WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hilton Group Plc v. Grand Slam Co.

Case No. D2003-0136

 

1. The Parties

The Complainant is Hilton Group Plc, a company incorporated under the laws of the United Kingdom, having its principal place of business in Watford, Hertfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Laytons Solicitors of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Grand Slam Co., a company incorporated under the laws of Thailand, having its principal place of business in Chopsticks Town, Thailand.

 

2. The Domain Names and Registrar

The domain names at issue are <wwwladbrokes.com> and <wwwladbrokescasino.com>, which are registered with Tucows, Inc.

 

3. Procedural History

A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on February 24, 2003, and in hardcopy on February 25, 2003. An Acknowledgement of Receipt was sent by the Center to the Complainant, dated February 24, 2003.

On February 24, 2003, the Center transmitted by e-mail to Tucows, Inc. a request for registrar verification in connection with the domain names at issue.

On February 24, 2003, Tucows, Inc. transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the domain names.

The Registrar has currently incorporated the Policy in its agreements. The Policy was adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. There is no evidence that the Respondent ever requested that the domain names at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of the Policy.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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, in effect as of December 1, 1999, (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on March 28, 2003.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on April 9, 2003. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules.

 

4. Factual Background

The Complainant and its Registered Trademarks

The Complainant, Hilton Group Plc, was until May 14, 1999, incorporated under the name of Ladbroke Group Plc. A true copy of the Certificate of Incorporation on Change of Name filed at Companies House is provided at Annex 4 to the Complaint.

The Complainant is the proprietor of registered trademarks throughout the world, which comprise the word LADBROKE or LADBROKES or of which the word LADBROKE or LADBROKES is the dominant feature. The Complainant's registered trademarks include, amongst many others, the following:

Community Trademark:

CTM 450494 LADBROKES Classes 36, 42

USA Trademarks:

2045395 LADBROKES Class 41
2080710 LADBROKE Class 42

UK Trademarks:

2004802 LADBROKE / LADBROKES Class 41
2039353 LADBROKE / LADBROKES Class 42
1294512 LADBROKES Class 36
2150603 LADBROKE CASINO / LADBROKE CASINOS Class 41

True copies of the certificates or Trademarks Registry database printouts in respect of the registrations as set out above are provided at Annex 5 to the Complaint.

The Complainant has also protected its trademarks internationally. LADBROKE or LADBROKES formative registrations also exist in Andorra, Argentina, Benelux region, Brazil, Costa Rica, Cyprus, Dominican Republic, Egypt, Germany, Ireland, Italy, Lebanon, Mexico, Peru, Puerto Rico, South Africa, Swaziland, Venezuela and Zimbabwe.

The Complainant uses the marks in connection with gaming services including casinos, betting shops and on-line gaming and operates websites which trade at the domain names <ladbrokes.com> and <ladbrokescasino.com>. The Complainant is one of the market leaders of such services under the marks LADBROKE and LADBROKES.

 

5. Partiesí Contentions

A. Complainant

(1) The Domain Names are Identical or Confusingly Similar to a Trademark in which Complainant has Rights

The Complainant has rights in the trademarks LADBROKE and LADBROKES and in so far as the whole of the mark LADBROKES appears in the Respondent's domain names it is submitted that the domain names are identical or confusingly similar to the Complainant's trademarks. With regard to the Respondent's <wwwladbrokescasino.com> domain name, it is submitted that this is also identical or confusingly similar to the Complainant's LADBROKE CASINO trademark.

The Respondent's domain names consist of the Complainant's entire LADBROKES mark, <ladbrokes.com> and <ladbrokescasino.com> domain names with the addition of three consecutive "W's". The domain name <wwwladbrokes.com> was registered by the Respondent on April 7, 2000. The domain name <wwwladbrokescasino.com> was registered by the Respondent on February 13, 2002.

(2) Respondent has No Rights or Legitimate Interests in the <wwwladbrokes.com> and <wwwladbrokescasino.com> Domain Names

The Complainant has not licensed nor otherwise permitted the Respondent to use the domain names nor the trademarks. The Respondent has no rights or legitimate interests in respect of the domain names because the Respondentís business has no connection with the names LADBROKE, LADBROKES or LADBROKE CASINO - the Respondent does not trade under these names nor offer goods or services under these names and has not been and is not commonly known under these names.

(3) Respondent Registered and is Using the <wwwladbrokes.com> and <wwwladbrokescasino.com> Domains in Bad Faith

As mentioned above, the Respondent's domain names consist of the Complainant's entire LADBROKES mark, <ladbrokes.com> and <ladbrokescasino.com> domain names with the addition of three consecutive "W's". Internet users, when attempting to access a website, type the letters "www", which stand for World Wide Web followed by a 'full stop' prior to typing in the domain name for the website. If an Internet user accidentally omits the 'full stop' between the letters "www" and the domain name, which is a common mistake, they are in the case of the Respondent's domain names, redirected to the online gambling website at "mysportsbook.com" registered to KNOT International Gaming, Inc, P.O. Box 3214, St. John's, Antigua. This website is directed at customers all over the world by providing a facility for a person in any country to register as a member. The currency of choice "mysportsbook.com" operates in are US Dollars. A true copy of the homepage at the website at "mysportsbook.com" printed on February 5, 2003, is provided at Annex 6 to the Complaint. A copy of the printout of a whois database search of the domain name <mysportsbook.com> conducted on February 5, 2003, is provided at Annex 7 to the Complaint.

