WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sporting Exchange Limited v. John Hannah
Case No. D2003-0751
1. The Parties
The Complainant is The Sporting Exchange Limited, London, United Kingdom of Great Britain and Northern Ireland ("the Complainant"), represented by Ashurst Morris Crisp, United Kingdom of Great Britain and Northern Ireland.
The Respondent is John Hannah, Welwyn Garden City, Herts, United Kingdom of Great Britain and Northern Ireland ("the Respondent").
2. The Domain Name and Registrar
The disputed domain name <betfairpoker.com> ("the Domain Name") is registered with Tucows, Inc. ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2003. On September 24, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 25, 2003, the Registrar transmitted by email 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 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 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
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 September 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 20, 2003.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 29, 2003. The Panel finds that it was properly constituted. 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.
4. Factual Background
The Complainant was incorporated in England in May 1999. On March 15, 2000, it registered the domain name, <betfair.com> and on March 22, 2000, it filed application for registration of BETFAIR as a UK trade mark in class 9 for "gambling, gaming and betting computer software" and as a UK service mark in class 41 for a variety of gambling and gaming services. The registrations came through on April 6, 2001.
On June 7, 2000, the Complainant launched a betting exchange service under the name BETFAIR accessible inter alia through its website at "www.betfair.com". Exhibited to the Complaint is a wealth of material to demonstrate that the Complainantís BETFAIR business which is conducted via the website at "www.betfair.com" has been a great success and has attracted much favourable publicity in the UK national press. In the press and in the Complainantís advertising the trading name is frequently given as Ďbetfair.comí.
In 2001, the Complainantís major competitor, Flutter.com, was subsumed into it. In passing the Panel notes that the then chief executive of Flutter.com has a very similar name to the Respondent, but assumes it is a coincidence because nothing is made of the point in the Complaint.
The Complainant and its founders have been the recipients of various awards including the 2002 Queens Award for Innovation.
Nothing is known of the Respondent beyond what is available at the Registrarís Whois database. The Respondent registered the Domain Name on May 19, 2003.
On August 6, 2003, the Complainantís representatives wrote to the Respondent drawing the latterís attention to the Complainantís rights and seeking transfer of the Domain Name. No reply was received to that letter. Nor was any reply received to a Ďchaserí sent on August 14, 2003.
Currently, the Domain Name is not connected to an active website of the Respondent.
5. Partiesí Contentions
The Complainant contends that the Domain Name is confusingly similar to its "BETFAIR" trade mark and its Betfair.com trading name. The Complainant observes that the presence of ípokerí in the Domain Name does nothing to distinguish the Domain Name from the Complainantís trade mark.
The Complainant claims to have undertaken searches to check whether the Respondent can have any rights or legitimate interest in respect of the Domain Name, but has been unable to find any trace of any such rights or legitimate interests. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy. The Complainant points to the fame of the Complainantís business within the on-line gambling fraternity and asserts that it is inconceivable that anyone based in the UK with an interest in on-line gambling could have registered the Domain Name without having the Complainantís business firmly in mind. The Complainant acknowledges that the Respondent is not yet actively using the Domain Name, but points out that the Domain Name cannot sensibly be used other than in relation to a gambling-related activity and that in that context confusion of internet users will be inevitable. It is to be inferred that confusing use of the Domain Name will follow.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name comprises the Complainantís registered trade/service mark, "BETFAIR", the generic gambling term Ďpokerí and the <.com> suffix. For this purpose the domain suffix may be ignored. The Panel has no hesitation in finding that the Domain is confusingly similar to the Complainantís trade/service mark.
Given the Complainantís evident reputation and goodwill associated with its trading name, betfair.com, the Panel is of the view that if the Respondent were ever to make any use of the Domain Name, the overwhelming probability is that confusion of internet users will result. It will be assumed that the owner of the Domain Name and any Internet facility to which it is connected is in some way associated with the Complainant. The fact that the Respondentís name is so similar to that of the erstwhile chief executive of Flutter.com means that a visitor to the Whois database will not necessarily be disabused.
B. Rights or Legitimate Interests
Proving that a respondent has no rights or legitimate interests in respect of a domain name is a very difficult task for any complainant. More often than not the relevant information is not readily available to the complainant. Accordingly, for the purposes of paragraph 4(a)(ii) of the Policy the burden on the complainant is to make out a prima facie case. A prima facie case having been made out, paragraph 4(c) of the Policy comes into play. Paragraph 4(c) of the Policy, which is addressed to respondents and headed "How to demonstrate your rights to and legitimate interests in the domain name in responding to a complaint" reads as follows:-
"When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
Accordingly, once a prima facie case has been made out, it is for the respondent to demonstrate that he has rights or legitimate interests in respect of the domain name.
In this case the Panel is satisfied that the Complainant has made out a prima facie case. The Complainantís enquiries have thrown up no obvious connection between the Respondent and the Domain Name other than the fact of registration. The Complainantís trade/service mark is well-known in the field of on-line gambling. By the very nature of the Domain Name the Respondent has indicated an interest in on-line gambling. The Panel is satisfied that the Respondent must have known of the Complainant and its on-line gambling service when he registered the Domain Name. Thus, he must have been aware of the potential for confusion.
The Respondent has a case to answer; yet the Respondent has failed to provide an answer. There has been no Response.
In these circumstances, and the Panel being unable to think of any reason why the Respondent could reasonably be said to have rights or legitimate interests in respect of the Domain Name, the Panel finds that the Respondent has no such rights.
C. Registered and Used in Bad Faith
Having found that the Respondent registered the Domain Name possessing no rights or legitimate interests in respect of it and knowing at the time of registration that it was confusingly similar to the trade/service mark of the Complainant, it is but a short step to conclude that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
While the Domain Name is not in active use in the sense that it is not connected to an Internet facility operated by the Respondent, that in itself does not assist the Respondent. Paragraph 4(b) of the Policy provides four examples of what may constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy, yet only one of them (4(b)(iv)) refers to actual use. Where there is no active use the Panel is left to assess the Respondentís motive at the time of registration. If the motive is abusive, the registration is capable of being abusive and notwithstanding the absence of actual use.
The Panel concludes that when the Respondent registered the Domain Name (knowing it to be a close variant of the Complainantís domain name and trading name, knowing it to be a domain name in respect of which he had no rights or legitimate interests and well aware of the potential for confusion), he registered it with the intention of using it one day for a gambling-related site and intending the confusion of internet users that will assuredly follow. If that is not the case, the Respondent has only himself to blame. He has had several opportunities to come forward with an explanation and has declined to do so.
The Panel is in no doubt that to hold a potentially confusing domain name with that intention constitutes bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <betfairpoker.com>, be transferred to the Complainant.
Dated: November 2, 2003