mSolutions Holdings Ltd. v. guang li
Claim Number: FA2108001961267
Complainant is mSolutions Holdings Ltd. (“Complainant”), represented by Stevan H. Lieberman of Greenberg & Lieberman, LLC, District of Columbia, USA. Respondent is guang li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <saibo365.vip>, <saibo365.com>, and <saibo365.bet> (collectively “Domain Names”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2021; the Forum received payment on August 26, 2021.
On August 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <saibo365.vip>, <saibo365.com>, and <saibo365.bet> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 31, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@saibo365.vip, postmaster@saibo365.com and postmaster@saibo365.bet. Also on August 31, 2021, 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.
On September 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant, mSolutions Holdings Ltd., offers online sports gaming and live online casino services. Complainant has common law rights in the SPORTSBET.IO mark based upon use in commerce since at least 2013. Respondent’s <saibo365.vip>, <saibo365.com>, and <saibo365.bet> domain names are confusingly similar to Complainant’s SPORTSBET.IO mark because they consist of a Chinese translation of the mark, with the addition of the number “365” and a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <saibo365.vip>, <saibo365.com>, and <saibo365.bet> domain names because Respondent is not commonly known by the Domain Names and is not licensed or authorized to use the SPORTSBET.IO mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <saibo365.com>, and <saibo365.bet> domain names to redirect to a website (“Respondent’s Website”) located at the <saibo365.vip> domain name. At the Respondent’s Website Respondent offers gambling services in direct competition with Complainant and makes direct reference to Complainant’s SPORTSBET.IO mark by including a prominent reproduction of a footballer sponsored by Complainant bearing the SPORTSBET.IO mark and a link to Complainant’s website at www.sportsbet.io.
Respondent registered and uses the <saibo365.vip>, <saibo365.com>, and <saibo365.bet> domain names in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to its website where it offers services which compete directly with Complainant’s business. Additionally, Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the SPORTSBET.IO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SPORTSBET mark. Each of the Domain Names is confusingly similar to Complainant’s SPORTSBET mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 domain name should be cancelled or transferred:
(1) the 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 domain name; and
(3) the domain name has been registered and is being used in bad faith.
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”).
Complainant does not have any registered trade mark rights in the SPORTSBET.IO mark. It is therefore necessary to consider whether Complainant holds common law rights in the SPORTSBET.IO mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant mSolutions Holdings Ltd., Inc. has since 2013 provided online sports gambling services from the website www.sportsbet.io under the SPORTSBET.IO mark. Complainant has invested considerable funds in promoting the SPORTSBET.IO mark including through investing over 30 million pounds sterling into sponsorship featuring the SPORTSBET.IO mark including sponsoring Premier League clubs Arsenal FC, Southhampton FC and other soccer clubs such as Watford FC and CF Flamengo.
The Panel is satisfied from Complainant’s evidence as to length and manner of use that Complainant’s use of the SPORTSBET.IO mark to promote its gambling services on its website at www.sportsbet.io and through other media is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the SPORTSBET.IO mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that each of the Domain Names is confusingly similar to the SPORTSBET.IO mark as they each consist of a Chinese translation of the mark (minus the .io gTLD), with the addition of the number “365” and a gTLD. A domain name may be considered confusingly similar to a mark under Policy ¶ 4(a)(i) where the domain name and mark are foreign equivalents. See Register.com, Inc. v. Int’l Languages Inc., FA 558106 (Forum Nov. 9, 2005) (“Since Respondent chose <registro.com> as a Spanish match for Complainant’s REGISTER and REGISTER.COM marks, it seems appropriate to apply the doctrine of foreign equivalents in this case, as permitted under the Rules which allow a Panel to apply any law or precedent it finds applicable to a particular case.”). Further, adding numbers and a gTLD to a mark is generally insufficient to negate confusing similarity. See Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”).
In support of the above conclusion the Panel notes that section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that “In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Names. The Panel finds that the intention of Respondent to mislead Internet users into thinking it is connected to Complainant confirms the confusingly similar nature of the Domain Names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the SPORTSBET.IO mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “guang li” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
Each of the Domain Names has (prior to the commencement of the proceeding) resolved or directed visitors to the Respondent’s Website which is a website that offers competing gambling services while predominantly displaying the SPORTSBET.IO mark giving the impression that it is associated with or connected to Complainant. The use of a confusingly similar domain name to resolve to a webpage that offers services that directly compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, June 18, 2019), Respondent had actual knowledge of Complainant’s SPORTSBET.IO mark since the Respondent’s Website makes multiple references to Complainant and offers services in competition with Complainant. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register three domain names that contain the Chinese translation of the SPORTSBET.IO mark and use them to redirect visitors to a website offering gambling services in direct competition with the Complainant (while making reference to the SPORTSBET.IO mark) other than to take advantage of Complainant’s reputation in the SPORTSBET.IO mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s SPORTSBET.IO mark for commercial gain by using the confusingly similar Domain Names to resolve to a website that, through the use of the SPORTSBET.IO mark, misleadingly suggested that it was connected to the Complainant and offered gaming services in direct competition with the Complainant’s services. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saibo365.vip>, <saibo365.com>, and <saibo365.bet> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 23, 2021
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