The Complainants are Newcote International Limited of Nassau, Bahamas (“First Complainant”); Victor Chandler International Limited of Gibraltar, Overseas Territory of the United Kingdom (“United Kingdom”) (“Second Complainant”), represented by Olswang LLP, United Kingdom.
The Respondent is Sally Hill of Leeds, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , and (the “Disputed Domain Names”) are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2013. On July 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 2, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 5, 2013.
The Center verified that the Complaint together with the amended 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”).
On July 5, 2013, the Respondent sent an email communication to the Center querying whether any action should be taken from its part. On the same date, the Center acknowledged receipt of the Respondent’s email communication and updated the parties regarding the status of the proceedings and further procedural steps.
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 July 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2013. The Respondent did not submit any formal response. Accordingly, on August 7, 2013, the Center notified the parties about the commencement of the panel appointment process.
The Center appointed Isabel Davies as the sole panelist in this matter on August 12, 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. 4. Factual Background
The First Complainant owns a Community Trademark (“CTM”) for BETVICTOR registered on April 28, 2011 and a range of CTMs including the word “victor” dating back over a period of 14 years.
One of the Complainants or one of their group companies is the registrant of over 100 domain names incorporating the word “victor” with over 35 incorporating the mark BETVICTOR.
The Disputed Domain Names were registered on June 24, 2012. 5. Parties’ Contentions A. Complainants
The Domain Names are identical or confusingly similar to a Trademark or Service Mark in which the Complainants have Rights Complainants’ Activities and Trade Marks: BETVICTOR
The Complainants state that they are part of the Victor Chandler group of companies (the “Group”), which originate from Victor Chandler Limited, a United Kingdom (“UK”) Company first incorporated on May 22, 1946 with Company Number 00411181. Betting services in the UK have been offered under the VICTOR CHANDLER name since 1946, as well as gambling facilities provided since the 1960s. Since the 1990s the Group has included offices and betting shops around the world. Its head offices are located in Gibraltar, at which up to 350 employees are employed. The Group also operates numerous online betting platforms, including under the VICTOR CHANDLER and now BETVICTOR names, such as successful casino and poker sites. The Group has invested heavily in direct and indirect marketing of the VICTOR CHANDLER name, including sponsorship of high profile sports players, clubs and events. Marketing efforts included televised poker tournament “The Victor Chandler Poker Cup” which was shown on Sky Sports 2 in 2004/ 5 and paid jackpots of GBP 250,000 and GBP 200,000 to respective tournament winners.
They state that in January 2012, the Group rebranded the VICTOR CHANDLER online betting platform to the name BETVICTOR, supported by a GBP 4 million TV advertising campaign comprising over 1,200 adverts and over 500 press ads. In that year BETVICTOR 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 website “” is an online gambling platform operated by the Group which offers various gambling and gaming based features. For example, the website provides betting services for live and future sporting events at “/sports/en”, online gambling through various virtual casino and slot machine games at “/slots/en” and a number of online games at “/games/en”.
The First Complainant owns a European Community Trade Mark Registration (the “CTM Registration”) for the mark BETVICTOR as follows: Mark Territory Classes Filing Date Filing Number
BETVICTOR
CTM
9; 41; 42
December 17, 2010
009608332
Many trade mark registrations, dating back over 14 years consisting of or including the word “victor” owned by the Complainants or one of their Group companies (the “Trade Marks”), pre-date the registration date of the Disputed Domain Names.
The Complainants refer to Victor Chandler Ltd and other v. Thierry Leray 2002,WIPO Case No. D2002-0624 concerning the Group, in which the panel’s own inquiries revealed that:
“The word “Victor”, is a known, advertised, recognisable and associated trademark of the Victor Chandler Group… Through continuous use, promotion and advertising the Complainants have created extensive goodwill in the “Victor” mark in the betting and gaming industry.”
