PointsBet Holdings Limited t/a PointsBet v. Tane Taneka / The Feature Enterprises Pty Ltd
Claim Number: FA2012001925039
Complainant is PointsBet Holdings Limited t/a PointsBet (“Complainant”), Australia, represented by Jürgen Bebber of Corrs Chambers Westgarth, Australia. Respondent is Tane Taneka / The Feature Enterprises Pty Ltd (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pointsbet.us> (the “disputed domain name”), registered with Instra Corporation Pty Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2020; the Forum received payment on December 15, 2020.
On December 15, 2020, Instra Corporation Pty Ltd.; confirmed by e-mail to the Forum that the <pointsbet.us> disputed domain name is registered with Instra Corporation Pty Ltd. and that Respondent is the current registrant of the name. Instra Corporation Pty Ltd.; has verified that Respondent is bound by the Instra Corporation Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pointsbet.us. Also on December 21, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
Additional Submissions:
On November 10, 2020, 5 days after the Respondent registered the disputed domain name, the Respondent emailed the Complainant to offer the disputed domain name for sale.
On December 8, 2020, the Respondent provided the Complainant with a copy of a “Confidential Domain Name Transfer Agreement”, in which the Respondent offered to sell and transfer the disputed domain name to the Complainant for USD 3,900. The sale never occurred.
On December 29, 2020, the Parties entered into an agreement to stay the proceedings to allow time for settlement discussions; on January 8, 2021, the Complainant requested that the stay be lifted, and the Forum complied.
On January 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers sports and racing betting products and services. Complainant has rights in the POINTSBET trademark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,830,226, registered on August 6, 2019) (hereinafter the “POINTSBET Mark”).
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s POINTSBET Mark since it incorporates the entire mark and simply adds the “.us” country code Top-Level Domain (“ccTLD”) to the POINTSBET Mark. Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
In an email dated January 3, 2021, Respondent agreed to transfer the disputed domain name to Complainant. The Panel finds that transfer of the disputed domain name should accompany findings on the three elements of the Policy, finding that a consent-to-transfer in this case is inappropriate. The Panel concludes that consent-to-transfer approach is a way for cybersquatters such as Respondent to avoid adverse findings against them.
The Panel finds that Complainant holds trademark rights in the POINTSBET Mark. The Panel also finds that Complainant has established that the disputed domain name is identical or confusingly similar to Complainant’s POINTSBET Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the POINTSBET Mark based on registration with the USPTO (e.g., Reg. No. 5,830,226, registered on August 6, 2019). Registration of a trademark with the USPTO demonstrates that a party has rights in that trademark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel concludes that Respondent holds no rights or legitimate interests in the disputed domain name. In order for a complainant to succeed under this element, it must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to the respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
Moreover, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the POINTSBET Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead inactively holds the disputed domain name and offers to sell it to Complainant for far in excess of its out-of-pocket costs. Under Policy ¶¶ 4(c)(ii) and (iv), failure to make active use of a disputed domain name and to offer to sell the disputed domain name to a complainant are not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make an active use of the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because the domain resolves to an inactive parking page. Failure to make active use of a disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).
Second, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent initially offered the disputed domain name for sale to Complainant for USD 3,900. Intent to sell a disputed domain name can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Moreover, attempting to sell the domain name for excess of out-of-pocket costs suggests bad faith registration and use under Policy ¶ 4(b)(i). Respondent requested USD 3,900 from Complainant for purchase of the disputed domain name, certainly in excess of Respondent’s out-of-pocket registration costs. Thus, the Panel finds that such conduct constitutes bad faith under Policy ¶4(b)(i).”).
Finally, the Panel finds that Respondent engaged in a pattern of bad faith registration and use. Per Policy ¶ 4(b)(ii), evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of bad faith registration. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010). Complainant provides evidence that in November 2020, at the same time that Respondent registered the disputed domain name, Respondent also registered multiple domain names consisting of third-party registered trademarks followed by the “.us” ccTLD. This action demonstrates that Respondent engages in a pattern of cybersquatting.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pointsbet.us> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: February 2, 2021
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