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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bwin Interactive Entertainment AG v. Interagentur AG

Case No. D2008-1454

1. The Parties

The Complainant is bwin Interactive Entertainment AG, of Vienna, Austria, represented by Brandl & Talos, Austria.

The Respondent is Interagentur AG, of Brig, Switzerland, represented by Simone Heyers, Germany.

2. The Domain Name and Registrar

The disputed domain name <betan-win.com> is registered with EPAG Domainservices GmbH, Germany.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2008. On September 25, 2008, the Center transmitted by email to EPAG Domainservices GmbH a request for registrar verification in connection with the disputed domain name. On September 26, 2008, EPAG Domainservices GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. In response to a notification by the Center that the Complaint was administratively deficient with regard to another disputed domain name that was originally part of the Complaint, the Complainant filed an amendment to the Complaint on October 22, 2008, restricting the Complaint to the disputed domain name <betan-win.com>.

On October 22, 2008, the Center informed the parties that the language of the administrative proceeding should be the language of the registration agreement for the disputed domain name and that the language of the relevant registration agreement was German. In its application dated October 27, 2008 the Complainant requested that English be the language of the administrative proceeding. On November 18, 2008, the Respondent agreed to this, on condition that the Response could be filed in German, waiving its right to have the Complaint translated into German. The Response was later on filed in German language.

The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 18, 2008. On November 18, 2008, the Respondent asked for an extension of this due date which was granted by the Center until November 24, 2008. The Response was filed with the Center on November 24, 2008.

On December 2, 2008, the Complainant filed a supplemental submission with the Center, as did the Respondent on December 11, 2008.

The Center appointed Brigitte Joppich as the sole panelist in this matter on December 22, 2008. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is the parent company of the bwin-Group, one of the world’s leading providers of online gaming entertainment, and has been listed on the Vienna Stock Exchange since March 2000. From August 25, 1999 to July 21, 2006 the Complainant was named BET & WIN Interactive Entertainment AG (betandwin.com Interactive Entertainment AG). In 2003 and 2004, the Complainant spent EUR 3,095,000 respectively EUR 12,434,000 on the promotion of its trademarks, especially on the promotion of the term “betandwin”. Related marketing activities at the time included Moto GP, Austrian Skiing Events, BA-CA Tennis Trophy and several international soccer games.

The logo “betandwin.com” was registered as an international trademark (IR No. 741099) on July 28, 2000 (the BETANDWIN.COM Mark) for various services, including the creation of software, advertising, entertainment (in particular performance of sports bets) and internet services. The Complainant and related companies also own many domain names containing the term “betandwin”, including <betandwin.com>, <betandwin.ag>, <betandwin.at>, <betandwin.ch>, <betandwin.de>, <betandwin.eu>, <betandwin.info>, and <betandwin.org>.

The disputed domain name was first registered on November 26, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain name is confusingly similar to the BETANDWIN.COM Mark in which the Complainant enjoys rights. More particularly, on the second level, both domain names have nine signs and the sole difference is the “-” instead of the letter “d” at the sixth position. As a result, the terms look and sound very similar, and typing errors may lead to confusion as well.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, as it does not own any trademarks, names or other rights justifying a legal interest in the use of the disputed domain name, nor does it run a business under the disputed domain name, which has only been used to link to websites of competitors of the Complainant.

(3) The Complainant finally contends that the domain name was registered and is being used in bad faith. As to bad faith registration, comprehensive promotion activities of the Complainant took place at the time the Respondent registered the disputed domain name. The term “betandwin” was and still is well known in Europe as a designation for the Complainant and its affiliates. The Complainant further alleges that the Respondent’s sole intention when registering the disputed domain name was to exploit the reputation of the term “betandwin”. Furthermore, the Complainant contends that the term “betan-win” has no meaning and is more likely to be a variation of the term “betandwin”. As to bad faith use, the Complainant states that the Respondent used the disputed domain name to install links to competitors of the Complainant. Such links are most likely sponsored links, whereby the Respondent uses the Complainant’s trademarks to serve its own monetary interests in an infringing way.

B. Respondent

The Respondent contends that there are no reasons supporting the transfer of the disputed domain name, making it clear that it will not accept this decision if it results in a transfer of the disputed domain name:

(1) First of all, the Respondent contends that there is no confusing similarity: The disputed domain name was registered in 2003 together with the domain names <betan.de>, <betaninteractive.de> and <betaninteractive.com>. It states that it was planned to create a company called BETAN InterActive, which, however, never came into existence, and due to prior rights of third parties, the domain names <betan-shop.de> and <betan-shop.com> were not registered either. The Respondent further contends that in 2003 it was necessary to heavily advertise “bet & win”, which was originally a descriptive notion only, and that the term “betan” could not infringe “bet & win”. Furthermore, the term “interactive” should also be considered as part of the Complainant’s present as well as its former company name.

(2) Moreover, the disputed domain name <betan-win.com> is in the opinion of the Respondent not a typographical error of <betandwin.com>.