One of the Complainants (or one of their group companies) is the registrant of over 100 domain names which incorporate the mark VICTOR, over 35 that incorporate the mark BETVICTOR and over 31 that incorporate the words “bingo”, “games”, “sport” or “slots”.
The Complainants’ domain names were all registered long before the Disputed Domain Names. The Second Complainant registered the domain name in 2002, over 10 years prior to the Respondent’s registration of the Disputed Domain Names.
In 2012, the Complainants’ domain names attracted an average of 280,000 unique website users each month (including an average of 32,000 unique paying customers per month) and generated in excess of 64.8 million website page views.
The Complainants aver that the CTM Registration and resultant rights owned by the Complainants’ group confer upon them the right to ensure that third parties do not use the trade mark BETVICTOR (or any similar mark) in relation to the goods and services covered by the CTM Registration in the UK and other European territories covered by the registration. It is therefore accurate, they say, to state that only the Complainants or their authorised licensees make use of the mark BETVICTOR in relation to the products and services covered by the CTM registration.
Relationship and prior proceedings between the parties
The Complainants state that on March 25, 2013 the Complainants filed a DRS complaint with Nominet against the Respondent, in respect of the following ccTLD domains (the “Nominet Complaint”): , , , , , , , , , and (the “. Domain Names”). They state that in her reply, the Respondent failed to prove (or to even refer to) any legitimate use of the “.” Domain Names, and in fact confirms that no use whatsoever has been made of the same.
The Nominet Complaint is pending the decision of a panellist.
Identity of Confusing Similarity of the Disputed Domain Names to Complainants’ Rights
The Complainants state that visually and aurally, the Disputed Domain Names are highly similar to the First Complainants’ trade mark registration for BETVICTOR, wholly containing the mark as the prefix in each of the Disputed Domain Names. They state that each of the Disputed Domain Names uses this mark in conjunction with a suffix that is either generic (in the case of the suffixes “website” and “online”) or descriptive (in the case of the remaining suffixes). The remaining suffixes “bet”, “betting”, “games”, “bingo”, “slot” and “sport(s)” are descriptive of the goods and services covered by the Complainants’ earlier Trade Marks, and of the services which the Complainants have used the mark BETVICTOR in connection with since prior to the registration of the Disputed Domain Names.
The Disputed Domain Names are also, they aver, highly aurally and visually similar to the Complainants’ domain names. This is most apparent in respect of (but not limited to) their registrations for , , and . The addition of the words “bet”, “betting”, “bingo”, “games”, “online”, “slots”, “sport”, “sports” or “website” do not serve to differentiate the Disputed Domain Names from the complainant's domains since each is a common dictionary defined term and is descriptive of the services offered by the Complainants’ websites.
Accordingly, the Complainants assert that the Disputed Domain Names are identical or at least confusingly similar to:
(i) The Complainants’ prior CTM Registration for BETVICTOR; and/ or
(ii) The Complainants’ Doman Names, including (but not limited to) those for , , and ; and/or
(iii) The Complainants’ unregistered rights in the term “victor” in connection with the betting and gaming industry, as recognised by the administrative panel in Victor Chandler Ltd and other v. Thierry Leray 2002,WIPO Case No. D2002-0624, referred to above.
The Respondent has no Rights or legitimate interests in respect of the Disputed Domain Names
The Complainants deny that the Respondent holds any legitimate interest in the Disputed Domain Names. However, in respect of Policy, paragraph 4(c) the Complainants set out the following prima facie reasons why the Respondent cannot successfully demonstrate it has a legitimate interest in the Disputed Domain Names; used the Disputed Domain Names in connection with a bona fide or noncommercial offering of goods or services; or that it is commonly known by the Disputed Domain Names.
The Respondent had, at the time of the Complaint, held The Disputed Domain Names for over 11 months and had not offered any legitimate noncommercial or bona fide goods or services in connection with them.
The Complainants’ registered trade mark rights (the CTM Registration and the Trade Marks) predate June 24, 2012 as do the Complainants’ domain names referred to.
