WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ladbroke Group Plc v. Sonoma International LDC
Case No. D 2002-0131
1. The Parties
The Complainant in these administrative proceedings is Ladbroke Group plc a company incorporated in England and Wales having a place of business at Maple Court, Central Park, Reeds Crescent, Watford, Herts WD24 4QQ, United Kingdom.
The Respondent is Sonoma International LDC having an address at 60, Market Square, Belize City, Belize.
2. The Domain Names and Registrar
The domain names in dispute are , , and .
The Registrar with which said domain names are registered is Network Solutions, Inc. (hereinafter "the Registrar").
3. Procedural History
On February 8, 2002 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on February 12, 2002.
On February 11, 2002 the representatives of the Complainant sent an e-mail to the Center notifying the Center that the Complainant had received notification of non-delivery of all e-mail communications with the Respondent to all e-mail addresses set out in the Complaint, and non-delivery of the fax sent to the Respondent at the number set out in the Complaint. However, the Complainant had received confirmation from the courier of delivery of the hard copy of the Complaint to the Respondent on February 11, 2002.
On February 14, 2002 the Center sent a Request for Registrar Verification to the Registrar. On February 15, 2002 the Registrar responded, confirming that it is the registrar of said domain names , , and and each of them and that the Respondent is the current registrant, Administrative Contact and Technical Contact for each said registration. The Registrar furthermore confirmed in respect of each said registration that the language of the Service Agreement is English, and that the said registration had an active status at that time.
While the Registrar did not expressly confirm that the Uniform Domain Name Resolution Policy ("the Policy") applies to said registrations, the Complaint contains a statement to the effect that the registration agreement, pursuant to which the domain names have been registered incorporates the Policy.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.
On February 19, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. Said Notification was sent to the Respondent by Post/Courier (with enclosures), by facsimile (Complaint without enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised 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.
The Center received notification of non-delivery of the Notifications of Complaint and Commencement of Administrative Proceedings due to permanent fatal errors in the addresses. Similarly the attempt to serve the Notifications by fax was unsuccessful as the fax number was "busy/no signal". Service of the hard copy of the Notifications by courier was however successful and the Package Tracking Report from the courier confirmed that the shipment was delivered on February 21, 2002.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceeding had commenced on February 19, 2002 and that the Respondent was required to submit a Response to the Center on or before March 11, 2002.
No Response was received by the Center and on March 13, 2002, the Center sent a Notification of Respondent Default to the Respondent by e-mail. A copy of said Notification of Respondent Default was on the same date sent to the authorised representative of the Complainant by e-mail. Once again the Center received a notification of non-delivery in respect of the e-mail sent to the Respondent, due to permanent fatal errors in the e-mail address.
On March 28, 2002, after having received a Statement of Acceptance and Declaration of Impartiality in accordance with Paragraph 7 of the Rules, the Center proceeded to appoint James Bridgeman as Administrative Panel. On the same day the case file was transmitted to the Administrative Panel.
While both the Center and the Complainant experienced difficulties in communicating with the Respondent in the view of this Administrative Panel the Center fulfilled its responsibility to employ reasonably available means calculated to achieve actual notice to Respondent in accordance with Paragraph 2(a) of the Rules. In accordance with Paragraph 2(f) of the Rules the Respondent is deemed to have been served with the Notifications of Complaint and Commencement of Administrative Proceedings on February 21, 2002 being the date of delivery according to the Package Tracking Report as confirmed by the courier.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant is an established business engaged in gaming services including casinos, betting shops and on-line gaming and is the proprietor of approximately 60 registered trademarks throughout the world which comprise the word LADBROKE or LADBROKES or of which the word LADBROKE or LADBROKES is the dominant feature.