(3) The Respondent further contends that the confusing similarity claimed by the Complainant does not stem from the disputed domain name itself. The website at such domain name originally contained a link to a competitor of the Complainant, i.e. <bet-at-home.com>. It was, however, changed upon the Complainant’s request to a link to the website at <bet1.at>. Domain name disputes based on similarity arising only from the context of the use of a domain name should not be decided under the UDRP and would not justify a transfer of the disputed domain name, which is the ultima ratio only. This is supposed to be even more so in the present case as the Complainant changed its trademark a few years ago.

Finally, the Respondent asks not to publish this decision on the Internet.

6. Discussion and Findings

The Panel must first decide about the proper language of this administrative proceeding. Paragraph 11(a) of the Rules states that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. While the language of the registration agreement is German in the present case, the Complainant has requested that English be the language of this administrative proceeding and the Respondent agreed to such request as stated above. In the presence of this mutual agreement, the Panel finds that English shall be the language of this proceeding, while documents in German language (that is mastered by both parties) have also been admitted and considered.

The second point to be dealt with is the admissibility of a supplemental submission of both parties. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. In particular, if the respondent raises objections that could not have been anticipated when the complaint was filed, a panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151). The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Response itself disclose any new facts or new legal authority unavailable at the time the Complaint was submitted. Instead, the Complainant appears to have made the supplemental filing solely to reply to the Response. In the present case, such a reply is not justified under the Rules (see AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Universal City Studios, Inc., supra; AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485). Therefore, the Panel elects not to accept the Complainant’s supplemental submission and has not relied on it in reaching this Decision and, consequently, not on the Respondent’s reply thereto.

Under paragraph 4(a) of the Policy, the complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the complainant’s trademark; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first and second levels of the disputed domain name <betan-win.com> include the Complainant’s BETANDWIN.COM Mark in its entirety except that the letter “d” is replaced by a hyphen. The Panel believes that even if this is not a typical typographical error the average person will readily identify the term “betandwin.com” in the disputed domain name. Furthermore, the domain name is phonetically almost identical to the BETANDWIN.COM Mark as there is a tendency in spoken English to omit the last letter (“d”) of the word “and”.

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, the use by the respondent 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 customers or to tarnish the trademark or service mark at issue.

Even though paragraph 4(c) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that the Complainant has to make a prima facie case to fulfill the requirements of paragraph 4(c) of the Policy. The burden of proving that the respondent has rights or legitimate interests in the disputed domain name will thereafter n lie with the respondent.

The Complainant indicated that the disputed domain name was meant to be used for the business activities of a company called “BETAN InterActive”. However, according to the Respondent, such company never came into existence. In the absence of any other evidence supporting the preparations to use a name corresponding to the domain name in connection with a bona fide offering of goods or services, the mere registration of one or more domain names is not sufficient to establish rights or legitimate interests in such domain name under paragraph 4(c)(i) of the Policy. Moreover, in the view of the Panel it is more likely than not that the Respondent relied on the similarity of the disputed domain name to the Complainant’s BETANDWIN.COM Mark rather than on an original name “betan” for two reasons: First, the Respondent has not given any explanation nor provided any evidence regarding its choice of “betan”. And, second, since the Respondent claims to have been careful not to infringe third parties rights, it is hard to give credit to its alleged belief that the Complainant’s BETANDWIN.COM Mark would not be infringed by the disputed domain name. Any eventual use of the disputed domain name therefore could not have been made bona fide.

The Respondent has not been commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy. It is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue, under paragraph 4(c)(iii) of the Policy, either.

Accordingly, the Panel finds that that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy, and that the Respondent has not met its burden of proving rights or legitimate interests in accordance with paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the complainant must show that the domain name was registered in bad faith and is being used in bad faith.

Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s trademark by attracting Internet users to a website for commercial gain (see America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101).

The Complainant is widely known internationally and has invested large sums into the promotion of both its original name “betandwin.com” and its current name “bwin”. It is to this Panel inconceivable that the Respondent registered the disputed domain name in 2003 without knowledge of the Complainant’s rights in the BETANDWIN.COM Mark and, in fact, the Respondent does not deny such knowledge. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s BETANDWIN.COM Mark and therefore in bad faith under paragraph 4(a)(iii) of the Policy.

As to bad faith use, by incorporating the BETANDWIN.COM Mark almost completely into the disputed domain name and by using the website under such domain name as a website to provide links to a direct competitor of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <betan-win.com> be transferred to the Complainant.

The Respondent requested not to publish this administrative decision. Paragraph 4(j) of the Policy provides that all decisions under the Policy will be published in full over the Internet, except when a panel determines in exceptional circumstances to redact portions of its decision. The Respondent did not bring forward any arguments justifying such an exception. The mere fact that the Respondent could be adversely affected by a decision does not justify, in itself, restrictions on its publication (see CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071; Associated British Foods plc v. Pacific Game Technology (Holding) Limited, WIPO Case No. D2005-0416; The Southern Company v. Texas International Property Associates, WIPO Case No. D2007-0773). The Panel therefore denies the Respondent’s request not to publish this administrative Decision.

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Brigitte Joppich
Sole Panelist

Dated: January 5, 2009