WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited
Case No. D2004-0753
1. The Parties
The First Complainant is Cassava Enterprises Limited, of St John’s, Antigua and Barbuda. The Second Complainant is Cassava Enterprises (Gibraltar) Limited, of Europort, Gibraltar, United Kingdom of Great Britain and Northern Ireland. The Complainants are represented by Bird & Bird, Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Victor Chandler International Limited, Town Range, Gibraltar, United Kingdom of Great Britain and Northern Ireland, represented by Tarlo Lyons, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <victor888.com> (the “domain name”) is registered with Tucows (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2004. On September 17, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On September 17, 2004, 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 and technical contacts. 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 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2004. The Response was filed with the Center on October 12, 2004.
The Center appointed Warwick Smith, Dawn Osborne and David E. Sorkin as panelists in this matter on October 28, 2004. The Panel finds that it was properly constituted. The Panel has submitted Statements of Acceptance and Declarations of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On October 28, 2004, the Complainants filed an application for leave to file a Supplemental Filing, together with the proposed Supplemental Filing itself. The Respondent opposed this application, while indicating that if the Panel decided to admit the Complainants’ Supplemental Filing, the Respondent would wish to file a reply.
In the Panel’s view, there is no sufficient basis for it to consider the Supplemental Filing. The application for leave is accordingly declined. The reasons for that decision are as follows.
First, no party is entitled to file supplementary submissions or submit further evidence – the Panel may request further statements under Rule 12 of the Rules, but that is purely a discretionary matter for the Panel.
The principles on which that discretion should be exercised have been discussed in numerous WIPO UDRP decisions. Generally, supplementary material should only be received in exceptional circumstances such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission. If further material is to be admitted, it should be limited to minimize prejudice to the other party or to the procedure, and the reasons why the Panel is invited to consider the further information should, so far as practicable, be set out separately from the material itself. (See The EW Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, and the cases cited at page 2 of that decision.)
In this case, there are no exceptional circumstances. The matters which the Complainants seek to address in the proposed Supplementary Filing all appear to be matters which either could have been foreseen and addressed in the Complaint, or which do not appear to add anything of significance to the matters the Panel is required to determine.
4. Factual Background
The Complainants are part of a group which operates on-line gaming sites. In January 2001, the First Complainant registered the domain name <888.com>. Shortly afterwards, it established a website at that domain name (the “Complainants’ website”). The Complainants’ website was transferred to the Second Complainant during July 2003, and since then the Complainants’ website has been operated solely by the Second Complainant. The Complainants’ website is described by the Complainants as being the world’s “leading on-line casino”, and the Complainants have put considerable resources into promoting the Complainants’ website. The Complainants also promote a number of other gaming sites in association with the Complainants’ website.
The Complainants’ Trademarks
The First Complainant is the registered proprietor of the United Kingdom trademark 888.COM (the “Trademark”), which was registered with effect from June 4, 2003, in international classes 9, 16, 38, 41, and 42. The class 41 services for which the Trademark is registered include:
“Provision of information relating to gaming services accessible via a global computer network; provision of information on-line from a computer database or from the internet in relation to gaming, amusement and entertainment services.”
The First Complainant has also applied to register the Trademark as a Community Trade Mark, in the same international classes. This application has been accepted by the Office for Harmonization in the Internal Market, and has not been opposed. The opposition period expired on September 14, 2004, two days before the Complaint was filed in this proceeding.
The Complainants’ Website
A page downloaded from the Complainants’ website on August 27, 2004, is headed
The World’s No. 1 Online Casino & Poker Room”
The Complainants’ website offers a variety of casino games, including Blackjack (“21”), Roulette, Craps, and various forms of poker. The Complainants’ associated websites (eg the websites at <888casino.com> and <888casinoonnet.com>), offer very similar gaming activities. A web page from the website at <888.uk.com> (also downloaded on August 27, 2004) describes the online casino at <888casinoonnet.com> as having been launched in 1996, and reports over 7 million customers since the launch.
