The Complainant is Ladbrokes Digital Australia Pty Ltd of Lutwyche, Queensland, Australia, represented by King & Wood Mallesons, Australia.
The Respondent is Bloomdale Proprietary Limited of Kew, Victoria, Australia / Domain Administrator, The Trustee for Betjam Unit Trust of Kew, Victoria, Australia. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with GoD, LLC and Web Address Registration Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2018. On April 19, 2018, the Center transmitted by email to GoD, LLC and Web Address Registration Pty Ltd a request for registrar verification in connection with the Disputed Domain Names. On April 19, 2018, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 20, 2018, Web Address Registration Pty Ltd 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 May 3, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2018.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 5, 2018. 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 Complainant, Ladbrokes Digital Australia Pty Ltd (“Ladbrokes”), operates an online wagering business in Australia and is a wholly owned subsidiary of London Stock Exchange listed GVC Holdings PLC, a constituent member of the Financial Times Stock Exchange 250 and one of the world’s largest gambling companies. The “Betstar” branded business was founded in 2006 and is operated by the Complainant, who holds registrations for the trademark BETSTAR in Australia, and variations of that mark, which it uses to designate various wagering and gaming products and services in classes 9, 16, 28, 38 and 41. See for example, Australian Registration No. 1132532 for BETSTAR, registered from August 30, 2006. The Complainant owns an Australian registered business name for the word “Starbet” registered from May 21, 2014 (the “Starbet Business Name”). It also owns the domain names and and operates a website relating to its wagering business at the latter domain name.
The Disputed Domain Names , , , were created on January 3, 2018; November 29, 2017; and December 26, 2017 respectively. The Disputed Domain Name was created on January 23, 2016 and transferred by the initial registrant on or around January 2018. Each of the Disputed Domain Names appears to be inactive. 5. Consolidation of Complaints
The Complaint has been filed by one complainant, against two respondents, in respect of four domain names, which raises two issues: (i) the issue of a single complaint being filed in respect of multiple domain names; (ii) the issue of a single complaint being filed against multiple respondents. A. Single complaint filed in respect of multiple domain names
In assessing whether a complaint may relate to more than one domain name under the auDRP, the general position is not necessarily the same as that under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) (see auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), section 4.8A).
Paragraph 4(f) of the Policy permits the parties to petition to consolidate multiple complaints by the same complainant against the same respondent, before a single administrative panel. Paragraph 3(c) of the Rules permits a single complaint to relate to more than one domain name, provided the domain names are registered by “the same domain name holder”.
Paragraph 1 of the Rules defines “Respondent” to be “the holder of a domain name registration against which a complaint is initiated”. It was opined in Mark Livesey QC and The New South Wales Bar Association v. Derek Minus and Dispute Resolution Associates Pty Ltd., WIPO Case No. DAU2014-0011 (“NSW Bar”), that “the use of the word “holder” rather than “registrant” suggests that the “holder” of a domain name may be someone other than the registrant of it.”
The NSW Bar case cited the instances referred to in Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim,WIPO Case No. D2009-1345 (“Kimberly-Clark”), which include: (i) where a privacy or proxy registration service has been used, because in that situation it may be said that the person who engaged the privacy or proxy service (sometimes called the “underlying registrant” or “beneficial owner”) is a “holder” of the domain name since that person has the power to determine the use to which the domain name is put; (ii) where the registrant is in some way under the control of another person, because in that situation it seems appropriate to consider the other (i.e., the controlling) person as a holder of the disputed domain name; and (iii) where the different registrants of record are, in fact, one and the same entity (i.e., where the different registrant names are simply aliases for a single entity), because in that situation the “holder” of the disputed domain names is the single entity for which the names of the registrants of record are aliases.
The Complainant has asserted that the disputed domain names in this case “are subject to common control” – the second of the three instances identified in the Kimberly-Clark case and cited with approval in the NSW Bar case – citing Smart Voucher Ltd T/A Ukash v. Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd,WIPO Case No. DAU2013-0006.
For the reasons set out in section 5B below, this Panel considers that the evidence provided by the Complainant supports this assertion. Accordingly, the Panel finds, for the purpose of the Complainant’s request to consolidate the complaints in respect of multiple domain names, that the holder of the disputed domain names is one and the same person – namely, the First Respondent. Thus, the Panel would not deny the Complainant’s request for consolidation simply on the basis that the Complaint has been filed in respect of more than one domain name. B. Single complaint filed against multiple respondents
One view offered by auDA auDRP Overview 1.0, section 4.16(ii), and the NSW Bar case, is that the issue of consolidation will be determined by whether the relevant panel decides – as this Panel has in section 5A above - to permit the bringing of a single complaint in respect of multiple domain names.
