Decision for dispute CAC-UDRP-108715

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 submitted evidence that it is the owner of the following registered trademarks:

• EU figurative trademark “1X”, no. 018669983, applied on March 9, 2022, and registered on June 22, 2022, for services in classes 35, 41, and 42;
• EU figurative trademark “1X”, no. 018669987, applied on March 9, 2022, and registered on June 22, 2022, for services in classes 35, 41, and 42;
• EU figurative trademark “1XBET”, no. 017517384, applied on November 23, 2017, and registered on March 7, 2018, for services in classes 41 and 42;
• EU figurative trademark “1XBET”, no. 017517327, applied on November 23, 2017, and registered on March 7, 2018, for services in classes 41 and 42;
• EU word trademark “1XBET”, no. 014227681, applied on June 8, 2015, and registered on September 21, 2015, for services in classes 35, 41 and 42;
• EU figurative trademark “1X GAMES”, no. 018928828, applied on September 22, 2023, and registered on January 9, 2024, for services in classes 35, 41 and 42;
• EU figurative trademark “1X GAMES”, no. 018928911, applied on September 22, 2023, and registered on January 9, 2024, for services in classes 35, 41 and 42;

These trademarks are hereinafter referred to as the “Trademarks”.

The Complainant also claims unregistered common law trademarks in the sign “1X”, as the dominant element of its “1XBET” brand, through extensive use since 2007 for its online betting and gaming platform, and especially, since 2019, through its announcements of major partnerships with high-profile sports clubs such as FC Barcelona and Liverpool FC.

The Panel does not consider it necessary to determine whether the Complainant has acquired unregistered or common law trademark rights in the sign "1X". The evidence submitted by the Complainant primarily demonstrates extensive use and promotion of the composite sign 1XBET, including through its online betting platform and sponsorships with high-profile sports clubs. The Panel is not persuaded that the evidence is specifically directed at establishing that "1X", considered separately from the composite mark 1XBET, has itself acquired distinctiveness as an unregistered trademark. That said, the Panel accepts that, in the context of betting and gaming services, "1X" constitutes the dominant and distinctive element of the Complainant's registered 1XBET trademarks. In light of the Complainant's registered trademark rights, however, it is unnecessary for the Panel to reach any conclusion regarding the alleged common law rights in "1X".

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant states that it belongs to a group of companies operating under the 1XBET brand, an online betting, casino and gaming platform that has been used since 2007 and enjoys worldwide recognition. According to the Complainant, the 1XBET platform has become one of the leading online betting operators and has received significant international exposure through sponsorships and partnerships with major sports organisations, including FC Barcelona, Liverpool FC and OG Esports. The Complainant further submits that it operates its services through the domain name <1xbet.com>, including a gaming section branded 1XGAMES, which forms part of its broader 1XBET platform.

The disputed domain name was registered on May 6, 2020. According to the Complainant, the disputed domain name resolves (or redirects) to a website headed '1XBET Link', displaying a logo similar to that used by the Complainant and offering 'alternative' and 'mirror' links relating to 1XBET, together with promotional codes and country-specific links. The Complainant contends that the website is intended to attract Internet users seeking the Complainant's services.

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.

Confusing similarity

The disputed domain name consists of the elements “1X” and “WORLD” and the gTLD “.com”.

The Panel finds that the disputed domain name incorporates the textual element "1X" from the Complainant's registered figurative 1X trademarks and the dominant element "1X" from the Complainant's registered 1XBET word trademark. The additional term "WORLD" is a dictionary or descriptive word which does not prevent the relevant Trademarks from remaining recognisable within the disputed domain name and does not avoid a finding of confusing similarity.

As the Panel is satisfied that the Complainant has established rights in its registered 1X and 1XBET Trademarks, it is unnecessary, for the purposes of the first element, to determine whether the Complainant has also acquired unregistered or common law trademark rights in the sign 1X. Likewise, the dates on which the Complainant's trademark rights arose are not material to the assessment under paragraph 4(a)(i) of the Policy, although they may become relevant in the analysis under paragraph 4(a)(iii).

The generic Top-Level Domain ("gTLD") ".com" is generally disregarded for the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

Rights or legitimate interests

As regards paragraph 4(a)(ii) of the Policy, while the overall burden of proof rests with the Complainant, it is commonly accepted that this should not result in an often-impossible task of proving a negative. Therefore, numerous previous panels have found that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the Panel then must weigh all the evidence, with the burden of proof always remaining on the complainant.

The Complainant argues that:

• The Respondent is not affiliated with the Complainant and has not been authorised to register and use a domain name incorporating the Complainant’s Trademarks.
• The Respondent does not seem to own trademark rights in “1XWORLD” or “1X”.
• The Respondent is not commonly known by the disputed domain name.
• The Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent uses the domain name for a link page targeting the Complainant’s 1XBET platform and displaying the Complainant’s 1XBET logo, a heading “1XBET Link”, a 1XBET promo code, and geolocalised 1XBET links and other so called “alternative” and “mirror” access routes to 1XBET.

