the SBO Casino logo on the Respondent's web site 'www.lucky2u.net'.
The Respondent also asserts that comments made on the site 'https://sites.gooqle.con/site/ibeS8Stsbobet/song-bai-truc-tuyen/sbocasino' state that SBO Casino is Sky Bet Online Casino, as highlighted in a screen capture attached as Annex K to the Response.
The Respondent submits that it has a strong presence in Cambodia, Thailand and Vietnam, amongst other Asian countries, where a strong proportion of online betters are Chinese speaking. The Respondent alleges that, before 2008, it was commonly known in Chinese as '世宝' which, in Chinese Cantonese dialect, is pronounced as 'Shai Bou'. As a result, the first letters of the Chinese words for 'Shai Bou' (where 'shai' means 'world', 'bou' means 'treasure' and the words used conjunctively mean 'treasure of the world') are found on the Respondent's site 'www.sbocasino.com'.
Therefore, the Respondent concludes that it has a bona fide reason to use SBO as an abbreviation of Shai Bou and Sky Bet Online and a legitimate interest in respect of the disputed domain name <sbocasino.com> to provide its online gambling game services.
The Respondent submits that the disputed domain name <sbocasino.com> is used for a legitimate offering of live casino games like baccarat and roulette services and that, if the parties in this proceeding are in the same field of activity, this does not automatically present bad faith, as, in this case, the evidence presented shows that SBO is also an abbreviation of the Respondent or its domain name.
As to the Complainant's allegations that the Respondent has engaged in a conduct of registering domain names in order to prevent trademark holders from reflecting their marks in the corresponding names, the Respondent asserts that it is conjecture and speculative, while regarding the Complainant's statements that the Respondent is using multiple aliases in order to conceal its identity, the Respondent states that such an argument cannot be used as a basis for determination of this dispute over the disputed domain name <sbocasino.com>.
The Respondent also highlights that no attempts were made to sell, rent, or otherwise transfer the disputed domain names to the Complainant as the alleged owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain names.
C. Complainant's supplemental filing
In its supplemental filing, the Complainant highlights that the Complainant is the parent company of Sports Bookie Online Inc, in the name of which the trademarks SBOBET and SBO are registered, and states that it has thus the requisite authority to operate the brands as it is licensed to do so.
The Complainant seeks to rely primarily on its common law rights acquired through the use of its marks SBO and SBOBET in relation to its online bookmaker's services, which predate the registration of the disputed domain names by some years. The Complainant also contends to have unregistered rights in the mark SBOBET CASINO.
Regarding the Respondent's allegations as to the trademark SBO, the Complainant notes that it is not the validity of the Complainant's marks which is at issue, and this is not the proper forum for such questioning, but it is whether or not the Complainant has rights to bring the Complaint for the purposes of paragraph 4(a)(i) of the Policy.
With reference to the Respondent's claims of a legitimate business, the Complainant points out that the Respondent has failed to show that it was commonly known as 'Sbo' or 'Sbo casino' before or at the time of registration of the disputed domain name <sbocasino.com>, that it is unclear when it commenced to use the name SBO Casino or Sky Bet Online and that the Respondent has chosen a similar name to cause confusion and trade off of the goodwill associated with the Complainant and its services.
The Complainant states that the Respondent has re-commenced use of the disputed domain name <sbocasino.com> actively after the filing of the Complaint, in order to support its false argument that it has a legitimate business and/or is commonly known as 'Sbo casino'.
The Complainant disputes that the screenshot submitted by the Respondent making reference to the Respondent's signs SBO Casino and Sky Bet Online is a reliable evidence, indicating that such page is not a page accessible by the domain and instead is a Google site page that can be created by any individual with a Google account. The Complainant also states that, at the time of the filing of the Complaint, there was nothing on any of websites at the disputed domain names to state that they were not affiliated with the Complainant or that SBO relates to Sky Bet Online.
The Complainant also highlights that visitors to the Complainant's web sites are predominantly from the same countries which the Respondent has chosen as its target audience, which is unlikely to be a coincidence. Additionally, the Complainant was well established and known within these countries and Asia at the time of registration, supported by the fact that it is referred to by third parties as 'Asia's oldest and most trusted online bookie'. The Complainant also highlights that historical use of the disputed domain name <sbocasino.com> shows that, in 2012, it was being used to redirect Internet users to the website 'www.ibet789.com' upon clicking the 'Sportsbook' link.
