WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unibet.com (International) Ltd., and Mr. Anders Ström v. GEO Systems Ltd.
Case No. D2001-1250
1. The Parties
The first Complainant in this administrative proceeding is Unibet.com (International) Ltd., ("Complainant"), a company limited by shares, with its main business address at The Plaza Commercial Centre, Bisazza Street, Sliema, Malta. The Company is part of an international group with the main office in the United Kingdom.
The second Complainant in this administrative proceeding is Mr. Anders Ström, one of the founders of Unibet.com who is the current owner of several UNIBET trademarks. Some of these trademarks are presently being transferred to Unibet.com (International) Ltd.
Complainant's authorised representative is L.A. Groth & Co. KB, Johan Sjöbeck, Stockholm, Sweden.
The Respondent in this administrative proceeding is GEO Systems Ltd. ("Respondent"), Malta. Respondent is represented by the Global Events Online Group (Global Events Online S.à.r.l.) that has a 100% ownership in GEO Systems Ltd. and three other companies.
Respondentís authorised representative is GEO Global Events Online AB, Lars Svensson, Stockholm, Sweden.
2. The Domain Names and Registrar
The Domain Name at issue is <unitedbet.com>, registered with VeriSign (Network Solutions Inc.) ("Registrar") of 487 East Middlefield Road, Mountain View, CA, USA.
3. Procedural History
A Complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on October 16, 2001, by e-mail and was received the next day in hardcopy.
The Acknowledgement of Receipt of Complaint was issued to the Complainant by the WIPO Center on October 19, 2001.
On October 22, 2001, a Request for Registrar Verification was transmitted to the Registrar which confirmed the following day with its Verification Response that the disputed Domain Name was registered with VeriSign (NSI) and that Respondent, GEO Systems Ltd., was the current registrant of the disputed Domain Name.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on October 24, 2001, without recording any formal deficiencies.
The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on October 24, 2001, setting a deadline of November 13, 2001, by which the Respondent could file a Response to the Complaint.
On November 12, 2001, the WIPO Center received the Response to the Complaint by e-mail.
The Acknowledgement of Receipt of Response was submitted to the Respondent by the WIPO Center on November 14, 2001.
Complainant requested a single-member panel. Since Respondent remained silent in this regard, the WIPO Center invited the undersigned to serve as sole Panelist and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on November 28, 2001.
The WIPO Center transmitted to the parties on November 28, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date as of December 12, 2001. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexes as well as from the Response and its enclosed documents:
The trademark upon which the Complaint is based is UNIBET. Complainant registered this trademark in Sweden for bookmaking in class 41 and under the Madrid Agreement and Protocol in various other countries, among them the United Kingdom, Germany, France, Denmark, Norway and Finland. UNIBET is also registered as a service mark in the United States of America and as a trademark in Australia (with priority since December 17, 1999).
Respondent registered <unitedbet.com> as a business name with the Australian Ministry of Fair Trading on January 18, 2000. The disputed Domain Name <unitedbet.com> was first registered with Atlant Ocean Racing AB end of 1999. According to Respondent, the owners of Atlant Ocean Racing AB are also the founders of the GEO Group where Respondent is included as a wholly owned subsidiary. The transfer of the Domain Name from Atlant Ocean Racing AB to Respondent was completed on August 20, 2001. In addition to the Domain Name at issue, Atlant Ocean Racing AB registered the Domain Names <unitedbet.net> and <unitedbet.org> on February 9, 2000. The Domain Name <unitedbet.co.uk> is also owned by Global Events Online AB and was registered on February 11, 2000.
5. Partiesí Contentions
Complainant contends that:
- the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the
Domain Name; and
- the Domain Names were registered and are being used in bad faith; and
- the Domain Name <unitedbet.com> should be transferred to the first Complainant (Unibet.com (International) Ltd.).
Additional respective contentions of the Complainant are contained in the following discussions and findings.
Respondent disputes all of the above contentions. As a result, the Domain Name <unitedbet.com> should remain with the Respondent.
Additional respective contentions of the Respondent are contained in the following discussions and findings.
