The Complainant is Newcote International Limited of Nassau, Bahamas, and Victor Chandler International of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), together represented by Olswang LLP, United Kingdom.
The Respondent is Jamie Howard of Worthing, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2013. On January 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 26, 2013. 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.
On February 26, 2013, the Respondent sent an email communication to the Center. On March 1, 2013, the Center informed the Parties, at the Panel’s request, that in light of the Respondent’s said email communication the Complainant might wish to consider requesting a suspension of the proceedings to explore a possible settlement between the Parties. The Center further informed the Parties that if the Complainant wished to suspend the proceedings it was invited to submit such a request by March 4, 2013. On March 5, 2013 the Center informed the Panel that it had not received any request from the Complainant for suspension of the proceedings and the Panel accordingly proceeded to the present Decision. 4. Factual Background
The First Complainant, Newcote International Limited, is a company incorporated in the Bahamas. The Second Complainant, Victor Chandler International, is a company incorporated in Gibraltar, Overseas Territory of the UK. The Complainants are part of the Victor Chandler group of companies which originate from Victor Chandler Limited, a UK company first incorporated on May 22, 1946. The Complainants’ group of companies has offered betting services in the UK under the name “Victor Chandler” since 1946, and gambling services since the 1960s. The Complainants’ group of companies also operates numerous online betting platforms under the names “Victor Chandler” and “Betvictor”.
The Complainants’ group rebranded its “Victor Chandler” online betting platform to the name “Betvictor” in January 2012, supported by a GBP 4 million television advertising campaign comprising over 1,200 advertisements and over 500 press advertisements. In that year the Complainants’ “Betvictor” platform served over 500,000 customers located in over 160 countries, of which 206,000 were new to the service. It also turned over in excess of GBP 2 billion.
The First Complainant is the owner of European Community trademark registration No. 9608332 for the word mark BETVICTOR registered on April 28, 2011 in international classes 9, 41 and 42. The Complainants or one of their other group companies are owners of various other registered trademarks consisting of or including the word “victor” dating back over 14 years and are the registrants of over 100 domain names incorporating the mark VICTOR, including over 35 incorporating the mark BETVICTOR. In particular, the Second Complainant registered the domain name in 2002.
The Respondent is an individual with an address in Worthing, UK. The disputed domain name was created on December 4, 2012. After its creation, the disputed domain name was made available for sale via the Sedo domain marketplace at a price of GBP 5,000 and the associated website displayed advertising links, including two which related to third party online gambling platforms.
On December 21, 2012, lawyers acting for the Second Complainant wrote to the Respondent stating that the Respondent’s registration of the disputed domain name constituted an infringement of the Second Complainant’s intellectual property rights and requesting that the Respondent cease all operations carried on via the disputed domain name and transfer it to the Second Complainant. On December 21, 2012, the Respondent replied to the said letter that he would be willing to sell the disputed domain name to the Second Complainant for GBP 3,000 together with a transfer fee of GBP 90. On December 24, 2012, the Second Complainant’s lawyers replied to the Respondent offering to pay the said transfer fee alone. On December 31, 2012, the Respondent replied stating that he had received offers from numerous other buyers for the disputed domain name and that as a loyal customer of the Complainants with a good betting relationship, involving the Respondent spending GBP 16,000 with the Complainants that year, the Respondent wished to reach a mutually acceptable settlement. 5. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain name is identical to a trademark in which they own rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainants contend that the disputed domain name is highly similar to the First Complainant’s BETVICTOR trademark and consists of the sign BETVICTOR in conjunction with the suffix “live casino”, which suffix the Complainants submit is both descriptive of the services covered by the said trademark and of the services which are provided by the Complainants’ online platforms, in particular those operating at the domain names , and . The Complainants also note that the Complainants’ live casino page is accessed via the address “www./live-casino/en” and has been so available at this URL since at least January 2012.
The Complainants submit that as the only small differences between the First Complainant’s trademark and the disputed domain name are common, dictionary and/or descriptive words, they are unlikely to be noticed by the public and thus do nothing to distinguish the disputed domain name from the said trademark.
The Complainants note that the disputed domain name was registered some eleven months after the launch of the Complainants’ BETVICTOR brand and submit that there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services. The Complainants submit that they have not consented to the Respondent’s use of the mark BETVICTOR and that the Respondent is not related in any way to the Complainants, is not commonly or legitimately known by the disputed domain name, has not acquired any trademark rights in the disputed domain name, has not acquired any public reputation or association with the BETVICTOR mark and has not provided any genuine offering of goods or services from the disputed domain name. The Complainants assert that the Respondent has not, since securing registration of the disputed domain name in December 2012, made any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
The Complainants submit that the disputed domain name has been registered for the purposes of creating confusion on the part of the public between the Respondent and the Complainant for the Respondent’s commercial gain and also for the purposes of selling the disputed domain name to the Complainants or one of their competitors. The Complainants state that the website associated with the disputed domain name provides targeted links to visitors based on their previous web searches, in respect of which the Complainants believe that the Respondent generates commission. The Complainants also assert that a direct link from the said website states that it is for sale for GBP 5,000 and that in initial correspondence, the Respondent attempted to sell the disputed domain name to the Complainants for GBP 3,000. The Complainants submit that during such correspondence, the Respondent stated that he had received offers from unrelated third parties and was prepared to sell it to them (evidence provided).
