The Complainants are Sportsbet Pty Ltd, Australia (the “First Complainant”), The Sporting Exchange Ltd, United Kingdom (the “Second Complainant”), and Flutter Entertainment Plc, Ireland (the “Third Complainant”), represented by Minter Ellison, Australia.
The Respondent is Gaming Investments Pty Ltd, Australia, represented by King & Wood Mallesons. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2019. On September 27, 2019, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On September 30, 2019, TPP Wholesale 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”), 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 October 7, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2019. The Response was filed with the Center on October 27, 2019. On November 11, 2019, the Complainants submitted a supplemental filing to the Center. On November 14, 2019, the Respondent submitted a supplemental filing. The Center appointed Andrew F. Christie, Alan L. Limbury, and Debrett G. Lyons as panelists in this matter on December 20, 2019. The Panel finds that it was properly constituted. Each member of 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 and the Second Complainant are each part of a group of companies (the “Flutter Entertainment Group”) ultimately held by the Third Complainant. The Third Complainant exercises complete financial control over all relevant entities in the Flutter Entertainment Group, including the First and Second Complainant. The First Complainant is Australia’s leading online corporate bookmaker, earning AUD 679 million revenue and capturing 26% of the Australian online betting market in 2018. The Second and Third Complainant are fellow members of the Flutter Entertainment Group, and the registered owners of relevant trademarks (discussed below). The Flutter Entertainment Group is a leading global business in online sports betting, with GBP 1.9 billion in revenue and 8,000 employees worldwide. It conducts business in Australia, Europe, Georgia, the United Kingdom, and the United States of America. A business named Flutter.com, the world’s first betting exchange, was launched in the United Kingdom in May 2000. In December 2001, Betfair.com, another online betting exchange (which at the time was operated by the Second Complainant), merged with Flutter.com. Soon after the merger, the two betting exchanges were consolidated under the “Betfair” brand and website, and as a result, the Flutter.com online betting exchange ceased operating in January 2002. Between 2016 and 2019, the The Second Complainant is the owner of the United Kingdom trademark registration number UK00002213388 for the word trademark FLUTTER.COM (registered on August 17, 2001). The Third Complainant is the owner of the European Union trademark registration number EU017999091 for the word trademark FLUTTER ENTERTAINMENT (registered on May 10, 2019). In August 2019, the First Complainant applied to register four Australian trademarks containing the word “flutter” – namely, the word trademarks FLUTTER, FLUTTER.COM.AU and FLUTTER ENTERTAINMENT, and an image trademark representing the string “Flutter”. As at the date of this decision, those applications have been published and are under examination. The disputed domain name, together with another domain name ( The Respondent was incorporated on July 6, 2011, as an intellectual property holding company for a wagering business operated by Bookmaker.com.au Pty Ltd, both of which companies were founded by Dean Shannon. The Respondent owned (and continues to own) 100% of the shares in Bookmaker.com.au Pty Ltd, which has since been renamed GVC Australia Pty Ltd. In late 2013, the Respondent (together with Bookmaker.com.au Pty Ltd) was acquired by the United Kingdom bookmaker Ladbrokes plc, via Australian entity LB Australia Holdings Pty Ltd. This acquisition was Ladbrokes’ first entry into the Australian market. It decided to adopt a multi-brand strategy, and continued to operate the “Bookmaker.com.au” brand while also launching a new corporate bookmaker under the “Ladbrokes” brand, at “www.ladbrokes.com.au”. Both businesses were operated by Ladbrokes Digital Australia Pty Ltd, since renamed GVC Australia Pty Ltd. From late 2012, the Respondent used the disputed domain name to host a version of the Bookmaker.com.au betting platform under the branding “FLUTTER Worlds (sic) First Racing Site for Ladies”. This use continued until at least late January 2014, some months after the Respondent was acquired by Ladbrokes plc. During its period of operation, this business had approximately 1,200 clients and a total turnover of AUD 12,328. The disputed domain name currently resolves to the Respondent’s website at “www.ladbrokes.com.au”. 5. Parties’ Contentions A. Complainants – Complaint The Complainants contend that, as affiliates of one another, they each have standing to file a complaint against the Respondent, by virtue of the trademark rights held by the Second Complainant and the Third Complainant. As part of the Flutter Entertainment Group, the Complainants have a common legal interest in the relevant rights that are affected by the Respondent’s use of the disputed domain name, which justifies consolidation of the administrative proceeding as a single complaint. The Complainants contend that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights because: (i) its country-code Top-Level Domain (“ccTLD”) and Second-Level Domain (“2LD”) suffixes (in this case “.com.au”) can be disregarded; (ii) it is identical to the Second Complainant’s registered United Kingdom trademark FLUTTER.COM and/or the First Complainant’s unregistered (but under examination for registration) Australian trademark FLUTTER.COM.AU, because it wholly incorporates each of these trademarks; (iii) it is confusingly similar to the Third