The Complainant�s registered trademarks include, amongst others, the following:
Community
CTM 450494
LADBROKES
Classes 36, 42
USA
2045395
LADBROKES
Class 41
2080710
LADBROKE
Class 42
1811085
LADBROKE
Classes 36, 41
Costa Rica
96112
LADBROKE
Class 41
Dominican Republic
81289
LADBROKE
Class 41
Mexico
439445
LADBROKES
Class 36
441887
LADBROKES
Class 41
441888
LADBROKES
Class 42
There is no information available about the Respondent except for that contained in the Complainant and in the Registrar�s records which essentially provides only the name and contact details of the Respondent. As has been noted above the e-mail address and the fax number provided by the Respondent for contact purposes appear to be either incorrect or inoperative.
5. Parties� Contentions
A. Complainant
The Complainant requests the Administrative Panel to issue a decision that the contested domain names be transferred to the Complainant.
The Complainant has submitted copies of the registration certificates in respect of the above referenced registered trademarks. The Complainant has also submitted a copy of the Service Agreement that operates between the Respondent and the Registrar.
The Complainant submits that it is one of the market leaders in the business of gaming services including casinos, betting shops and on-line gaming and provides such services under the service marks LADBROKE and LADBROKES. The Complainant submits that it has spent a substantial sum of money developing, advertising and promoting its brand throughout the world and as such enjoys extensive and widespread goodwill and repute in its service marks worldwide. The Complainant�s LADBROKES brand has been listed in Interbrand�s Annual Survey of the "World�s Most Valuable Brands" among the top 100 most valuable brands in the world in respect of the years 2000 and 2001.
The Complainant submits that it carries on business on the Internet on www sites accessible at domain names incorporating the LADBROKE and LADBROKES trademarks including , and .
The Complainant claims that it has rights in the service marks LADBROKE and LADBROKES and in so far as the whole of the mark LADBROKE appears in the domain names in issue in these Administrative Proceedings, it is submitted that said domain names are identical or confusingly similar to the Complainant�s service marks.
The Complainant submits that this is especially the case having regard to the fact that the rest of the domain names are comprised merely of the word "poker" which adds nothing to the mark LADBROKE.
Given that the mark LADBROKE is such a strong mark it is the distinctive feature of the domain name, to which the word "poker" adds nothing, or very little. Further, the word "poker" is merely descriptive, being a type of gaming activity that providers of gaming services are likely to offer. The Complainant therefore submits that if the domain names are not identical to the Complainant�s service marks, they are at least confusingly similar to the Complainant�s service marks.
The Complainant submits that it has neither licensed nor otherwise permitted the Respondent to use the said domain names or the said service marks.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain names because the Respondent�s business has no connection with the names LADBROKE or LADBROKES. The Respondent does not trade under either name neither does it offer goods or services under either name. Furthermore the Complainant asserts that the Respondent has not been and is not commonly known under either name.
The Complainant submits that said domain names should be considered as having been registered in bad faith by the Respondent because the domain names have not been used in connection with a corresponding www site for the bona fide offering of goods and services. The Complainant argues that this is evidence that the Respondent has registered the domain names in order to prevent the Complainant from reflecting the mark in corresponding domain names. The fact that the Respondent has registered four domain names which incorporate the Complainant�s trade marks is sufficient to show that the Respondent is engaged in a pattern of such conduct.
The Complainant additionally argues that the Respondent must have known of the existence of the Complainant prior to registering its domain name.
The Complainant claims that it has been making preparations to register and use the domain names and/or in connection with the launch of an online poker game in the UK. The launch was to take place in February or March 2002. This was to complement its existing online casino games offered under , such as black jack, roulette, baaccarat and slot machines. It is noteworthy that the Complainant has not provided any details of the dates on which it commenced to provide these online casino games or the dates on which it began to make preparations to register the domain names that are the subject of these proceedings.
