On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 101052
Time of Filing 2017-06-28 12:58:02
Disputed domain name DAFA01.NET , DAFA02.NET , DAFA03.NET , DAFA04.NET , DAFA05.NET , DAFA06.NET , DAFA07.NET , DAFA08.NET , DAFA09.NET , DAFA120.COM , DAFA5656.COM
Case Administrator
Name Aneta Jelenová
Complainant
Organization Emphasis Services Limited
Respondent
Name Fei Yu
Other Legal Proceedings
None of which the Panel is aware.
Identification of rights
The Complainant is the owner of various registered trade marks in a number of different jurisdictions that either comprise or incorporate the text "DAFA". These include, by way of example, Hong Kong registered trade mark no. 302048148 for the word mark DAFA in class 41 registered on 3 October 2011.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant, EMPHASIS SERVICES LIMITED, through its subsidiaries and licensees, operates websites offering online gaming and betting with licenses issued in the Philippines, Curacao, UK and the Isle of Man. The Complainant owns and operates several gaming sites under the brand “Dafa” (i.e.<dafabet.com> & <dafa888.com>).

The Complainant has, for 14 years, used the name “Dafa” in varying combinations to designate its online gaming and betting offerings.

The Complainant has registered its rights over the brand “Dafa” in Malaysia and Hong Kong and has likewise secured a CTM registration for the name and graphic representation (logo) for “Dafabet”.

“Dafabet” is a well-known mark through its various sponsorships of commercial clubs: a) Official Main Club Sponsor of Sunderland FC; b) Official Main Club Sponsor of Celtic FC; c) Official Main Club Sponsor of Burnley FC; d) Official International Betting Partner of Everton FC; e) Official Main Club Sponsor of Blackburn Rovers FC; f) Official Main Team Sponsor of Fnatic eSports; g) Official Betting Partner of Wales.

Dafabet was also named by eGaming Review as 23rd among the 40 most influential e-gaming operators in the world.

The domains involved in this complaint are identical and confusingly similar to the brands owned by the Complainant as they all use the prefix “dafa”, with a series of numbers and letters attached to the domain. Further, an examination of the content of all domains reveal that they are basically clones of the Complainant’s website and are illegally using the Complainant’s graphics, images, designs, content and logos.

The Respondent does not have a legal right to use the name “dafa” as part of its domain name. The Respondent is not in any way connected with the Complainant nor is it authorized to use its intellectual property rights for its operations as a licensee or in any capacity. Further, the fact that aside from using the word “dafa” in its domains, the Respondent is likewise illegally using the Complainant’s graphics, images, designs, content and logos, all of which are indicative of Respondent’s intention to deceive users to think that their websites are affiliated with the Complainant.

The Respondent is using “dafa” in the disputed domain names in bad faith and its activities fall within paragraph 4(b)(iv) of the UDRP.

As evident from screenshots of Respondent’s websites, Respondent is not only using the marks of the Complainant in the disputed domain names, but it has virtually cloned the website by illegally using the Complainant’s graphics, images, designs, content and logos. This is a blatant to attempt to deceive the public in thinking that they are associated with the Complainant and transact business with them.

The Respondent has been sent a cease and desist letter, but no reply was received and they have persisted in their illegal activities.
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii)of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
Each of the disputed domain names comprises the entirety of the Complainant’s registered Hong Kong trade mark combined with a number and and the Top-Level Domain “.net” or ".com". The Complainant has thereby clearly demonstrated that each of the disputed domain names is confusingly similar (as that term is understood in the UDRP) to a trade mark in which the Complainant has rights (see, for example, Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227).

Further, the Panel accepts that the disputed domain names have been registered and have been used falsely to impersonate the Complainant, by reproducing on a website or websites operating from the disputed domain names the Complainant's own websites. There is no right or legitimate interest in the use of a domain name for such impersonation and such registration and use is in bad faith (see, for example, IM Production v. Wen Dong Wang, WIPO Case No. D2017-0062).
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) are to be
DAFA01.NET Transferred to Emphasis Services Limited
DAFA02.NET Transferred to Emphasis Services Limited
DAFA03.NET Transferred to Emphasis Services Limited
DAFA04.NET Transferred to Emphasis Services Limited
DAFA05.NET Transferred to Emphasis Services Limited
DAFA06.NET Transferred to Emphasis Services Limited
DAFA07.NET Transferred to Emphasis Services Limited
DAFA08.NET Transferred to Emphasis Services Limited
DAFA09.NET Transferred to Emphasis Services Limited
DAFA120.COM Transferred to Emphasis Services Limited
DAFA5656.COM Transferred to Emphasis Services Limited
Panellists
Name Matthew Harris
Date of Panel Decision 2017-08-11
Publication of the Decision
Publish the Decision