The Complainant notes that in the WhoIs history for <ibet789.com> the Respondent's details were listed prior to the details being hidden behind a privacy service and then subsequently changed with different registrant information. The Complainant contends that the reason of this change was to evade liability and to conceal the Respondent's information as the true registrant. The Complainant also states that, as the Respondent is clearly a competitor of the Complainant, the Respondent has used its web site 'www.lucky2u.net' in order to promote its other business 'www.ibet789.com' by attracting the Complainant's customers for its own commercial benefit.
The Complainant finally pleads that the Panel considers using its powers to add the disputed domain <sbobetclub.com> to this proceeding as the Complainant has discovered that the Respondent also holds this domain name since filing the dispute, and it contains the whole of the Complainant's SBOBET mark with the addition of the word 'club', which fails to distinguish an association with the mark, and the domain name is redirected to the same web site to which the other domain names have previously resolved, i.e. 'www.lucky2u.net'.
D. Respondent's reply to the Panel Order
The Respondent states that the Complainant cannot demonstrate unregistered rights in the trademark SBO, since the three letter term is too common and has too many associations.
The Respondent reiterates that it has rights or legitimate interests in the disputed domain name <sbocasino.com> since SBO is the name of its online business, being an abbreviation of the Chinese name Shai Bou and of the English name Sky Bet Online, as highlighted in an additional screenshot attached to the Respondent's reply showing the use of the Respondent's logo SBO Casino on the web site 'http://168cash.net/index.php?route=information/information&information_id=4'.
In view of the above, the Respondent concludes that there is sufficient evidence to demonstrate that the Respondent has a legitimate interest in using the trademark SBO for its business as the Respondent is commonly known as both Shai Bou and Sky Bet Online which is abbreviated as SBO.
The Respondent states that the Complainant's allegation that the disputed domain name <sbocasino.com> did not resolve to a website at the time of filing the Complaint and that the Respondent has re-commenced use of it after the dispute to support its argument is incorrect and that the Complainant's allegations in relation to 'www.Lucky2u.net' and 'www.ibet789.com' are irrelevant. The Respondent also contests the Complainant's assertion that the Respondent created a Google site which states the disputed domain name is not affiliated with the Complainant or that SBO relates to Sky Bet Online, indicating that such allegation is baseless and without evidence.
As to the Complainant's request to add <sbobetclub.com> to this proceeding, the Respondent states that it is a tantamount to a new Complaint without having complied with the mandatory requirements of fees under paragraph 19 of the Rules and thus objects to this addition.
6. Discussion and Findings
A. Procedural issues
i) Late Response and Parties' supplemental filings
As mentioned in the Procedural History, the Respondent obtained from the Center an extension of 4 days of the original due date for Response and, one day after the expiry of said extended deadline, submitted a new request for extension. The Center declined said new request, stating that it would be in the Panel's discretion whether to admit and/or consider any late-filed response. The Respondent then submitted a late Response, through its representative, on July 8, 2014.
According to paragraph 10 of the Rules, the Panel shall conduct the administrative proceeding in such manner it considers appropriate in accordance with the Policy and the Rules (paragraph 10(a)), ensure that the Parties are treated with equality, each Party being given a fair opportunity to present its case (paragraph 10(b)), ensure that the administrative proceeding takes place with due expedition (paragraph 10(c)) and determine the admissibility, the relevance, the materiality and the weight of the evidence (paragraph 10(d)).
The Panel notes that, on June 20, 2014, the Respondent replied to the Center's Written Notice of the commencement of the proceeding requesting to re-send the email regarding the Notification of Complaint and the related Annexes. The Center proceeded to the re-sending on the same day. On June 24, 2014, the Respondent addressed a new communication to the Center stating that it had taken note that the due date for its submission of the Response was June 26, 2014 but requesting an extension since it had 'just received the actual copy of the Complaint (including the annexes)'.
