WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unibet.com (International) Ltd. v. Wade Ingram/digiGroups
Case No. D2003-0959
1. The Parties
The Complainant is Unibet.com (International) Ltd., Sliema, Malta, represented by Groth & Co KB, Sweden.
The Respondent is Wade Ingram/digiGroups, Beverly Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <unibets.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 4, 2003.
On December 4, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue.
On December 4, 2003, Wild West Domains, Inc. 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.
On December 8, 2003, the Center sent a Complaint Deficiency Notification to the Complainant.
In response to this notification by the Center that the Complaint was administratively deficient, the Complainant filed by email an amendment to the Complaint on December 8, 2003. A hardcopy of the amendment was received by the Center on December 10, 2003. The Center verified that the Complaint, together with the amendment to 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 December 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2003. The Response was filed with the Center on January 1, 2004.
On January 4, 2004, the Center sent an Acknowledgment of Receipt of Response to Complainant.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 16, 2004. 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
Complainant is the owner of the trademark UNIBET, registered in among other countries, Sweden, the United States, Italy, Australia and Canada. (See e.g. Swedish registration number 334761, registered on February 4, 2000; US registration number 2384801, registered on September 12, 2000; Italian registration number 818099, registered on June 12, 2000; Australian registration number 839243, registered on June 16, 2000, and Canadian registration number TMA580467, registered on March 12, 2003, all for bookmaking in class 41.) Complainant has also registered the trademark UNIBET under the Madrid Agreement and Protocol on October 22, 2001. (See registration numbers 703645, 736157 and 760450.)
The Domain Name <unibets.com> was registered on August 6, 2003, by Respondent.
5. Applicable rules
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name at issue is identical or confusingly similar to Complainant's trademark, and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.
Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interest to the domain name for the purpose of Paragraph 4(a)(ii) above.
6. Parties’ Contentions
Complainant is the owner of an online sport betting business, operating under the domain name <unibet.com>. Complainant has registered the trademark UNIBET for bookmaking in class 41 in various countries worldwide, amongst which Sweden, Italy, Australia, the United States and Canada.
Complainant registered the domain name <unibet.com> on December 11, 1997.
Complainant states that the disputed domain name is confusingly similar to the trademark UNIBET, save for the letter ‘s’ and the TLD-ending ".com". The addition of the letter ‘s’ to the trademark UNIBET is insufficient to distinguish the domain name from the trademark as it merely suggests the plural form of the trademark. Using the plural form of the trademark may de detrimental to the trademark due to the obvious threat of degeneration.
Respondent has no rights or legitimate interests in respect of the domain name <unibets.com>. Respondent is not the owner of any trademark similar to the domain name in question. The disputed domain name was registered almost six years after Complainant's registration of the trademark UNIBET and the commencement of the popular online sport betting services.
Complainant states that the domain name in question has been registered and used in bad faith. The domain name <unibets.com> was registered primarily for selling, renting or otherwise transferring the domain name registration to the owner of the trademark UNIBET (or to a competitor of Complainant) in order to attract financial gain or alternatively to disrupt the business of Complainant. Respondent was fully aware of Complainant’s online sport betting business and of Complainant's trademark when registering the disputed domain name in August 2003. Clear evidence of such knowledge can be found in an email sent by Respondent to Complainant on November 5, 2003, in which Respondent proposed that Complainant should give its "very best offer" for the domain name <unibets.com>.
On the domain name website "www.sendoffer.com" toward which the disputed domain name <unibets.com> is directed, numerous revenue-generating pop-up advertisements are displayed and over 800 domain names, including the disputed domain name, are for sale. On this website Respondent has categorized the disputed domain name as "entertainment, sports", which further implies knowledge of Complainant’s use of the trademark in relation to bookmaking and sports.
By having the disputed domain name directed toward a domain name dealer website, it is fair to say that Respondent is taking an unfair advantage not only of Complainant's trademark, but also of the already established online business.
Respondent states that the domain name <unibets.com> has a descriptive meaning. The domain name consists of the generic English terms ‘uni’ and ‘bets’. When registering the domain name in question Respondent had no knowledge of Complainant’s trademark.
Respondent owns no trademark on <unibets.com>. Respondent plans to establish a website related to gambling under the domain name <unibets.com>. This website will in no way compete directly with Complainant. It will not offer an online betting service. It will act as a robust gambling portal allowing gamblers worldwide to interact with one another and seek out in-depth betting information and resources.
Respondent notes that there are several registered domain names which, when compared to Complainant’s arguments, would also seem to be confusingly similar to <unibet.com>. Complainant has not filed complaints against the holders of these domains.
