Tipico Group Ltd. v Candle Factory
WIPO Case No. D2025-0331
•25-03-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Tipico Group Ltd. v. Candle Factory
Case No. D2025-0331
1. The Parties
The Complainant is Tipico Group Ltd., Malta, represented by Boehmert & Boehmert, Germany.
The Respondent is Candle Factory, Kazakhstan.
2. The Domain Name and Registrar
The disputed domain name <app-tipico.com> (the “Disputed Domain Name”) is registered with Spaceship,
Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2025. amendment to the Complaint on January 30, 2025.
On January 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On January 30, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the Disputed Domain Name
which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the
Complainant on January 30, 2025, providing the registrant and contact information disclosed by the
The Center verified that the Complaint together with the amendment to the 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 February 6, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 26, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 27, 2025.
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The Center appointed Gabriela Kennedy as the sole panelist in this matter on March 6, 2025. 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. Factual Background
The Complainant is a part of the Tipico group of companies (the “Tipico Group”), an international provider of
sports betting services and virtual games, headquartered in St. Julian’s, Malta. Founded in 2004, the
Complainant has developed into one of the leading providers of online and retail betting services across
Europe. The Tipico Group has branches in Germany, Austria, Croatia, Gibraltar, United Kingdom, and
Malta.
The Tipico Group is licensed by the competent authorities in Germany, Austria, and Malta to conduct online and land-based betting business, other broker activities as well as further business concerned with betting activities.
The Complainant owns various word and figurative trademarks for the TIPICO mark. The relevant trademark registrations include, inter alia, the European Union Trade Mark No. 003939998 for TIPICO in Class 41 registered on September 23, 2005, the European Union Trade Mark No. 011339835 for
in Classes 3, 7, 9, 14, 16, 25, 28, 32, 33, 34, 35, 36, 38, 41, 42, 43, and 45 registered on May 3,
| 2013, and the European Union Trade Mark No. 017913149 for | in Classes 9, 14, 16, 25, 28, 32, 34, 35, |
36, 38, 41, 42, 43, and 45 registered on May 16, 2019 (the “Complainant's Trademark”).
The Complainant also owns the domain names <tipico-group.com>, <tipico.com>, and <tipico.de>.
The Disputed Domain Name was registered on October 17, 2024, after the Complainant registered the Complainant’s Trademark. At the time of the filing of the Complaint, the Disputed Domain Name purportedly resolved to an active website that displayed the Complainant’s logo (Registration No. 011339835) (the “Complainant’s logo”) that advertised online betting and casino services and referred to the author of the article within the website as a “Seasoned casino expert, Tipico Advisor” (the “Respondent’s Website”). It also purportedly included a click through link that states “Create an account in Tipico” which resolved to a webpage of a different online casino and games website. At the time of rendering of this Decision, the Disputed Domain Name resolves to the same as described above. However, the click through link now resolves to a different webpage of another online casino and games website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.
Notably, the Complainant contends that:
| (a) | The Disputed Domain Name is confusingly similar to the Complainant’s Trademark. The Disputed |
Domain Name incorporates the Complainant's Trademark in its entirety with the addition of the word “app”.
The addition of the descriptive term “app” will likely be perceived as a secondary element to the Disputed
Domain Name and does not prevent a finding of confusing similarity between the Disputed Domain Name
and the Complainant’s Trademark. The Respondent is targeting the Complainant’s Trademark through the
Disputed Domain Name as the Respondent's Website displays the Complainant's logo and also indicates
that the author of the article within the Respondent’s Website is a “Tipico Advisor”. Moreover, the Top-Level
Domain “.com” should be disregarded in assessing confusing similarity under the first element.