The Complainants have produced evidence of various advertising and marketing campaigns undertaken by the Second Complainant in the United Kingdom within the last two years. The Complainants’ website is regularly promoted at rugby and cricket grounds around the UK, and the Complainants have produced examples of advertisements appearing on such places as the sides of English double-decker buses and stretched limousines. At least some of these promotions appear to have also featured other trademarks owned by the Complainants. Overall, the Complainants say that they spend many millions of pounds in the United Kingdom promoting the Complainants’ website, and they spend tens of millions of United States dollars promoting the Complainants’ website worldwide. The United Kingdom represents the most important client base for the Second Complainant, and a large number of its ten million registered users are United Kingdom residents.
The Second Complainant also extensively promotes the Complainants’ website through online advertising campaigns, which are executed in conjunction with thousands of other Internet sites.
The Respondent and the Domain Name
The Respondent is a member of Victor Chandler group, which is a substantial bookmaking group founded in 1946, by Victor Chandler, the grandfather of the present Chairman of the Respondent (also called Victor Chandler). The Respondent’s group is a major international operation, with over 300 employees and an annual turnover in excess of GBP500 million. The group started trading in Hong Kong in the 1990s, with a view to penetrating the substantial Chinese gambling market. The Respondent says that it was one of the first international bookmakers to provide a service tailored to Chinese clients, with Chinese-speaking staff, Asian handicap prices, Asian market betting, and a willingness to accept very large stakes. The group initially provided its betting service by telephone, but introduced Internet betting in the Far East in 2000, using the domain name <victorchandler.com>. The domain name <victor.com> was substituted from no later than 2001.
The Respondent introduced a website at <www.victorsports.com> in 2001, as a sister site providing betting information for people in Hong Kong. From 2002, the Respondent also provided sports editorial for magazines and newspapers in Hong Kong, mainland China and Singapore, with articles signed “victor.com”. The Respondent says that English and European football is very popular with the Chinese people, and millions of dollars in bets are placed on (English and European) matches every week in the Far East.
The Respondent operates a website at “victorchandler.com” (the “Chandler website”). Pages downloaded from the Chandler website on August 27, 2004, show that the Chandler website is predominantly concerned with sports betting. However, the Chandler website does also offer casino games: a page from the Chandler website headed “Victor Casino” says:
“Welcome to Victor Casino!
Here you’ll find all your favourite games, with reliable, state-of-the-art casino software incorporating many unique features. Play with a name you can trust!”
The domain name was registered on February 5, 2004, and there is also a website established at the domain name (the “Respondent’s website”). The Respondent’s website appears very similar to the Chandler website, but offers the site visitor a choice between the English and Chinese languages (a wider choice is available to visitors to the Chandler website).
The Use of “888”
The Respondent says that, to Chinese people, “888” is a lucky number. In support of that proposition the Respondent has produced an article entitled “Feng Shui and Chinese Numerology”, downloaded on October 11, 2004, from a website at “www.feng-shui-architects.com”. That article refers to the number 8 as standing “for potential and for growth: a change from bad luck to good luck. Eight also stands for the 8 trigrams (Bagua) – an auspicious symbol of transformation. …In business, where the aim is to grow and make a profit, the three digit numbers like 328 and 888 are very popular with the Chinese because they sound the same as “business will easily prosper” and “thrice prosperous” [in Chinese]. Generally three digit numbers are preferred over two or four digits because 3 is a yang number and it stands for “liveliness” or “san” in Cantonese.
Other material produced by the Respondent makes it clear that “888” is indeed regarded as a lucky number by many Chinese people. A Media Release issued by the Hong Kong Convention and Exhibition Center in October 2000, opened with the words: “‘888’ is a very lucky number in Chinese meaning making a huge fortune! The Hong Kong Convention and Exhibition Centre (HKCEC) today celebrates the 888th exhibition since its opening in 1988 with the lucky winner —— the 9th Hong Kong International Toys and Gifts show ….”
