Decision for dispute CAC-UDRP-108190

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 has demonstrated ownership of rights in the trademark MELBET for the purpose of standing to file a UDRP complaint.

The Complainant is the owner, amongst others, of the following trademark registrations:

- Uganda trademark registration No. 2020/067008 for MELBET (figurative mark), filed on January 8, 2020, and registered on July 22, 2020, in class 41;

- Burundi trademark registration No. 10242/BI for MELBET (figurative mark), filed on November 9, 2022, and registered on November 15, 2022, in classes 35, 41 and 42;

- Mauritius trademark registration No. 34042/2023 for MELBET (figurative mark), filed and registered on November 09, 2022, in classes 35, 41 and 42;

- European Union trademark registration No. 019060714 for “MELBET” (word mark), filed on July 29, 2024, and registered on November 09, 2024, in classes 09, 16, 21, 25, 28 and 30;

- Dominican Republic trademark registration No. 314390 for MELBET (figurative mark), filed on June 27, 2024, and registered on September 18, 2024, in classes 35, 41 and 42;

- Costa Rica trademark registration No. 325206 for MELBET (figurative mark), filed on March 18, 2024 and registered on July 10, 2024, in classes 35, 41 and 42.

The Complainant is a company registered in Cyprus and is the owner of the domain name <melbet.com>, which is being used in connection with an online gaming and casino platform currently operated by Pelican Entertainment B.V. under a Domain Name Lease Agreement with the Complainant.  Pelican Entertainment B.V. owns a license to operate the online gaming and casino platform at “www.melbet.com” from the Curaçao eGaming License.

The Complainant has actively sponsored a variety of sporting events worldwide, partnering in 2020 with prominent soccer clubs, including Juventus FC and sponsoring the Kyetume FC football team from Uganda in 2021.

The Complainant regularly participates in major industry conferences, such as SiGMA and the SBC Awards, enhancing its visibility, attracting industry attention and including amongst its ambassadors and sponsored teams the Turkish football player Didier Drogba, the Indian cricket team "Trinbago Knight Riders" and the global cricketer ambassador Faf Du Plessis.

In 2020, the Complainant received four nominations at the SBC Awards, including Best Mobile App, Best Affiliate Program, and Rising Star in the sports betting and casino categories.

The Complainant’s domain name <melbet.com> was registered on September 18, 2012. Based on the historical screenshots submitted by the Complainant, it has been used since at least December 2012 to promote the Complainant’s online gambling services under the trademark MELBET.

The disputed domain name <melbet-sportsbook.com> was registered on September 13, 2021, and currently resolves to an error page. According to the evidence submitted by the Complainant – which has not been contested by the Respondent -, prior to the present proceeding the disputed domain name pointed to a website prominently displaying the MELBET figurative mark, replicating the distinctive color scheme used on the Complainant’s official platform, offering identical services to those offered by the Complainant and redirecting upon registration, to a third-party gambling website.

COMPLAINANT

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark MELBET, as it includes the trademark in its entirety with the mere addition of a hyphen and the word “sportsbook”, followed by the generic Top Level Domain (“gTLD”) “.com”, which are not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant's trademark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: i) the disputed domain name was registered nearly a decade after the MELBET mark was first used in 2012 and the MELBET mark was continuously used in commerce since 2012; ii) the Respondent has never been authorized, licensed by Complainant to use the MELBET mark in any manner; and iii) the Respondent is not commonly known by the disputed domain name and has no relevant trademark or trade name rights in MELBET or in a name corresponding to the disputed domain name.

The Complainant also submits that the disputed domain name has not been used for a bona fide offering of goods or services or for a legitimate non-commercial use since the disputed domain name, which currently points to an error page, prior to the present proceeding redirected to a website which prominently displayed the MELBET figurative mark and replicated the distinctive color scheme used on the Complainant’s official platform, failing to disclose the identity of its operator or to provide any clarification regarding its relationship (or lack thereof) with the Complainant, thereby reinforcing the misleading overall impression of affiliation with the Complainant. The Complainant also points out that, upon clicking on a yellow button labeled “Go to the official website” or “Registration”, users were redirected to a third-party betting website.  