Following the Center's invitation to the Complainant to submit comments as to the Respondent's request for an extension of time to file a Response, the Respondent sent a new communication to the Center explaining that it had not received copy of the Complaint at the points of contact in the 'domain name registration data or technical contact or administrative contact or billing contact be it postal mail address, facsimile or email addresses' and requesting an extension of time until July 10, 2014.
In its reply to the Center's request, the Complainant stated that the Complaint was duly served since it was sent by email to the email address indicated in the WhoIs records for the disputed domain name on May 31, 2014 by the Complainant and again by the Center on June 6, 2014. The Complainant asserted that, should the WhoIs contact information not be correct, it is not responsibility of the Complainant, and that the Respondent had in excess of the 20 days from the notification of the Complaint to prepare its Response. The Complainant also noted that the Respondent indeed received the Center's email of June 6, 2014 notifying the Complaint, since the Respondent sent its message on June 20, 2014 in reply to the Center's email communication notifying the Complaint. The Complainant also wonders why the Respondent waited four days after receipt of the Complaint and related Annexes re-sent by the Center on June 20, 2014, to request the extension of the deadline for Response.
In view of the Respondent's request for extension and considering the objection of the Complainant, the Center granted the extension of time until June 30, 2014. The Respondent sent a new request for extension on July 1, 2014, stating that it was not 'well versed in these matters and [had] only just found a legal professional to help us in preparing the Response as well as agree on the terms of appointment'. Even though said request was declined, the Respondent submitted a late Response on July 8, 2014.
The Panel notes that the Complaint was indeed duly served to the Respondent and that the Center has discharged its responsibility to employ reasonably available means calculated to achieve actual notice to Respondent as prescribed by paragraph 2(a) of the Rules.
According to the correspondence on record, it appears that a copy of the Center's email communication notifying the Complaint was forwarded on June 6, 2014 to an email address of the Respondent ([…]@sbocasino.com), that the Respondent used to send its communications to the Center. While it can be possible that the Complaint and related annexes were not forwarded to said address of the Respondent as well on said date, it is unclear to the Panel why the Respondent, which apparently had received notification of the commencement of the proceeding, requested to the Center to re-send the Complaint and related Annexes only on June 20, 2014. The explanation provided by the Respondent to justify its request for extension, i.e. that the Complaint was not notified to the Respondent's addresses in the WhoIs records appears, in the Panel's view, to be an attempt to gain additional time to prepare a Response, as also demonstrated by the further request for extension submitted by the Respondent after the first extension granted by the Center. In addition, the Respondent submitted its Response four days after the Panel appointment.
However, since, in the case at hand, the Panel deems relevant to consider all the allegations submitted by the parties, including the Complainant's Supplemental Filing, as highlighted in the paragraphs below, and in order to ensure that the parties be treated with equality and that each party should be given a fair opportunity to present its case, the late Response shall be admitted.
ii) Parties' supplemental filings
As indicated in the Procedural History, on July 10, 2014, the Complainant submitted a Supplemental Filing as a reaction on the Respondent's Response, without having been requested to do so by the Panel.
In said Supplemental Filing, the Complainant stated that it 'believe[d] that the content of the submission is essential to reach a fair decision on the facts' and that 'the Complainant understands that if the learned Panel agrees to the submission it may allow the Respondent to respond accordingly as noted in The E.W. Scripps Company v. Sinologic Industries, (WIPO Case No. D2003-0447)'.
Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplemental filings.
As stated in Digital Ceramic Systems Limited v. Baltea SRL,WIPO Case No. D2012-1198, 'unsolicited supplemental filings should generally be accepted by the Panel only if the following two circumstances are met (…): (i) the eventual acceptance of such filings should not breach the guarantee to both parties to be treated equally, so each one has a fair opportunity for presenting its case; and (ii) the supplemental filings should address relevant issues which were not known by the filing party at the time that it filed its documents, and that could affect the outcome of the decision.
In the case at hand, in view of the contents of the Complainant's Supplemental filings and the issues raised by the Complainant, which the Panel deems relevant for the purpose of this decision, the Panel decided to consider the Complainant's supplemental filing.