The Respondent has also referred to a series of advertisements run by the Hong Kong Shanghai Banking Corporation, featuring the value of the local knowledge HKSBC claims to have in its various markets. One such advertisement produced by the Respondent features numbers which are said to be unlucky in Japan and the United Kingdom (4 and 13 respectively), and a lucky number in China – 888.
The Respondent’s Choice of the Domain Name
The Respondent has included as an annexure to its Response, an affidavit sworn by Mr. Alan Randall, the Group Marketing Director for the Respondent. Mr. Randall deposes to the truth of the facts and matters set out in the Response, and goes on to explain the reason the Respondent chose the domain name. Mr. Randall says that it was his idea to build on the Respondent’s victor.com brand, by using the name “Victor888”. He says that he proposed that name to the Respondent’s other directors, as a way of reinforcing the victor.com brand ahead of the Euro 2004 Football Championship. He says in the affidavit that the proposal and decision to include “888” in the site address were made for reasons which had no connection with the Complainants.
In his affidavit, Mr. Randall swears that the Respondent has run a successful “get an incentive/bonus of $888 HK” promotion in Hong Kong since 1999. He says that the promotion worked by offering customers a HK $888 bonus (by credit to their betting account), by reference to their meeting certain criteria related to activity on their accounts. He says that the use of “victor 888” was intended to build on that promotion, and support and emphasise the promotional message.
Mr. Randall says that the Respondent’s website is tailored to the Far East, and primarily to Chinese customers. It contains a much shorter list of sports than the basic list at the Chandler website – in the Respondent’s website, the Respondent has elected to concentrate on the sports which are most popular with the Far Eastern market. Those sports include football in general, and the English premier league game in particular.
Mr. Randall deposes that the Respondent’s website is almost exclusively accessed from the Far East, and that, as at October 7, 2004, 88.4% of the customers visiting the Respondent’s website were from the Far East and used the Chinese language. A further 10.5% of customers, also from the Far East, used the English language, and less than 1% of customers (all using the Chinese language) came from outside the Far East.
Mr. Randall acknowledges that he was aware that the Complainants were using “888.com” when he proposed that the Respondent use “888” in conjunction with its mark “Victor”. However, he says that he was also aware of a major gaming site in the Far East at “www.drHo888.com”. Mr. Randall summarized the matter by saying that:
“We introduced the use of the name Victor 888 solely for the purposes of pursuing our legitimate business interests by building on what we already had and a renowned good luck symbol.”
Mr. Randall refers to his understanding that the Complainants do not offer betting (they being exclusively in the gaming market), whereas the Respondent’s website is focused primarily on the betting market.
The Respondent’s website became operational in 2004, and was promoted in June and July2004, on the Chinese website “G-win.com”, and in the Chinese language “Soccer Supreme Weekly” magazine. The Respondent has produced extracts from this magazine, and while they are in Chinese, it is clear enough that the magazine was concerned with the sport of football and prominently featured, in English, the expression “Victor888.com”. The extracts also prominently featured “$888”, surrounded by Chinese text, and a yellow star device followed by the (English) expression “Pay 888”.
Correspondence between the Parties
The Complainants’ solicitors wrote to the Respondent outlining their clients’ complaint on August 5, 2004. In their letter, they referred to the Complainants’ website and to the Trademark. They alleged trademark infringement and passing off by the Respondent, asserting that the Respondent’s website appears to be directed towards the UK market, and is an online gaming site. They also alleged bad faith registration of the domain name under the Policy, and sought an assignment of the domain name to the Second Complainant and an undertaking not to use “888” in relation to gaming in future.
