WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Hill Organization Limited v. Netmax Multimedia
Case No. D2001-0455
1. The Parties
The Complainant is William Hill Organization Limited, a company incorporated under the laws of England and Wales, having its principal place of business at Greenside House, 50 Station Road, Wood Green, London N22 7TP, England.
The Respondent is Netmax Multimedia having an address at Jan van Goyenstraat 3, Nijmegen, Gelderland 6522 ES, Netherlands.
2. The Domain Name and Registrar
The domain name in issue in these Administrative Proceedings is . The registrar with which the domain name is registered is T Inc. (hereinafter "the Registrar").
3. Procedural History
On March 29, 2001, the WIPO Arbitration and Mediation Center ("the Center") received the Complaint in hard copy.
On April 3, 2001, the Center sent an e-mail to the Complainant advising the Complainant that the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") required that the Complaint should be submitted in electronic form and in hard copy.
On April 3, 2001, the Center sent a request for Registrar Verification to the Registrar. On April 4, 2001, the Registrar responded to the Center by e-mail and stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name , confirmed that the Respondent was at that time the registrant of the said domain name, provided contact details for the Respondent including the administrative contact, the technical contact and the billing contact for the said domain name, and confirmed that the Uniform Domain Name Dispute Resolution Policy (hereinafter "the Policy") applied to the said registration and that the said registration was currently "on hold" within the Registrar's system.
On April 4, 2001, the Complaint was received by the Center by e-mail and a further hard copy was received on April 5, 2001.
On April 9, 2001, the Complainant filed a request to amend paragraph 3(b)(xiii) of the Complaint relating to the Complainant�s agreement to submit to the jurisdiction of the Courts in Canada in the event of a challenge to the decision of this Administrative Panel.
On April 9, 2001, the Center reviewed the Complaint and was satisfied that the Complainant complied with the Rules and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy (hereinafter "the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.
On April 9, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name to the Respondent by post/courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on April 9, 2001, and that the Respondent was required to submit a Response to the Center on or before April 28, 2001.
On April 17, 2001, the Complainant sent to the Center by e-mail copies of e-mail correspondence between the Complainant and the Respondent which consisted of an e-mail purporting to be from the Respondent to the authorized representative of the Complainant dated April 10, 2001, and a reply from the authorized representative of the Complainant dated April 17, 2001.
On May 1, 2001, as no Response had been filed by the Respondent, the Center sent a Notification of Respondent Default to the Respondent by post/courier and by e-mail and a copy of said Notification was at the same time sent to the authorized representative of the Complainant by e-mail.
On May 4, 2001, the Center invited James Bridgeman to act as Administrative Panel in these proceedings.
On May 10, 2001, having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member.
On May 10, 2001, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties and advised that absent exceptional circumstances, the Administrative Panel was required to forward his decision to the Center by May 25, 2001. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and the panel was properly constituted.
4. Factual Background
The Complainant is a very well known and substantial bookmaker based in the United Kingdom and has existed since 1934. During that time the Complainant has used the trademarks and service marks and in connection with the provision of its betting services. The Complainant is the proprietor of a number of registered trademarks and service marks including UK registration GB 2232558 in classes 9, 36 and 41. Furthermore, the Complainant is the owner of a pending application EM 1274505 for registration of a Community Trademark in classes 9, 36 and 41. The Complainant is also the proprietor of UK registration GB 1383971 registered in class 36; UK registration GB 2175369 registered in class 41; UK registration GB 2227658 registered in classes 9, 36, 42; UK registration GB 2228925 registered in classes 9, 36 and 41; and European Trade Mark EM 914705 registered in classes 16, 35 and 41.
In addition to its business in the United Kingdom, the Complainant carries on similar business in many other countries including business transacted through its principal web sites established at the domain addresses and .
The Complainant runs over 1500 betting offices in the United Kingdom, and operates a substantial telephone betting service in other European jurisdictions.
In the absence of any Response, there is little information about the Respondent save for the abovementioned details provided to the Registrar in connection with the registration of the said domain name .
5. Parties� Contentions
A. Complainant
The Complainant requests this Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.
The Complainant submits that the said domain name is identical or confusingly similar to a trademark in which the Complainant has rights. In this regard the Complainant submits that it is the proprietor of aforementioned trademark registration and the pending application. The Complainant established its first Internet site in June 1996, to promote its telephone betting business and submits that it has since developed a substantial business through the web sites accessible via the domain addresses and .
The Complainant asserts that it is a well-known and substantial bookmaker and has several million customers throughout the world.
By reason of the above, the Complainant claims to have acquired a very substantial and extensive goodwill and reputation in the United Kingdom and worldwide in the name and trademarks and .
The Complainant submits that the said domain name in dispute incorporates part of the Complainant's registered service mark and all of the Complainant's registered service mark except for one letter "l".
The Complainant submits that the Respondent's domain name is confusingly similar to the said trademarks in which the Complainant has rights.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the said domain name. The Complainant states that the Respondent is not a licensee of the Complainant, nor is it otherwise authorised to use the Complainant's mark. There is no element on the web site of the Respondent, or within the Respondent's name, which justifies the use of the word within the said domain name.
The Complainant has furnished evidence that the Respondent has established a web site at the said domain address . The Complainant submits that an examination of the Respondent�s web site, and the limited information available in respect of the Respondent, show that there is no evidence that the Respondent has any legitimate rights in respect of the domain name. There appears to be no resemblance between the name and the images appearing on the web site.