The Complainant submits that the registration by the Respondent of these domain names has disrupted the business of the Complainant. Since it has not been possible to contact the Respondent, the Complainant states that it cannot be certain whether the said domain names were registered primarily for the purpose of disrupting the Complainant�s business, but points out to the fact that its business plans have been published in the media. The Complainant cites an example of a report in "The Daily Telegraph" of January 28, 2002 which has been submitted as an annex to the Complaint. It is noteworthy however that this is more than a year after the date on which the Respondent registered said domain names.
The Complainant�s representative wrote to the Respondent on January 25, 2002. The letter was sent by e-mail to the address contained in the Registrar�s WHOIS database. However, an automatic response was received indicating that there had been a delivery failure and that the recipient address was rejected.
Neither the telephone nor the fax numbers provided in the WHOIS database were operative. The Complainant�s representative sent the hard copy of the letter by courier on January 25, 2002 and the letter was delivered on January 29, 2002. At the time of submitting the Complaint in these Administrative Proceedings no response had been received from the Respondent.
The Complainant is concerned that the contact details provided by the Respondent and available on the WHOIS database are incorrect and may not be the Respondents correct address. Nonetheless since the Complainant has been making preparations to use the domain names which are the subject of this Complaint, it was eager to submit the Complaint without delay.
B. Respondent
There was no Response filed by the Respondent.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain names registered by the Respondent are 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 domain names in question; and
(iii) the domain names have been registered and are being used in bad faith.
Identical or Confusingly Similar
The Complainant has established that it is the owner of the registered trademarks LADBROKE and LADBROKES in a number of jurisdictions throughout the world and this Administrative Panel accepts that it has rights at common law in said trademarks in those and other jurisdictions.
The second level domain names that are the subject matter of this dispute essentially consist of two elements firstly they each comprise of the word "ladbroke" or "ladbrokes" and secondly the additional word "poker". In the view of this Administrative Panel the most distinctive element of each of said domain names is the word "ladbroke" or "ladbrokes" in each case. The second element is a reference to the card game "poker" with an obvious association with gaming.
This Administrative Panel has no difficulty in deciding that each of said domain names is confusingly similar to the Complainant�s trademarks. The addition of the non-dominant element in each case, being a reference to the card game "poker" makes it more likely to create a confusion with the Complainant�s trademarks since the Complainant has an established reputation in the gaming industry.
Rights or Legitimate Interest
The Respondent has failed to file any Response in these proceedings. The Complainant has an established reputation in many jurisdictions throughout the world in its service marks LADBROKE and LADBROKES. Furthermore according to the report in "The Daily Telegraph" submitted by the Complainant in support of its arguments relating to the issue of bad faith, the Complainant has had a presence on the Internet for the past two years.
The Complainant has asserted that it has neither licensed nor otherwise permitted the Respondent to use the said domain names or the said trade marks.
In the circumstances, this Administrative Panel accepts that the Respondent has made out sufficient case to shift the onus of proof onto the Respondent with regard to the second element of the test in Paragraph 4(a) of the Policy and that the Respondent has failed to make any effort in support of its case in this regard.
In the absence of a Response or any communication from the Respondent this Administrative Panel is satisfied that the Complainant has satisfied the second element of the test in Paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interest in said domain names or any of them.
Bad Faith
Paragraph 4(b) of the Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name:
(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant�s out-of-pocket costs directly related to the domain name; or
(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant�s web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the registrant�s web site or location or of a product or service on the registrant�s web site or location.
With regard to the question of whether the Respondent has registered and is using said domain names in bad faith, the Complainant claims that it has been making preparations to register and use the domain names and/or in connection with the launch of an online poker game in the United Kingdom. It claims that the launch was to take place in February or March 2002, and that this was to complement its existing online casino games offered under , such as black jack, roulette, baccarat and slot machines.
The Complainant submits that its business plans in this regard have been published in the media and the Complainant has furnished this Administrative Panel with a copy of a report in "The Daily Telegraph" of January 28, 2002, describing these plans.