The Complainants submit that, in addition to the disputed domain name, the Respondent has registered a number of other domain names that appear to infringe the registered trademark rights of other famous betting and gaming services providers. The Complainants cite the domain names and marks as follows: , registered on January 1, 2013, the corresponding registered trademark for which is BETFAIR; , registered on December 4, 2012, the corresponding registered trademark for which is LADBROKES; and , registered on December 6, 2012, and , registered on November 22, 2012, the corresponding registered trademark for each of which is STAN JAMES. The Complainants assert that in each case, the domain name concerned is registered with the Respondent’s name, postal address and contact email address being identical to the corresponding registration details of the disputed domain name. The Complainants note that a further commonality between the said domain names and the disputed domain name is the use of an earlier trade mark registration as prefix, followed by a descriptive and/or generic term. The Complainants assert that this demonstrates that the Respondent has engaged in a pattern of preventing rights owners from reflecting their marks in corresponding domain names. B. Respondent
The Respondent did not file a formal Response to the Complainant’s contentions. However, on February 26, 2013, the Respondent sent an email communication to the Center asserting that the Respondent purchased the disputed domain name in good faith however offering to transfer the disputed domain name to the Complainants in return for a transfer fee. 6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have demonstrated to the Panel’s satisfaction that the First Complainant has rights in the trademark BETVICTOR by virtue of the European Community trademark cited in the Factual Background section above. The disputed domain name incorporates this mark in its entirety as the first and dominant element, together with the generic/dictionary words “live” and “casino” and the top level domain “.com” which may be disregarded for the purposes of comparison as is customary in cases under the Policy. As has been established by multiple previous decisions under the Policy, the addition of descriptive or generic words to a trademark in a domain name does not prevent the domain name from being confusingly similar to that trademark. A descriptive element cannot remove the overall impression made on the public by a trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). In addition, the Panel notes that the words “live” and “casino”, taken as a phrase, are used in the Complainants’ website URL and are descriptive of the services provided by the Complainants, such that this exacerbates the confusion between the disputed domain name and the First Complainant’s trademark.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Complainants contend that they have not consented to the Respondent’s use of the mark BETVICTOR and that the Respondent is not related in any way to the Complainants, is not commonly or legitimately known by the disputed domain name, has not acquired any trademark rights in the disputed domain name, has not acquired any public reputation or association with the BETVICTOR mark and has not provided any bona fide offering of goods or services from the disputed domain name. The Complainants also assert that the Respondent’s use of the disputed domain name in connection with advertising links, several of which relate to services similar to those provided by the Complainants, cannot confer any rights or legitimate interests on the Respondent. The Panel is satisfied that this constitutes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Where a complainant successfully makes a prima facie case that a respondent has no rights or legitimate interests in a domain name under the Policy, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests. The Respondent did not file a formal Response to the Complaint and in the Panel’s opinion neither the Respondent’s informal email to the Center nor his correspondence with the Second Complainant’s lawyers disclose any apparent rights or legitimate interests which the Respondent might have in the disputed domain name. The Panel furthermore accepts the Complainants’ contention that the Respondent’s use of the disputed domain name containing an exact representation of the Complainants’ trademark to provide advertising links, some of which target the Complainants’ business, cannot confer any such rights or legitimate interests upon the Respondent.
In these circumstances, the Panel finds that the Complainants have proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present case, the Respondent, by his own admission in the prior correspondence between the Parties, spent the not insubstantial amount of GBP 16,000 on the Complainants’ betting services over the course of 2012 and furthermore comments that he is a very loyal customer of the Complainants and has a good betting relationship with them. In these circumstances, the Panel is in no doubt that the Respondent registered the disputed domain name with the Complainants and their rights in the name and trademark BETVICTOR firmly in mind and that this is an indicator of the Respondent’s registration and use of the disputed domain name in bad faith. The fact that, after registration of the disputed domain name, the Respondent used the disputed domain name for an advertising service which targeted the Complainants’ trademark while simultaneously listing the disputed domain name for sale at a price of GBP 5,000 is a further such indicator. Finally, the Panel notes that the Respondent is the registrant of domain names relating to the trademarks of other famous betting and gaming services providers, including in particular which was created on the same date as the disputed domain name. In the Panel’s opinion this is a further indicator that the Respondent registered and used the disputed domain name in bad faith.
The Panel is satisfied in all of these circumstances that the Complainants have successfully made out a case that the Respondent has registered and used the disputed domain name in bad faith in terms of the Policy. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 be transferred to the Second Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: March 12, 2013
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