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| (b) | The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant |
has not licensed or otherwise permitted the Respondent to use any of its trademarks in any way or apply or use any domain name incorporating its TIPICO trademarks. The Respondent has been using the Disputed Domain Name to mislead and divert Internet users to the Respondent’s Website for commercial gain. The Respondent is using the Disputed Domain Name to promote competing betting services and is suggesting affiliation with the Complainant by prominently displaying the Complainant’s logo on the Respondent’s
Website without authorization from the Complainant. Such use of the Disputed Domain Name does not constitute a bona fide offering of goods or services or fair use of the Disputed Domain Name.
| (c) | The Respondent has registered the Disputed Domain Name and is using it in bad faith. Given the |
reputation that the Complainant has acquired in the Complainant’s Trademark and the fact that the term sponsorship, affiliation, or endorsement of the Respondent's Website and has attempted to divert business away from the Complainant for the Respondent’s own commercial gain by incorporating the entirety of the Complainant’s Trademark within the Disputed Domain Name.
“TIPICO” has no inherent descriptive meaning with regard to betting services, the Respondent must have
been fully aware of the existence of the Complainant’s rights in the Complainant’s Trademark when the
Respondent registered and used the Disputed Domain Name. Furthermore, the Respondent’s use of the
Complainant’s logo on the Respondent’s Website clearly shows that the Respondent was aware of the
Complainant and the Complainant’s Trademark when registering the Disputed Domain Name. The
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s Trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The entirety of the Complainant’s Trademark is reproduced within the Disputed Domain Name. Furthermore, the generic Top-Level Domain in this case “.com” may be disregarded for the purposes of assessing confusing similarity under the first element. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The addition of other terms (here, “app” and a hyphen) may be relevant for the assessment of the second and third elements. Hence, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
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The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name.
Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
In the present case, the Respondent did not submit a Response. The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
The Panel notes that there is no evidence to show that the Respondent has trademark rights corresponding associated with, or originates from, the Complainant. The reproduction of the Complainant’s Trademark and the use of the non-distinctive term “app” (which is a common abbreviation of the word “application”) within the Disputed Domain Name, as well as the use of Complainant’s Trademark on the Respondent’s Website, also lead to a risk of implied affiliation as the Disputed Domain Name effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
to the Disputed Domain Name, or that the Respondent has become commonly known by the Disputed
Domain Name. The Panel further notes that the Complainant has provided no license or authorization of any
kind to the Respondent to use the Complainant’s Trademark or to apply for or use any domain name
incorporating the Complainant’s Trademark. The Respondent would likely not have adopted the
There is also no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the
Disputed Domain Name or a name corresponding to the Disputed Domain Name, is in connection with a
bona fide offering of goods or services or be regarded as legitimate noncommercial or fair use. As the
Respondent’s Website features the Complainant’s logo and advertises competing online betting and casino
services, it is apparent that the Respondent’s Website attempts to divert Internet users away from the
Complainant for commercial gain while capitalizing on the goodwill associated with the Complainant’s
Trademark.
Panels have held that the use of a domain name for illegal activity, such as in this case the impersonation or passing off by the Respondent using the Complainant’s Trademark, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1
Having reviewed the available record, the Panel finds 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 rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.
The Panel finds the second element of the Policy has been established.
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C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, the Panel notes that it is difficult to conceive of any plausible use of the Disputed Domain Name incorporates the Complainant’s Trademark in its entirety and the Complainant’s Trademark is displayed on the Respondent’s Website. The Respondent registered and used the Disputed Domain Name to mislead and divert Internet users to the Respondent's Website for commercial gain by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. Further, the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use of the Disputed Domain Name.
| is shown to be well-known or in wide use at the time of registration of the disputed domain name (see LEGO | Panels have previously held that a finding of bad faith can be established where a complainant’s trademark Name given the history and extensive use of the Complainant’s Trademark evidenced by the various trademark registrations that predate the Respondent’s registration of the Disputed Domain Name, and the fact that the Complainant’s Trademark is featured on the Respondent’s Website to offer competing services. |
| The Panel finds that the Complainant has established the third element of the Policy. | |
| 7. Decision | |
| For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <app-tipico.com> be transferred to the Complainant. | |
| /Gabriela Kennedy/ Gabriela Kennedy Sole Panelist Date: March 21, 2025 |
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