In order to treat both parties equally and provide a fair opportunity to each of them to present their case, the Panel granted the Respondent a seven-day period to submit a reply, that was timely submitted and shall thus be considered.
iii) Consolidation of the disputed domain names
Paragraph 3(c) of the Rules states that 'The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder'.
The disputed domain names <sbobet.mobi>, <sbobetcasino.com> and <sbobetgames.com> were registered in the name of D C, while the disputed domain name <sbocasino.com> was registered in the name of Dragon City, of the organization Dragon City Internacional Limitada. All the disputed domain names share the same contact information.
The Complainant requested the consolidation of the disputed domain names stating that the registrants are in fact one singular domain name holder, since the Respondent has simply altered its name in the WhoIs information but the contact details are the same and the use of the disputed domain names and the web sites to which they resolve or have resolved indicate that they are subject to common control. The Complainant highlighted that the consolidation of proceedings would save duplication of time, efforts and costs and so it would be fair and equitable to all parties, in accordance with the spirit of the Policy.
The Panel is satisfied that the disputed domain names are held by the same entity, as confirmed by the Respondent which, in the Response, asserted its ownership of all the disputed domain names. Therefore, the present decision will address all the four disputed domain names <sbobet.mobi>, <sbobetcasino.com> <sbobetgames.com> and <sbocasino.com>.
In its Supplemental Filing, the Complainant requested to add an additional domain name in this proceeding, <sbobetclub.com>, that the Complainant had just discovered to be registered in the name of the Respondent.
The Panel notes that such domain name was registered on February 28, 2009, on the same registration date of other domain names registered by the Respondent subject to this proceeding.
The Panel finds that the mere fact that the Complainant became aware of the existence of such domain name only after the filing of the Complaint is not sufficient to admit the Complainant's request to include also this domain name in the proceeding. In addition, the Respondent, in its reply to the Complainant's Supplemental Filing, did not consent to such inclusion and the possible re-notification process required to comply with the provisions of the Policy and the Rules would cause undue delay in this proceeding. The Complainant is anyway not prejudiced to file a new complaint concerning this additional domain name.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrates that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has submitted trademark certificates of two Community trademark registrations for SBO and SBOBET, which are registered in the name of the Complainant's subsidiary Sports Bookie Online, Inc.
As stated, amongst others, in DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939, the Complainant does not need to establish that it is the owner of the trademark, as it is sufficient that the Complainant demonstrates to have what the law recognizes as 'rights' in the trademark, even if such rights do not consist in actual ownership but in a license to use the mark.
It has been found in several UDRP decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark. See for example Miele, Inc. v.Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756.
In the case at hand, the Panel finds that the Complainant, being the parent company of Sports Bookie Online, Inc., has rights in the trademarks in question, which are registered by its wholly owned subsidiary. See, along these lines, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796.
The Panel finds that the disputed domain name <sbobet.mobi> is identical to the registered trademark SBOBET, since, for the purposes of determining identity or confusing similarity under the Policy, the gTLD '.mobi' does not need to be considered.
The disputed domain names <sbocasino.com>, <sbobetcasino.com> and <sbobetgames.com> include the registered trademarks SBO and SBOBET with the addition of the generic terms 'casino' and 'games'. According to previous UDRP decisions, the 'addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP' (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ('WIPO Overview 2.0')).
In addition, as indicated in the WIPO Overview 2.0, the location of a trademark, its date of registration and the goods and/or services for which it is registered are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
With specific reference to the trademark SBO, the Panel notes that 'sbo' is not a generic or descriptive term of common English usage and anyway, as highlighted by the Complainant, this is not the proper venue for questioning the validity of a register trademark, but rather to ascertain whether or not the Complainant has rights to bring the Complaint for the purposes of paragraph 4(a)(i) of the Policy.
Therefore, the Panel finds that the Complainant has proven the disputed domain names <sbocasino.com>, <sbobetcasino.com> and <sbobetgames.com> are confusingly similar to the trademarks SBO and SBOBET in which it has rights.
The Panel therefore finds that the first requirement under 4(a)(i) of the Policy has been fulfilled.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii)of the Policy requires that the Complainant demonstrates that the Respondent has no rights or legitimate interests in the disputed domain names.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, paragraph 2.1).