The Respondent registered the Disputed Domain Names on June 24, 2012, six months after the launch of the Complainants’ BETVICTOR brand. Registration therefore took place amidst a GBP 4 million marketing campaign that supported the BETVICTOR brand launch comprising over 1,200 TV adverts and over 500 press ads. There is no evidence that the Respondent has used the Disputed Domain Names in connection with a bona fide offering of goods and services.
The Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Names, even if the Respondent has acquired no trademark or service mark rights
The Complainants state that the Respondent is not legitimately known by any of the Disputed Domain Names.
The Complainant has not consented to the Respondent’s use of the mark BETVICTOR and the Respondent has no legitimate interest in respect of the Disputed Domain Names. In particular, the Respondent:
(i) is not related in any way to the Complainants;
(ii) has not made any use of, or demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services; and
(iii) is not (as an individual, business or other organisation) commonly known by the Disputed Domain Names.
The Complainants contend that the Respondent has not acquired any trade mark rights in the Disputed Domain Names. Given that the Complainants have not consented to the Respondent’s use of the Disputed Domain Names or its CTM Registration or the Trade Marks, the Respondent cannot have acquired any rights in the marks BETVICTOR or VICTOR.
The Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue
The Respondent has not, since securing registration of the Disputed Domain Names in June 2012, made any legitimate noncommercial or fair use of the Disputed Domain Names.
The Respondent is managing (and sole) director of SGE Corporation Limited, and its subsidiary company SGE Games. SGE Games operates the website “”, which compares the discounts offered at online gaming, gambling and betting sites.
The Complainants’ Mark BETVICTOR features on the Respondent’s website
In the absence of any evidence to the contrary, the Complainants submit that the Respondent’s ownership of a website operating within the online betting and gaming industry, and the direct reference to the Complainants (through use of the Complainants trade marks) on that website must support the view that the Respondent was aware of the Complainants on or before the date of registration, and therefore could not have made any bona fide or legitimate use of the Disputed Domain Names, since any such use would have constituted passing off and would have been in breach of inter alia ICANN Policy 3.7.7.9.
The Disputed Domain Names were registered and are being used in bad faith
The Complainants must prove that the Disputed Domain Names were registered and are being used in bad faith. However, the Complainants argue, it has been long been recognised that “If any one of the tests [under Paragraph 4(b) of the Policy] is satisfied, the Respondent will be found to have registered and used the domain name in bad faith.” (Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932).
The circumstances indicated at Policy, paragraph 4(b) are a non-exhaustive list “Rule 15(a) allows a Panel to find bad faith on grounds other than those contained in Paragraph 4(b)” (Toyota Motor Sales, U.S.A. Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. dba Price Leblanc Toyota v. Gulf South Limited, WIPO Case No. D2001-0698).
The Complainants state that as described above, they are globally active. Their reputation, especially in the UK, has been built up over 60 years in the name VICTOR and mark VICTOR CHANDLER, and more recently in the mark BETVICTOR. Moreover, in 2012, the Complainants spent over GBP 4 million on TV advertising alone, producing over 1,200 TV adverts, and placing over 500 print adverts. Given the fame of the Complainants’ marks, especially in the UK. The Complainants contend that it is inconceivable that the Respondent was not aware of the Complainants or their activities when the Disputed Domain Names were registered on June 24, 2012. They state that on these facts, a recent UDRP panel decision (Newcote International Limited, Victor Chandler International Limited v. Isen Murtishi, WIPO Case No. D2013-0198) found that:
“When the disputed domain names were registered the Complainants’ trademarks VICTOR CHANDLER and BETVICTOR were already widely used and promoted in the field of betting services. Therefore, in this Panel’s view, it is not feasible that the Respondent could have been unaware of the Complainants’ reputation and business.”
