Decision for dispute CAC-UDRP-107632

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of a number of trademark registrations for 1X, 1XBET and 1XGAMES (the “1X, 1XBET and 1XGAMES trademarks”), including the following representative registrations:

− the European Union trademark 1X (combined) with registration No. 018669983, registered on 22 June 2022 for services in International Classes 35, 41 and 42;

 − the European Union trademark 1XBET (word) with registration No. 014227681, registered on 21 September 2015 for services in International Classes 35, 41 and 42;

 − the European Union trademark 1XBET (combined) with registration No. 017517327, registered on 7 March 2018 for services in International Classes 41 and 42; and

 − the European Union trademark 1XGAMES (combined) with registration No. 018928828, registered on January 9, 2024, for services in International Classes 35, 41 and 42.

The Complainant states that it was established in 2007. It describes itself as belonging to a group of companies operating under the brand name 1xBET, which, according to it, is an online gaming platform with worldwide reach. The Complainant explains that it offers sports betting, lottery, bingo, live betting, lottery and other games, and states that it is licensed by the government of Curaçao. The Complainant submits that it uses the domain name <1xbet.com> for its online betting platform.

The disputed domain name was registered on March 1, 2024. It redirects to https://1xplay002.ru/, which displays a Russian-language website that offers instant games, bonuses, referral programs, and tournaments. The website displays a 1XPLAY logo and the header “1XPLAY – Мгновенные игры с выводом денег!” (in English, “1XPLAY – Instant games with money withdrawal!”). This website offers visitors to play “Игры 1XPLAY” (in English, “1XPLAY Games”), named “Aviator”, “Dice”, “Mines”, “Coinflip” and “Crazy Shoot”, and many other games with names also in English. The website displays the following notice in English in its footer:

“1xplay.Casino is owned and operated by Creative Active Technology N.V., a company established under the laws of Curaçao, with its registered address at Abraham de Veerstraat 1, Curaçao, and company number: 164839. Creative Active Technology N.V. holds a sublicense with Gaming Services Provider N.V. under License no 365/JAZ Sub-License GLH-OCCHKTwo702062024. © 1xplay.Casino. All rights reserved! Maintenance of licensed gambling projects softgambling.ru.”

COMPLAINANT:

The Complainant submits that the element “1X” is the most distinctive and recognizable part of its brand and trademarks and serves as its core identifier, which is consistently emphasized in the company’s logos, marketing, and user references, and is often used alone to refer to the Complainant’s brand.

According to the Complainant, the disputed domain name is confusingly similar to its 1X, 1XBET and 1XGAMES trademarks, because it fully incorporates their dominant and distinctive 1X element. The Complainant notes that the addition of the word “play” does not eliminate the confusing similarity with its trademarks, because it is a dictionary word that is commonly used in the gaming and casino industry and is not distinctive. The Complainant adds that the inclusion of a hyphen between “1” and “X” in the disputed domain name does not effectively differentiate it from the Complainant’s trademarks.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it was registered after the 1X, 1XBET and 1XGAMES trademarks.

The Complainant states that it has not authorized the Respondent to register or use the disputed domain name, that the Respondent is not affiliated with it, is not commonly known by the disputed domain name, and does not own any corresponding trademarks. The Complainant maintains that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, and is not making any legitimate non-commercial or fair use of it.

According to the Complainant, the composition of the disputed domain name reflects the Respondent’s intention to create a likelihood of confusion with the Complainant and its trademarks and to mislead Internet users to believe that the disputed domain name and the associated website are authorized or endorsed by the Complainant.

The Complainant points out that the disputed domain name automatically redirects to a website that offers instant games, bonuses, referral programs, and tournaments under the “1XPLAY” brand, which directly targets the same gaming and casino market served by the Complainant under its 1XBET and 1XGAMES trademarks. The Complainant notes that the services and promotional offerings on the website to which the disputed domain name redirects are substantially similar to those provided by the Complainant, which shows that the Respondent engages in a deliberate effort to attract and divert the Complainant’s customer base. The Complainant points out that the Respondent’s website prominently displays “1X” separately from “play,” using distinct colours, fonts, and visual styling to emphasize the “1X” element, and this visual emphasis enhances the association with the Complainant’s brand, creating a strong likelihood of confusion among consumers, which signals an intentional strategy to trade on the reputation and goodwill of the Complainant’s trademarks.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent intentionally chose a domain name incorporating the “1X” element, which is closely associated with the Complainant’s renowned 1X and 1XBET trademarks and with its 1XBET online betting and gaming platform, to exploit the Complainant’s strong brand reputation and market presence and operate a business offering similar online gaming services, placing it in direct competition with the Complainant. According to the Complainant, this competitive relationship is reinforced by the content of the Respondent’s website, which displays a user interface, game providers, and promotional offers that mirror those found on the Complainant’s official platform.

The Complainant contends that the disputed domain name was registered primarily to disrupt its business operations. According to the Complainant, by using the disputed domain name, the Respondent has attempted to mislead Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks, causing such users to mistakenly believe the Respondent’s website is affiliated with or endorsed by the Complainant.

