Sun International (IP) Limited v Viktor Parfonov

WIPO Case No. D2024-1018

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sun International (IP) Limited v. Viktor Parfonov

Case No. D2024-1018

1. The Parties

The Complainant is Sun International (IP) Limited, South Africa, represented by Adams & Adams Attorneys,

South Africa.

The Respondent is Viktor Parfonov, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <sunbetlogin.com> (the “Domain Name 1”) and <sunbetsa.com> (the “Domain
Name 2”) (collectively referred to as the “Domain Names”) are registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2024.
On the same day, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Domain Names. Also on March 7, 2024, the Registrar transmitted by email to the Center
its verification response disclosing registrant and contact information for the Domain Names which differed
from the named Respondent (Privacy service provided by Withheld for Privacy ehf) and contact information

in the Complaint.

The Center sent an email communication to the Complainant on March 11, 2024, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on March 12, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 18, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 7, 2024. The Respondent did not submit any response.

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The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 15, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Further Procedural Considerations

Under paragraph 10(b) and 10(c) of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition.

According to the information on record confirmed by the Registrar, the Respondent’s mailing address is stated to be in Ukraine, which is subject to an international conflict at the date of this Decision, that may impact case notification. Thus, it is appropriate for the Panel to consider, in accordance with its discretion

under paragraph 10(b) and 10(c) of the Rules, whether the proceeding should continue.

The Panel notes that the Center duly complied with its obligations and that the Notification of Complaint was done in accordance to the Rules. The Panel also notes that it results from the case file that the courier delivered the Written notice to the Respondent’s address in Ukraine and the Notification of Complaint’s emails were delivered to the Respondent’s email address, as provided by the Registrar.

The Panel concludes that the Parties have been given a fair opportunity to present their case, and so that the administrative proceeding takes place with due expedition the Panel will proceed to a Decision accordingly.

5. Factual Background

The Complainant is a part of the Sun International Group which owns five-star hotels, casinos and resort properties.

The Complainant is the owner of numerous SUNBET trademark registrations, including:

- the South African Trademark Registration for SUNBET No. 2012/24239 registered on September 7,
2012;

- the Brazilian Trademark Registration for SUNBET No. 914410504 registered on September 3, 2019;
and

- the Namibian Trademark Registration for SUNBET No. NA/T/2012/1375 registered on September 28,
2012.

The Complainant is also the owner of the domain names incorporating its SUNBET trademark, including

<sunbet.co.za>.

The Domain Names were both registered on October 30, 2023.

At the time of submitting the Complaint, the Domain Names resolved to similar websites allegedly hosting betting and casino platform, as well as displaying the Complainant’s SUNBET trademark (the “Websites”). As of the date of this Decision, the Domain Name 1 resolved to the same website as described above, while

the Domain Name 2 did not resolve to any active website.
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6. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Names.

First, the Complainant submits that the Domain Names are confusingly similar to the SUNBET trademark in which the Complainant has rights.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the

Domain Names.

Third, the Complainant contends that the Domain Names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

(i)      the Domain Names are 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 the Domain Names; and

(iii)    the Domain Names have been registered and are being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of
probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

Under the first element, the Complainant must establish that the Domain Names are identical or confusingly similar to the trademark in which the Complainant has rights.

The Complainant holds valid SUNBET trademark registrations. The Domain Names incorporate this
trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is
sufficient to establish that a domain name is identical or confusingly similar to that trademark (see PepsiCo,
Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No.
D2003-0696).

The addition of the terms “login” and “sa” in the Domain Names does not prevent a finding of confusing similarity between the Domain Names and the Complainants’ SUNBET trademark. Panels have consistently held that 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. See section 1.8 of the WIPO Overview 3.0.

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The Top-Level Domain “.com” in the Domain Names is viewed as a standard registration requirement and as such is typically disregarded under the first element test. See section 1.11.1 of the WIPO Overview 3.0.

Given the above, the Panel finds that the Domain Names are confusingly similar to the Complainant’s paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Names.

The Respondent may establish rights or legitimate interests in the Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i)      that it has used or made preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to the dispute; or

(ii)     that it is commonly known by the Domain Names, even if it has not acquired any trademark rights; or

(iii)    that it is making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, it results from the evidence on record that the Complainant’s SUNBET trademark registrations predate the Respondent’s registration of the Domain Names. There is no evidence in the case record that the Complainant has licensed or otherwise permitted the Respondent to use the SUNBET trademark or to register the Domain Names incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Names.

Moreover, it results from the evidence on record that the Respondent does not make use of the Domain Names in connection with a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the Domain Names. On the contrary, at the time of submitting the Complaint, the Domain Names resolved to similar Websites allegedly hosting betting and casino platform, as well as displaying the Complainant’s SUNBET trademark. As of the date of this Decision, the Domain Name 1 resolved to the same website, while the Domain Name 2 did not resolve to any active website. Such use of the Domain Names does not confer rights or legitimate interests on the Respondent.

Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Names. Thus, there is no evidence in the case file that refutes the Complainant’s prima facie case. The Panel concludes that the Complainant has also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the third element, the Complainant must prove that the Domain Names have been registered and are being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation:

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(i)      circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of- pocket costs directly related to the domain name; or

(ii)     circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)    circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv)    circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

As indicated above, the Complainant’s rights in the SUNBET trademark predate the registration of the Domain Names. The Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration. This finding is supported by the content of the Websites impersonating the Complainant or the entity associated with the Complainant, as well as displaying the SUNBET trademark. Moreover, it has been proven to the Panel’s satisfaction that the Complainant’s SUNBET trademark is well known and unique to the Complainant. Thus, the Respondent could not ignore the reputation of goods and services under this trademark.

In sum, the Respondent in all likelihood registered the Domain Names with the expectation of taking advantage of the reputation of the Complainant’s SUNBET trademark.

Furthermore, the Domain Names were being used in bad faith by the Respondents to host alleged betting
and casino platform under the Complainant’s SUNBET trademark. By reproducing this trademark in the
Domain Names and on the Websites, the Respondent suggests at least the association with the
Complainant. There is thus little doubt that the Respondents intended to earn profit from the confusion
created with Internet users. In consequence, the Panel finds that the Respondent registered and used the
Domain Names deliberately in order to take advantage of the Complainant’s reputation and to give credibility
to their operations. While the Domain Name 2 no longer resolves to active website, given the totality of the
circumstances here, such non-use does not prevent a finding of bad faith. See section 3.3 of the
WIPO Overview 3.0.

For the reasons discussed above, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) of the Policy.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <sunbetlogin.com> and <sunbetsa.com> be transferred to the Complainant.

/Piotr Nowaczyk/
Piotr Nowaczyk
Sole Panelist
Date: April 29, 2024