This Panel notes that the first Respondent, Bloomdale Proprietary Limited, is the holder of three of the Disputed Domain Names whilst the second Respondent, Domain Administrator, The Trustee for Betjam Unit Trust, is the holder of the other Disputed Domain Name, namely . The Panel notes that the first Respondent is an Australian company with a registered business address in Melbourne, Victoria, Australia whilst the second Respondent is the Domain Administrator of a “Trustee” of a unit trust. A trust does not have legal personality under Australian law and so it is not capable of holding property, suing or being sued in its own name. Those joys fall to the trustee. In this case, the Complainant invites the Panel to find that the first Respondent exercises “common control” over the Disputed Domain Name with the second Respondent. One reason offered is that the WhoIs record shares a common contact email address with the registrant of the other three Disputed Domain Names. The Complainant also produced evidence in the form of an email putatively sent by the first Respondent’s company secretary on February 28, 2018 in response to a cease-and-desist letter for the Disputed Domain Names and sent by Complainant’s solicitor, which stated that the first Respondent “intends to cancel the two domain names referred to in your letter”.
This Panel accepts the evidence that the first Respondent purports to exercise control over the Disputed Domain name registered to the second Respondent and finds that the holders of the Disputed Domain Names are sufficiently linked to justify a single set of proceedings. This Panel will not deny the Complainant’s request for consolidation on the basis that the Complaint has been filed against more than one respondent. 6. Parties’ Contentions A. Complainant
The Complainant cites its registrations of the trademark BETSTAR in Australia, and related marks consisting of, or including those words, as prima facie evidence of ownership. It also cites extensive use of the trademark BETSTAR in Australia, and registration of the word Starbet as a registered business name as prima facie evidence of “rights in a name” for the purpose of paragraph 4(a)(i) of the Policy.
The Complainant submits that its trademark BETSTAR is distinctive and that it has common law or unregistered rights in the STARBET mark, and that its rights in each mark predate the Respondent’s registration of the Disputed Domain Names , , , and . The Complainant submits that, respectively, the Disputed Domain Names are confusingly similar to its trademarks, because each of the Disputed Domain Names either incorporates in its entirety each trademark, or is simply typosquatting, and that the similarities are not removed by the addition of the letter “s” “at a different point (or points) of each domain name”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent has no trademark rights in or license to use the marks BETSTAR or STARBET or the Starbet Business Name. The Complainant contends that it sent a cease-and-desist letter to the Respondent on February 28, 2018 in relation to the Disputed Domain Names and (“the cease and desist letter”) and contends that the reply indicated the Respondent “is clearly associated in some way with CrownBet Pty Ltd (“CrownBet”), a corporate bookmaker which competes directly with the Complainant”. The Complainant has supplied evidence that CrownBet and the Respondent share in common their registered address, directors, the same company secretary (who is the same person that responded to the cease and desist letter sent by the Complainant) and a large number of common shareholders.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of bad faith registration, the Complainant contends that “the controlling minds of the first Respondent, Bloomdale, are the controlling minds of CrownBet, … a fierce competitor of the Complainant…[and]…are clearly aware of the Complainant, and of the Complainant’s BETSTAR brand, as they interact with the Complainant on a regular basis”. The Complainant also contends that the Disputed Domain Names were registered “with full knowledge of the Complainant’s rights” in “a bad faith attempt to confuse consumers”. On the issue of bad faith use, the Complainant contends that the Respondent’s failure to use the Disputed Domain Names “is further evidence of bad faith” having regard to “its clear and express admission that it does not intend to use the terms comprising the Disputed Domain Names as trade marks in Australia”. B. Respondent
The Respondent did not file a formal reply to the Complainant’s contentions. However, there is a correspondence of note from the Respondent that has been filed by the Complainant (Annex 10 to the Complaint). This comprises an email dated February 28, 2018 from the company secretary of the first Respondent (who is also the company secretary of CrownBet) (“Respondent’s email”) in response to the cease and desist letter which states:
“I refer to your letter attached to the below email.
Bloomdale does not accept the various assertions and allegations made in your letter, but does not intend to engage in any protracted debate about those matters at this stage.
