Decision for dispute CAC-UDRP-107700

The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the Disputed Domain Name.

Complainant states, and provides documentation in support thereof, that it is the owner of “numerous trademark registrations for the mark Melbet in several jurisdictions,” including Uganda Reg. No. 2020/067008 for MELBET (registered July 22, 2020) for use in connection with “sports betting and casino”; Peru Reg. No. S00149219 for MELBET (registered August 10, 2023) for use in connection with “entertainment services; on-line gambling services; betting services”; and EU Reg. No. 019060714 for MELBET (registered November 9, 2024), for use in connection with, inter alia, “printed matter; fountain pens; pamphlets” (the “MELBET Trademark”).

Complainant states that it is “a company registered in Cyprus, who is the holder of the domain name melbet.com” (created September 18, 2012); that “Melbet is the name of the online gaming and casino platform operated since 2012”; that “Melbet has over 400,000 daily users worldwide”; and that “Melbet is one of the largest and best places to bet on sports around the world.”

The Disputed Domain Name was created on May 29, 2024, and, as stated in the Complaint and as supported by relevant documentation, is used in connection with a website that is “deliberately designed to suggest affiliation with the Complainant and its MELBET trademarks” because the website “prominently features the MELBET figurative trademark, replicating the color scheme of the official website” and falsely states “that ‘melbets-eg.com is owned and operated by Pelican Entertainment BV,” which operates Complainant’s website.

Complainant contends, in relevant part, as follows:

Paragraph 4(a)(i): Complainant states that the Disputed Domain Name is confusingly similar to the MELBET Trademark because the Disputed Domain Name incorporates the MELBET Trademark in its entirety, and “[t]he addition of ‘eg’ (designating Egypt) is a geographic indicator… and does not prevent a finding of confusing similarity under the UDRP.

Paragraph 4(a)(ii): Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]he disputed domain name was registered after the filing of the first MELBET trademark and more than a decade after the MELBET mark had already been in commercial use since 2012”; “[t]he Complainant has not licensed or authorized the Respondent to register or use the disputed domain name, nor is the Respondent affiliated to the Complainant in any form”; “[t]here is no evidence that the Respondent is known by the dispute domain name or owns any corresponding registered trademarks”; “[t]he Respondent has not been using or preparing to use the disputed domain name in connection with a bona fide offering of goods and services, nor making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue”; and the website using the Disputed Domain Name “is specifically targeted at users in Egypt and markets itself as ‘MELBET FOR PLAYERS FROM EGYPT’,” “extensively copies the Complainant’s branding, trade dress, and structure, including the color scheme, promotional offers, and site organization” and “offers the same services as the Complainant, including sports betting, casino games, and mobile applications, while purporting to be an official or authorized MELBET entity in Egypt.”

Paragraph 4(a)(iii): Complainant states that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[t]he Respondent registered the disputed domain name many years after the MELBET brand was introduced in 2012 and after the first MELBET Trademarks were filed and registered”; “MELBET is a prominent online gambling and betting operator with a strong digital presence”; Respondent lost a previous proceeding under the UDRP, for the domain name <melbets-az.com>, Batnesto Ltd. v. Alex Voronov, CAC Case No. UDRP-107057; the website associated with the Disputed Domain Name “closely mimic[s] the Complainant’s official website <melbet.com>,” which “is clearly intended to mislead Internet users into believing the [Respondent’s website] is affiliated with the Complainant.”

No administratively compliant response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name is 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 UDRP).

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 UDRP).

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 UDRP).

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.

Identical or Confusingly Similar: Paragraph 4(a)(i)

The trademark citation and documentation provided by Complainant are sufficient to establish that Complainant has rights in the MELBET Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to these trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “melbets-eg”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”  WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

Here, the Disputed Domain Name contains the MELBET Trademark in its entirety.  As set forth in section 1.7 of WIPO Overview 3.0: “[I]n cases where a domain name incorporates the entirety of a trademark, or 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.”

As to the addition of the letters “s” and “eg,” section 1.8 of WIPO Overview 3.0 says: “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 panel finds that, despite inclusion of additional letters, the MELBET Trademark is recognizable within the Disputed Domain Name.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy. 

Rights or Legitimate Interests: Paragraph 4(a)(ii)

Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]he disputed domain name was registered after the filing of the first MELBET trademark and more than a decade after the MELBET mark had already been in commercial use since 2012”; “[t]he Complainant has not licensed or authorized the Respondent to register or use the disputed domain name, nor is the Respondent affiliated to the Complainant in any form”; “[t]here is no evidence that the Respondent is known by the dispute domain name or owns any corresponding registered trademarks”; “[t]he Respondent has not been using or preparing to use the disputed domain name in connection with a bona fide offering of goods and services, nor making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue”; and the website using the Disputed Domain Name “is specifically targeted at users in Egypt and markets itself as ‘MELBET FOR PLAYERS FROM EGYPT’,” “extensively copies the Complainant’s branding, trade dress, and structure, including the color scheme, promotional offers, and site organization” and “offers the same services as the Complainant, including sports betting, casino games, and mobile applications, while purporting to be an official or authorized MELBET entity in Egypt.”

WIPO Overview 3.0, section 2.1, states: “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 Panel finds that Complainant has established its prima facie case and, without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the UDRP.

Registered and Used in Bad Faith: Paragraph 4(a)(iii)

Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.

By using the Disputed Domain Name in connection with a website that offers gambling services – the same type of service offered by Complainant in connection with the MELBET Trademark – Respondent is clearly and intentionally “creating a likelihood of confusion” with the MELBET Trademark, constituting bad faith pursuant to paragraph 4(b)(iv) of the Policy.  See, e.g., Arla Foods amba v. Jucco Holdings, WIPO Case No. D2006-0409 (“the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith”); F. Hoffmann-La Roche AG v. Clear Foto, WIPO Case No. D2009-0501 (finding bad faith where respondent’s website “offers some competing services”); and Beachbody, LLC v. Liu Wan, WIPO Case No. D2012-1407 (finding bad faith where complainant alleged that disputed domain name “resolved to a website with similar content”).

Further, by having lost a previous proceeding initiated by Complainant and also relating to the MELBET Trademark, Batnesto Ltd. v. Alex Voronov, CAC Case No. UDRP-107057 (transfer of <melbets-az.com>), the Panel finds that Respondent has “engaged in a pattern of such conduct,” which constitutes bad faith pursuant to paragraph 4(b)(ii) of the Policy.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.