WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Hill Organization Limited v. Lisa Jane Statton
Case No. D2000-0827
1. The Parties
1.1 The Complainant is William Hill Organization Limited, a company incorporated under the Laws of England and Wales.
1.2 The Respondent is Lisa Jane Statton of 100 United Nations Plaza, Apartment 22D, New York, NY 10017, US.
2. The Domain Name and Registrar
The domain name upon which this complaint is based is "betwilliamhill.com". The registrar of the domain name as at the date of the complaint is Register.com, Inc.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by courier on July 19, 2000, and by email on July 24, 2000. The hard copy of the Complaint was accompanied by the fees prescribed under the Supplemental Rules. The Complaint stated that a copy of the Complaint had been sent to the Respondent by post on July 17, 2000, and that a copy had also been sent by post on July 17, 2000, to the concerned registrar, Register.com, Inc.
3.3 Upon receipt of the email copy of the Complaint, the Center sent the Complainant an "Acknowledgment of Receipt of Complaint" on July 26, 2000, by email, with a copy being sent to the Respondent by email.
3.4 The Center sent a Request for Registrar Verification to Register.com, Inc. on July 26, 2000, by email. Register.com, Inc. responded to the Centerís request by facsimile on July 28, 2000, verifying (1) that Register.com, Inc. was the Registrar for the domain name in dispute, (2) that the Respondent was the current registrant of the domain name in dispute, (3) the Respondentís contact details, (4) that the Policy was applicable in relation to the disputed domain name, (5) that "betwilliamhill.com" had an Ďactiveí status. The Panel notes that the response from Register.com, Inc. also stated that Register.com, Inc. had not received a copy of the Complaint.
3.5 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on August 2, 2000, to the Respondent by post/courier, facsimile and email, and to the Complainant by email.
3.6 The Center received an email from the Respondent on August 3, 2000, acknowledging the Notification of Complaint and Commencement of Administrative Proceeding. The Center received a further email from the Respondent on August 17, 2000, requesting an extension of time to file the Response. This request was sent to the Complainant by email on August 18, 2000. The Complainant consented to the Respondentís request for an extension of time to file a Response until August 25, 2000, by email to the Center on August 18, 2000. The Center confirmed to the Respondent that the requested extension of time had been agreed to by email on August 18, 2000.
3.7 The Center received the Response from the Respondent on August 24, 2000. The Response included a request that the dispute be dealt with by a panel of three members, none of which maintained residence in the United Kingdom. The Respondent did not provide names of prospective panel members, nor pay the required fee. The Center sent an acknowledgment of receipt of Response which requested clarification in respect of the Respondentís election of a three-member panel. The Respondent provided such clarification by email to the Center on August 28, 2000. The Respondent stated that a single-member Panel was in fact acceptable, whilst reiterating her concerns relating to the Panel membersí nationality.
3.8 The Center received an email from the Respondent on August 31, 2000, advising that she had received from the Complainant a further submission. The Center responded to the Respondent by email on September 1, 2000, clarifying the position with regard to Supplemental Filings.
3.9 The Center received the above Supplemental Filing, in the form of an email dated August 31, 2000, from the Complainant. The email was also sent to the Respondent.
3.10 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on September 6, 2000 by email.
3.11 The Center dispatched a Transmission of Case File to the original single-member Panel, Mr. Alan L Limbury, and to the Complainant and the Respondent, on September 6, 2000, by email, the hard copy of which arrived on September 11, 2000. The Center received from the Respondent, on September 7, 2000, an email notifying the Center that a Response to the Supplemental Filing of the Complainant would be forthcoming early in the following week. The contents of the Respondentís email were notified to Mr. Limbury by the Center by email on September 8, 2000.
3.12 Mr. Limbury notified the Center, by email on September 11, 2000, that he had noted from the case file the Respondentís concern that a Panel member who was a British subject might be biased in relation to this dispute. Mr. Limbury informed the Center that he was a British subject by reason of being born in the United Kingdom. The Center informed the Complainant and the Respondent of this situation by email on the same date and asked the parties to consider whether they had any objection to Mr. Limbury continuing to act as the single-member Panel in this dispute.