Without prejudice to its substantive position, and in order to resolve this matter, I can confirm that Bloomdale:
* Does not intend to use STARBET or STARBETS as a trade mark in Australia; and
* intends to cancel the two domain names referred to in your letter.
Alternatively, Bloomdale would be prepared to transfer the two domain names to Ladbrokes in exchange for a payment of $7,000 by Ladbrokes. If your client wishes to take up that option, please let me know by COB on Monday, March 5, 2018.
I trust that the above resolves the matters raised in your letter.” 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the disputed domain name is identical or confusingly similar to a name, 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 disputed domain name; and
(iii) that the disputed domain name has been registered or subsequently used in bad faith.
Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel finds that cases decided under the UDRP can be of assistance in applying the Policy to this case. A. Identical or Confusingly Similar
The Policy applies to domain names that are identical or confusingly similar, not only to a trademark or service mark, but to any “name” in which the complainant has rights including the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority. The Panel finds that the Starbet Business Name registered on May 21, 2014 gives Complainant “rights in a name” within the meaning of paragraph 4(a)(i) of the Policy. The Complainant has also produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BETSTAR.
Turning to whether the Disputed Domain Names are identical or confusingly similar to the Starbet Business Name, the Panel observes that the Disputed Domain Names can be described as follows:
1. is comprised of (a) an exact reproduction of the Starbet Business Name; (b) followed by the letter “s”; (c) followed by the country code Top-Level Domain (“ccTLD”) suffix “.” all in one continuous domain name; and
2. is comprised of (a) an exact reproduction of the Starbet Business Name; (b) followed by the ccTLD suffix “.” all in one continuous domain name;
3. is comprised of (a) an exact reproduction of the Starbet Business Name; (b) with the letter “s” inserted to pluralise the word “star”; (c) followed by the ccTLD suffix “.” all in one continuous domain name; and
4. is comprised of (a) an exact reproduction of the Starbet Business Name; (b) with the letter “s” inserted twice to pluralize the words “star” and “bet”; (c) followed by the ccTLD suffix “.” all in one continuous domain name.
It is well established that the “.” country code designation used as part of the domain name should be disregarded in the determination of confusing similarity (see BT Financial Group Pty Limited v. Basketball Times Pty Ltd,WIPO Case No. DAU2004-0001). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names: “starbets”, “starbet”, “starsbet” and “starsbets”.
Disputed domain names comprised of trademarks where the plural-signifying letter “s” has been added have been held to be “confusingly similar” in numerous WIPO cases, e.g., WGCZ S.R.O. v. WhoIsProtectS, Protectservice, Ltd. / Adam Hokke,WIPO Case No. D2015-0408; Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968; Virgin Enterprises Limited v. Domainadmin / Whois Privacy Corporation,WIPO Case No. D2015-1547. The addition of a plural “s” does not avoid the confusing similarity between the relevant Disputed Domain Names and the Starbet Business Name. The respective pluralized and the identical Disputed Domain Names are therefore confusingly similar to the Complainant’s Starbet Business Name.
In considering the elements of paragraph 4(a)(i) of the Policy, the contents of a website or inactivity of the Disputed Domain Names in any marketing sense is irrelevant. In The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven,WIPO Case No. DAU2003-0001, the panel held that: “the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases”.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists (illustratively rather than exhaustively) the ways that a respondent may demonstrate rights or a legitimate interest in a domain name:
(i) before any notice to [the Respondent] of the subject matter of the dispute, [the Respondent’s] bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) [the Respondent has] (as an individual, business, or other organisation) been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
For the purposes of the Policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration (see Note 2 to the Policy).
As to (i), the Disputed Domain Names , , , and , are inactive. Therefore, there is no evidence that the Respondent has made any use or that it has made demonstrable preparations to use the Disputed Domain Names in connection with an offering of goods and services (not being the offering of domain names that the Respondent has acquired for the purpose of selling, renting or otherwise transferring). On this point, the Respondent satisfies none of the criteria set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, though to be fair that case is of limited utility in circumstances such as these where there is no relationship between the Parties.
Nor is there any evidence that the Respondent satisfies (ii) or (iii) above. The Panel accepts that the Complainant has not licensed or otherwise permitted the Respondent to use any of the Complainant’s trademarks nor to apply for or use any domain name incorporating these marks. In these circumstances, the Complainant has made out a prima facie case.
The fact that the Respondent chose to register domain names that include names owned by the Complainant calls for an explanation, which the Respondent could have given in a Response. By its failure to submit a Response, the Respondent has not rebutted the prima facie case.