Complainant’s registered United Kingdom trademark FLUTTER ENTERTAINMENT and/or the First Complainant’s unregistered (but under examination for registration) Australian trademark FLUTTER ENTERTAINMENT, because it contains the word “flutter” and because it relates to the same kinds of goods and services for which the trademarks are used, namely gambling; and (iv) it is confusingly similar to the First Complainant’s unregistered (but under examination for registration) Australian image trademark, because it wholly incorporates the string “flutter” for which the image trademark is a representation. The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Respondent’s use of the disputed domain name to redirect to the website of a competitor of the Complainants is not a bona fide use; (ii) the Respondent has not acquired any Australian trademark or service mark rights relating to the disputed domain name; (iii) the Respondent is not and has never been commonly known by the name “Flutter.com.au”; (iv) the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name because it is using it to direct traffic to an affiliated company’s commercial online wagering site; (v) Ladbrokes, a company affiliated with the Respondent, may have used the disputed domain name for the provision of online betting services in the past under the brand “FLUTTER Worlds First Racing Site for Ladies”, but this does not provide the Respondent with rights or legitimate interests in the disputed domain name because there is no evidence that the Respondent was the entity responsible for operating that business and, in any event, past prior use (even if bona fide) does not provide the Respondent with current rights or legitimate interests in the disputed domain name; (vi) the “FLUTTER Worlds First Racing Site for Ladies” website was short-lived and had no material impact on the Australian wagering market, did not achieve any reputation or distinctiveness in the market, and does not amount to Ladbrokes being commonly known by the name “Flutter.com.au”; (vii) any rights in the disputed domain name that may have accrued to the Respondent by virtue of its use for the “FLUTTER Worlds First Racing Site for Ladies” website were abandoned due to the effluxion of time when (by January 31, 2016, at the latest) the disputed domain name was used to redirect to “www.ladbrokes.com.au”; and (viii) at the time Ladbrokes first commenced using the disputed domain name for the “FLUTTER Worlds First Racing Site for Ladies” website it would have been aware of the domain name The Complainants contend that the disputed domain name has been registered or subsequently used in bad faith because: (i) it is reasonable to assume that when the Respondent acquired the disputed domain name it would have been aware of the ownership and use of the domain name The Respondent contends that the term “flutter”: (i) is a colloquialism in the gambling industry; (ii) is descriptive of gambling services and, in particular, of bookmaking services, because it means “a small amount of money that someone risks on a bet or investment”; and (iii) is a generic, dictionary term which is commonly used globally by many companies in many different industries, including gaming, beauty and software. The Complainants therefore do not have exclusivity in relation to this common term, particularly in the context of its generic or colloquial meaning. In relation to whether the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights, the Respondent contends that: (i) the Complainants have no trademark rights in the term “flutter” or similar in Australia, only in the United Kingdom and Europe; (ii) the Australian trademark applications relied on by the First Complainant were only recently filed and are irrelevant to this dispute; and (iii) the Complainants have failed to provide any evidence of use of, or reputation in, the term “flutter” or “flutter.com.au” as a trademark in Australia such as would confer common law rights. In relation to whether the Respondent has rights or legitimate interests in respect of the disputed domain name, the Respondent contends that: (i) from late 2012 the Respondent used the disputed domain name for the purpose of a “dedicated white label version” of the Bookmaker.com.au Pty Ltd platform, which was branded “Flutter” and was titled “Worlds First Racing Site for Ladies”; (ii) the use of the disputed domain name for this purpose was entirely legitimate and bona fide, consistent with the generic meaning of the term “flutter” as used in the gambling industry; (iii) during this time there was no third party operating a bookmaking or gambling website under the name “flutter” in Australia or, to the best of the Respondent’s knowledge, anywhere else in the world; (iv) the Complainants’ argument that any rights conferred by the Respondent’s prior use of the disputed domain name as a betting platform have now been lost due to the effluxion of time applies equally to the Complainants’ rights in the term “flutter” which, at the time the disputed domain name was acquired and being used by the Respondent, was not being used by the Complainants as a trademark anywhere in the world; (v) the Respondent denies that it and the Complainants were intense competitors as the operating entity associated with the Respondent, Bookmaker.com.au Pty Ltd (now GVC Australia Pty Ltd), was only licensed to provide bookmaking services in Australia and, while Ladbrokes and the First Complainant are competitors in the Australian market, it cannot be said that Ladbrokes has ever competed with the Second Complainant or the Third Complainant because they are not licensed to operate in Australia; (vi) the term “flutter” was not used by any of the Complainants at the time the platform at “www.flutter.com.au” was in operation; (vii) it is