The Respondent did not file an administratively compliant (or any) response. The Respondent did not provide evidence that it has rights or legitimate interests in the disputed domain name. The Respondent could have provided evidence of the factors mentioned in paragraph 4(c) of the Policy but failed to do so.

The Panel finds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name from the following facts:

• The disputed domain name includes the dominant element “1X” of the Complainant’s registered 1XBET trademarks, which were registered several years before the creation date of the disputed domain name and for which the Complainant has provided ample proof of use in commerce. The addition of the dictionary or descriptive word “WORLD” does not create any rights or legitimate interests in the disputed domain name.

• There is no evidence to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers. The Respondent is using the disputed domain name in connection with a website prominently featuring the Complainant's 1XBET branding, including its logo, the heading "1XBET Link", promotional codes and links relating to 1XBET services, without the Complainant’s authorisation to do so. The Panel further notes that the Respondent's website does not merely refer to the Complainant but reproduces the Complainant's branding and presents itself as a source of "1XBET" links and promotional material. Such use strongly suggests an intent to capitalise on the reputation of the Complainant rather than any genuine use of the disputed domain name based on an independent meaning. At the very least, such use is not indicative of a bona fide offering of goods or services or a legitimate non-commercial or fair use.

• There is no evidence that the Respondent is or has been commonly known by the disputed domain name or by the terms “1XWORLD”, “1X”, or any similar designation. Likewise, nothing in the available WHOIS information suggests otherwise.

• The Respondent has not been shown to have any consent or authorisation to use the Complainant’s Trademarks or variations thereof and is not shown to be related in any way to the Complainant.

• The Respondent has not shown that it holds any trademark rights or other rights regarding the terms “1X”, “1X WORLD”, or any similar designation.

In sum, on the balance of probabilities, and in the absence of any evidence to the contrary or any administratively compliant response being put forward by the Respondent, the Panel finds that the Complainant has established a prima facie case, which has not been rebutted by the Respondent, and that the evidence supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

Bad faith

The Complainant contends that the disputed domain name was registered and is being used in bad faith for, inter alia, the following reasons:

• The Complainant's 1XBET trademarks and brand were well established long before the registration of the disputed domain name. Given the Complainant's extensive use of the 1XBET mark since 2007 and its international sponsorships and publicity since at least 2019, the Respondent must have been aware of the Complainant and its rights when registering the disputed domain name.
• The disputed domain name reproduces the distinctive element "1X" of the Complainant's trademarks together with the descriptive term "WORLD", which, according to the Complainant, demonstrates that the Respondent intentionally targeted the Complainant and its business.
• The Respondent uses the disputed domain name to resolve (or redirect) to a website prominently displaying the Complainant's 1XBET logo and branding, including the heading "1XBET Link", promotional codes, and links described as "alternative" or "mirror" access routes to the Complainant's betting platform. According to the Complainant, this use is intended to create a likelihood of confusion and to attract Internet users seeking the Complainant's services for commercial gain.
• The Complainant further argues that the Respondent intentionally attempts to attract Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the website or of the services offered thereon.
• Finally, the Complainant submits that the Respondent has engaged in a pattern of registering domain names corresponding to third-party trademarks, referring to a previous UDRP decision involving the Respondent in support of this contention.

The Panel weighs these arguments and evidence as follows:

First, the website to which the disputed domain name resolves prominently displays the Complainant's 1XBET branding, including references to "1XBET Link", the Complainant's logos, promotional codes and purported "alternative" or "mirror" links relating to the Complainant's services. The website is clearly directed at Internet users seeking the Complainant's services, referring, for example, to "Dear 1XBET.com visitors!" The Panel considers it inconceivable that the Respondent selected and used the disputed domain name without actual knowledge of the Complainant and its Trademarks.

Second, the disputed domain name incorporates the recognizable element "1X" from the Complainant's registered 1XBET trademarks together with the dictionary term "WORLD", which does not materially distinguish the disputed domain name from the Complainant's branding.

Third, the Complainant's registered 1XBET trademarks predate the registration of the disputed domain name by several years. Moreover, those European Union trademark registrations enjoy protection in Italy, where the Respondent appears to be located.

Fourth, the Respondent has provided no explanation for its choice of the disputed domain name, has not contested the Complaint, and has not advanced any evidence of rights or legitimate interests capable of rebutting the Complainant's case.

On the totality of the evidence, the Panel is satisfied that the Respondent registered the disputed domain name with knowledge of the Complainant and its trademarks and has used it to take unfair advantage of the goodwill associated therewith.

By using the disputed domain name in connection with a website prominently referring to the Complainant and its services, the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's Trademarks as to the source, sponsorship, affiliation or endorsement of the website and the services promoted thereon. In the Panel's view, this constitutes evidence of bad-faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.

In light of these findings, the Panel considers it unnecessary to determine whether the previous UDRP decision relied upon by the Complainant also establishes a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy.

Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.