WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray
Case No. D2002-0624
1. The Parties
The First Complainant is Victor Chandler Limited of Chandler House, 17 Linhope Street, London, NW1 6HT, United Kingdom. The Second Complainant is International Sports Marketing Limited of Offshore Group Chambers, PO Box CB - 12751, Nassau, Bahamas.
The Respondent is Thierry Leray of 9 Rue des Greves, Langrolay Sur Rance 22490, France.
2. The Domain Names and Registrar
The disputed domain names are <victorpoker.com>, <victorbingo.com>, <victorslots.com>, <victorblackjack.com>, <victorroulette.com> and <victorbaccarat.com>.
The registrar is Tucows, Inc.
3. Procedural History
The electronic version of the Complaint was filed on July 4, 2002. The hardcopy of the Complaint was received on July 8, 2002 (one copy) and July 12, 2002 (original and three further copies). The Complaint was deficient in a number of respects. On July 9, 2002, the Center sent to the Complainant a Complaint Deficiency Notification in accordance with paragraph 4(b) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules"). The deficiencies were remedied by the Complainant and an amended Complaint was received by the Center by email on July 18, 2002, and a hard copy received on July 22, 2002.
In accordance with Paragraph 4(a) of the ICANN Rules and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), ICANN Rules and Supplemental Rules. Payment in the required amount was received by the Center.
On July 23, 2002, the Center formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.
On August 8, 2002, the Respondent filed an electronic version of the Response. A hardcopy of the Response was received on August 14, 2002.
On August 15, 2002, the Center contacted John Swinson and requested that he act as Panelist in this case. Mr. Swinson accepted to act as Panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On August 19, 2002, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 2, 2002.
On August 27, 2002, the Center received by email a supplemental filing from the Complainant called "Reply to Respondentís Response to Complaint" as discussed below.
The language of the proceeding was English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the Response was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; the administrative panel was properly constituted.
4. Factual Background
The First Complainant owns the registered United Kingdom trade mark "Victor Chandler", Registration No. 2179875.
The Second Complainant is a wholly owned subsidiary of Newcote International Limited. Newcote International Limited is the parent company of both the Second Complainant and another company called Victor Chandler (International) Limited. The Second Complainant asserts that it is responsible for handling the trademark affairs of Victor Chandler (International) Limited and the Victor Chandler International group of companies throughout the world. The Second Complainant owns numerous registered trademarks in China, the European Union, Israel, Thailand and Hong Kong for the marks "Victor Chandler" and "Victor Chandler International" (with and without a logo).
The services in connection with which these marks are used by the Complainants are asserted to be "entertainment services relating to sports competition, arranging and conducting of sports activities, organisation of competitions, gaming and operating lotteries".
The Complainants assert that "Newcote International Limited, Victor Chandler (International) Limited and agents acting on their behalf have also registered a number of domain names which include the names "VICTOR", and "VICTORCHANDLER", coupled with a form of sporting or gaming activity Ö Examples of such domain names registered include victorbet.com, victorchandler.com, victorcasino.com, victorallsports.com and victorchandlercasino.com".
The Respondent was engaged by Victor Chandler (International) Pty Limited as a consultant from February 28, 2000, to August 4, 2000. Thereafter the Respondent was a contractor to an entity called Rock Sports Limited in his capacity as a website marketing consultant. Rock Sports Limited is also involved in the online gaming and sports betting industry.
The disputed domain names were registered by the Respondent on July 5, 2001.
5. Partiesí Contentions
The Complainants have established a successful business in the niche market of sports betting and gaming. The following description of the Victor Chandler Group is taken from the <victorcasino.com> website:
"[The Victor Chandler Group is] a global telephone and online operation with offices in London, Hong Kong and Gibraltar Ö Victor Chandler International is now widely regarded as the worldís leading independent bookmaking and gaming group of companies",
The Panelís own inquiries of the <victorcasino.com> website revealed that at this site consumers can gamble playing games such as poker, keno, slot machines, blackjack, roulette and baccarat.
The Complainants assert they have invested considerable sums in developing the awareness of their registered trademarks and also the common law mark "Victor" within the online gaming and betting industry. In doing so they have created in the publicís mind an exclusive association in particular between the First Complainant and Victor Chandler (International) Pty Limited and the marks "Victor Chandler", "Victor Chandler International" and "Victor".
The word "Victor", is a known, advertised, recognisable and associated trademark of the Victor Chandler Group (which includes the Complainants). Through continuous use, promotion and advertising the Complainants have created extensive goodwill in the "Victor" mark in the betting and gaming industry.