not illegitimate for the Respondent to use a generic term such as “flutter” as part of a <.com.au> domain name for an Australian bookmaker website in circumstances where the Complainants do not have, and have never had, any trademark rights in “flutter” in Australia; (viii) at some time after September 2014 but by January 2016, the Respondent and its associated entities redirected the disputed domain name to In relation to whether the disputed domain name has been registered or is being used in bad faith, the Respondent contends that: (i) the Respondent acquired the disputed domain name because of its dictionary meaning as a generic name relating to the industry in which the Respondent operates, not because of any reputation the Complainants may have had in “flutter” in the United Kingdom; (ii) at the time the Respondent acquired the disputed domain name, the domain name The Respondent requests that a finding of reverse domain name hijacking be made against the Complainants because they: (i) filed the complaint in an attempt to take a generic domain name, a highly valuable asset, from the Respondent; (ii) have attempted to claim exclusive rights in a term which is generic and highly descriptive of the field in which they operate; and (iii) have failed to provide any evidence of their reputation in the term “flutter” or of their use of the term “flutter” in Australia prior to the Respondent’s registration of the disputed domain name. C. Complainants – unsolicited supplemental filing In a supplementary submission filed in response to the Respondent’s Response, the Complainants: (i) refute the Respondent’s assertion that the term “flutter” is generic and descriptive “at least in the sense contended for by the Respondent”, and cite the registration of the FLUTTER.COM and FLUTTER ENTERTAINMENT trademarks as evidence that the term is not descriptive; (ii) express concern that the chronology of the ownership of the disputed domain name provided by the Respondent is incomplete; (iii) assert that there has been no loss of rights in the term “flutter” due to effluxion of time, because the Second Complainant and the Third Complainant own registrations for trademarks that are being used in their global businesses; (iv) argue that any past use of the disputed domain name was not use by the Respondent, as it did not hold a licence permitting it to conduct gaming activities in Australia; (v) state that the Respondent’s current use of the disputed domain name is that of a “placeholder” that prevents its use by others with a legitimate interest; (vi) assert that knowledge of the Flutter.com betting exchange should be imputed to Mr Shannon and the entities he controlled when OMG acquired the disputed domain name; (vii) contend that the Respondent’s current “placeholder” use of the disputed domain name is in bad faith; and (viii) submit they have not withheld any information that could reasonably be considered relevant or material to the complaint. D. Respondent – unsolicited supplemental filing In a supplementary submission filed in response to the Complainant’s supplementary filing, the Respondent submitted a Statutory Declaration made on December 14, 2019, by Dean Michael Shannon, in which he declares that he: (i) was, until recently, not aware that “Flutter” was a brand used by bookmakers or betting exchange operators in the United Kingdom; (ii) registered the disputed domain name solely because it is a generic term related to gambling that is descriptive of gambling and gaming services; and (iii) was not aware of any use of “Flutter” as a brand in Australia or elsewhere at the time he acquired the disputed domain name (either as OMG or as the Respondent). 6. Discussion and Findings A. Complainants’ Standing to file Complaint The Second Complainant is the owner of a United Kingdom trademark registration for the word trademark FLUTTER.COM, and the Third Complainant is the owner of a European Union trademark registration for the word trademark FLUTTER ENTERTAINMENT. As explained in paragraph 1.1A of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), the Policy does not restrict a complainant’s trademark rights to a trademark registered with the Australian trademark authority. Thus, a trademark registered outside of Australia satisfies the requirements of the Policy. It follows that the Second Complainant and the Third Complainant each have rights in a trademark for the purposes of paragraph 4(a)(i) of the Policy. The Complainants request that the disputed domain name be transferred to the First Complainant, it being an Australian entity eligible to hold a <.au> domain name under the auDA Domain Name Eligibility and Allocation Policy Rules for Open 2LDs dated December 17, 2012. The First Complainant is the applicant for four Australian trademark registrations containing the word “flutter”, lodged in August 2019. As at the date of this decision, those applications were pending – they had been published and were under examination. As stated in paragraph 1.1C of the auDA auDRP Overview 1.0, most of the panels considering the issue have expressed the view that an application (even an accepted application) for trademark registration in Australia that has not proceeded to grant does not, of itself, satisfy the requirement of the complainant having rights for the purposes of paragraph 4(a)(i) of the Policy. The Panel adopts that view. Accordingly, the Panel finds that the First Complainant does not, by virtue of its pending Australian trademark applications alone, have rights in a trademark for the purposes of paragraph 4(a)(i) of the Policy. The First Complainant and the Second Complainant are each part of a group of companies ultimately held by the Third Complainant. As noted in paragraph 1.8 of the auDA auDRP Overview 1.0, in most circumstances