The Respondent’s solicitors provided a substantive reply on August 16, 2004. They asserted that the Respondent’s website is directed at the Far East market, and described “888” as a representation of an oriental belief that 8 is a lucky number. The Respondent’s solicitors pointed to the difference between the domain name and the Trademark, and asserted that the Respondent had built up substantial goodwill and reputation in “Victor”. They denied any likelihood of confusion on the part of the public in the United Kingdom and denied that there was any false representation of a connection between the Respondent’s website and the Complainants’ business. The Respondent’s solicitors generally denied any bad faith, and asserted that their client had no intention of seeking to attract, for commercial gain, users intending to visit the Complainants’ website.
5. Parties’ Contentions
Domain Name Confusingly Similar to Trademark or Service Mark in which Complainants have rights
1. The First Complainant has rights in the Trademark.
2. The First and Second Complainants jointly have common law rights in the Trademark in association with their online gaming operations, because of the substantial reputation and goodwill they have in the Trademark.
3. The domain name is confusingly similar to the Trademark. The domain name includes the Trademark in its entirety, and, because the Trademark has become distinctive of the Complainants in the field of online gaming, its use in any domain name used in relation to gaming or similar services will confuse consumers. The use of the word “Victor” in the domain name does not avoid the confusing similarity. “Victor” means “conqueror” or “winner”, and those who are familiar with the Complainants’ website may think that the domain name will point to a website for those who have been victorious in their previous online gambling exploits at the Complainants’ website. The fact that the Complainants operate similar websites under other domain names featuring “888”, supports that possibility. Alternatively, people will assume that the addition of “victor” means nothing, and will ignore it, leaving the focus entirely on that part of the domain name which is identical to the Trademark. Other possibilities include the possibility that people will assume that “Victor” is someone who is involved in the Complainants’ website, and that people who know of Victor Chandler will assume that Victor Chandler owns the Complainants’ website, or is somehow commercially associated with it.
Respondent has no Rights or Legitimate Interests in respect of the Domain Name
1. While Victor is the first name of Victor Chandler, the Respondent is unlikely to be referred to as “Victor”, and certainly will not be commonly known as “Victor 888”. The Respondent does not commonly market itself or its services through the use of the solitary name “Victor”.
2. The Respondent has apparently not used “888” anywhere on the Respondent’s website. Therefore, the Respondent has only recently decided to use a domain name incorporating “888”, and the domain name does not relate to anything previously used by the Respondent.
3. While the Respondent’s solicitors alleged the existence of an oriental belief that 8 is a lucky number, they gave no explanation why “888”, rather than just “8”, had been chosen.
4. The claim by the Respondent’s solicitors that the Respondent’s website is directed towards the Far East market, is weak. The Respondent’s website is the same as the Chandler website, with fewer language options. The Complainants’ website is not solely directed towards the United Kingdom – that is illustrated by the language options at the top of the home page at the Complainants’ website. Extensive use and advertising of the Complainants’ website across numerous jurisdictions has given rise to an international reputation in the Trademark.
5. The Respondent’s website is very much targeted towards the United Kingdom. First, the home page defaults to English, even when the home page is opened by someone in the Far East (an exercise undertaken by Chuan Chuan Lai of the Hong Kong office of the Complainants’ solicitors).
6. In order to test whether the Respondent’s website was in fact set up not to accept United Kingdom registrants, the Complainants’ representative logged on to the Respondent’s website on August 16, 2004, and applied to open an account. The Complainants have produced the various pages from the Respondent’s website which their representative encountered when she undertook this exercise. The first page shows the “Open Account” screen, with provision for completion of name, gender, date of birth, etc, and post/zip code. To the right of the postcode box, there was the following text: “Postcode is mandatory for United Kingdom addresses only”. A site which was not directed at the United Kingdom would not have included such a direction. Beneath the postcode box was a country box, with a drop-down menu for selection of the user’s country. The United Kingdom was the first country on that menu, with other countries following in alphabetical order – another indication that the operator of the site expected the user to be from the United Kingdom. A similar drop-down box for currency selection, showed pounds sterling at the top of the box, followed by United States dollars. Again, unlikely for a site specially directed at the Far East market. For the foregoing reasons, the claim that the Respondent’s website is directed towards the Far East market, and not the United Kingdom, cannot be substantiated.