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:
"(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a 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 Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith."
Identical or confusingly similar Domain Name: Policy 4(a)(i)
The Domain Name at issue is <unitedbet.com>. Complainant is the holder of the registered trademark "UNIBET" and alleges that the disputed Domain Name is confusingly similar to this trademark, save for the TLD ending ".com".
The Policy is silent as to any definition of "confusingly similar". Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "A Panelist shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." This Panel is of the opinion that the possibility of confusion of two words is primarily to be assessed by the sound pattern of the words. In addition, the meaning, the script and the visual appearance of the words have to be taken into account as well.
Both parties agree that the words "uni", "united" and "bet" are ordinary words used in the English language. By combining them to "unitedbet" and "unibet", these words become novel words which Complainant holds to be confusingly similar. As Respondent correctly states, the phonetics of the term "unitedbet" seem to be clearly distinctive from the phonetics of the term "unibet", Complainant's trademark. While "unibet" is a short and easy word to pronounce, "unitedbet" consists of three distinctive syllables that have a completely different sound pattern. However, this dispute is dealing with Domain Names which, by their very nature, are usually dealt with while using a personal-computer in order to access the World Wide Web. A possible customer or consumer perceives Domain Names usually when typing or reading them rather than by pronounciation. Therefore, one should not restrict its view to the sound pattern but also assess the meaning, the script and the visual appearance of the words at issue.
It is fair to state that the visual appearance of "unibet" and "unitedbet" can be considered to be somewhat similar, especially since the parties seem to be competitors dealing in the same market of online sport betting. Nevertheless, with regard to the script as well as the visual appearance, the panel finds it hard to see a confusing similarity between Complainantís trademark "unibet" and the Domain Name of Respondent <unitedbet.com>.
While there are arguments on both sides, the panel tends to answer the question in the negative and is of the opinion that Complainant has not sufficiently established the elements of the Policy's Paragraph 4(a)(i). This is due to the fact that the Panel finds it hard to establish a confusing similarity in terms of phonetics as well as regarding script and visual appearance. However, in view of what follows, the Panel doesnít see a need to decide this question in a final manner as the other criteria requested by the Rules do not seem to be fulfilled anyway.
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
As rightly stated in Infinity2 Incorporated v. Total Health Wellness, NAF Claim Nr. FA0094867, "the purpose of UDRP Subparagraph 4(c)(i) is to exclude from the UDRP process cases of entities who use or prepare to use a Domain Name without knowledge that their doing so was or would be disputed." The Response and the enclosed Annexes indicate, that Respondent registered and began using the disputed Domain Name in connection with a site offering online sport betting prior to any knowledge of this dispute.
Respondentís authorized representative wrote in his letter of June 13, 2001, that Respondent has operated its website <unitedbet.com> from Western Australia since February 2000. Even though this assertion has not been proven by Respondent, there are clear indications for this being the case: the Domain Names <unitedbet.net> and <unitedbet.org> were registered with Atlant Ocean Racing AB whose owners appear to be the founders of the GEO Group where Respondent is included as a wholly owned subsidiary, on February 9, 2000. Only two days later, on February 11, 2000, GEO Global Events Online AB, another 100% owned subsidiary of the GEO Group registered the Domain Name <unitedbet.co.uk>. On January 18, 2000, Respondent registered <unitedbet.com> as a business name with the Australian Ministry of Fair Trading. Complainant holds that Respondent only registered the disputed Domain Name <unitedbet.com> on August 20, 2001. However, this appears to be the date when Atlant Ocean Racing AB transferred the disputed Domain Name to its self-owned subsidiary GEO Systems Ltd., the Respondent in the dispute at issue. Respondent asserts that Atlant Ocean Racing AB registered <unitedbet.com> at the end of 1999. Even though Respondent fails to prove this assertion, in light of the above, the assertion seems credible. Furthermore, Complainant itself by providing Annex Y Ė a printout of Respondentís website, dated October 9, 2001, about the history and structure of <unitedbet.com> Ė delivers another proof of the fact that Respondent commercially used its website <unitedbet.com> before any notice of this dispute.