The Complainant submits that there is a connection between the Respondent and KNOT International Gaming, Inc. Both the domain names registered by the Respondent direct to <mysportsbook.com>, which is clearly a competitor of the Complainant. Furthermore, the e-mail contact details provided for both the Respondent and KNOT International Gaming, Inc. are identical. The domain name <wwwmysportsbook.com> is also registered in the name of the Respondent and Internet users accessing this address are redirected to the website of KNOT International Gaming, Inc. at <mysportsbook.com>. A copy of the printout of a whois database search of the domain name <wwwmysportsbook.com> conducted on February 5, 2003, is provided at Annex 8 to the Complaint.

The Complainant submits that the Respondent is engaged in a pattern of bad faith registrations. The Respondent in this case has also been the subject of domain name dispute resolution proceedings before, which specifically involved the Respondent using the marks of rival gaming organisations, with the addition of the letters "www", to direct Internet users to its own gaming website or that of KNOT International Gaming, Inc. The Complainant refers to the decision of the National Arbitration Forum on July 8, 2002, in Claim Number FA0205000114339 to transfer the domain name <wwwharrahs.com>, which had been registered in the name of the Respondent in this case, to Harrah's Las Vegas, Inc. A true copy of the National Arbitration Forum Decision in Claim Number FA0205000114339 is provided at Annex 9 to the Complaint. The Complainant also refers to the WIPO Arbitration and Mediation Center Administrative Panel Decision of September 6, 2002, in Case No. D2002-0711 to transfer the domain name <wwwyoubet.com>, which had been registered in the name of the Respondent in this case, to Youbet.com, Inc. A true copy of the WIPO Arbitration and Mediation Center Administrative Panel Decision in Case No. D2002-0711 is provided at Annex 10 to the Complaint. The Complainant submits that this pattern of conduct is evidence that the Respondent has registered the domain names in order to prevent the Complainant from reflecting the mark in corresponding domain names contrary to Paragraph 4(b)(ii) of the Policy.

In view of the Complainant's submission that there is a connection between the Respondent and KNOT International Inc., the Complainant also refers to paragraph 6 of the decision in Case No. D2002-0711 where the evidential connection between the Respondent and KNOT International Gaming, Inc. was noted. The Complainant therefore further submits that the domain names should be considered as having been registered and used in bad faith because they have been registered primarily for the purpose of disrupting the business of a competitor contrary to Paragraph 4(b)(iii) of the Policy. In support of this submission, the Complainant also refers to the fact that the Respondent has a history of using the marks of other gaming organisations with the addition of the letters "www" to direct Internet users to its own gaming website or that of KNOT International Gaming, Inc.

The domain names should also be considered as having been registered and used in bad faith by the Respondent because the domain names are used solely to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant's registered trademarks and websites at "ladbrokes.com" and "ladbrokescasino.com" as to the source, sponsorship, affiliation or endorsement of the "mysportsbook.com" website contrary to Paragraph 4(b)(iv) of the Policy. It is submitted that the Respondent has made illegitimate use of the domain names, and has chosen these domain names purely to create an association with the Complainant or its services and with intent to misleadingly divert Internet users intending to visit the Complainant's websites. In addition, given the Respondent's obvious knowledge of the gaming industry and its previous use of the marks of other gaming organisations with the addition of the letters "www" to direct Internet users to its own gaming website or that of KNOT International Gaming, Inc, the Respondent must have known of the existence of the Complainant's operations under the marks LADBROKE, LADBROKES and LADBROKE CASINO and specifically the Complainant's activities at the domain names <ladbrokes.com> and <ladbrokescasino.com> prior to registering these domain names.

The Complainantís representative wrote to the Respondent and KNOT International Gaming, Inc. by post and by e-mail on January 24, 2003, (true copies of these letters are provided at Annex 11 to the Complaint). Automated receipts confirming successful delivery of these e-mails were received. However, no replies have ever been received to the letters.

The Complainant's Representative has attempted to establish the legitimacy of the postal address contact information provided by the Respondent through Internet searches for the street name "Small Wok Way" and also the town "Chopsticks Town" but has not been able to establish the existence of these locations. The only references to the address returned by a Google search are those contained in the previous domain name decisions against the Respondent. The Complainant submits that the Respondent has provided false identification and contact information and that the address provided is fictitious. The Complainant also refers to paragraph 6 of the decision in Case No. D2002-0711 in which it was concluded that the contact details given by the Respondent in that case (123 Small Wok Way, Chopsticks Town compared to 199 Small Wok Way, Chopsticks Town in this case) were fictitious. The Complainant submits that this provides further evidence of the Respondent's bad faith and is evidence that it was aware that its registration and use of these domain names was improper.