7. The claim that the Respondent chose “888” because 8 is an oriental lucky number, does not justify using a domain name which is confusingly similar to the Trademark. In any event a proper consideration of the Respondent’s website shows that it is targeted towards United Kingdom users, or at the very least, does not exclude them.
Domain Name registered and being used in Bad Faith
1. The Respondent is a competitor of the Complainants and was aware of the Complainants and their use of the Trademark.
2. Given the fame and success of the Trademark, it is difficult to envisage how the domain name could be registered and used by a competitor of the Complainants without knowledge that consumers would be likely to consider it to be associated in some way with the Trademark.
3. The Respondent’s response when approached by the Complainants suggests that it means to exploit the domain name. The use of the domain name in relation to online gaming can only lead to confusion, divert customers, and dilute the Complainants’ goodwill in “888”.
Domain Name Confusingly Similar to Trademark or Service Mark in which Complainants have rights
1. The Community Trademark application is not registered, and should therefore be disregarded.
2. The class 41 services in respect of which the trademark is registered, are essentially limited to online Internet information relating to gaming. “Gaming” and “betting” are two different things, and the Trademark does not cover betting. The Respondent’s website is primarily a site for betting (sports betting in particular), whereas all of the Complainants’ websites relate solely to gaming.
3. The Complainants’ various claims to a substantial reputation and goodwill in the Trademark are insufficiently substantiated in the Complaint, and any reputation or goodwill would not in any event relate to betting.
4. The Complainants’ own material produced with their Complaint eliminates any alleged confusing similarity between the domain name and the trademark. The Complainants have promoted the Complainants’ website as “Casino On Net www.888.com”, which is quite different from the domain name. It is “Casino On Net” which differentiates the Complainants from other users of “888.com”, such as DrHo888.com. Accordingly, any common law rights the Complainant has acquired are in the full name “CasinoOnNet888.com” and not in “888.com” by itself.
5. The Complainants do not state how they believe customers have been or will be confused. No evidence of actual confusion has been provided, and there are in fact no possibilities for confusion.
6. The Respondent has been using the word “Victor” on its own in a domain name operated by it <victor.com>, since at least early 2001. The domain name <victorchandler.com> was registered by the Respondent in August 1997, and used from 1998 at latest.
7. The Respondent’s website is targeted towards and advertised in the Far East market – it is not advertised in the United Kingdom market. The fact that it is accessible from almost any geographical location via the Internet does not mean that it is targeting that geographical location.
8. The Complainants cannot claim any uniqueness or exclusivity of “888”, whether in relation to the specific activity of online gaming, or generally. “888” is a symbol of good luck, notably with the Chinese.
9. Both “888” and “Victor” are in common use. Therefore, even small differences should be regarded as sufficient to avoid confusion (citing the House of Lords decision in Office Cleaning Services v. Westminster Office Cleaning Association, 63 RPC 39).
10. The Complainants’ various arguments supporting the contention of confusing similarity, are either fanciful, unsubstantiated, speculative, or unfounded. The presence of “Victor” in the domain name, is a major difference. It is the first, greater, and more significant part of the name, and it is in itself a distinctive name in the field of gambling, where the Respondent has already used and promoted the name “victor.com” exclusively for a number of years. The Complainants’ use of “Casino On Net 888.com, when compared with another website operator’s use of DrHo888.com, underlines the natural tendency to look to the first part of the name to distinguish one operator from another.
11. The branding and general “character” of the Respondent’s website, are very different from those seen at the Complainants’ website.
12. Google searches produced by the Complainants do not assist the Complainants’ argument of confusing similarity. A Google search on “888” did not disclose the domain name in the first 30 results (out of about 13,000,000), and a Google search on “888” with “Gambling” did not show the domain name in its first 50 results (out of 302,000). Each of those Google searches showed the Complainants’ website as the first result. A Google search on “888.com” showed the Complainants’ website as the only immediately identifiable website on page 1 of the search report. The second page showed that a search of “888” with “com”, brought up about 5.5 million results. The second and subsequent pages of the report, comprising the first 100 entries, did not include the domain name. So the practicalities of Internet use do not support the claim of confusing similarity – when undertaking a Google search on “888”, or “888.com”, the domain name does not appear.
