“188” domains and trademarks.
Cube Limited of Douglas, Isle of Man, United Kingdom, has been enforcing its “188” trademark quite aggressively.
We’ve reported on numerous UDRP cases since 2016, against domain names that begin with the three digit number “188:”
This time around, the following seven digit (NNNNNNN) .com domains were affected:
1880601.com
1880602.com
1880603.com
1880604.com
1880605.com
1880607.com
1880608.com
1880609.com
In deciding the case, the WIPO panelist made a scary statement:
The Panel finds that the disputed domain names [ … ] are confusingly similar to the Complainant’s 188 marks, in which the Complainant has established rights through registration and use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.
In this case, the Complainant’s 188 marks are clearly recognizable in the disputed domain names. The Respondent’s inclusion in the disputed domain names of additional numerals following “188” does not dispel the confusing similarity of the disputed domain names to the Complainant’s marks.
Somehow, the numeric serialization of these domains doesn’t seem to be understood by the panelist: these are numbers, and as such, they can and do begin with a set of digits (“188”) that does match a trademark. It’s impossible not to.
There was no response by the Respondent, who thus lost the domains. Full details about this decision follow:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cube Limited v. Gang Zhen Xiong
Case No. D2018-15321. The Parties
The Complainant is Cube Limited of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Farrer & Co., United Kingdom.
The Respondent is Gang Zhen Xiong of Manila, Philippines.
2. The Domain Names and Registrar
The disputed domain names <1880601.com>, <1880602.com>, <1880603.com>, <1880604.com>, <1880605.com>, <1880607.com>, <1880608.com>, and <1880609.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2018. On July 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 10, 2018, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on August 27, 2018. 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 offers, live casino entertainment, sports betting and gaming online at “www.188bet.com” (“the Complainant’s website”). The Complainant’s website is accessible in a number of languages, including English and Chinese script, and averages more than one million unique visitors and thirty million page views per month.
The Complainant owns European Union trademark (“EUTM”) registrations for the 188 mark, EUTM Reg. 008390379, applied for on June 26, 2009, and registered on March 22, 2010; and the 188BET mark, EUTM Reg. 008425324, applied for on July 14, 2009, and registered on March 22, 2010. The Complainant also has registered the 188BET mark in the United Kingdom, UK 3017215, applied for on August 8, 2013, and registered on November 8, 2013; and Hong Kong (HK), China, Reg. 302702655, applied for on August 12, 2013, and registered on March 27, 2014. Additionally, the Complainant has registered the 188BET word plus design mark trademark (logo), UK Reg. 3017207, applied for on August 8, 2013, and registered on November 8, 2013; and EUTM Reg. 008449597, applied for on July 3, 2009, and registered on March 22, 2010. The Complainant’s 188BET logo is reproduced below.
logo
The Respondent registered the disputed domain names <1880601.com>, <1880602.com>, <1880603.com>, <1880604.com>, <1880605.com>, <1880607.com>, <1880608.com>, and <1880609.com> on October 26, 2017. The disputed domain names resolve to active betting and gaming websites. The Respondent prominently displays banners such as the one reproduced below on the websites to which the disputed domain names resolve.
logo
The Respondent also has included on his websites a footer stating that “188 Jinbaobo belongs to Cube Co, Ltd.” The footer includes the Complainant’s registered address. The Respondent’s websites display without authorization the Isle of Man Gambling Supervision Commission (“IOMGSC”) coat of arms. The Respondent’s websites also include logos of English Premier League (EPL) football clubs with whom the Complainant have sponsoring arrangements.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s 188 and 188BET marks (referred to collectively as “the 188 marks”). The Complainant explains that the disputed domain names wholly incorporate the Complainant’s 188 mark, which according to the Complainant is the dominant aspect of the disputed domain names. The Complainant maintains that its 188 marks are clearly recognizable in the disputed domain names, and asserts that the Respondent’s inclusion in the disputed domain names of additional numerals following “188” does not serve to dispel the confusing similarity of the disputed domain names to the Complainant’s 188 marks.
The Complainant contends that the Respondent’s websites adopt the look and feel of the Complainant’s website. The Complainant points to the prominent display of colorable imitations of the Complainant’s 188 marks and logos; the use of the Complainant’s name and company address; a display of the logo of IOMGSC, the licensing authority that regulates the Complainant; and logos of EPL football clubs that have sponsoring or partnering arrangements with the Complainant. The Complainant asserts that the Respondent through registration and use of the disputed domain names is targeting the Complainant, in order to mislead Internet users into believing that the Respondent’s websites are affiliated with or sponsored by the Complainant.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant represents that the Respondent has not been authorized to the use the Complainant’s 188 marks and logos. The Complainant asserts that the Respondent is using the disputed domain names to divert Internet users to counterfeit websites, attempting to exploit and profit from the goodwill and reputation of the Complainant’s 188 marks. The Complainant thus submits that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The Complainant further maintains that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, but instead is deliberately using the disputed domain names to create Internet user confusion and divert unsuspecting Internet users to the Respondent’s websites.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith. The Complainant asserts that the Respondent clearly was aware of the Complainant’s marks when registering the disputed domain names, noting the Complainant’s use of the 188 marks since as early as 2005. The Complainant reiterates that the Respondent is attempting to pass itself off as the Complainant, and concludes that the Respondent registered and has used the disputed domain names intentionally to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain names <1880601.com>, <1880602.com>, <1880603.com>, <1880604.com>, <1880605.com>, <1880607.com>, <1880608.com>, and <1880609.com> are confusingly similar to the Complainant’s 188 marks, in which the Complainant has established rights through registration and use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the Complainant’s 188 marks are clearly recognizable in the disputed domain names.2 The Respondent’s inclusion in the disputed domain names of additional numerals following “188” does not dispel the confusing similarity of the disputed domain names to the Complainant’s marks. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 The prominent use of the Complainant’s marks and logos on the Respondent’s website exacerbates the confusing similarity of the disputed domain names to the Complainant’s marks, and reflects targeting of the Complainant’s marks.4
Top-Level Domains (“TLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s 188 marks. The Respondent notwithstanding has registered eight disputed domain names that appropriate the Complainant’s 188 mark, resolve to websites displaying the Complainant’s marks or colorable imitations thereof, and contain a footer representing that the online casino gambling, betting and gaming services are provided by the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 has been commonly known by the domain name, even if it 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the attendant facts and circumstances in this case that the Respondent was aware of the Complainant’s rights in the 188 marks when registering the disputed domain names. Internet visitors diverted to one of the Respondent’s websites could easily be misled to believe that the website they arrived at is affiliated with, sponsored, or endorsed by the Complainant. Absent any explanation from the Respondent, the Panel finds that the Respondent’s use of the disputed domain names does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s 188 marks, and has not been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.
For the reasons discussed under this and the preceding heading, the Panel concludes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes based on the record that the Respondent was aware and had the Complainant’s 188 marks firmly in mind when registering the disputed domain names. The Panel further finds from the record that the Respondent registered the disputed domain names based on the attractiveness of the Complainant’s 188 marks to divert traffic to the Respondent’s websites. Having regard for the facts and circumstances in the record, the Panel concludes that the Respondent by the totality of his actions has demonstrated that his primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 names <1880601.com>, <1880602.com>, <1880603.com>, <1880604.com>, <1880605.com>, <1880607.com>, <1880608.com>, and <1880609.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: September 10, 20181 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein.
4 See WIPO Overview 3.0, section 1.15.
5 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
