Sportsbook Software AG v. Whois Privacy Protection Service, Inc. / Whois Agent
Claim Number: FA1212001476587
Complainant is Sportsbook Software AG (“Complainant”), represented by Christoph Leitgeb, Austria. Respondent is Whois Privacy Protection Service, Inc. / Whois Agent (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <interwette.com>, registered with KEY-SYSTEMS GMBH (“Key Systems”).
The undersigned, David H. Tatham, 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 19, 2012; the Forum received payment on December 19, 2012. The Complaint was submitted in both German and English.
On December 20, 2012, Key Systems confirmed by e-mail to the Forum that the domain name <interwette.com> is registered with it and that Respondent is the current registrant of the name. Key Systems has verified that Respondent is bound by its 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”) and the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”).
On December 27, 2012, the Forum served the German Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of January 16, 2013 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@interwette.com. Also on December 27, 2012, the German language 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.
A timely Response was received and determined to be complete on January 3, 2013.
On January 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H. Tatham 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the proprietor of an International registration of the trademark INTERWETTEN (Reg. No. 754915), which is extended to many different countries, which covers services in Classes 38, 41 and 42, and which claimed the priority of an Austrian registration dated November 10, 2000. Complainant contends that this mark is confusingly similar to the disputed domain name.
Complainant also contends that Respondent has no rights or legitimate interest in the disputed domain name because it has not used the name in connection with any commercial activities, but only to forward customers to another website, namely <bwin.com>, which is operated by one of Complainant’s competitors.
By contrast, Complainant alleges that the name INTERWETTEN it is very well known, especially in Europe and that this name is used by many of its customers to characterize Complainant’s activities as a provider of sports betting through the medium of the domain name <interwetten.com>.
As far as Complainant knows, Respondent has no rights to the disputed domain name, whilst Complainant has rights in the name and trademark INTERWETTEN which was already registered at the time when the disputed domain name was registered.
Whilst Complainant is well-known in many different countries, Complainant asserts that Respondent is not known at all for the domain name which is the subject of this dispute.
Anyone making a search for ‘interwette’ on the ‘Google’ search engine would find that nearly all of the results relate to Complainant but none to Respondent or to its (non-existent) business.
Complainant contends that it has undoubted rights in the trademark INTERWETTEN and the domain name <interwetten.com>, whilst Respondent has none in the disputed domain name <interwette.com>.
Complainant concludes by asserting that because the disputed domain name is used exclusively to automatically forward users to a competitors’ website, the Respondent can only have registered the disputed domain name for the purpose of letting the name be used by one of Complainant’s competitors, and that this is evidence of bad faith on the part of Respondent.
B. Respondent
Respondent’s response took the form of a letter to the Forum from “Daniel” at “Finlead AG”. This is set out below in its entirety –
“First of all we want to point out that the domain was not registered in bad faith.
The domain was first registered in February of 2004 so the domain is almost 9 years of age. During our ownership we never breached or violated competition regulations. The domain does not resolve. No harm occurred. The complainant never contacted us prior to this case in any matter regarding this domain. Neither did we try to sell the domain to the complainant, nor to any other party.
Secondly it is our conviction that the terms "Inter" and "Wette" are of generic nature and therefore not protected by trademark law.
Inter is a latin word with several meanings, in this case an acronym for "Internet". "Wette" on the other hand is a generic german word meaning "a bet" or the imperative of "bet". Both terms deliver millions of different google hits. There are dozens of websites operating with these terms - even in the same competitive market as the complainant. Examples are: <Internetwetten.com>, <Wetten.de>, <Sportwetten.com>, <Sportwetten.de>, <Interbets.com>, and <Interbet.com>.
We also want to point out that various TLD´s under the term "Interwette" - a term the complainant claims is trademarked - are not even registered. Examples are <Interwette.net>,<Interwette.org>, <Interwette.info>.
We reserve the right to deliver additional information during the 20 days deadline. For reasons of precaution we want to make clear that we will challenge any verdict to our disadvantage in [S]wiss courts.”
Neither party filed an Additional Submission.
Complainant is an Austrian company which operates a website through the medium of which its clients may place bets on various sporting events.
Respondent has not provided the Panel with any information about itself or its activities.
According to paragraph 11(a) of the Rules, the language of the proceedings shall be the language of the Registration Agreement. In this case that language is German, and both the Complaint and the Response were filed in that language. The Forum also issued its Commencement Notice in German. However both parties also supplied translations of their submissions into English, thus demonstrating their understanding of that language.
The Panel determines that the language requirement has been satisfied, but because both parties submitted pleadings in English, and because the Panel’s first language is English, the Panel has determined that the remainder of the proceedings should be conducted in English and will this decision is therefore issued in that language.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Under this heading, Complainant relies upon a single International Registration of the trademark INTERWETTE. This is dated March 27, 2001, so it has been registered for nearly 12 years, and it is extended to 58 different countries. This is sufficient for the Policy, and the Panel believes that the mark is confusingly similar to the disputed domain name <interwette.com>. This is because the two names are identical apart from the removal from the domain name both of a letter ‘N’ and adding the gTLD ‘.com’.