They state that as confirmed by the decisions mentioned above, the marks BETVICTOR and VICTOR are well known, particularly in the UK where the Respondent is resident. Therefore, under the decision in Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and a significant body of subsequent UDRP panel decisions, bad faith can be found where the Respondent has engaged in mere passive use of (or has not used) the Disputed Domain Names. For example, in one analogous case, the panel held that:
“the passive holding of the Domain Name since its registration in question, combined with the lack of explanation or evidence provided by the Respondent to demonstrate the good faith registration or usage of this Domain Name, all infer bad faith, pursuant to the 4(a)(iii) of the ICANN Policy on the part of the Respondent.” (La Chemise Lacoste v. M. Lee Ji Hong,WIPO Case No. D2001-0956).
Moreover, given that the Respondent is active in the area of business that the Complainants marks are both registered and used in respect of, the Complainants assert that the Disputed Domain Names cannot have been registered otherwise than in bad faith.
The Complainants contend that, given the well-known nature of the marks VICTOR and BETVICTOR in connection with the gaming industry, any attempt to actively use any of the Disputed 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. Such users would inevitably be led to believe that such a web site would be owned by, controlled by, established by or in some way associated with the Complainants.
The Respondent registered or acquired the Disputed Domain Names primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Names registration to the Complainants, or to a competitor of that omplainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Names.
In the Nominet Dispute, the Respondent did not make reference to, nor provide evidence of any of the grounds listed at DRS Policy, paragraph 4. In particular, the Respondent failed to demonstrate that it has:
4 a.(i)(a) – used or made demonstrable preparations to use the Disputed Domain Names … in connection with a genuine offering of goods or services; or
4 a.(i)(b) – been commonly known by the name or legitimately connected with a mark which is identical of similar to the Disputed Domain Names; or
4 a.(i)(c) – made legitimate noncommercial or fair use of the Disputed Domain Names.
The Respondent has previously merely denied the Complainants’ allegations of bad faith, but has asserted no positive explanation or justification whatsoever for its registration of the Disputed Domain Names. Earlier decisions have found it noteworthy where a respondent has not provided any explanation as to why it has registered domain names infringing trade mark rights. The Complainants refer to Microsoft Corporation v UK International Trading, DRS 11028.
The Respondent is engaged in a pattern of registering domain names reflecting the third party trade marks in the betting industry
In addition to the . Domain Names that incorporate the Complainants’ earlier trade mark rights, the Respondent has also engaged in a pattern of registering domain names that incorporate well-known third party trade marks registered and used within the online gaming and betting industry. Reference to each of these third party trade marks is made on the Respondent’s website SGE Games (as shown at Annex 8). Third party infringing domains include:
(i) 64 domains including “williamhill” and a further 7 including “William” (mimicking );
(ii) 43 domains including “Sky” (mimicking and )
(iii) 38 domains including “paddypower” (mimicking );
(iv) 17 domains including “Ladbroke” or “Ladbrokes” (mimicking ).
(v) 9 domains including “bwin” (mimicking );
(vi) Further infringing domains incorporate the earlier third party rights “Bet365” (11 domain names); “RedKings” (19 domain names); “Unibet” (14 Domain Names); “Gala Bingo” (3 domain names); “pkr” (2 domain names).
The Complainants submit that these circumstances strongly indicate that the Respondent has engaged in a pattern of registering domain names in order to prevent trade mark owners from reflecting their marks in a corresponding domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a), that must be established by the complainant to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The complainant must establish these elements even if the respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of, or requirement under, the Rules, including the respondent’s failure to file a response.
