WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Hill Organisation Limited v Seven Oaks Motoring Centre
Case No. D2000 0824
1. The Parties
Complainant: William Hill Organisation Limited
50 Station Road
London N22 7TP
Respondent: Seven Oaks Motoring Centre Limited
First Floor Office Suite
Hildenborough, TN11 9ND
2. The Domain Name(s) and Registrar(s)
Domain Names: williamhill.org, williamhill.net, williamhillscasino.com,
Registrar:Network Solutions Inc.
3. Procedural History
The Complaint was filed on July 19, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified on August 3, 2000 in accordance with Rules, paragraph 2. The deadline for filing a response was August 22, 2000.
No formal Response was filed by the Respondent and a Notification of Respondent Default was sent to the Respondent by the Center on August 29, 2000. An e mail was sent by the Respondent to the Centre on August 29, 2000 requesting further information, but the Respondent remains in default. The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel's decision was September 12, 2000.
4. Factual Background
The Complainant is the proprietor of UK trade mark registrations GB 2158124 and GB 1383971 for the mark WILLIAM HILL. The Complainant is also the proprietor of trade mark registrations GB 2175369 and EM 914705 for the mark William HILL; trade mark registrations GB 2213272 and EM 1413616 for the mark WILLIAM HILL BETLINK; trade mark registration GB 2050510 for the mark WILLIAM HILL LUCKY CHANCE; GB 2050789 for the mark WILLIAM HILL LUCKY CHOICE; and GB 2050793 for the mark WILLIAM HILL LUCKY BET.
5. Parties' Contentions
The Complainant states that:
The domain names are identical or confusingly similar to a trade mark in which the Complainant has rights:
(1) The Complainant is a very well known and substantial bookmaker based in the United Kingdom and provides betting services under various trade marks many of which include the name WILLIAM HILL. In addition to its business in the United Kingdom, the Complainant carries on similar business in many other countries of the world, through for example, its principal web sites, found at williamhill.co.uk and willhill.com.
(2) William Hill has existed since 1934. During that time William Hill has used the trade mark WILLIAM HILL extensively to indicate William Hill's provision of betting services. The company has grown to become one of the UK's most respected bookmakers. There are now over 1500 betting offices in the UK, the williamhill.co.uk and willhill.com web sites are growing strongly and William Hill also operates one of the largest telephone betting organisations in Europe.
(3) In 1999, the Complainant's turnover was £1.9 billion. It has several million customers.
(4) By reason of the above, the Complainant has acquired a very substantial and extensive goodwill and reputation in the United Kingdom and worldwide in the name and trade mark WILLIAM HILL.
(5) In addition, the Complainant has domain name registrations in williamhill.co.uk, willhill.com, williamhillcasino.com and willhillindex.com. These domain names all have active web-sites from which the Complainant trades.
(6) The domain names in dispute incorporate the whole of the Complainant's registered mark WILLIAM HILL.
The Respondent has no rights or legitimate interests in respect of the domain names:
(1) The Respondent is a limited company with an address in the United Kingdom. It is the proprietor of the domain names "williamhill.net", "williamhill.org" and "williamhillscasino.com" that incorporate the registered trademark of the Complainant.
(2) The Respondent has no rights in the mark incorporated into the domain names and no legitimate interest in the name.
The domain names were registered and are being used in bad faith:
(1) Allen & Overy, the representatives for the Complainant have spoken to Steve Reed of the Respondent who indicated that the Respondent intended to sell the domain names. A file note of this conversation was annexed to the Complaint. The attendance note reports that the Respondent said it had no intention to use the names, rejected an offer of £500 for transfer of the name to cover costs and threatened to sell the domain names to other companies if William Hill did not buy them.
(2) By registering and keeping the domain name the Respondent is eroding the goodwill inherent in the trade mark by means of misrepresenting that the Respondent is connected to the Complainant.
The Respondent sent an e mail to WIPO on August 29, 2000, seven days after the expiration of the deadline for filing a Response, asking for further information re Defence of the Complaint, but the Respondent has not filed a formal Response and is in default.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
It is prima facie obvious that the Domain Names are virtually identical and/or confusingly similar to the Complainant's trade marks.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Names.
C. Bad Faith
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including "the Respondent has registered or has 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 trade mark 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". In the absence of a Response from the Respondent, there appears to be no explanation of the facts other than that the Respondent registered the Complainant's trade marks as domain names with an intent to use them to demand unwarranted profit in bad faith and that the Respondent has so used the Domain Names in question.
In light of the foregoing, the panelist decides that the domain names are confusingly similar to the Complainant's trade marks and the Respondent has no rights or legitimate interests relating to the domain names which were registered and used in bad faith.
Accordingly, in light of the above, the panelist requires that the registration of the domain names WILLIAMHILL.ORG, WILLIAMHILL.NET and WILLIAMHILLSCASINO.COM BE TRANSFERRED to the Complainant.
Dated: September 4, 2000