In the present case, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate any rights and/or legitimate interests in the disputed domain names.
According to the evidence on record, the Respondent has not been authorized to use the Complainant's trademarks SBO and SBOBET in any way.
In addition, there is no evidence that the Respondent, the name of which is Dragon City Internacional Limitada, might have been commonly known by the disputed domain names <sbobetcasino.com>, <sbobetgames.com> and <sbobet.mobi> or by the names 'Sbobet', 'Sbobet casino' or 'Sbobet games'.
In line with prior UDRP decisions (see, inter alia, World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642), the Panel finds that the use of the name and logo SBO Casino on the Respondent's web site does not of itself prove that the Respondent is commonly known by said name and logo, and the two screenshots of allegedly third party sites where the Respondent's logo SBO Casino, the Chinese name Shai Bou and the English name Sky Bet Online are featured is not sufficient, in this Panel's views, to demonstrate that the Respondent has been commonly known by said names or by the disputed domain name <sbocasino.com>.
Indeed, the circumstances of the case, in particular the registration of the disputed domain name <sbocasino.com> the same day when the disputed domain names <sbobetcasino.com> and <sbobetgames.com> were registered by the Respondent, and the use of all the disputed domain names to provide gambling services competing with the Complainant, suggest that the Respondent, when registering the disputed domain names, intended to target the Complainant's trademarks in order to derive commercial benefit from the likelihood of association with said marks.
Furthermore, even though it was demonstrated that the Respondent's web site has today become known, the Panel would find applicable the reasoning of the panel in the decision Neteller plc v. Prostoprom,WIPO Case No. D2007-1713, where it was stated:
'It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become 'commonly known by' the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to 'create' a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy. In the Panel's view, the better interpretation of Paragraph 4(c)(ii) is that, to come within the safe harbor of that provision, a respondent (or his/her organization or business) must have been commonly known by the at-issue domain at the time of registration. There is no evidence of that in this case'.
The Panel finds that the above-described use of the disputed domain names to divert users to the Respondent's sites does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
In addition, the fact that the Respondent agrees to the cancellation of the disputed domain names <sbobet.mobi>, <sbobetcasino.com> and <sbobetgames.com>, further corroborates the fact that the Respondent has no rights or legitimate interests in said domain names.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interest in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
As highlighted in the factual section, the disputed domain names were registered by the Respondent several months after the filing of the Community trademarks SBOBET and SBO and five years after the Complainant's registration of the domain name <sbobet.com>, at which the Complainant operates its main web site.
Since neither 'sbobet' nor 'sbo' correspond to generic terms and the Respondent has used the disputed domain names, identical or confusingly similar to the trademarks SBOBET and SBO, in connection with web sites providing services competing with the Complainant's and targeting the same Internet users, located mainly in Asian countries, the Panel finds that the registration of the disputed domain names made by the Respondent cannot be ascribed to a mere coincidence.
Indeed, the documents and statements submitted by the parties, including the Respondent's consent to the cancellation of several of the disputed domain names incorporating the trademark SBOBET, suggest that the Respondent has no rights or legitimate interests in the disputed domain names and registered them in order to trade on the goodwill of the Complainant's trademark and to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the web sites to which the disputed domain names resolve and/or the services provided therein, according to paragraph 4(b)(iv) of the Policy.
The Respondent's diversion of Internet users to its own web sites providing gambling services indeed suggest that the Respondent, through the registration and use of the disputed domain names, intended also to disrupt the business of a competitor according to paragraph 4(b)(iii) of the Policy.
The Panel also finds that the Respondent's registration of at least two domain names, <ibcgames.com> and <ibcball.com>, similar to the domain name <ibcbet.com>, owned and operated by a competitor of the Complainant, and their redirection to the Respondent's web site 'www.ibet2u.com', suggests that the Respondent has on purpose registered domain names confusingly similar to third parties' distinctive signs in the field on online gambling in order to attract and divert users to its own web sites for profit.
In light of the above, the Panel concludes that the disputed domain names were registered and are being used in bad faith according to 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 names <sbobetcasino.com>, <sbobetgames.com>, <sbobet.mobi> and <sbocasino.com> be transferred to the Complainant.
Date: August 7, 2014