an entity related to the registered holder of a trademark, such as a subsidiary or a parent of the holder of the trademark, is considered to have rights in that trademark for the purposes of paragraph 4(a)(i) of the Policy. The Panel adopts that view. Accordingly, the Panel finds that the First Complainant does have rights in a trademark – being, in this case, the trademark owned by the Second Complainant and the trademark owned the Third Complainant – for the purposes of paragraph 4(a)(i) of the Policy. It follows that each of the Complainants has standing to file this Complaint. B. Identical or Confusingly Similar The Second Complainant is the owner of a United Kingdom trademark registration for the word trademark FLUTTER.COM. The disputed domain name consists of the whole of the Second Complainant’s trademark, together with the ccTLD suffix “.au”. The addition of the ccTLD suffix does not avoid the confusing similarity of the disputed domain name with the Second Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights. C. Rights or Legitimate Interests As explained in paragraph 2.1A of the auDA auDRP Overview 1.0, if a respondent is using a descriptive word to describe its goods or services without intending to take advantage of the complainant’s rights in that word, then it has a right or legitimate interest in a domain name that contains that word. It is not necessary for the respondent to do business under the exact term incorporated in the domain name – it is sufficient if there is a connection between the domain name’s descriptive meaning and the respondent’s offering of goods or services. The disputed domain name consists of the word “flutter”, together with the 2LD and ccTLD suffix “.com.au”. According to the Macquarie Dictionary and Thesaurus Online, “flutter” is a word with a number of meanings, one of which is as a colloquial verb “to wager (a small amount)” and another of which is a colloquial noun for “a small wager or bet”. In the Panel’s opinion, “flutter” can be considered descriptive of wagering. Both the Respondent and its predecessor in title to the disputed domain name have used the disputed domain name to resolve to a wagering website – in the case of the Respondent’s predecessor, to its “FLUTTER Worlds First Racing Site for Ladies” wagering website; in the case of the Respondent, briefly to that website and then to its “www.ladbrokes.com.au” wagering website. That the Respondent has used the disputed domain name in respect of services for which the domain name is descriptive is not, however, the end of the matter. As discussed in paragraph 2.1A of the auDA auDRP Overview 1.0, the key issue is whether the Respondent’s use of the domain name in this way is bona fide. This requires a consideration of the Respondent’s motivation for undertaking that use, which, in turn, requires an evaluation of all the facts and evidence – including, the degree of similarity of the disputed domain name to the Complainants’ trademark, the Respondent’s awareness of the Complainants’ business conducted under its trademark, the likelihood of customer confusion, and whether the disputed domain name is genuinely being used for its descriptive meaning. Having carefully considered all the evidence in the case file before it (including both Parties’ unsolicited supplemental filings), the Panel is of the view that the Respondent’s use of the disputed domain name to resolve to wagering sites is bona fide. In particular, the Panel finds that the Respondent’s use of the disputed domain name did not seek to take advantage of any reputation in the Complainants’ trademark but rather was used genuinely for its colloquially descriptive meaning. Accordingly, the Panel finds that the Respondent has rights and legitimate interests in the disputed domain name. D. Registered or Subsequently Used in Bad Faith Having found that the Complainants have failed to satisfy the requirement of paragraph 4(a)(ii) of the Policy, the Panel does not need to, and does not, reach a concluded view on whether the requirement of paragraph 4(a)(iii) of the Policy is satisfied. E. Reverse Domain Name Hijacking Paragraph 15(e) of the Rules provides that, if the Panel finds that the Complaint “was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder”, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. Paragraph 4.17 of the auDA auDRP Overview 1.0 lists, non-exhaustively, seven circumstances which previous panels have considered to be indicative of a complaint having been brought in bad faith. Only one of those circumstances is arguably present in this case: “the complainant had known from the beginning that its rights in the domain name were not exclusive, that the domain name was generic, and that the domain name described the activities for which the respondent used it”. Paragraph 4.17 also states that “where a complainant has an arguable case that is merely weak on the evidence, a panel is unlikely to find the complaint to have been brought in bad faith”. The Panel is of the view that the Complainants should have recognised that the colloquially descriptive nature of the disputed domain name, together with the fact of the Respondent’s use of the disputed domain name for its descriptive meaning and the lack of proven reputation or even use of the Complainants’ trademarks in Australia, meant that the Complaint could not succeed. Nevertheless, having carefully considered the matter, the Panel has come to the conclusion that the Complainants’ behaviour in bringing the Complaint does not quite rise to the level of action in bad faith. 7. Decision For all the foregoing reasons, the Complaint is denied. Andrew F. Christie Alan L. Limbury Debrett G. Lyons
Presiding Panelist
Panelist
Panelist
Date: January 3, 2020
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