RESPONDENT:

The Respondent did not submit a Response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to the 1X, 1XBET and 1XGAMES trademarks in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

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 name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Procedural issue - language of the proceeding

According to the information received from the Registrar, the language of the Registration Agreement for the disputed domain name is Russian.

Paragraph 11(a) of the Rules provides that unless otherwise agreed by the Parties or specified otherwise in the registration agreement between the Respondent and the Registrar in relation to the disputed domain name, the language of the 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.

The Complaint was filed in English, and the Complainant requests that the language of the proceedings be English. In support of its language request, the Complainant submits that the disputed domain name contains the English words “play” and “online” and that the website to which it redirects also contains many English words and sentences, including the names of all games featured on the website and the legal notice at the bottom of the website. According to the Complainant, this indicates that the Respondent has a good knowledge of English. The Complainant adds that translating the Complaint and the evidence into Russian would lead to undue delay and substantial expense incurred by the Complainant.

The Respondent did not express any views with respect to the language of the proceeding and did not object to the Complainant’s language request.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to act judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel finds that the evidence submitted by the Complainant supports its statements in support of its language request, and taking into account the absence of any objection by the Respondent, concludes that the Respondent has sufficient command of the English language to understand the Complaint and to present his case. The Panel is also mindful of the need to ensure the proceeding to be conducted in a timely and cost-effective manner.

Considering the above, the Panel grants the Complainant’s request regarding the language of the proceeding, and determines that the language of the proceeding shall be English.

The above procedural issue having been resolved, the Panel is satisfied that all procedural requirements under UDRP have been met and there is no reason why it would be inappropriate to provide a decision.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

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

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

Identical or confusingly similar

The Complainant has provided evidence and has thus established its rights in the 1X, 1XBET and 1XGAMES trademarks.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.online” gTLD section of the disputed domain name.

The disputed domain name incorporates the Complainant’s 1X trademark and the distinctive and dominant element “1X” of the Complainant’s 1XBET and 1XGAMES trademarks, and this dominant element of these trademarks is easily recognizable in the disputed domain name. As discussed in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), in cases where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. The broader case context, such as website content trading off the complainant’s reputation, may also support a finding of confusing similarity. Here, the Respondent’s website prominently features a logo whose dominant element is “1X” without a hyphen, and this website offers gaming services in competition with the Complainant, which, as discussed below in this decision, increases the likelihood of confusion with the Complainant and shows that the Respondent’s intent with registering and using the disputed domain name is likely to have been to target and exploit the Complainant’ reputation.

The disputed domain name also includes the dictionary word “play” and a hyphen. As discussed in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional terms may, however bear on the assessment of the second and third elements.

Taking all the above into account, the Panel finds that the disputed domain name is confusingly similar to the 1X, 1XBET and 1XGAMES trademarks, in which the Complainant has rights.

Rights and legitimate interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it attempts to confuse and attract Internet users and offer them gaming services that compete with the Complainant’s own offerings. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted a Response and has not provided any plausible explanation why it has registered the disputed domain name and of its plans to use it.

In the Panel’s view, the circumstances of this case do not support a finding that the Respondent has rights and legitimate interests in the disputed domain name. It is confusingly similar to the Complainant’s trademarks, as it incorporates their distinctive and dominant “1X” element in combination with the dictionary word “play” which is related to the Complainant’s services. The confusing similarity is further increased by the content of the website to which the disputed domain name redirects, which offers online gaming services in competition with the Complainant’s business, and uses a 1XPLAY logo that emphasizes its “1X” element similarly to the Complainant’s own branding and omits the hyphen inserted between “1” and “X” in the disputed domain name, thus showing that this hyphen is not part of the Respondent’s branding. The Respondent’s website also contains no disclaimer for the absence of a relationship with the Complainant. All this may confuse Internet users whether the Respondent’s website is affiliated with or authorized by the Complainant.

In the absence of any arguments or evidence to the contrary, the above leads the Panel to the conclusion that it is more likely than not that the Respondent, being well aware of the goodwill of the Complainant’s 1X, 1XBET and 1XGAMES trademarks, has registered the disputed domain name and designed and activated its website targeting these trademarks in an attempt to exploit their goodwill for commercial gain by confusing Internet users that the disputed domain name and the associated website are affiliated to or authorized by the Complainant. The Panel does not regard such activities as giving rise to rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Bad faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

The registration of the Complainant’s 1X, 1XBET and 1XGAMES trademarks predates the registration of the disputed domain name, which is confusingly similar to them. The associated website offers competing services and contains a logo designed to appear similar to the Complainant’s own branding and trademarks, and includes no disclaimer for the lack of relationship between the Parties.

The Respondent has not provided any plausible explanation of its choice and use of the disputed domain name.

This leads the Panel to the conclusion that the Respondent has registered and is using the disputed domain name with knowledge of the Complainant’s trademarks and with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the affiliation with or endorsement by the Complainant of the Respondent’s website and of the gaming services offered there in competition with the Complainant. This satisfies the Panel that the disputed domain name has been registered and used in bad faith.