In the circumstances, the Panel can find no evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the Disputed Domain Names.
The Panel finds for the Complainant on the second element of the Policy. C. Registered or Subsequently Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both:
(i) circumstances indicating that [the Respondent] registered or [the Respondent] has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person 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; or
(iii) [the Respondent] has registered the domain name primarily for the purpose of disrupting the business of of another person; or
(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online locations, 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.
The Complainant has supplied evidence that one of the Disputed Domain Names, the domain , was registered on January 23, 2016 but was subsequently acquired from a third party by the Respondent on or around January 7, 2018. This Panel accepts that evidence.
The evidence that the Respondent registered and has used the Disputed Domain Names in bad faith is overwhelming. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The unlikelihood that the four domain names registered by the Respondent would contain the Complainant’s Business Name or a pluralized version was pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademark searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The trademark BETSTAR is so widely known in Australia for online wagering that it is inconceivable that the Respondent might have registered the Disputed Domain Names without knowing of them. Registration in these circumstances has been held to amount to bad faith registration under the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
This finding is supported by the Complainant’s contention, accepted by this Panel, that “the controlling minds of the first Respondent, Bloomdale, are the controlling minds of CrownBet … a fierce competitor of the Complainant…[and]…are clearly aware of the Complainant, and of the Complainant’s BETSTAR brand, as they interact with the Complainant on a regular basis”.
In the course of the single piece of correspondence from the Respondent to the Complainant’s tender, the Respondent’s email stated:
“Bloomdale does not accept the various assertions and allegations made in your letter, but does not intend to engage in any protracted debate about those matters at this stage.
Without prejudice to its substantive position, and in order to resolve this matter, I can confirm that Bloomdale:
* Does not intend to use STARBET or STARBETS as a trade mark in Australia; and
* intends to cancel the two domain names referred to in your letter.
Alternatively, Bloomdale would be prepared to transfer the two domain names to Ladbrokes in exchange for a payment of $7,000 by Ladbrokes. If your client wishes to take up that option, please let me know by COB on Monday, March 5 2018.”
Generally, evidence of a communication made on a without prejudice basis in an attempt to settle a dispute cannot be adduced in a subsequent proceeding. In the context of the Policy, this Panel is mindful that negotiations between domain name registrants and trademark or business name owners can serve a legitimate useful purpose, and privilege should not be waived lightly.
Although the denials, admissions and offer in the Respondent’s email were expressed to have been communicated on a “without prejudice” basis the Panel will admit this material, to which both parties have referred. In this regard the Panel adopts the approach set out in WIPO Overview 3.0, section 3.10 as follows:
“[Where] negotiations between UDRP parties confirm that the respondent’s intent was merely to capitalize on the complainant’s rights (as opposed to using the domain name for prima facie legitimate purposes, possibly including resale), this would be material to a panel’s assessment of bad faith.”
This Panel observes that the Response email does not appear to be a genuine “negotiation” that would support the privilege claimed but rather finds the Response email evidences Respondent is in clear breach of clause 4.3(b) of the Domain Monetisation Policy (2008-10) which states: “the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered”. This Panel finds that Respondent is plainly not a “domainer” (as defined in the Domain Monetisation Policy (2008 -10)) or that it is engaging in legitimate “domain monetisation” (as defined therein) by inviting the Complainant to buy the Disputed Domain Names for $7,000. This Panel finds that the Respondent is a competitor of the Complainant and must have been aware of the relevant trademarks.
This Panel finds that the Respondent has taken the Complainant’s Business Name STARBET and incorporated it identically in one instance, and, in the other three of the four instances, in confusingly similar pluralized versions of the Complainant’s Business Name, in the respective Disputed Domain Names without the Complainant’s consent or authorization, leading this Panel to conclude on the balance of probabilities, that:
- the offer to sell the domain names for $7,000 shows that the Respondent was actuated by the motives outlined in paragraph 4(b)(i) of the Policy;
- the Respondent knew of the Complainant’s business and registered the Disputed Domain Names to prevent the Complainant from reflecting those names in a corresponding domain name (paragraph 4(b)(ii) of the Policy); and
- the Respondent registered the Disputed Domain Names primarily for the purpose of disrupting the business or activities of the Complainant (paragraph 4(b)(iii) of the Policy).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Names , , , and be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: June 21, 2018
Full & Egal Universal Law Academy