Tipico Group Ltd. v Info Blog posting

WIPO Case No. D2024-5093

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tipico Group Ltd. v. Info Blog posting

Case No. D2024-5093

1. The Parties

The Complainant is Tipico Group Ltd., Malta, represented by Boehmert & Boehmert, Germany.

The Respondent is Info Blog posting, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <tipicogames.org> is registered with Hostinger Operations, UAB (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2024. On December 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2024, 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 Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 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 amendment to the Complaint on December 13, 2024.

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 December 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2025. The Respondent sent several email communications to the Center on December 13 and December 17, 2024. The Center informed the Parties that it would proceed to commence the panel appointment on January 7, 2025.

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The Center appointed Angelica Lodigiani as the sole panelist in this matter on January 10, 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 was founded in Malta in 2004 and is one of the leading providers of online and retail betting services in Europe. The Complainant’s group includes branches in Germany, Austria, Croatia, Gibraltar, and Malta. In Germany, the Complainant operates over 1,000 betting shops. More than 6,000 people work for

the Complainant’s group and its associated franchise network.

The Complainant distinguishes its betting services by the TIPICO mark, which is the subject of considerable
marketing investment. Among other marketing activities, the Complainant sponsors the German football club

FC Bayern Munich, the German Soccer League (DFL), and the German Soccer Association (DFB).

The Complainant is the owner of the following trademarks:

- TIPICO (word), European Union registration No. 003939998, registered on September 23, 2005, for

services in class 41;

- TIPICO (figurative), European Union registration No. 011339835, registered on May 3, 2013, for goods and

services in classes 3, 7, 9, 14, 16, 25, 28, 32, 33, 34, 35, 36, 38, 41, 42, 43, and 45;

- TIPICO (figurative), European Union registration No. 017913149, registered on May 16, 2019, for goods

and services in classes 9, 14, 16, 25, 28, 32, 34, 35, 36, 38, 41, 42, 43, and 45.

The Complainant is also the owner of the domain names <tipico.com> registered on March 21, 1999, and of
<tipico.de>.

The Respondent is allegedly located in Pakistan. The disputed domain name was registered on November 12, 2024 and resolves to a website offering information on video games, gambling, and betting services under the figurative trademark TIPICO GAMES. In order to play online games, a membership is required at the 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 the disputed domain name is confusingly similar to its TIPICO mark.
Indeed, the disputed domain name incorporates the Complainant’s mark followed by the descriptive term
“games”, which cannot prevent a finding of confusing similarity.

The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its TIPICO mark or to register the disputed domain name incorporating this mark. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly divert consumers or tarnish the Complainant’s marks. The Respondent is promoting gambling and gaming services under the disputed domain name. The disputed domain name suggests an affiliation with the

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Complainant due to its composition. The website associated with the disputed domain name displays the Complainant’s mark associated with the descriptive element “games”. The provider indicated throughout the entire website is “Tipico Games”. As the website includes no information on its provider’s identity, Internet users are clearly misled as to an existing relationship between the website and the Complainant.

bad faith. The Respondent started offering betting services in competition with the Complainant’s services immediately after registering the disputed domain name. The term “tipico” is distinctive and has no connection with betting services. Moreover, the Complainant’s mark is well known in its field. A simple Internet search for the term “tipico” would have clearly revealed the Complainant and its well-known mark. Furthermore, it is implausible that the Respondent registered the disputed domain name without noticing the Complainant’s domain names <tipico.com> and <tipico.de>. Accordingly, the Respondent was aware of the	Lastly, the Complainant maintains that the Respondent registered and is using the disputed domain name in should have known it.
As to the use of the disputed domain name in bad faith, the Respondent registered and used it with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, which constitutes registration and use in bad faith.
Lastly, the Complainant points out that the Respondent is using a privacy protection service to hide its identity, which is further evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, immediately after receiving the email. I want to tell you that this website I bought has cost me around 500 to 600 dollars. If you send me a 1000 USD you can buy websites.” A few days later, after receiving the amended Complaint, the Respondent sent two other emails stating as follows “[y]ou will tell whoever asked you to complain, if you want to pay 1000 USD then I will give you my sites” and “[t]hanks for your mail but I have spent 1000 dollars on this website, if you pay me that then I will give you the membership”.
6. Discussion and Findings
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. Specifically, the Complainant appears to own registered rights over the trademark TIPICO, which predate the date of registration of the disputed domain name.
Although the addition of other terms here, “games”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
In light of the above, the Panel finds the first element of the Policy has been established.

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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.

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 Complainant has indicated that it has no relationship with the Respondent and that it never authorized the Respondent to make use of its TIPICO mark in any way, including as part of the disputed domain name. Moreover, nothing in the case file shows that the Respondent is commonly known by the disputed domain name.

The disputed domain name consists of the combination of the Complainant’s mark with the word “games”, directly related to the Complainant’s activity. Such composition of the disputed domain name cannot constitute fair use if it impersonates or suggests sponsorship or endorsement by the trademark owner. The disputed domain name resolves to a website offering betting services under the TIPICO GAMES mark. Moreover, the website contains multiple references to the betting provider “Tipico” or “Tipico Games”. Accordingly, the website displays a confusingly similar trademark and offers services in competition with the Complainant’s services under a misleading name. As such, the Respondent is attempting to capitalize and free ride on the goodwill associated with the Complainant’s mark and business.

Furthermore, the Respondent repeatedly attempted to sell the disputed domain name to the Complainant. is trying to take an economic unfair advantage from the Complainant’s TIPICO mark.

Panels have held that the use of a domain name for illegitimate activity, such as those described above, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

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 the Respondent registered a disputed domain name incorporating the Complainant’s earlier mark associated with the term “games”, which is directly related to the Complainant’s business. The Complainant’s mark is distinctive and a simple search on Google would have returned results exclusively associated with the Complainant. Furthermore, the disputed domain name resolves to a website offering betting services under the mark and name TIPICO GAME. Accordingly, the

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Panel finds that the Respondent registered the disputed domain name being aware of the Complainant’s mark. The registration of the disputed domain name, that is confusingly similar to the Complainant’s TIPICO mark, without rights or legitimate interests, amounts to registration in bad faith.

With respect to use in bad faith, the Panel notes that the disputed domain name resolves to a misleading website, offering competing services under a confusingly similar trademark and name. As the TIPICO mark is uniquely associated with the Complainant, and the Respondent lacks any right or legitimate interest in the disputed domain name, the Panel finds that the Respondent is using the disputed domain name, to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark.

Furthermore, for three times, the Respondent has offered for sale the disputed domain name for valuable consideration in excess of the Respondent’s initially claimed out-of-pocket costs directly related to the disputed domain name. In addition, the Respondent has used a privacy service provider to register the disputed domain name, most probably in order to make it more difficult for the trademark owner to protect its trademark rights. These two additional circumstances amount to use in bad faith.

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 <tipicogames.org> be transferred to the Complainant.

/Angelica Lodigiani/
Angelica Lodigiani
Sole Panelist
Date: January 24, 2025