Respondent’s Rights or Legitimate Interests in respect of the Domain Name
1. The Respondent has rights or legitimate interests in respect of the domain name by virtue of:
(a) its use of the domain name itself for a website since 2004, and its prior preparations to use the domain name; and
(b) its prior use of its domain name victor.com since at least 2001, together with its $888 promotions since at least 2000, which were all in connection with a bona fide offering of services before notice of a dispute was given by the Complainants on August 5, 2004. The Respondent had no notice of any dispute prior to that date, and had no reason to expect one.
2. There is a longstanding belief in “888” as a representation of good luck in the Far East, and the Respondent is entitled to use it. There is no uniqueness or exclusivity claimable by the Complainants in relation to the use of “888” either in relation to gambling or at all.
3. The Respondent’s website is not targeted towards the Complainants’ primary United Kingdom market. The Respondent operates a significant business, the major part of which relates to betting, a service the Complainants do not provide. The Respondent does not advertise either the Respondent’s website or the Chandler website in the United Kingdom. Under section 9 of the Betting, Gaming and Duties Act 1981 (UK), it would be illegal for it to do so. The home page of the Respondent’s website will default to English on an English-language browser, but to Chinese on a Chinese-language browser.
4. The domain name was chosen to build upon the Respondent’s previously established market in the Far East, and to build on the Respondent’s prior use of, and established reputation in, Victor.com.
5. The letter from the Complainants’ solicitors specifically related to alleged trademark infringement and passing off, and was dealt with accordingly.
6. In response to the Complainants’ allegations that, because aspects of the customer registration process at the Respondent’s website use the English language and appear to give “priority” to the United Kingdom as a country, (and to pounds sterling as the user’s currency), the Respondent’s website must be targeted at the UK market: the Respondent’s IT infrastructure supporting its websites is so configured that the account-opening details will appear in identical or similar form on all the Respondent’s various websites, regardless of their target market. Postcode details for the United Kingdom are mandatory simply because they enable anti-fraud and anti-under age gambling checks to be carried out on United Kingdom-based users. None of the matters relied upon by the Complainants demonstrates that the Respondent’s website is targeted at United Kingdom users.
Domain Name registered and being used in Bad Faith
1. The language of the Complaint (“it is difficult to envisage …”), is not a specific allegation of registration and use in bad faith.
2. Mr. Randall’s affidavit confirms that, while the Respondent knew of the Complainants’ use of the number “888”, there was no intention to disrupt the Complainants’ business or create a likelihood of confusion with the Complainants. The domain name was adopted on account of its attraction to Chinese punters and its association with the Respondent’s popular $888 promotions which have been run since at least 2000. There is no basis in the evidence for impugning Mr. Randall’s statement. His sworn statement could only be rejected by an appropriate Court after seeing and hearing the witness (citing KCTS Television Inc. v. Get-on-the-Web Limited, WIPO Case No. D2001-0154 <kcts.com>).
3. The purpose of the Policy is to prevent “egregious examples of deliberate violation of well-established rights” (paragraph 160 of the WIPO Report on which the Policy is based). It is not the purpose of the Policy to determine trademark or passing off disputes arising out of bona fide business development.
4. The Complainants’ allegations do not come within any of the examples of bad faith registration and use set out at paragraph 4(b) of the Policy. There is no suggestion that the domain name was registered for the purpose of selling it to the Complainants, or to prevent them from registering it themselves. Nor is there any evidence that the domain name was registered primarily for the purpose of disrupting the business of a competitor. As for the example at paragraph 4(b)(iv) of the Policy, the Complainants have failed to show that the Respondent should have appreciated that there was a risk of confusion, and the evidence falls far short of establishing the intention required in paragraph 4(b)(iv) cases.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants carry the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [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) Where [the respondent is] making a legitimate noncommercial 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.