3.13 The Center received a Supplemental Filing and a document described as a Consultant Client Contract from the Respondent by email on September 13, 2000, which was also sent to the Complainant. The Supplemental Filing included an objection by the Respondent to the selection of a panelist who is a British subject, and the Respondent stated her preference for an individual panelist of another nationality. The Supplemental Filing and the "Consultant Client Contract" were sent by the Center to Mr. Limbury by email on September 13, 2000.
3.14 In the light of the Respondentís objection, Mr. Limbury withdrew from the case by email to the Center on September 14, 2000. The Center sent a second Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on September 25, 2000, by email. The replacement panelist, Mr Philip Argy, was born in Australia and has never had any other nationality.
3.15 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information was asserted as fact in the Complaint and remains uncontested.
The Complainant is a very well-known and substantial bookmaker based in the United Kingdom which provides betting services under various trademarks, many of which include the name William Hill. The Complainant also carries on similar business in many other countries of the world through its principal websites, "williamhill.co.uk" and "willhill.com". The Complainant now has over 1500 betting offices in the UK, the above websites are growing strongly and the Complainant also operates one of the largest telephone betting organisations in Europe.
4.2 The Complainantís Trademarks
The Complainant has trademark registrations for the mark WILLIAM HILL in the United Kingdom, and various other trademark registrations in the United Kingdom for other marks containing the words "William Hill". Details of these trademarks are contained in Annex C to the Complaint. In particular, the Complaint states that since coming into existence in 1934, the Complainant has used the trademark WILLIAM HILL extensively to indicate the provision of betting services.
4.3 Activities of the Respondent.
The following information was asserted as fact in the Response and uncontested.
The Respondent is an individual independent contractor who registered the disputed domain name on behalf of one of her clients. The Respondentís client performs numerous services under the name William Hill including handicapping/opinion forming services on all types of activities, from sports to Miss U.S.A. pageants.
5. The Complainantís Contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain name in dispute is identical or confusingly similar to its registered mark WILLIAM HILL, and the domain name in dispute incorporates the whole of the Complainantís registered mark WILLIAM HILL.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no rights or legitimate interests in the domain name in dispute. In particular, the Complaint submits that the Respondent is an individual with an address in the United States who has no rights in the mark incorporated into the domain name and no legitimate interest in the name.
5.4 In reference to the requirement of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered and is using the domain name in dispute in bad faith. In support of this allegation, the Complaint refers to the correspondence received from the Respondent in which the Respondent requests the Complainant to pay US$15,000 to acquire the domain name from her.
6. The Respondentís Contentions in the Response
6.1 In relation to the allegation that the domain name in dispute incorporates the whole of the Complainantís registered mark WILLIAM HILL, the Respondent avers that the "respondent"- the Panel presumes that the Respondent intended to aver that the Complainant - does not have a trademark or service mark over the name "William Hill" which is enforceable.
6.2 In relation to the allegation in the Complaint that the Respondent has no legitimate interest in the domain name in dispute, the Respondent avers that she has rights in the disputed domain name by reason of a contractual arrangement with a client performing services under the name William Hill.
6.3 In relation to the allegation in the Complaint that the domain name in dispute was registered and is being used in bad faith, the Respondent admits that the disputed domain name was registered for commercial gain, but denies that this was done in bad faith or intended to be at the expense of the Complainant.
6.4 In addition to refuting the allegations made in the Complaint, the Response alleges that the name William Hill is extremely common in the United States and cannot be owned by any single person or entity. The Respondent asserts that the domain name "williamhill.com" is not registered to the Complainant but to a winery in California. The Respondent asserts that the domain name "betwilliamhill.com" has a United States dot ".com" suffix and that the Complainant is legally prohibited from engaging in wagering transactions in the United States. The Respondent further asserts that Complainant brings this action in bad faith and for an illegal purpose under U.S. law and that the Respondent attempted to amicably resolve this matter with the Complainant.
7. Complainantís additional contentions in email dated August 31, 2000.
7.1 The Complainant submitted to the Panel its response to a number of the contentions in the Response, including the following assertions:
(i) the Complainant does have a trademark over the name "William Hill" registered as both a UK and Community trademark, which is enforceable against the Respondent if she trades through the disputed domain name.
(ii) the Respondent does not provide details of her client which performs services under the name "William Hill", and had stated in her previous correspondence that the disputed domain name had an eminent value to her, referring to her business plan.
(iii) the Complainant was negotiating with William Hill Napa Inc. (the winery to which the domain name "williamhill.com" is registered) for the purchase of this domain name. The Complainant states that wine producing is a different area to the area in which the Complainant trades.
(iv) the Complainant is licensed to engage in wagering transactions from any country in the world including the USA.
(v) US law is not applicable to the Complainantís operations, and the Complainant has consistently communicated in good faith with the Respondent.
8. Respondentís reply to Complainantís email dated August 31, 2000.
8.1 The Respondent submitted to the Panel her response to a number of the contentions made by the Complainant in its email dated August 31, 2000, including the following assertions:
(i) the Complainantís trademark "WILLIAM HILL" is not enforceable in the U.S., and stating that the Respondent has no intention to trade in the UK or EU.
(ii) the Complainant is not licensed to trade in the U.S., which is the primary target of the disputed domain name.
8.2 The Respondent also provides in her reply further information regarding the client on whose behalf she alleges the domain name was registered. The Respondent states that her client uses numerous titles for various service divisions of its company and that she is willing to provide additional information for the resolution of this dispute. The Panel presumes that the Consulting Agreement between the Respondent and "Hortech Management Services" dated February 1, 2000, and provided by the Respondent at the same time as her reply is intended to evidence the contractual arrangement between the Respondent and the client on whose behalf she alleges the disputed domain name was registered.
9. Discussion and Panel Findings.
9.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
9.2 Domain Name identical or confusingly similar to Complainantís Marks
The domain name in dispute is "betwilliamhill.com". The Complainant has trademark registrations in the United Kingdom and the European Union for the mark WILLIAM HILL.
The Panel notes the Respondentís arguments that "William Hill" is an extremely common name in the United States and her assertion in her letter dated April 20, 2000, to the Complainant that the fact that the disputed domain name contained the Complainantís trademark was an "unfortunate coincidence". The disputed domain name is "betwilliamhill.com". The juxtaposition of "bet" with "williamhill" is of significance in relation to the Complainantís area of activity. It is inconceivable to the Panel that such a combination of characters arose by coincidence and the Respondentís assertion is rejected as simply not believable. The Panel cannot but infer that, of all the William Hills there may be on the planet, the William Hill with which the Respondent wanted the disputed domain name to be associated was in fact the Complainant, a substantial and well-known bookmaker of that name based in the United Kingdom.
To the extent that there are differences between the domain name and the mark, such as the spaces between words in the mark and the fact that "williamhill" is preceded by "bet" in the domain name, the Panel finds confusing similarity proven. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(i) of the Policy.
9.3 Respondent has no rights or legitimate interests in Domain Name
The Panel notes that the Respondent avers in the Response that she has legitimate rights in the disputed domain name by reason of a contractual arrangement with one of her clients, which performs services under the name "William Hill". In her reply to the Complainantís Supplemental Filing, the Respondent again refers to the client on whose behalf she claims the disputed domain name was registered. A Consulting Agreement between the Respondent and "Hortech Management Services" dated February 1, 2000, has also been submitted to the Panel by the Respondent, apparently by way of substantiation of the submission.
In the Panelís opinion, the Consulting Agreement does not constitute evidence that either the Respondent or her client has rights or legitimate interests in the disputed domain name. Clause 1 c) of the Agreement states:
"The term ĎServicesí Ö shall refer to the services Provider shall provide to Recipient for marketing and public relations on behalf of Hortech M.S. in its division of handicapping/opinion forming services on sporting and leisure eventsÖ".