The Complainant has requested the Administrative Panel to issue a decision by which the contested domain names are transferred to the Complainant.

B. Respondent

The Respondent has not replied to the Complainantís contentions.

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) 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

2) that the Respondent has no legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

The Complainant has shown that it is the proprietor of several registered trademarks throughout the world regarding the word LADBROKE or LADBROKES or of which the word LADBROKE or LADBROKES is the dominant feature. The Complainant uses the marks in connection with gaming services including casinos, betting shops and on-line gaming and operates websites, which trade at the domain names <ladbrokes.com> and <ladbrokescasino.com>.

In view of the above it is the Panelist's opinion the domain names <wwwladbrokes.com> and <wwwladbrokescasino.com> are confusingly similar to the trademarks LADBROKES and LADBROKES CASINO of the Complainant, except for the prefix "www" and the addition of ".com". Accordingly, the Panelist finds that the domain names at issue are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Given the Respondentís failure to submit a response, the Respondent has not proven that he has any prior rights or legitimate interests in the domain name. Nor has the Complainant authorised the Respondentís activities or has any control over these activities.

The prerequisites in the Policy, Paragraph 4(a)(i) and (ii) are therefore fulfilled.

Paragraph 4(a)(iii) of the Policy further provides registration and use of the domain names in bad faith.

The circumstances mentioned in Paragraph 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are examples of facts, which constitute evidence of the registration and use of a domain name in bad faith.

The Complainant submits that the circumstances in Paragraphs 4(b)(ii)-(iv) of the Policy are at hand in this case. The Panelist has therefore considered whether this is the case.

According to the Complainant the Respondent is engaged in a pattern of bad faith registrations, since the Respondent has also been the subject of prior domain name dispute resolution proceedings, which specifically involved the Respondent using the marks of rival gaming organisations, with the addition of the letters "www", to direct Internet users to its own gaming website or that of KNOT International Gaming, Inc. (Decision of the National Arbitration Forum on July 8, 2002, in Claim Number FA0205000114339 and WIPO Arbitration and Mediation Center Administrative Panel Decision of September 6, 2002, in Case No. D2002-0711). In accordance with the prior decisions the Panelist finds that the conduct of the Respondent in the present case shows that the circumstances mentioned in Paragraph 4(b)(ii) of the Policy are existing in this case.

Furthermore, the Complainant submits that the contested domain names should be considered as having been registered and used in bad faith because they have been registered primarily for the purpose of disrupting the business of a competitor contrary to Paragraph 4(b)(iii) of the Policy. In support of this submission, the Complainant also refers to the fact that the Respondent has a history of using the marks of other gaming organisations with the addition of the letters "www" to direct Internet users to its own gaming website or that of KNOT International Gaming, Inc. According to the evidence submitted by the Complainant both domain names registered by the Respondent direct the user to the website "mysportsbook.com", which is registered to KNOT International Gaming, Inc. These circumstances indicate that there is a connection between the Respondent and KNOT International Gaming, Inc. The fact that KNOT International Gaming, Inc. is a competitor of the Complainant provides further evidence in the Panelistís opinion showing the fact that the purpose of the Respondent was to disrupt the business of the Complainant in terms of Paragraph 4(b)(iii) of the Policy.

Finally, the Complainant submits that the contested domain names have been registered and used in bad faith by the Respondent because the domain names are used solely to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant's registered trademarks and websites at "ladbrokes.com" and "ladbrokescasino.com" as to the source, sponsorship, affiliation or endorsement of the "mysports book.com" website contrary to Paragraph 4(b)(iv) of the Policy. The Panelist finds that the Respondentís use of a domain name, which is almost identical with the trademarks of the Complainant and without the 'full stop' between the letters "www" and the domain name clearly shows that the domain names were used solely to redirect Internet users to the online gambling website at "mysportsbook.com" registered to KNOT International Gaming, Inc., which is a competitor of the Complainant. According to the Panelist this conduct constitutes registration and use of the domain names in bad faith in accordance with Paragraph 4(b)(iv) of the Policy.

In addition, the degree of distinctiveness and originality of the domain names and trademarks of the Complainant shows that the Respondent must have known of the existence of the Complainant's rights regarding LADBROKE, LADBROKES and LADBROKE CASINO and the Complainant's activities at the domain names <ladbrokes.com> and <ladbrokescasino.com> prior to registering these domain names.

In conclusion, the Panelist finds that the circumstances in Paragraphs 4(b)(ii)-(iv) of the Policy are at hand in this case. Consequently, the Panelist finds that the contested domain names have been registered and used in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. The fact that the Respondent has obviously provided fictitious contact details further strengthens the Panelistís findings. Therefore, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4 (i) of the Policy are fulfilled.

The Complainant has requested transfer of the domain names.

 

7. Decision

In view of the above circumstances and facts, the Panelist decides that the domain names registered by Respondent are identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain names, and that Respondentís domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panelist requires that the registration of the domain names <wwwladbrokes.com> and <wwwladbrokescasino.com> be transferred to the Complainant.

 


 

Jonas Gulliksson
Sole Panelist

Dated: April 16, 2003