WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Done Brothers (Cash Betting) Limited v. Karl Eckersley
Case No. D2008-0399
1. The Parties
The Complainant is Done Brothers (Cash Betting) Limited, of United Kingdom of Great Britain and Northern Ireland, represented by Petfre (Gibraltar) Limited, Gibraltar, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Karl Eckersley, of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Spot Domain LLC dba D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2008. On March 17, 2008, the Center transmitted by email to Spot Domain LLC dba D a request for registrar verification in connection with the domain name at issue. On March 18, 2008, Spot Domain LLC dba D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 1, 2008. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2008.
The Center appointed David Perkins as the sole panelist in this matter on April 29, 2008. 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
4.A The Complainant
4.A.1 The Complainant is a United Kingdom company which provides gambling services through over 700 retail outlets under the trading name of BETFRED. That business was started in 2003. The Complainant’s services are advertised daily under the BETFRED name in both the regional and national press in the United Kingdom.
The BETFRED trademark
4.A.2 The BETFRED brand originates from the name of the Complainant’s founder and Chairman, Fred Done. The Complainant asserts that it is the proprietor of the following United Kingdom registered trademarks. However, no trademarks registered are exhibited to the Complaint.
Trade Mark No. Mark Date Registered 2460545 BETFRED Women’s POKER TOUR 05/07/2007 2388440 BETFRED LOTTO 01/04/2005 2388438 BETFRED BINGO 01/04/2005 2388439 BETFRED CASINO 01/04/2005 2388442 BETFRED BALLS 01/04/2005 2388443 BETFRED POKER 01/04/2005 2388445 BETFRED GAMES 01/04/2005 2388446 BETFRED 01/04/2005 2424513 BETFRED MOBILE 15/06/2006 2424517 BETFRED MILLION 15/06/2006 2446006 BETFRED the bonus king 07/02/2007
The BETFRED Domain Names
4.A.3 The Complainant is the registrant of the following domain names:
Domain Name Date Created February 20, 2003 February 20, 2003 May 15, 2004 betfredpoker,.com August 22, 2003 November 19, 2003 November 19, 2003
4.B. The Respondent
No Response has been filed. The contested domain name was created by the Respondent on February 9, 2007. The Respondent’s address is Belper, Derbyshire, United Kingdom.
5. Parties’ Contentions
5.A Complainant
5.A.1 The Complainant asserts rights in the trademark BETFRED and that the disputed domain name is identical or confusingly similar to that trademark.
5.A.2 The disputed domain name does not resolve to an active website. Accordingly, the Complainant says that there is no evidence to indicate that the Respondent is using or is making demonstrable preparations to use that domain name in connection with a bona fide offering of goods or services.
5.A.3 The Complainant asserts that the Respondent is not commonly known by the domain name.
5.A.4 Nor, the Complainant says, is there any evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name, the Complainant’s belief being that his ownership of the domain name is purely with the intention of making commercial gain.
5.A.5 Accordingly, for the reasons set out in paragraphs 5.A.2 and 5.A4 above, the Complainant’s case is that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
5.A.6 As to registration and use in bad faith, the Complainant asserts that the circumstances of this case fall within paragraphs 4(b)(i) and (iv) of the Policy.
5.B Respondent
As stated, no Response has been filed.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 It is clear from, at least, paragraph 4.A.2 above that the Complainant has rights in the BETFRED trademarks. The Panelist has checked against the list of registered trademarks and can confirm that the earliest registered United Kingdom trademark is for BETFRED, which was applied for on April 1, 2005 and registered for services in Class 41 on December 20, 2005.
6.6 The disputed domain name , which was created in February 2007, is for the purpose of the Policy identical to that trademark. Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.7 The disputed domain name does not resolve to an active website. Further, the Respondent has failed to submit a Response. Consequently, there is nothing to indicate that the Respondent could establish any of the circumstances set out in paragraph 4(c) of the Policy, nor any other factors evidencing rights or legitimate interests in the disputed domain name. Accordingly, the Complaint also satisfies the requirement of paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.8 The Panel does not consider that the Complaint has produced evidence sufficient to come within paragraph 4(b)(i) of the Policy. There is no evidence offered of the Respondent having registered the disputed domain name for the purposes of selling it to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
6.9 However, given the notoriety of the Complainant’s business under the BETFRED trading name and trademark which has been built up in the United Kingdom since 2003, it is inconceivable that the Respondent can show good faith registration in February 2007 of the disputed domain name which is identical to that trademark.
6.10 As to use in bad faith, it has been established that in certain circumstances of passive holding even non-use as, in the case here, can constitute bad faith use under the Policy. See, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and subsequent decisions. The factors which indicate bad faith in such cases include failure to respond to the Complaint, the well-known status of the Complainant’s trademark (BETFRED being a well-known mark in the United Kingdom, where the Respondent is located) and the impossibility of conceiving a good faith use to which the disputed domain name could be put.
6.11 Accordingly, the Panel finds that the Complaint meets the twin requirements of paragraph 4(a)(iii) of the Policy.
7. Miscellaneous
The Panel would draw the Complainant’s attention to paragraph 12 of the Rules, which provides that the Panel may (although it did not deem it necessary to do so here) request, in its sole discretion, further statements or documents from either of the parties in addition to the Complaint or the Response. However, ordinarily, submissions are restricted to the Complaint and the Response. Accordingly, it is important for the Complaint to provide in the Complaint evidence appropriate to support the Complainant’s assertions that each of the three elements of paragraph 4(a) of the Policy are present. In this case, the evidence proffered by the Complainant in the Complaint under paragraphs 4(a)(ii) and (iii) is adequate but, nevertheless, somewhat “thin”. Complainants should bear in mind that, typically, they must make out their case in the Complaint and that the opportunity for a Complainant to supplement the Complaint is (if provided by the Panel) the exception rather than the rule.
8. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: April 30, 2008
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