WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eurobet UK Limited v. Intergate
Case No. D2001-1270
1. The Parties
The Complainant is Eurobet UK Limited, Glebe House, Vicarage Drive, Barking, Essex IG11 7NS, Great Britain, represented by Julian Cronk, Group Company Secretary.
The Respondent is Intergate, Dromerstraat 125, 1511 CT Oostzaan, The Netherlands, contact person Adri Keet.
2. The Domain Name and Registrar
The Domain Name at issue is <euro-bet.net>. The Registrar is 007Names, Inc, 672 RT 202-206 Bridgewater, NJ 08807, USA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on October 19, 2001, and a hardcopy was received by the Center on October 24, 2001. The Center acknowledged the receipt of the Complaint on October 24, 2001.
On October 25, 2001, the Center sent to 007Names, Inc. a request for verification of registration data. On November 1, 2001, 007Names, Inc. confirmed that it is the Registrar, that Intergate is the Registrant of the domain name <euro-bet.net>, that the administrative and billing contact is Konijn, Eric, with an address identical to that of the Respondent, that the technical contact is Lin, Joyce, Web Express Inc., Bridgewater, NJ 08807, USA and that the domain name is in active status.
The Center verified that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Panel is satisfied this is the case.
On November 2, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceeding commenced. On November 20, 2001 the Center received a Response by e-mail from the Respondent, and on November 21, 2001 a hardcopy by fax of the Response and on the same day the Center acknowledged receipt of the Response.
On November 29, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel’s decision is December 13, 2001.
4. Factual Background
The Complainant is a leading on-line bookmaker and belongs to the Coral Eurobet Group, one of the largest bookmakers of the United Kingdom. It uses, amongst others, web sites located at < www.eurobet.com> and at <www.eurobet.co.uk> which were first registered in 1995) and has over 100 000 customers in over 100 countries.
Eurobet (Gibraltar) Limited, a sister company of the Complainant, also belonging to the Coral Eurobet Group, is the registered owner of the following service marks, which the Complainant uses as licensee: UK service mark No 2048351, registered in December 1995 and Community Trade Mark No 272237, registered in June 1996, for the provision of gambling, betting and wagering services (cl. 41). The two marks consist of a combination of a device with the term EUROBET on the top and the word BOOKMAKERS on the bottom. The term EUROBET is written in much larger letters than the word BOOKMAKERS, and is, both in view of its size and of its position in the mark, the dominating part of the service mark.
On May 17, 2001, the Complainant objected to the Respondent’s registration and use of the domain name <euro-bet.net>. This letter was followed by an exchange of correspondence, in which the Respondent offered the transfer of the domain name <euro-bet.net> for the sum of € 20.000.
The Respondent is an online marketing and service company, which purports to have specialized itself in online gambling. In April 2001, it registered the domain name <euro-bet.net> with 007Names, Inc. As evidenced by Annex 8 to the Complaint, the Respondent had established a web site under that domain name which provided a direct link to the web site <www.pharaosjackpot.com> which itself contained a click-through to Pharaoh’s Casino, an online casino. At some time after May 17, 2001, when the Complainant had first written to the Respondent, the Respondent had changed its web site. It is now using a EURO-BET.NET logo and has removed the link to the gambling site. Instead the visitor is invited to submit his email address in order to enter a 1.000.000 contest (and in order to be informed when the site opens).
