bwin.party services (the Complainant), an Austrian company belonging to the bwin group, recently won two separate Complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the World Intellectual Property Organization (WIPO). The Complaints concerned the domain names <bwlin.com>, <bwsin.com> and <bwion.com> (the Domain Names).
The Domain Name <bwion.com> was registered to a Swiss company, Interagentur AG (the First Respondent) and had never been used, and the Domain Names <bwlin.com>, <bwsin.com> were registered to a Ukrainian company, Cifagro enterprises, u.a. (the Second Respondent) and pointed to web pages displaying sponsored links.
The Complainant's group was engaged in online gaming, including sport betting, poker, casino games and skill games. Some of the Complainant's goods and services are offered on the website www.bwin.com. The Complainant contended that, as of October 2010, the bwin Group had about 20 million registered customers, in more than 25 core markets all over the world. The Complainant maintained that the trade mark BWIN was very famous.
The Complainant owned International and Community trade marks in the term BWIN which were registered in 2006 and 2009 respectively.
The Domain Name <bwion.com> was registered on 11 August 2006 while the Domain Names <bwlin.com> and <bwsin.com> were registered on 13 May 2008.
The Complainant filed Complaints with WIPO against the First Respondent and the Second Respondent (together the Respondents) on 24 June and 7 July 2011 respectively requesting a transfer of the Domain Names.
The Complainant's group has, to date, already recovered about 20 domain names in UDRP procedures. To be successful in a UDRP procedure, a complainant must evidence that:
- The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As for the first limb of the UDRP, the Complainant evidenced that the Domain Names were identical or confusingly similar to its BWIN trade marks and stated that the Domain Names contained common misspellings of the Complainant's trade mark.
The First Respondent did not reply to any of the Complainant's contentions. In response to the Complainant's allegations, the Second Respondent stated that the Domain Names did not sound like the Complainant's trade mark and were thus not identical or confusingly similar to the latter.
In both cases, the Panels considered that the addition of a letter to the trade mark BWIN was not sufficient to change the overall impression created by the Domain Names and thus found that the Domain Names were confusingly similar to the Complainant's trade mark. The Panels thus considered that the Complainant had established the first element of the UDRP.
Despite the confusing similarity, the Complainant still had to prove that the Respondents had no rights or legitimate interests in the Domain Names under the second limb referred to above. In general, whilst the overall burden of proof rests with complainants, panels have recognised that this may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore complainants are simply required to make out a prima facie case that respondents lack rights or legitimate interests. Once such prima facie case is made, it is the respondent who carries the burden of demonstrating rights or legitimate interests in the domain name.
In these cases the Complainant asserted that the Respondents had never been commonly known by the terms "bwion", "bwlin" or "bwsin". The Complainant further stated that the Domain Names <bwlin.com> and <bwsin.com> were pointing to web pages displaying sponsored links which allowed the Second Respondent to earn pay-per-click revenues.
The fact that the First Respondent had never used the Domain Name <bwion.com> and had not responded to the Complaint was sufficient for the Panel in this case to find that the First Respondent lacked rights and / or legitimate interests in the Domain Name.
The Second Respondent decided to stretch its credibility to the limit by responding that it had bought the Domain Names <bwlin.com> and <bwsin.com> for different projects which were to be set up later that year and would have been used for information websites regarding, respectively Linate Airport, "lin" being the official IATA Code for Milan Airport Linate and Singapore Changi Airport, where "sin" corresponds to the official IATA Code for Singapore. In this regard it submitted that this did not interfere with the Complainant or its trade marks and that the letters "bw" would be the abbreviation for "Best Way (to)" and that, therefore "bwsin" and "bwlin" would be the abbreviations of "best way to Linate" and "best way to SIngapore".
According to the Panel in this case, the Second Respondent's bare assertion that he intended one day to use the websites at the Domain Names <bwlin.com> and <bwsin.com> for information websites about Linate Airport and Singapore Changi Airport did not establish a legitimate interest because the Second Respondent had not provided evidence that could prove the seriousness of its intent and also because the Second Respondent did not explain why it did not opt for the real acronym of the alleged intended meaning, namely "bwt".
Neither of the Respondents was therefore found to have rights or legitimate interests in the Domain Names.
Thirdly, to establish bad faith on the Respondents' part, the Complainant referred to past facts: previous UDRP procedures involving the Respondents and the previous use of the Domain Names <bwlin.com> and <bwsin.com>.
The First Respondent had indeed been involved in a previous UDRP procedure filed by the company bwin Interactive Entertainment AG, the Complainant's predecessor, and thus, according to the Complainant, the First Respondent must have been aware of the Complainant's trade mark, particularly given that the term "bwion" has no meaning in itself.
Given (i) the prior proceeding involving the First Respondent and the Complainant's predecessor; (ii) the lack of use of the Domain Name <bwion.com>; and (iii) the typosquatting of the Complainant's trade mark, the Panel in the first case assumed that the First Respondent was, or should have been, aware of the Complainant's well-known trade marks and thus had registered and used the Domain Name <bwion.com> in bad faith.
Concerning <bwlin.com> and <bwsin.com>, the Complainant alleged that these Domain Names had been transferred to the Second Respondent further to a cease and desist letter addressed by the Complainant's representatives to their owner at that time, but that, before such transfer, the Domain Names had been used for phishing purposes. In addition, the Second Respondent had previously been involved in a UDRP procedure where it had reproduced a third party's trade mark. Therefore, according to the Complainant, the Second Respondent had shown a pattern of behaviour.
In addition, the Complainant submitted that the unauthorised use of the Complainant's trade mark by the Second Respondent to generate pay-per-click revenues constituted bad faith as it showed that the Second Respondent had acquired the Domain Names <bwlin.com> and <bwsin.com> primarily for the purpose of intentionally attempting to attract, for commercial gain, users to its websites or other online locations, by creating a likelihood of confusion with the Complainant's trade mark.
In its defence, the Second Respondent explained that, until "the project will go live, [they] ha[d] the domains parked and [we]re not using them" and that, on the websites at <bwlin.com> and <bwsin.com>, there were no advertisements relating to the Complainant's business. Indeed it had been held in several decisions under the UDRP that operation of pay-per-click websites could amount to a bona fide offering of goods or services.
However, in the circumstances of this case, including (i) the Complainant's extensive promotion and use of the trade mark BWIN; (ii) the previous redirection of the Domain Names <bwlin.com> and <bwsin.com> which the Second Respondent was certainly aware of; (iii) the typosquatting of the Complainant's trade mark; and (iv) the prior UDRP proceeding involving the Second Respondent, the Panel decided that the Domain Names <bwlin.com> and <bwsin.com> had been registered and used in bad faith.
In view of the above, the Panels in both cases ordered the transfer of the Domain Names to the Complainant.
These two cases are similar to the extent that they both involve typosquatting of a well known trade mark, but the circumstances of both cases are rather different: non-use of the Domain Name and failure to respond to the Complaint in one case; use of the Domain Names to resolve to parking pages and an attempt to show a legitimate interest in the Domain Names in the second case. The Respondents' intentions were, however, clear and these decisions show, if this is necessary, that the UDRP remains the most appropriate forum for deciding cases where respondents have tried to profit from the fame of a trade mark to generate payper- click revenues or hope to resell their domain name at a high price because it relates to a well known trade mark.
The two decisions are available at: