WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hilton Group and Others v. Universal Internet Technologies Inc..

Case No. D2001-0812

 

1. The Parties

The Complainants in this administrative proceeding are:

a) Hilton Group Plc, a United Kingdom publicly listed company whose principal place of business is at Maple Court, Central Park, Reeds Crescent, Watford, Herts, WD24 4QQ, United Kingdom ("the First Complainant");

b) Ladbrokes Limited a United Kingdom limited liability company whose principal place of business is at Maple Court, Central Park, Reeds Crescent, Watford, Herts, WD1 1HZ, United Kingdom ("the Second Complainant");

c) Ladbrokes E-gaming Limited a United Kingdom limited liability company whose principal place of business is also at Maple Court, Central Park, Reeds Crescent, Watford, Herts, WD1 1HZ, United Kingdom ("the Third Complainant"); and

d) Ladbrokes International Limited whose principal place of business is at 57/63 Line Wall Road, Gibraltar ("the Fourth Complainant").

represented by Olswang, solicitors, of 90 Long Acre, London WC2E 9TT. The Respondent is Universal Internet Technologies, Inc., Global Gaming Systems and Licensing, European Division, Bloomsbury, London WC1E 7QF, United Kingdom.

 

2. The Domain Names and Registrar

The domain names in issue are <ladbrokesportsbook.com> and <ladbrokessportsbook.com> ("the Domain Names"), the Registrar of which is Tucows, Inc..

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received on June 20, 2001,  an electronic version of the Complaint and on June 22, 2001, a hard copy of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On June 26, 2001, the Center formally notified the Respondent that this administrative proceeding had been commenced and that that date is the formal date of the commencement of this administrative proceeding.

On June 21, 2001, the Center transmitted via e-mail a request for registrar verification in connection with this case. On June 22, 2001, Tucows transmitted via e-mail to the Center its Verification Response, confirming that the registrant is Universal Internet Technologies, Inc., Global Gaming Systems and Licensing, European Division, Bloomsbury, London, WC1E 7QF and stating that the administrative, technical and billing contact is in each case Global Gaming Systems and Licensing, European Division, Bloomsbury, London, WC1E 7QF.

No Response has been filed by the Respondent. The Center attempted unsuccessfully to send notification of the Complaint to the Respondent by courier (with all accompanying exhibits) and by fax. However, there is nothing to suggest that the e-mail notification, which the Centre also sent, was not received. Notification of Default was sent by e-mail to the parties on July 17, 2001. In view of the fact that the Respondent ignored the Complainantsí objections to the Respondentís registration of the Domain Names before these proceedings were instituted, the Panelist concludes that the Respondent has deliberately chosen not to respond to the Complaint, but that it has received adequate notice of the same.

On July 24, 2001, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is due to the Center by August 7, 2001.

 

4. Factual Background

(a) The First Complainant is the registered proprietor, inter alia, of United Kingdom and United States trademarks in respect of the marks LADBROKE and LADBROKES. (UK Nos. 2,004,802 and 2,039,353 and US Nos. 74-672068 and 75-004230). It also owns a number of other trademarks which incorporate the word LADBROKE, together with other more or less descriptive words (e.g. LADBROKE CASINO).

(b) Between them, the Complainants are the registrants of the following domain names which incorporate the trademarks Ladbroke or Ladbrokes:


Domain Name

Registrant

Date of Registration

ladbrokes.co.uk

Ladbrokes Limited

Prior to 2 August 2000

ladbrokes.com

Ladbrokes International Limited

13 January 2000

ladbrokecasinos.com

Hilton Group Plc

5 May 1999

ladbroke-casinos.com

Hilton Group Plc

5 May 1999

ladbrokesfantasy.com

Ladbrokes eGaming Ltd

15 August 2000

ladbrokesfantasy.co.uk

Ladbrokes eGaming Ltd

15 August 2000

ladbrokesfootball.com

Ladbrokes eGaming Ltd

15 August 2000

ladbrokesleague.co.uk

Ladbrokes eGaming Ltd

15 August 2000

ladbrokesleague.com

Ladbrokes eGaming Ltd

16 August 2000

ladbrokegroup.com

Hilton Group Plc

26 May 1998

(c) The domain names at issue were registered on the following dates:

<ladbrokessportsbook.com> on August 2, 2000,
<ladbrokesportsbook.com> on February 21, 2001.

