DECISION

 

Forecast Group, Inc. v. Gregori Martens / BetHub

Claim Number: FA2403002091062

 

PARTIES

Complainant is Forecast Group, Inc. ("Complainant"), represented by Sam Pierce of Pierce Patent Law, California, USA. Respondent is Gregori Martens / BetHub ("Respondent"), Latvia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <polybet.app>, registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Adam Taylor as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 30, 2024; Forum received payment on March 30, 2024.

 

On April 1, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <polybet.app> domain name is registered with NameCheap, Inc., and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On April 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2024, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@polybet.app. Also on April 9, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on April 19, 2024.

 

An Additional Submission was received from Complainant on April 25, 2024.

 

On April 22, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Adam Taylor as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

PRELIMINARY ISSUE: ADDITIONAL SUBMISSION

Complainant has sought permission to make an additional submission beyond the initial Complaint.

 

Rule 10 of the Rules gives the Panel complete discretion on whether to accept any late-filed materials. Although the Panel has the right to request additional materials, the parties have no right to submit additional materials absent the Panel's agreement. Rule 12; Forum Supplemental Rule 7.

 

In exercising this discretion, the Panel is mindful that one of the promises of the Policy is to ensure the rapid review and adjudication of domain name disputes. That promise would be undermined were parties encouraged to submit replies, which may themselves engender sur-replies.

 

Furthermore, Complainant has not identified any particular issue that it could not reasonably have addressed in the Complaint. Complainant has simply attempted to bolster its Complaint in reply to the Response.

 

For these reasons, the Panel declines to admit the Complainant's additional submission.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant has common law trademark rights to POLYBET by virtue of the fame of Complainant's "www.polybet.com" website and Complainant's advertising and marketing efforts therefor. Complainant's website is the top search result on Google and other search engines due to the fame of Complainant as well as Complainant's investment in its common law trademark rights. Complainant also relies on its pending United States trademark. The disputed domain name is confusingly similar to the Complainant's mark.

 

Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of Respondent's use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. Respondent has not been commonly known by the disputed domain name and has acquired no trademark or service mark rights. Respondent is not making a legitimate non-commercial or fair use of the domain name.

 

Respondent registered and used the disputed domain name in bad faith. Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark. Respondent has designed Respondent's website to maximize confusion with Respondent "by using PolyBet token and DAO terminology". In fact, Respondent has no association with Complainant.

 

B. Respondent

Complainant's claims of common law trademark rights are unfounded as "www.polybet.com" shows no actual activity and market presence. Complainant's website experiences zero to almost no internet-traffic, contradicting Complainant's statements regarding fame and marketing.  The pending trademark application does not constitute trademark rights under the Policy.

 

Respondent's use of the disputed domain name for gambling and cryptocurrency services is a bona fide offering, which establishes legitimate interests in the disputed domain name. Respondent fairly uses the disputed domain name with no intention to mislead or divert consumers.

 

Respondent has neither registered nor used the disputed domain name in bad faith. The commercial inactivity and low visibility of Complainant's website negates any likelihood of confusion. Respondent has made no statements regarding association with Complainant. The parties' websites target different audiences with no overlapping content. Complainant's website enables users to bet on fixed worldwide events, whereas Respondent provides a platform to facilitate user engagement in relation to a wide range of gambling and crypto activities. Respondent's "PLBT token" has a different "shortening name" to the Complainant's token and cannot cause confusion given the lack of trading activity on Complainant's website. "DAO" is a commonly used term/technology within the industry. The structures of the parties' respective websites are distinct, as are their business operations.

 

FINDINGS

Complainant operates a website at "www.polybet.com" that enables users to bet on the outcome of events.

 

On March 23, 2024, Complainant applied for a United States trademark for POLYBET (see Serial No. 98464759).

 

The disputed domain name was registered on October 21, 2023.

 

Respondent used the disputed domain name to resolve to a website branded "Polybet", and headed: "TAKE A BOLD STEP INTO THE FUTURE OF BETTING"[.] Discover a world where you can set your own rules... Create betting events, create your own rule[s.] Earn on bet outcomes, get rewards for joining Polybet."

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the POLYBET mark based on a pending United States trademark application (see Serial No. 98464759) that was filed on March 23, 2024, seven days before Complainant submitted its Complaint.

 

However, a pending trademark application does not constitute trademark rights under the Policy. See, e.g., TL Software Inc. v. Randy Roberts, FA2075183 (Forum Feb. 1, 2024). See, also, WIPO Overview 3.0, section 1.1.4: "A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i) ".

 

Complainant also asserts common law rights in the POLYBET mark. Respondent disputes that Complainant has established such rights.

 

See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that "The Policy does not require a complainant to own a registered trademark … if it can demonstrate established common law rights in the mark."). To establish common law rights in a name, a complainant generally must show extensive and continuous use in commerce such that consumers have come to associate the mark with the complainant as the source of the goods. See, also, Iacocca v. Tex. Int'l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) ("In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.")

 

See also WIPO Overview 3.0, section 1.3: "Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys… Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning."

 

Here, the Complaint includes virtually no information about the nature, history or extent of Complainant's trading activities. Furthermore, Complainant's case under the first element is based almost entirely on conclusory allegations. Complainant annexes no evidence in support of its assertions apart from a single document evidencing its above-mentioned pending trademark application.

 

Accordingly, the Panel finds that Complainant has failed to establish the first element of the Policy.

 

Rights or Legitimate Interests

It is unnecessary to consider this element in view of the Panel's finding under the first element above.

 

Registration and Use in Bad Faith

It is unnecessary to consider this element in view of the Panel's finding under the first element above.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <polybet.app> domain name REMAIN WITH Respondent.

 

 

 

 

Adam Taylor, Panelist

Dated: May 2, 2024