WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Youbet.com Inc v. Grand Slam Company

Case No. D2002-0711

 

1. The Parties

The Complainant is Youbet.com Inc, a Delaware Corporation, with its principal place of business at 5901 DeSoto Avenue, Woodland Hills, CA 91367, United States of America. The Complainant is represented by Wilmore F. Holbrow of Blakely, Sokoloff, Taylor & Zafman, LLP, Los Angeles, United States of America.

The Respondent is Grand Slam Company of 123 Small Wok Way, Chopsticks Town, WI 00000, TH.

 

2. The Domain Name and Registrar

The domain name at issue is <wwwyoubet.com>.

The Registrar with which the disputed domain name is registered is GKG.NET, Inc., 2700 Earl Rudder Frwy S, Suite 1300, College Station, TX 77845, United States of America.

 

3. Procedural History

On July 27, 2002, a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") via email for decision in accordance with the Uniform Domain Name Dispute Resolution (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. The hardcopy of the Complaint was received on July 30, 2002.

On July 30, 2002, the Registrar responded to a request for verification of the disputed domain name <wwwyoubet.com> confirming:

- That the Respondent was the current registrant of the disputed domain name

- The details of the Respondent

- That the Policy applied to the disputed domain name

- That the disputed domain name was registered with the Registrar

- That the status of the disputed domain name was "registrar lock" and that it would remain locked during the Administrative Proceeding

- That the language of the registration agreement was English.

On July 31, 2002, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Respondent was advised that a response to the Complaint was required within 20 calendar days i.e. by August 20, 2002.

No Response was received and on August 22, 2002, the Center transmitted a Notification of Respondent Default to the Respondent.

On August 27, 2002, the Center advised the parties that an Administrative Panel had been appointed, consisting of a single member. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant operates a website at <youbet.com>, which offers Internet wagering on horse races. It registered the domain name <youbet.com> on September 2, 1995. The Complainant states that since then over 25 million transactions amounting to wagers in excess of US$300 million have been conducted via this website.

The Complainant has provided evidence that it is the owner of seven registered trademarks in the United States of America in respect of the marks "YOUBET" and "YOUBET.COM". The first claimed use of the trademarks is April 1997.

The Respondent registered the disputed domain name <wwwyoubet.com> on or about May 29, 2002. The site redirects to the site "www.bettingexpress.com", which offers Internet casino wagering and sports betting. The site "www.bettingexpress.com" is owned by KNOT International Gaming, Inc.

The Respondent has also registered the domain name <wwwbettingexpress.com>. This site resolves to <mysportsbook.com>, which is also owned by KNOT International Gaming, Inc.

 

5. Partiesí Contentions

A. The Complainant

The Complainant claims that the disputed domain name is identical to its trademark YOUBET.COM, the only difference being the prefix "www".

The Complainant claims that the Respondent registered the disputed domain name to profit from Internet users who erroneously omit the period between "www" and "youbet" when attempting to locate the Complainantís website at "www.youbet.com".

The Complainant submits the Respondent has no legitimate interests or rights in the disputed domain name. It confirms that the Respondent is not a representative of the Complainant or licensed to use its trademark YOUBET.COM.

The Complainant claims that it is inconceivable that the Respondent did not have knowledge of the Complainantís website <youbet.com> and its trademarks YOUBET and YOUBET.COM prior to registration of the disputed domain name. The Complainantís site is listed on the NASDAQ Stock Exchange under the symbol UBET. The Complainant claims that its website is so popular and well-known in the Internet gaming community that it is capable of conducting over US$1 million a day in wagering transactions and that a website as successful as this would not go unnoticed by a competitor.

The Complainant claims that the Respondent is misleading and diverting the Complainantís customers to its website and creating an impression that the disputed domain name is in some way associated with, or sponsored by the Complainant. It claims that the addition of the prefix "www" to the trademark YOUBET.COM is nothing more than a ploy to take advantage of mistakes users are likely to make when intending to visit the Complainantís website.

The Complainant alleges that the Respondentís bad faith is further demonstrated by the Respondentís acts in providing false identification and contact information. It alleges that the Respondentís contact details (Grand Slam Company, 123 Small Wok Way, Chopsticks Town, WI 00000) are fictitious and that this demonstrates that the Respondent knew its actions were wrongful.

B. The Respondent

The Respondent did not file a Response.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"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".

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar or identical to a trademark or service mark in which the Complainant has rights

The Complainant has produced evidence that it holds a number of registered trademarks in respect of the marks YOUBET and YOUBET.COM. Other than the prefix "www" these marks are plainly identical to the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.

Respondent has no rights or legitimate interests in respect of the domain name

The second burden on the Complainant is to establish that the Respondent has no rights or legitimate interest in the disputed domain name. The Policy outlines (Paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentís rights or legitimate interest in the domain name. These circumstances are:

(i) Before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) The Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is plain that the Respondent was using the disputed domain name in connection with the offering of services prior to notice of this dispute. The essential question for the Panel is whether or not the offering of those goods and services was bona fide in terms of Paragraph 4(c)(i) above.

The Panel finds that there was no bona fide offering of goods and services for the following reasons in terms of Paragraph 4(c)(i) above:

(a) The Complainant has provided evidence of its significant reputation Ė particularly in the United States;

(b) The disputed site resolves not to a site named or trade marked "youbet" but to quite a different competitor betting site unconnected with that trademark. On its own, this fact would not be significant, but in conjunction with the other factors, it is relevant;

(c) The overwhelmingly usual registration of a domain name is www followed by a period and then the domain name. The Respondent when it came to register the disputed domain name, <wwwyoubet.com> which is a typographical variant of the Complainantís trademark and website, must have been or become aware of the Complainantís site.

(d) There is no evidence that the Respondent has ever been commonly known by the disputed domain name.

Neither Paragraph 4(c)(ii) nor (iii) has any application to the circumstances of this case.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) 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; or

(ii) You have registered the domain name in order to prevent the owner of the trademark 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The Complainant relies on sub-paragraph (iii) above. The essence of the Complaint is that the Respondent registered the disputed domain name for the purpose of disrupting the business of the Complainant Ė i.e. by diverting business from the Complainantís site to the website "www.bettingexpress.com". The site "www.bettingexpress.com" is owned by a third party, KNOT International Gaming, Inc. The evidence indicates, however, that there is a connection between the Respondent and KNOT International Gaming, Inc. Both the domain names registered by the Respondent (<wwwyoubet.com> and <wwwbettingexpress.com>) resolve to websites operated by KNOT International Gaming, Inc. KNOT International Gaming, Inc., is plainly a competitor of the Complainant.

The issue of bad faith is closely allied with the finding under the previous head, namely that there was no bona fide offering of goods or services. The Panel finds that the Respondentís purpose in registering a closely similar domain name incorporating a misspelling of the Complainantís domain name (i.e. omitting the period) was to disrupt the business of the Complainant in terms of sub-paragraph (iii) above. The Panel further finds that the Respondent must have intended to take advantage of typographical errors entered by users searching for the Complainantís site. The fact that the Respondent has given fictitious contact details confirms the Panelís findings.

Overall, the Panel accepts that the Respondent registered, and is using, the disputed domain name in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) the disputed domain name is confusingly similar to trademarks in which the Complainant has rights;

(b) the Respondent has no legitimate right or interest in respect of the disputed domain name;

(c) the domain name was registered and is being used in bad faith.

Accordingly, the Panel orders that the disputed domain name <wwwyoubet.com> be transferred to the Complainant.

 


 

Andrew Brown
Sole Panelist

Dated: September 6, 2002