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:

i) The First Complainant is a publicly listed company with two major operating divisions - Hilton International (which owns the rights to the Hilton name outside the USA) and Ladbroke Betting & Gaming (which is one of the world's largest commercial off-track betting and gaming organisations).

ii) The First Complainant was formerly known as Ladbroke Group Plc but changed its name on May 14, 1999. It is one of the largest companies listed on the London Stock Exchange and has a market value of approximately £3 billion, a turnover of around £4 billion and employs more than 55,000 people worldwide.

iii) The Second Complainant is a subsidiary of the First Complainant and was established by incorporation on October 1, 1963. Since that time it has traded as a bookmaker under and by reference to its name or the mark LADBROKES.

iv) The Third Complainant is a related company to the First Complainant and was established by incorporation on April 3, 2000. Since that time it has traded as a consultancy company under and by reference to its name and the mark LADBROKES.

v) The Fourth Complainant is a subsidiary of the First Complainant and is a Gibraltar company which was established by incorporation on August 10, 1992. Since that time it has traded as a bookmaker under and by reference to its name and the mark LADBROKES.

vi) Any attempt by the Respondent to supply services under or by reference to the Domain Names in the United Kingdom or the United States of America will amount to an infringement of one or more of the Ladbrokes trademarks, as such use will amount to the use in relation to the supply of services of an identical or similar sign and would be likely to cause confusion and/or take unfair advantage of and would be detrimental to the distinctive character and repute of the relevant trademark or marks.

vii) The Complainants have each used the trademarks and names LADBROKE and LADBROKES in connection with their respective businesses for many years. To the extent that they have used any of the trademarks referred to above, the Second to Fourth Complainants have done so with the licence and consent of the First Complainant.

viii) The Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names are being used to "point" to a gaming website called www.WorldWager.com. The Domain Name <worldwager.com> is registered to Apogee International Finance and Escrow whose address is recorded as being: 34-20 Calle 34, Panama City, Panama. The use that the Respondent is making of the Domain Names is clearly designed to attract, for commercial gain, Internet users to the relevant website by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation or endorsement of the website or the service available at that website.

ix) On or about April 26, 2001, the Complainants' solicitors wrote to the Respondent demanding that it transfer the Domain Names to the Second Complainant. A copy of the letter was sent by post and e-mail to the Respondent. The copy of the letter sent by post was returned un-opened. No response was received to the e--mail copy of the letter.

x) On or about May 18, 2001, a further letter was sent to the Respondent by e-mail and post. The hardcopy of this letter was returned to the Complainants' solicitors on May 22, 2001, marked "Gone away no longer at this address".

B. Respondent

As noted above, no Response has been filed.

 

6. Discussion

The onus is on the Complainants to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:

i) the domain name is identical or confusingly similar to a 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.

As to element (i), the Panelist has no hesitation in finding that each of the Domain Names is confusingly similar to the First Complainantís trademarks LADBROKE and LADBROKES. These trademarks are extremely well known in gaming and betting circles, and they are the only distinctive elements of the Domain Names. It is striking that the www.WorldWager.com website (to which the Domain Names point) is described as "The worlds leading online Sportsbook".

As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that it has any rights or legitimate interests in the Domain Names. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute preparation to use the Domain Names, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Names). The facts put forward by the Complainants in paragraph 5(viii) above plainly demonstrate that the Respondentís interest in the Domain Names was not in connection with a bona fide offering of goods or services, but rather to take advantage of the reputation of the Complainantsí Marks to divert would-be users of LADBROKE betting services to WorldWager. In the absence of any justification from the Respondent of its activities in relation to the Domain Names, the Panelist concludes that the Complainants have established element (ii).

So far as element (iii) is concerned, it is sufficient that the Complainants demonstrate that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies.

Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as follows:

"by using the domain name, [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 [Respondent's] website or location, or of a product or service on [Respondent's] website or location."

It is difficult to conceive of a more blatant attempt to attract Internet users to the www.WorldWager.com website through the registration and use of the Domain Names simply as pointers to the latter website. That the Respondent has been acting in bad faith throughout is to be inferred from its refusal to acknowledge any communication from the Complainantsí solicitors or from the Centre, and from the fact that both Domain Names remain active to this date.

The Panelist therefore concludes that the Respondent registered and has been using the Domain Names in bad faith.

 

7. Decision

In the light of the findings in paragraph 6 above, the Panelist concludes that:

- the domain names <ladbrokesportsbook.com> and <ladbrokessportsbook.com> are confusingly similar to the trademarks LADBROKE and LADBROKES of the First Complainant;

- the Respondent has no rights or legitimate interests in the domain names;

- the domain names have been registered and are being used in bad faith.

Accordingly, as requested by the Complainants, the Panelist orders that the domain names <ladbrokesportsbook.com> and <ladbrokessportsbook.com> be transferred to the Second Complainant, Ladbrokes Limited.

 


 

Christopher Tootal
Sole Panelist

Dated: July 31, 2001