It was said, for example, in Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), that by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks. Also, in Google Inc. v. DktBot.org FA 186993 (Nat. Arb. Forum Aug. 4, 2004) it was said that the mere addition of a single letter to a complainant’s mark does not remove the respondent’s domain names from the realm of confusingly similarity in relation to the complainant’s mark. Both of these Decisions were quoted with approval in W.W. Grainger, Inc, v. Above.com Domain Privacy, FA1334458 (Nat. Arb. Forum Aug. 24, 2010) where the mark in question was GRAINGER and the disputed domain name <graiinger.com>.
In addition, it is by now well established that, when comparing a disputed domain name with a trademark, a gTLD such as – in this case – “.com” should be disregarded. SeeRollerblade, Inc, v. McCrady, D2000-0429 (WIPO June 25, 2000), in which the Panel found that a top level of the domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See also Bank of America Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) holding that attaching a gTLD to a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”.
In the opinion of the Panel, the disputed domain name is confusingly similar to Complainant’s name and trademark, and that paragraph 4(a)(i) of the Policy is therefore proven.
Under this heading it was held, for example, in Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug.8, 2006), that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in a domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in the domain name. Likewise, in AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) it was said that “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”.
In this case, the Panel believes that Complainant has made out a prima facie case, but that Respondent has partially succeeded in rebutting it.
Complainant contends that Respondent is not commonly known by the disputed domain name, alleging that a search on the internet for the word “interwette” results largely in results connected with Complainant, and none of them with Respondent or its business activities. It is also notable that the WHOIS information connected with the domain name <interwette.com> identifies “Sportsbook Software AG v. Whois Privacy Protection Service, Inc. / Whois Agent” as the registrant.
It was held, for example, in Tercent Inc. v. Lee Yi FA139720 (Nat. Arb. Forum Feb. 10, 2003) that one factor in determining that paragraph 4(c )(ii) is not applicable is that “nothing in Respondent’s WHOIS information implies that Respondent is commonly known by the disputed domain name”. This was confirmed in M. Shanken Commc’ns, Inc. v. Worldtravelersonline.com, FA 740335 (Nat. Arb. Forum August 3, 2006) where the Respondent was not commonly known by the disputed domain name <cigaraficionada.com> based on the WHOIS information and other evidence in the record).
Complainant also contends that Respondent uses the disputed domain name to forward Internet users to one of Complainant’s competitors online, and that this is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy, and so not a demonstration of any legitimate interests in the disputed domain name. It was held in Compania Mexicana de Aviacion, S.A. de C.V. dba Mexicana Airlines v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), that the respondent did not demonstrate a bona fide offering of goods or services, or a legitimate noncommercial or fair use by causing the resolving website to link to other travel products and services in direct competition with the complainant’s business.
As a consequence, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name and that paragraph 4(c)(ii) of the Policy is proved.
Paragraph 4(b) of the Policy sets out four examples that could prove that a respondent has registered and used a disputed domain name in bad faith. Two of these do not apply in this case, because there is no evidence that it was primarily registered in order to sell it, or that Respondent has been in the habit of registering domain names with a view to preventing a mark owner from reflecting his mark in a corresponding domain name.
However, because of the great similarity between Complainant’s trademark INTERWETTE and the disputed domain name<interwette.com>, it could be said that Respondent may have tried to attract users to his website by creating a likelihood of confusion with a Complainant’s trademark, and that the domain name could have been registered primarily for the purpose of disrupting the business of a competitor.
But the only evidence for either of these propositions is a bald statement by Complainant, without any supporting evidence, that Respondent is only using the disputed domain name to forward customers directly to another website which is operated by one of Complainant’s competitors.
However Complainant has provided no proof thereof, and it was held for example, in Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum March 9, 2005) that the complainant had failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish that paragraph 4(a)(iii) had been infringed. It was also held in Graman USA Inc. v. Shenzhen Graman Industrial Co., FA 133676 (Nat. Arb. Forum January 16, 2003) that that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith.
Respondent states that it never attempted to sell the domain name to Complainant or to any other party, even though Complainant never made any such allegation. But, as noted above, Complainant does contend that Respondent is only using the disputed domain name to forward customers directly to another website which is operated by one of Complainant’s competitors.
In response to this allegation, Respondent makes the assertion that “the domain name does not resolve,” and that “no harm occurred” as a result of its registration and use of the <interwette.com> domain name. This could be read as a denial that the website forwards Internet users to another website, but there is no actual evidence for the claims on this point by either party.
The Panel notes that, for example, in Miele, Inc. v. Absolute Air Cleaners & Purifiers, D2000-0756 (WIPO Sept.11, 2000) the Panel refused to transfer the domain name where it was alleged that the respondent used the domain name in bad faith by linking it to another website. However that case is not strictly relevant because the panel also noted that the respondent had registered and used the disputed domain name for use in connection with his dealership for the complainant’s appliances. There is nothing similar to this in the present case.
Respondent also states, quite correctly, that the disputed domain name is comprised entirely of common terms that have many meanings apart from their use in Complainant’s INTERWETTEN mark. He further states that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. This too has been held to be correct. It was held, for example, in Zero Int’l Holding GmbH & Co KG v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) that "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis". It was also said in Target Brands, Inc. v. Eastwind Grp., FA 267475 (Nat. Arb. Forum July 9, 2004) that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term. Also, in Miller Brewing Co.. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003), it was said that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith.
The Panel has therefore concluded that there is in fact no clear evidence of bad faith on the part of Respondent, and that paragraph 4(a)(iii) has not been proved.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <interwette.com> domain REMAIN WITH Respondent.
David H. Tatham, Panelist
Dated: January 22, 2013
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