The Complainants also allege that:
(a) the disputed domain names are confusingly similar to the Complainants registered trademarks and unregistered "Victor" service mark and that these marks are widely recognised and associated with the Complainants in the gaming and betting industry. Using the word "Victor" in combination with a form of gaming activity (as demonstrated by the disputed domain names) would cause confusion of an association between the disputed domain names and the Complainants;
(b) in the highly specialised gaming and betting industry, the use of the word "Victor" leaves a lasting impression in the mind of the consumer. The Complainants have promoted, advertised and have rights in the word "Victor" in this industry. The addition of the generic gambling and/or betting game is synonymous with the legitimate business interest and that which is conducted by the Complainants;
(c) the Respondent has registered the disputed domain names in bad faith and has not used the disputed domain names in connection with the bona fide offering of goods and services; and
(d) the Respondent has registered the disputed domain names for the purpose of selling the disputed domain names to the Complainant for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the disputed domain names. This is evidenced by the Respondentís refusal to transfer the disputed domain names to the Complainant, despite the Complainantís offer to pay the Respondentís out-of-pocket expenses in order to effect the transfer.
The Respondent was at one time a consultant to Victor Chandler (International) Pty Limited but at the time of registering the disputed domain names, was a consultant to Rock Sports Limited.
The relevant sections of the Response assert that:
(a) the First Complainant has no standing to make a Complaint because it does not own any registered trade marks that are identical or confusingly similar to the disputed domain names, nor does it have any other basis for asserting that it has rights in the trade marks;
(b) the disputed domain names were registered in order for the Respondent to carry on business, and that he has a legitimate interest in the disputed domain names for this reason;
(c) the Respondent chose the word "Victor" in the disputed domain names because of the ordinary meaning of the word "victor" as "one who wins". The main idea of each of the disputed domain names is that anyone who plays will win. The concept is "victor = victory = he who plays wins";
(d) when the idea of the Second Complainantís registered trade marks is compared with the idea represented by the Respondentís registered domain names, there is no confusingly similarity; and
(e) he did not register the disputed domain names in bad faith.
6. Discussion and Findings
Supplemental filing by Complainant
The first issue is whether the Panel will consider the supplemental filing called "Reply to Respondentís Response to Complaint" filed by the Complainant on August 27, 2002.
The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. However under the Rules, the Panel has the discretion of determining the admissibility, relevance, materiality and weight of the evidence. See ICANN Rules, Paragraphs 10(a) and 10(d).
In the supplemental filing, the First and Second Complainants wished to add a third complainant, Victor Chandler (International) Pty Limited. However, the requested remedy in the initial complaint remains unchanged, namely that the disputed domain names be transferred to the Second Complainant.
The Panel has determined that it will decide this case without reference to the supplemental filing. The supplemental filing did not offer any new evidence to substantiate the Complainantsí claim and largely contained legal arguments that should have been included in the original Complaint. The Panel does not see any need to add a third complainant to these proceedings, and does not believe that the Complainants have a right to do so.
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:
(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant.
6.1 Identical or confusingly similar to a trade mark or service mark
The First Complainant owns the U.K. registered trademark "Victor Chandler". The Second Complainant owns registered trademarks "Victor Chandler" and "Victor Chandler International" in a number of countries.
It appears that other entities own domain names that include "Victor" or "VictorChandler". For example, the domain name <victorchandler.com> is owned by Infosys Group. The domain name <victorcasino.com> is owned by NewCote Services Ltd. The domain name <victorbet.com> is owned by "Victor Chandler". The domain name <victorallsports.com> is owned by "Victor Chandler (International Ltd)".
The relationship between the First Complainant, the Second Complainant and Victor Chandler (International) Pty Limited and the other entities listed in the above paragraph is not entirely clear. No trademark license agreements have been presented in evidence.
Accordingly, the Panel decides that it cannot consider any trademark use or registrations other than of the Second Complainant.
On review of the evidence presented by the Complainants, the Panel finds no evidence of use of the word "Victor" alone by the Second Complainant.
Accordingly, the only trademarks that the Panelist is prepared to consider relevant are the registered trademarks owned by the Second Complainant for "VICTOR CHANDLER." The question then becomes, are the disputed domain names confusingly similar to the trademark "VICTOR CHANDLER."
The disputed domain names do not contain the words "Victor Chandler", only the word "Victor" followed by the generic name for a casino type game, such as poker, baccarat and blackjack.
The Panel finds that the trademark "VICTOR CHANDLER" is known in the gambling market in England and certain countries in Europe.
The disputed domain names are confusingly similar to the "Victor Chandler" marks when the word "Victor" is combined with a casino game due to the reputation of the "VICTOR CHANDLER" marks in this industry.