The Complainant further submits that the structure of the disputed domain name, fully incorporating the MELBET trademark, reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, with the Complainant in Internet users’ minds.

The Complainant contends that the Respondent registered the disputed domain name in bad faith since: i) the Respondent registered the disputed domain name many years after the MELBET brand was introduced in 2012 and after the filing and registration of the trademark MELBET in Uganda; ii) the MELBET trademark was already widely known prior to the registration of the disputed domain name; and iii) the structure of the disputed domain name reflects the Respondent’s intent to target the Complainant’s trademark.

The Complainant further submits that the Respondent used the disputed domain name in bad faith since the disputed domain name resolved prior to this proceeding to a website that prominently displayed the Complainant’s mark and closely mimicked the Complainant’s official website “www.melbet.com”, including the distinctive white-and-yellow-on-black color scheme and a link redirecting users to an unrelated competing betting operator. The Complainant concludes that such use of the disputed domain name demonstrates that the Respondent intentionally attempted to attract Internet users seeking the Complainant for commercial gain and submits that such conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy.

As an additional circumstance evidencing the Respondent’s bad faith, the Complainant submits that the Respondent was involved in a prior UDRP proceeding (CAC UDRP Case No. 106879), where it was found to have registered and used the domain name in dispute in that case in bad faith.

RESPONDENT

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 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).

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.

1. The Complainant has provided evidence of ownership of valid trademark registrations for MELBET.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark as it reproduces the Complainant’s trademark in its entirety with the addition of a hyphen and the dictionary term “sportsbook” followed by the generic Top Level Domain (“gTLD”) “.com”, As stated in prior decisions rendered under the UDRP, where relevant trademark is recognizable within the disputed domain name, the addition of descriptive words and of the gTLD “.com” is not sufficient to prevent a finding of confusing similarity under the first element. 

2. With reference to the Respondent’s rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to provide any element from which a Respondent’s right or legitimate interest in the disputed domain name could be inferred.

The Panel notes that, based on the records, the Respondent has not been authorized or licensed by the Complainant to use its trademark MELBET. Moreover, there is no evidence that the Respondent might be commonly known by the disputed domain name or a name corresponding to the disputed domain name.

Based on the evidence on record, the disputed domain name, which currently points to an error page, redirected prior to the present proceeding to a website prominently displaying the MELBET figurative mark, replicating the color scheme used on the MELBET official platform, offering identical betting services to those offered by the Complainant without providing any disclaimer of non-affiliation with the Complainant and also redirecting upon registration to a third party gambling website. The Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Indeed, the Panel notes that content of the Respondent’s website was apparently designed to reinforce the impression of an affiliation or association with the Complainant that did not exist.

Moreover, the Panel finds that the composition of the disputed domain name is inherently misleading since the combination of the Complainant’s trademark with the term “sportsbook” suggests an affiliation with the Complainant.

Therefore, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(i) of the Policy.

3. As to bad faith at the time of the registration, the Panel finds that, in light of the Complainant’s prior registration and use of the trademark MELBET in connection with the online gambling and casino platform at “www.melbet.com”, the Respondent was or could have been aware of the Complainant when it registered the disputed domain name on September 13, 2021.

In view of the above-described use of the disputed domain name in connection with a website reproducing the Complainant’s mark and promoting gambling services, without disclaiming the lack of relationship with the Complainant and also redirecting users to third-party gambling websites, the Panel finds that the Respondent was actually aware of the Complainant’s trademark at the time of registration and it used the disputed domain name to intentionally attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, according to paragraph 4(b)(iv) of the Policy.

As mentioned above, the disputed domain name currently resolves to an error page. As established in a number of prior UDRP cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding. In the present case, in light of: i) the distinctiveness of the Complainant’s trademark MELBET; ii) the prior use of the disputed domain name described above; iii) the Respondent’s failure to submit a Response to provide any evidence of actual or contemplated good-faith use of the disputed domain name; and iv) the implausibility of any good faith use to which the disputed domain name may be put, the Panel finds that the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Therefore, the Panel finds that the Complainant has also demonstrated that the Respondent registered and is using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.