However, no evidence whatsoever is provided that either the Respondent, or Hortech Management Services, has any connection with the name "William Hill", and therefore a legitimate interest in the disputed domain name.
Paragraph 4 (c) of the Policy lists a number of circumstances, which, if proven to exist by the Respondent, shall demonstrate a Respondentís rights or legitimate interests in the domain name. No evidence to suggest that any of these circumstances exist has been submitted to the Panel.
The Panel is not persuaded that the Respondent has any rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(ii) of the Policy.
9.4 Domain Name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"Öthe following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faithÖ"(emphasis added).
In this case, although the registrar of the disputed domain name has confirmed that it is "active," currently the web page displays a message from Register.com that the website was recently registered and is "coming soon." In some cases, however, it has been found that it is unnecessary to consider the two limbs of the provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. As such, bad faith use can be found to follow bad faith registration without more, if the Complainant can prove registration in bad faith.
9.5 In order to show bad faith registration by the Respondent, the Complainant states in its Supplemental Filing that in offering to sell the domain name to the "Claimant" (ie the Complainant), the Respondent has clearly demonstrated that it was registered in bad faith. The Complainant therefore appears to be relying on paragraph 4(b)(i) of the Policy, which provides that the following is evidence of bad faith registration and use:
"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".
9.6 The Respondent has made a number of statements, in her letter to the Complainant dated April 20, 2000, in her Response and in her reply to the Complainantís Supplemental Filing, concerning the reason for which she registered the disputed domain name. However, these statements are not consistent. In her letter to the Complainant dated April 20, 2000, the Respondent makes no suggestion whatsoever that she has registered the domain name on behalf of a client. Instead, she refers to her own "business plan", and states that the domain name has an "eminent value" to her. It is only later in her Response that the Respondent alleges that she registered the domain name for a client who performs services under the name "William Hill". It is later still, in her reply to the Complainantís Supplemental Filing, that the Respondent purports to provide evidence of the contractual relationship between her and the client in question, i.e. the Consulting Agreement between the Respondent and Hortech Management Services.
9.7 In this case the question before the Panel is therefore, "did the Respondent register the domain name for the primary purpose of selling, renting or otherwise transferring it to a third party with an interest in that name?" The Complainant is required by the Policy to prove that this is the case. It is clear from the undisputed evidence in the Complaint that such an intention existed after the date of registration, but this does not automatically lead to the conclusion that this intention existed at the time of registration. However, in this case, the Panel infers that such an intention existed at the time of registration, for the following reasons. First, the Respondent offered to sell the domain name to the Complainant as soon as she was contacted by the Complainant, and also offered for sale to the Complainant other domain names which she had registered and which related to the Complainantís area of activity, i.e. betting and wagering transactions. Secondly, the fact that Respondent has provided no evidence that since registering the domain name she, or her client, has made any meaningful use of it leads the Panel to conclude that the Respondentís purpose for registering the domain name was, at the time of registration, to sell it for consideration in excess of her out-of-pocket expenses directly related to the domain name. Thirdly, for the reasons set out in paragraph 9.2, it is plain that the domain name was chosen to trigger recognition of the Complainant and its business.
9.8 Paragraph 4(b)(i) of the Policy also requires that the consideration demanded by the Respondent for the domain name be in excess of the Respondentís documented out-of-pocket costs directly related to the domain name. The Respondent has not denied that she requested the payment of US$15,000 to sell the domain name to the Complainant. The consideration demanded by the Respondent was therefore obviously more than any out-of- pocket costs that the Respondent might have incurred directly relating to the domain name.
The Panel finds that the domain name in dispute was registered and is being used in bad faith by the Respondent. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel requires that the domain name "betwilliamhill.com" be transferred by Register.com, Inc. to the Complainant.
Philip N Argy
Dated: October 31, 2000