The domain names that are the subject matter of this dispute have been registered since December 13, 2000. The Complainant has not provided any evidence that its plans were commenced prior to the registration date of the domain names in December 2000. In fact is would appear that the Complainant did not commence its plans until a date subsequent to the date on which the Respondent registered the domain names.
It would appear therefore that these plans are not in any way relevant to these proceedings except that it is most unlikely that the Respondent registered said domain names as a response to these plans.
On the other hand the Complainant has a long established reputation in many jurisdictions in the use of its service marks LADBROKE and LADBROKES in the gaming industry. It is most unlikely that the Respondents just happened to unintentionally select the Complainant�s distinctive service marks LADBROKE and LADBROKES and inadvertently put them in combination with the name of the card game "poker" when selecting its domain names.
In the view of this Administrative Panel it is most likely that the Respondent was aware of the Complainant, its reputation in the gaming industry and its service marks, when the Respondent registered these domain names.
It is significant that the Respondent sought to register a series of domain names in the .com, .net, and .org gTLDs.
This Administrative Panel therefore concludes that the Respondent sought to register said domain names because of their association with the Complainant, the Complainant�s reputation and the Complainant�s business. It would also appear that the Respondent provided false or misleading information to the Registrar.
Taken together with the fact that the Respondent has not filed any Response in these proceedings, this Administrative Panel accepts that the Complainant has established a prima facie case that the Respondent registered said domain names and each of them in bad faith.
As to whether the Respondent is using said domain names in bad faith, it appears from the information available to this Administrative Panel that the said domain names do not resolve to any www site. This passive holding of the domain names can in certain circumstances be evidence of use in bad faith.
In Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) February 18, 2000) the panelist noted that "[t]he domain name � does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name."
The panelist noted that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith" and concluded that "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
The panelist concluded that "it must be recalled that the circumstances identified in paragraph 4(b) are "without limitation" - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith."
He went on to say that "[t]he question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent�s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent�s passive holding amounts to acting in bad faith."
In the present proceedings there is very little known about the Respondent. The following can be inferred from the information supplied by the Respondent to the Registrar and the information supplied in the Complaint:
1. the Respondent registered the domain names in December 2000 and in the view of this Administrative Panel the Complainant has established a prima facie case that the Respondent registered said domain names in bad faith;
2. on the balance of probabilities, at the time of registration, the Respondent was aware that the Complainant had an established international reputation in the trademarks LADBROKE and LADBROKES and had established an Internet presence for its gaming services;
3. the Respondent intentionally chose to register domain names each of which are comprised of two elements viz. a combination of the Complainant�s service marks LADBROKE and LADBROKES and the name of a card game "poker";
4. any attempt to actively use any of the said domain names would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the registrant�s web site among users of the Internet who would inevitably be led to believe that such a www site would be owned by, controlled by, established by or in some way associated with the Complainant;
5. the contact details supplied by the Respondent to the Registrar were incorrect at the time of registration or have not been kept up to date and this would appear to be directly in conflict with the obligations to provide accurate information required under clause 4 of the Service Agreement between the Respondent and the Registrar;
6. the Respondent has engaged in "passive holding" of these domain names;
7. there is no information as to the business activities of the Respondent and the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interest in said domain names;
8. the Respondent has failed to file a Response or make any attempt to traverse the claims and submissions made by the Complainant;
9. taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, or an infringement of the Complainant�s rights under trademark law.
In the circumstances outlined above this Administrative Panel is satisfied that the passive holding of the said domain names the subject of these Administrative Proceedings amounts to a use of said domain names in bad faith by the Respondent.
In the view of this Administrative Panel the Complainant has therefore made out a prima facie case sufficient to satisfy the third element in Paragraph 4 (a) of the Policy.
7. Decision
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules it is the decision of this Administrative Panel that the Complainant has established that said domain names , , and and each of them are confusingly similar to a service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in said domain names and that the Respondent has registered and is using said domain names in bad faith.
This Administrative Panel therefore directs that said domain names , , and shall be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: April 10, 2002
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