5. Parties’ Contentions
The Complainant submits that (1) the domain name <euro-bet.net> is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Respondent submits that the domain name <euro-bet.net> is not confusingly similar to the trademark "Eurobet Bookmakers", that it has a strategic plan for the use of the domain name <euro-bet.net> and that it has not registered and is not using that domain name in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing Similarity with a Mark in which the Complainant has Rights
The Complainant has rights as a licensee in a combined mark, which is dominated by the word EUROBET (see above 4A). Contrary to the word "Bookmakers", "EUROBET" is clearly not generic for a category of goods or services, such as "butter" for butter, "euro" (standing for Europe or for the future European currency) or "bet", when used alone. The question can only be whether EUROBET is distinctive or descriptive of the services offered under it. If it were considered to be descriptive, the Complainant could not derive rights from that part of its service mark, except if it had become distinctive through the use made by the Complainant of his mark (so-called secondary meaning). However, based on European trademark law standards (the requirements are the same under British Trade Mark Law as under the Community Trade Mark Regulation), the combination of "euro" and "bet" can only be considered to be descriptive, if it is to be considered "exclusively descriptive". After the recent decision of the European Court of Justice, the highest juridical instance in the European Union, in which Procter and Gamble’s CTM application of the combination of two generic words "BABY DRY" for diapers was considered to be distinctive, (even if both words are not written together in one word) it is clear that distinctiveness of a trademark can be denied only in exceptional cases, to which the combined term "EUROBET" does not belong. EUROBET is not a word of daily language and is only associative of the services offered by the Complainant. At the same time, EUROBET is the only term in the Complainant’s service mark, which in oral communications can be used to distinguish the Complainant from other bookmakers. Even when taking into account the more restrictive jurisprudence at the time when the Respondent applied for the registration of the domain name <euro-bet.net>, the Panelist is satisfied that the dominating part "EUROBET" of the Complainant’s service mark registrations, if it was considered to be descriptive for gambling services at the time of registration, had since become distinctive through intensive use not only in the real world but also, and in particular, in view of the Complainant’s intensive on-line gambling business, which can be accessed through domain names, that are identical with that main part "EUROBET" of the registered service marks <www.eurobet.com > and <www.eurobet.co.uk>. According to the submission of the Complainant, which has not been contested by the Respondent, approximately 150 000 people have visited these two "Eurobet" sites within one month (September 2001) only. This is clear evidence that the term "Eurobet" had become distinctive as identifier of the Complainant’s gambling services, well before the Respondent registered the domain name <euro-bet.net>, if it was not to be considered a distinctive part of the Complainant’s service mark registrations from the outset. Consequently, the Complainant has service mark rights in the word "eurobet".
Comparing the term "eurobet" in the Complainant’s service marks with the term "euro-bet", which is the essential part of the Respondent’s domain name (the gTLD identifier ".net" cannot be taken into consideration when judging confusing similarity), the only difference between the two identifiers is the hyphen between "euro" and "bet". When pronouncing both terms, they are absolutely identical. Also the difference in writing is so discrete that it will be overlooked by many customers. Both terms are therefore, if not identical, at least confusingly similar. This is particularly true in view of the fact that the domain name <euro-bet.net> of the Respondent leads the visitor to a gambling site. Customers of the Complainant, intending to reach its web site, are therefore likely to be confused when typing the domain name <euro-bet.net> and arriving at a site of the Respondent, who also offers gambling facilities. They will expect to be at a site of the Complainant, or at least at a site, sponsored by or otherwise related to the Complainant (even if the Respondent does not offer such gambling facilities at present, it did so in the past and it intends to do so in the future). The Respondent itself contends that the separation of "euro" and "bet" by a hyphen does not "clear" the similarity (it justifies its use of the domain name <euro-bet.net> with the argument that "eurobet" is generic, which is clearly not the case, as explained above).
The domain name <euro-bet.net> is therefore confusingly similar, if not identical, to a mark in which the Complainant has rights in many countries, including the United Kingdom and the Netherlands.
2) Legitimate Rights or Interests in Respect of the Domain Name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. Clearly, the Respondent does not have a right in the domain name <euro-bet.net> (the Respondent has not submitted to have a trademark or other intellectual property right in that name). The Respondent purports to have a legitimate interest in the domain name <euro-bet.net>, since it has built a strategic plan to enter the European market and therefore has registered several domain names in the same timeframe (six other domain names are listed as examples, together with <euro-bet.net>). It is difficult to understand why the fact that the Respondent registered six other domain names should establish a legitimate interest of the Respondent in the domain name <euro-bet.net>. It only shows the interest of the Respondent in domain names, which it may use in the future for gambling activities or it may intend to use for other purposes (such as providing links to existing gambling sites, as evidenced by the Complainant). This interest does not justify the registration, in addition to six other domain names, of a domain name, which is nearly identical with the service mark (and the domain name) of a well-established leading competitor in the field of gambling services.
Furthermore, the Respondent does not purport to use the web site in connection with a bona fide offering of goods or services of the domain name and it has not demonstrated any real preparations for such use (it has only submitted that it intends to use the domain name in the future in the framework of its strategic plan to enter the European Market and to inform for that purpose at its present temporary web site that the site is under development). The only commercial use which was temporarily made by the Respondent was to provide for a link to a web site of an online Casino, not related to the Complainant. This cannot be considered to be a bona fide offering of services of the Respondent, who even hid its identity. Clearly, the Respondent is not making a legitimate noncommercial use of the domain name and the Respondent has not been commonly known under that domain name, since the name "EURO-BET.NET" appears at the Respondent’s present web site only from a date after the Respondent had received the first cease and desist letter of the Complainant, dated May 17, 2001.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name <euro-bet.net>.