The Panel agrees with the Complainantís assertions that the "Victor" part of the marks is the distinctive feature.
The disputed domain names comprise the "VICTOR" trademark of the Complainants in conjunction with other generic words such as "poker", "bingo", "slots", "blackjack", "roulette" and "baccarat" which are words associated with casinos and gaming. These generic words do not distinguish the disputed domain names from the Second Complainantís trademark. See The Stanley Works and Stanley Logistics, Inc v Camp Creek. Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v Nokiagirls.com aka IBCC, WIPO Case No. D2000-0102, holding that the disputed domain names were confusingly similar to the trademark of the complainant despite the addition of generic words.
The Panel finds that all the disputed domain names are confusingly similar to the registered trade marks of the Second Complainant.
(a) is not using the disputed domain names;
(b) does not have any trademark applications or registrations for or relating to any of the disputed domain names; and
(c) is not commonly known by the disputed domain names.
The Respondent asserts that he "intends to develop the business associate with the [disputed] domain names as a project with his wife and other business colleagues in the near future" in relation to the promotion of a gambling business. However, he has not provided any evidence of attempts he has made to develop any website or use any of the disputed domain names, nor has the Respondent provided any evidence of these business plans.
Mere assertions that the Respondent has future plans does not satisfy Paragraph 4(c)(ii) of the ICANN Rules, as it is not "demonstrable preparations to use".
The Respondentís attempt to explain the use of the word "Victor" in the disputed domain names (i.e. as "someone who wins") is unconvincing when the history and the relationship between the Complainants and Respondent is considered. This appears to be an attempt to legitimise the registering of the disputed domain names.
Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondentís legitimate rights in the disputed domain names. The Respondent does not meet any of the three elements set out in this paragraph and has provided no other basis for showing any rights or legitimate interests to the disputed domain names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
6.3 Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith as:
(a) the disputed domain names were registered or acquired primarily for the purpose of selling the disputed domain name registrations to the Complainant for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the disputed domain names. This is evidenced by the Respondentís refusal to transfer the disputed domain names despite repeated requests to transfer the disputed domain names in exchange for payment of the Respondentís costs in doing so, and the Respondentís insistence on seeking a better offer (i.e. with the intention of profiting from the transfer); and
(b) the Respondent deliberately registered the disputed domain names with full knowledge of the Complainantís reputation in the betting and gaming industry and knowing that the Complainants would have a legitimate interest in the disputed domain names. The Respondent knew that that the casino type games referred to in the disputed domain names are associated with the legitimate business interests of the First Complainant and the Victor Chandler group of companies.
The Panel disagrees with the Complainantís assertions set out in paragraph (a) above, but agrees with paragraph (b) above.
The Respondent became the registrant of the disputed domain names on July 5, 2001, approximately 11 months after ending a consulting engagement with Victor Chandler (International) Pty Limited. The Respondent then joined Rock Sports Limited which may have traded under the name "SUPERBOOK". It is unclear from the material whether Rock Sports Limited is a competitor of the Complainants, or whether Rock Sports Limited is somehow connected with or owned by the Victor Chandler Group. The Complainants appear to have knowledge of a significant amount of detail relating to the Respondentís employment with Rock Sports Limited, and have even provided copies of correspondence between Rock Sports Limited and the Respondent around the time that the Respondent resigned from the employment of Rock Sports Limited. The Complainants have made no attempt to explain how these documents came into their possession.
Evidence was also presented that the Respondent may not have been paid by Rock Sports Limited, that Rock Sports Limited closed down and then re-opened under another similar name, and that its director (John Docherty) was somehow involved in registering or consenting to registration of the disputed domain names. Both the Complainantís and Respondentís evidence on these issues is difficult to follow.
Here the Respondent clearly knew of the Complainantsí marks before registering the disputed domain names, as a result of his engagement as a consultant to Victor Chandler (International) Pty Limited and his knowledge of the gaming and betting industry.
Further, the Panel believes the use of the word VICTOR in the disputed domain names combined with the generic words descriptive of casino games was intended by the Respondent to create the impression of an authorized association between the Victor Chandler group and the disputed domain names.
Accordingly, the Panel finds that the Respondent registered the disputed domain names primarily for the purpose of disrupting the business of a competitor.
The Panel finds that the Complainant has established the element set out in Paragraph 4(a)(iii) of the ICANN Policy.
For the reasons set forth above and pursuant to Paragraphs 4(i) of the ICANN Policy and 15 of the ICANN Rules, the Panel orders that the contested domain name be transferred to the Second Complainant.
Dated: September 2, 2002