Respondent states that his intentions to establish a website related to gambling under <unibets.com> creates a legitimate interest in this domain name.
Respondent contests that he owns close to 800 domains. He owns 246 domains, all of these purchased on the basis of business plans developed by Respondent. Respondent states that he acquires several domains for one business plan, but that he can only use one. The other domains are then sold, usually to customers that have sent offers to his website "www.sendoffer.com".
Respondent acknowledges that he has offered the domain name in question for sale to Complainant. Respondent regrets sending the email in question to Complainant and realizes that his email can easily be misinterpreted. Respondent states that he sent the email in question out of desperation, because he had (temporary) financial problems: "I was simply trying to make a quick buck at his expense." Because of his financial troubles, it seemed at that time only logical to Respondent to try to sell off some of his internet assets. Respondent contacted everyone that had a similar domain to domain names owned by him.
Respondent did not use or register the domain name <unibets.com> in bad faith. The domain name was registered in good faith.
7. Discussion and Findings
Complainant must provide evidence of all elements of Paragraph 4(a) of the Policy. Since a decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision.
A. Trademark Rights
Complainant has provided sufficient evidence of its rights to the trademark UNIBET.
The Panel does not share the opinion of Respondent that the designation ‘unibet’ is a descriptive or generic term and that Complainant therefore cannot have trademark rights in the designation UNIBET. The word 'unibet' does not appear in the Oxford Dictionary of the English Language and Respondent has not convincingly argued why unibet would be descriptive of the services he allegedly intends to offer.
B. Identical or Confusingly Similar
The panel finds that the domain name at issue is confusingly similar to Complainant’s trademark UNIBET. The domain name <unibets.com> incorporates the trademark UNIBET with the addition of the letter ‘s’. It is clear that the trademark UNIBET is the most prominent element in this combination, and this may cause the public to think that this domain name is somehow connected to the UNIBET trademark. The ability of the suffix ‘s’to distinguish the domain name from Complainant’s trademark is limited. The Panel finds that Respondent does not create a new or different mark in adding the suffix ‘s’ and that this addition does not alter the likelihood of confusion with Complainant’s trademark.
C. Rights or legitimate interests
Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:
"(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."
Respondent has acknowledged that he has not been commonly known by the domain name at issue or has acquired trademark or service mark rights in <unibets.com>.
Respondent has not provided any evidence to support its statement that before any notice of the dispute was sent to Respondent, it had used or made demonstrable preparations to use the domain name in connection with the bona fide offering of goods or services.
Respondent states that he only registers generic or descriptive domain names for his business ideas. Because it takes time to develop these ideas, he offers his domain names for sale at his website "www.sendoffer.com", while further developing his business ideas. The Panel is of the opinion that in principle, the registration of descriptive or generic terms as domain names and offering those domain names for sale may constitute use of the domain name in connection with a bona fide offering of goods and services (i.e. the sale of the domain name itself). (See Allocation Network GmbH v. Steve Gregory <allocation.com>, WIPO Case No. D2000-0016). In this case however, as pointed out under 7A above, the word ‘unibets’ cannot be considered a descriptive or a generic term. Therefore registering and offering the domain name <unibets.com> for sale cannot be considered as use of the domain name in connection with a bona fide offering of goods and services.
Based on the above, the Panel finds that Respondent has no rights or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy states that circumstances indicating that a Respondent has registered a domain name primarily for the purpose of selling or renting it to a complainant for a monetary consideration in excess of respondent’s out-of-pocket expenses directly related to the domain name shall be evidence of registration and use of a domain name in bad faith.
The Panel finds that these circumstances are present here. Respondent has offered the domain name at issue for sale to Complainant. Respondent acknowledged in his response that by offering this domain name for sale, he was "trying to make a quick buck at his expense". In the email in which he offered the domain name for sale, Respondent made clear that he was only interested in a selling price significantly in excess of his out-of-pocket registration expenses: "Just make sure it is your very best offer, because I am not really interested in negotiating the sale of the domain." Furthermore, Respondent has acknowledged that he offered the domain name at issue for sale via his website "www.sendoffer.com". At this website a minimum offer of USD100 is requested for the domain name <unibets.com>, which amount is in excess of the out-of-pocket registration costs.
The Panel, therefore, concludes that there is sufficient evidence that Respondent’s registration and use of the domain name has been made in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel has decided that Complainant has provided the required evidence for the requested order transferring the domain name from Respondent to Complainant. The Panel therefore orders that the domain name <unibets.com> be transferred to the Complainant.
Wolter Wefers Bettink
Dated: January 30, 2004