3) Registration and Use in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
The Complainant has submitted several arguments in favor of registration and use in bad faith. It believes, and the Panelist is satisfied that this is true, that the Respondent was fully aware of the Complainant’s existence, when registering the domain name <euro-bet.net>. The Complainant refers to other domain name registrations of the Respondent such as < www.goldenplacecasino.com> all of which divert automatically to a casino and gambling site. Having established gambling-related sites, the Respondent must indeed have been aware of the Complainant as a major on-line bookmaker. Furthermore, the Respondent itself submits that it has built a strategic plan to enter the European gambling market. As an explanation for the registration of the domain name <euro-bet.net>, the Respondent submits that the words "euro" and "bet" appeared far too generic for a trademark (when it registered its domain name). Thus the Respondent indirectly admits that it was aware of the service mark "EUROBET" of the Complainant; apparently it was prepared to take the risk of infringing the Complainant’s rights in that trademark.
Before May 17, 2001, when the Complainant first addressed the Respondent, the domain name <euro-bet.net> referred to a web site which was directly linked with a gambling site of Pharaoh’s Casino, an online Casino. This fact, which is evidenced by Annex 8 to the Complaint, speaks strongly against the submission of the Respondent that it registered the domain name <euro-bet.net> in the context of its strategic plan to enter the European gambling market. Actually, there is strong evidence (see the description of the business in the Chamber of Commerce and Industries in Amsterdam – Annex 9 to the Complaint, which is confirmed by the contents of the Respondent’s web site <www.intergate.nl>) that the main business of the Respondent is to provide marketing services for owners of web sites (which may include marketing services for internet Casinos). Online gambling itself has apparently until now not been an activity of the Respondent. The arguments of the Respondent that it had placed the web site’s preview since it was under development, that it showed its true intentions with its name, and that it did not try to cover up the fact that the name was pointing to one of their client’s web sites, is simply not true as concerns the time before the Respondent received the first letter of the Complainant dated May 17, 2001. On the contrary, a very short time after having registered the domain name <euro-bet.net> (in April 2001), the Respondent already used it for a link to Pharaoh’s Casino, without any mentioning of its own identity on the web site < www.euro-bet.net>. The Panelist is therefore satisfied that the Respondent was marketing a gaming product for a third party, as rightly submitted by the Complainant.
From this behavior the Panelist concludes that the Respondent registered the domain name <euro-bet.net> in bad faith and used it to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site and the service (gambling at Pharaoh’s Casino) offered on that web site.
This alone could be considered to be sufficient under the Policy for the Complainant to succeed (since the fact that the Respondent ceased this activity after having received the May 17, 2001 letter of the Complainant, does not exclude use in bad faith under the Policy). However, after having changed its web site, the Respondent, in its letter dated July 24, 2001, offered the domain name to the Complainant for the sum of € 20.000. The Panelist cannot but agree with the Complainant that this sum was excessive. Even if the Panelist accepted the arguments of the Respondent that it has a strategic plan to enter the European gambling market and that it has not finished its web sites and is not yet exploiting the domain names it has registered for that purpose in view of the slow growth of the European market and the fact that the Euro is not used as a currency yet, this is no justification for the exorbitant amount requested for the transfer of the domain name <euro-bet.net>. The Respondent has not submitted any arguments or evidence for any preparations in execution of its "strategic plan". Furthermore, if there had been any marketing investments (apart from the temporary web sites pointing to their future use) these investments would have been made for the establishment of several web sites, for which an enormous amount of different domain names have been registered by the Respondent, and not just for a future web site to be established under the domain name <euro-bet.net>. The Panelist is convinced that the Respondent, in order to establish a gambling business in Europe, does not need numerous domain names. Therefore, renouncing the use of the domain name <euro-bet.net> would not negatively influence any good faith intentions of the Respondent to develop a gambling business in Europe. When the Respondent, after having been requested to cease using the domain name <euro-bet.net>, offered to sell it to the Complainant for € 20.000, such behavior is therefore strong evidence that the Respondent had acquired that domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
In conclusion the Panelist is satisfied that the Respondent either registered the domain name <euro-bet.net> in order to sell it for a sum in excess of the Respondent’s out of pocket expenses, or it intended to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site and the service offered on that web site, or it pursued both intentions in parallel. The facts and evidence submitted by the Complainant therefore prove registration and use of the domain name <euro-bet.net> by the Respondent in bad faith.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name <euro-bet.net> be transferred to the Complainant.
Dr. Gerd F. Kunze
Dated: December 12, 2001