In the absence of a response, the panel may also accept as true the factual allegations in the complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the panel is to decide the complaint on the basis of the statements and documents submitted. The complainant bears the onus of proving its case on the balance of probabilities. The complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the domain name. A. Identical or Confusingly Similar
The Panel accepts that the Disputed Domain Names are confusingly similar to the First Complainant’s CTM BETVICTOR registered on April 28, 2011 and the Complainants’ Trade Marks.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which has been referred to in support of UDRP panel decisions, holds that in order to satisfy the test of confusing similarity:
“…the relevant trade mark would generally need to be recognisable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms typically being regarded as insufficient to prevent threshold internet user confusion.” (Emphasis added)
Use of a generic term in addition to the earlier trade mark of a complainant has been held to be insufficient to negate the confusing similarity in a number of established UDRP cases. Oakley Inc v Joel Wong/Blue-H-Inc,WIPO Case No. D2010-0100. However, given that the Complainants’ slots, sport and games offerings are accessed at “ /slots”; “/sports”; and “/games” (respectively) an even greater likelihood of confusion arises, akin to typosquatting. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. It accepts that the Respondent has not used the Disputed Domain Names in connection with a bona fide offering of goods or services and that the Respondent has not been commonly known by the Disputed Domain Names. The Respondent has not been making any legitimate noncommercial use of the Disputed Domain Names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 respondent’s website or location or of a product or service on its website or location.
It is well established that the list of circumstances indicating bad faith as found in paragraph 4(b) of the Policy is expressly non-exclusive. If the Disputed Domain Names were not actively used by the Respondent, the Panel has to decide whether or not the Respondent’s (non-)use of the Disputed Domain Names is to be considered as bad faith use under the Policy.
The Panel accepts that the Respondent registered the Disputed Domain Names with full knowledge of the Complainants and in bad faith under paragraph 4(a)(iii) of the Policy. The BETVICTOR Mark is distinctive and well known. The Respondent is active in the same area of business as the Complainants and the Complainants’ trade mark BETVICTOR is used on the Respondent’s website.
It is the accepted view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. The Panel has to consider all the circumstances of the case to determine whether a Respondent is acting in bad faith. Circumstances that have been taken to indicate bad faith include there being a well-known trademark, no response being made to the complaint, and good faith use of the domain name being inconceivable (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131).
The Panel accepts that the Complainants are globally active. Their reputation, especially in the UK, has been built up over 60 years in the name “victor” and mark VICTOR CHANDLER, and more recently in the mark BETVICTOR. Moreover, in 2012, the Complainants spent over GBP 4 million on TV advertising alone, producing over 1,200 TV adverts, and placing over 500 print adverts. Given the fame of the Complainants’ marks, especially in the UK, the Panel accepts that it is inconceivable that the Respondent was not aware of the Complainants or their activities when the Disputed Domain Names were registered on June 24, 2012. On these facts, a recent UDRP panel decision (Newcote International Limited, Victor Chandler International Limited v. Isen Murtishi,WIPO Case No. D2013-0198, referred to above) found that:
“When the disputed domain names were registered the complainants’ trademarks victor chandler and betvictor were already widely used and promoted in the field of betting services. Therefore, in this panel’s view, it is not feasible that the respondent could have been unaware of the complainants’ reputation and business.”
The Panel accepts that, in addition to the . Domain Names that incorporate the Complainants’ earlier trade mark rights, the Respondent has also engaged in a pattern of registering domain names that incorporate well-known third party trade marks registered and used within the online gaming and betting industry such as WILLIAM HILL and LADBROKE and that reference to each of these third party trade marks is made on the Respondent’s website SGE games.
The Panel accepts that these circumstances strongly indicate that the Respondent has engaged in a pattern of registering domain names in order to prevent trade mark owners from reflecting their marks in a corresponding domain name.
In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the Disputed Domain Names by the Respondent in good faith, as they are domain names which users might mistakenly enter when searching for information about the Complainants’ BETVICTOR site.
The Panel therefore takes the view that, even if the Disputed Domain Names were/are not actively used, the Respondent’s non-use of the Disputed Domain Names would equal use in bad faith.
The Panel therefore finds that the Respondent registered and used/is using the Disputed Domain Names in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Names , , , , , , , and be transferred to the Second Complainant.
Isabel Davies
Sole Panelist
Date: August 27, 2013
Full & Egal Universal Law Academy