The Complainant submits that the said domain name was registered and is being used in bad faith. According to the Policy at paragraph 4(b)(iv), it is considered bad faith use if a Respondent uses a domain name to attract for commercial gain, Internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site.
The Complainant submits that the web site, which appears when the URL is typed in, contains pornographic images. The Complainant has submitted printouts of examples of some pages on the site as an annex to the Complaint. The Complainant submits that the said domain name is being used to automatically re-direct and divert Internet users to the web site appearing at .
Internet users are trapped into the Respondent�s web site and before they can exit the web site, the visitor must view advertisements for the Respondent. Furthermore visitors to the Respondent's web site are forced to visit other pornographic web sites by way of "pop ups" automatically linking the Respondent's web site to many other pornographic sites. The Respondent is therefore gaining commercially by unfairly using the goodwill of the Complainant to attract an increased number of Internet users to visit the Respondent's web site.
The Complainant submits that the Respondent has used the Complainant's trade mark and service mark to attract Internet users to this site and by doing so, the Respondent has tarnished the Complainant's goodwill by using a confusingly similar name to display pornography as well as confuse Internet users as to a possible endorsement of the Respondent's site. The Administrative Panel has considered in the cases Yahoo! Inc v. Cupcake Patrol (WIPO Case No. D2000-0928) and Yahoo! Inc v. Internet Entertainment Group (WIPO Case No. D2000-1595), that it is unacceptable use of a domain name when a Respondent associates the Complainant's trade mark with pornography against its wishes. In this case, the Respondent is intending to gain commercially by misleadingly diverting customers and tarnishing the Complainant's trademark with pornography.
Any typographical errors (which are common) by Internet users intending to access the web site result in the Internet user being taken to the pornographic web site operated by the Respondent. In this way, the Respondent intends to divert potential users of the Complainant's web site to the Respondent's site. According to the Administrative Panel's decision in cases such as Oxygen Media, LLC v. Primary Source, (WIPO Case No. D2000- 0362), and Altavista Company v. Andrew Krotov (WIPO Case No. D2000-1091), it was considered that using a domain name which intentionally captured the typographical errors of Internet users was bad faith use.
Finally, the Complainant submits that as the word does not have any meaning (either in Dutch or in English) that the Complainant is aware of, it is submitted that the Respondent is using the domain name to attract for commercial gain, Internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site.
B. Respondent
There was no Response filed by the Respondent.
6. Discussion and Findings
Preliminary Matter
On April 17, 2001, the Complainant sent to the Center, a copy of certain correspondence, which purports to have been an exchange of e-mails between the parties in these Administrative Proceedings. This Administrative Panel has not admitted this correspondence in evidence, as the Complainant did not follow proper procedures.
Substantive Matters
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the domain name in dispute 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 said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
The Complainant has furnished prima facie evidence that it is the owner of a number of trademarks and service marks set out above including in particular UK trade mark registration GB 2232558 for the mark .
Furthermore, the Complainant has submitted that it has a long established reputation and goodwill in the use of the name , but has not furnished any evidence whatsoever of this reputation.
The evidence of these registrations and the pending application for a Community Trade Mark, supplied by the Complainant is in the form of a schedule or list of registrations and the pending application and although it would be preferable to have more formal evidence, in the absence of any challenge by the Respondent, it is sufficient in that the Complaint contains a certificate of the Complainant�s authorised representative inter alia to the effect that the information contained therein is to the best of the Complainant�s knowledge complete and accurate. In the circumstances, this Administrative Panel accepts this prima facie evidence of the Complainant�s registrations and pending application.
This Administrative Panel accepts that there is a clear similarity between the said domain name and the Complainant's trademark and service mark. Furthermore, this Administrative Panel accepts that because there is only one letter in the difference between the said trademark and the said domain name , the similarity is likely to cause confusion among users of the Internet.
This Administrative Panel is further satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the said domain name. In this regard, this Administrative Panel is conscious that the second limb of the test set out in paragraph 4(ii) of the Policy requires the Complainant to prove a negative and in the manner that this problem has been approached in earlier decisions, this Administrative Panel is influenced by the following facts: the Complainant is the owner of a well known trademark and service mark ; the Complainant has an established presence on the Internet since 1996: the Complainant has not granted any rights or license to the Respondent to use the said trademark and service mark; and on the evidence submitted by the Complainant there does not appear to be any connection whatsoever between the word and the business of the Respondent.
In the circumstances, in the absence of any Response from the Respondent, this Administrative Panel is satisfied that the Complainant has satisfied the second limb of the test.
This Administrative Panel further accepts the Complainant�s submission that the Respondent is using the said domain name to attract for commercial gain, Internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the services on the Respondent's web site. Because of the similarity of the said domain name and the Respondent�s trademark, it is clear that Internet users who are intending to access the Complainant�s web site, who make a simple typographical error will access the web site operated by the Respondent. This Administrative Panel accepts that the Complainant has made out a prima facie case that the Respondent has registered and is using said domain name in order to create such a diversion to attract the Complainant�s customers.
In the circumstances and in the absence of any Response from the Respondent, this Administrative Panel accepts that the Respondent has therefore made out a prima facie case, sufficient to satisfy the third limb of the test in Paragraph 4 of the Policy.
7. Decision
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules this Administrative Panel decides that the domain name is confusingly similar to the Complainant's service mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name should be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: May 31, 2001
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