Thus, Respondent seems to have a legitimate interest in the Domain Name because it made commercial use prior to notice of this dispute. Use prior to this dispute being admitted, the question arises whether Respondentís use was bona fide. Not all use prior to notice of the dispute can qualify as bona fide use. As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering or service. Ö to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."
However, in the case at issue, Respondentís use of the name <unitedbet.com> cannot be said to be clearly intended to trade on Complainantís trademark. As we have seen above, the similarity between the two names in the eyes of this Panel is not strong. Another argument in this regard is the fact that the design of the two websites is completely different and shows no intent whatsoever of Respondent to invoke confusion.
Subparagraph 4(c)(ii) rules that who has been commonly known by the Domain Name has demonstrated his rights or legitimate interests to the Domain Name. The Panelist admits that his knowledge about the online sport betting "scene" is by far not sufficient to decide whether Respondentís website <unitedbet.com> has a sufficient reputation on its own in this field. However, by checking some appropriate link-pages and directories to English language online betting and bookmaker sites, it seems that <unitedbet.com> indeed has a reputation on its own and appears to be a direct competitor of <unibet.com> with equal rights and about the same prestige.
In its Response, Respondent informs this Panel that during autumn 2001, Complainant was engaged in talks with Respondent about a possible acquisition of the GEO Group, including the Domain Name <unitedbet.com> and its operations. From Respondentís website <unitedbet.com> we learn that in the meantime, <unitedbet.com> has been acquired by a third online sport betting company "24hbet AB". However, its business still runs under the name <unitedbet.com> but powered by <24hbet.com>.
The ICANN dispute resolution process is mainly intended for the relatively narrow class of cases of "abusive registrations", and Domain Name disputes between "legitimate" claimants - as it appears to be the case in this proceeding - are intended to be relegated to the ordinary courts.
In conclusion, the Panel finds that Respondent has established its rights or legitimate interests in the contested Domain Name within the meaning of Policy 4(c)(i) in that before notice of the instant dispute it used the contested Domain Name in connection with its bona fide offering of its goods and services. If this contention is sustained, it effectively trumps all other elements of the Complaint and requires a finding that Complainant is not entitled to the relief requested in this proceeding.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] 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 trade mark 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; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or your location."
Complainant alleges that Respondent registered and used the Domain Names in bad faith and maintains that "the striking similarity between the Respondentís Domain Name and the Complainantís trademarks as well as the similarity of services amounts to passing off" and that "average Internet users may be confused as to whether the Respondent is somehow sponsored, endorsed, authorized, affiliated or supported by the Complainants." This Panel is nevertheless of the opinion that Respondent made sufficient efforts as to clearly differentiate its products and services from the ones of Complainant and hence no evidence of bad faith according to Policy Subparagraph 4(b)(iv) can be established. Respondentís use of the Domain Name <unitedbet.com> does not in itself evidence an intent to attract Internet users to its website by creating a likelihood of confusion with Complainantís mark. At any stage of this proceeding Respondentís website looked quite different from Complainantís site, neither the former nor the actual "logo" of <unitedbet.com> showed any striking similarity to Complainantís "logo", and since the date that <unitedbet.com> has been acquired by a third party, the website shows the brandname and logo of <24hbet.com>. Thus, the source, sponsorship, affiliation, and endorsement of Respondentís website has been indicated very clearly and the chances of confusion with Complainantís website are slight.
In assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have not been sufficiently made out by the Complainant, and that Respondent's bad faith registration and use of the Domain Name have not been proven.
In view of the circumstances and facts discussed above, the Panelist finds that the Respondent has sufficient rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has not been registered and are not being used in bad faith.
As a consequence, the Panelist concludes, according to paragraph 15(e) of the Rules, that the dispute is not within the scope of paragraph 4(a) of the Policy in force. Therefore, the remedy requested by Complainant pursuant to Paragraph 4(i) of the Policy is denied. The Respondent shall not be required to transfer to Complainant the Domain Name in dispute.
This holding does not in any way prejudice proceedings commenced before the courts according to paragraph 4(k) of the Policy.
Dated: December 10, 2001