Paragraph 15(a) of the Rules requires 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”.
A. Identical or Confusingly Similar
The Complainants have proved that the Trademark “888.COM” is registered in the United Kingdom. The First Complainant has therefore established that it has a right in a trademark or service mark, for the purposes of paragraph 4(a)(i) of the Policy. While there was a lot of evidence directed to alleged common law rights in the Trademark, derived from the Complainants’ use of the Trademark, the Panel need not be concerned with that evidence, at least in deciding this part of the Complaint. Registration of the Trademark in the United Kingdom is sufficient, and the only issue is whether the domain name is confusingly similar to the Trademark.
The domain name includes the Trademark in its entirety. Numerous WIPO Panels have found that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy – see for example Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, and the decisions referred to at pages 4 to 5 of the Decision in that case.
Also, a number of previous WIPO UDRP decisions have made findings of confusing similarity in cases where the at-issue domain name has consisted of two trademarks or service marks, only one of which is owned by the complainant (see for example Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142; and Deutche Telekom A.G. v. Britt Cordon, WIPO Case No. D2004-0487). Such cases may raise questions as to the appropriate remedy (transfer or cancellation) where other aspects of the Complaint are proved, but for the present it is enough to note the general proposition that a finding of confusing similarity may well be appropriate where a respondent has created the at-issue domain name by adding another trademark or service mark to the complainant’s mark.
Those general propositions only take the matter so far. Each case is different, and the Panel still needs to consider whether there is sufficient visual, aural, or conceptual similarity between the domain name and the Trademark. One must consider the distinctive and dominant components of the mark and the domain name which are being compared, and decide whether the overall impression favours a finding of confusing similarity. (See for example, Thomas Cook Holdings Limited v. Sezgin Aydin, WIPO Case No. D2000-0676, and the reference to the judgment in the European Court of Justice in Sabel B.V. v. Puma A.G. (Case C-251/95)).
The Complainant’s case under this head is not as strong as the complainants’ cases in a number of WIPO UDRP decisions where the complainant’s mark has been entirely incorporated into the at-issue domain name. In this case, the Trademark does not seem to the Panel to be a strong mark. The “.com” part of the Trademark is clearly generic, and 888 is just a number. The Respondent has produced substantial evidence of other Internet usage of “888”. Looking at the Google searches produced in evidence, many of the “888” references appear to be references to the 1-888 toll-free number in the United States of America, but some of the references appear to relate to gambling or similar websites (eg the DrHo888.com website, and the website at “www.roulette-888.com”, a website providing online participation in live roulette games played in casinos in Bulgaria – see annex 8 to the Response. A Chinese language website at “www.stock888.net” (annex 9 to the Response) also appears to show “888” used in a sense unrelated to the USA telephone code).
On balance however, the Panel is of the view that the similarity between the domain name and the Trademark is sufficient to meet the “confusing similarity” test. The following factors lead the Panel to that view:
(i) The complete incorporation of the Trademark in the domain name, favours a finding of confusing similarity. In such circumstances, there is inevitably a degree of visual, aural, and conceptual similarity between the domain name and the Trademark.
(ii) The word “Victor” is not a particularly distinctive “add-on” to the Trademark. It is a common word in the English language, and it is also a reasonably common English name. Again, those factors favour a finding of confusing similarity.
(iii) It appears that both the Complainants and the Respondent are well-established and well-known in their respective segments of the online gambling industry. That fact suggests that some internet users who were familiar with both parties, would be likely to assume that the Respondent was somehow associated with the Complainants in running a website at the domain name. Again, a factor pointing to a finding of confusing similarity.
For the foregoing reasons, the Panel finds that the domain name is confusingly similar to the Trademark.
B. Rights or Legitimate Interests
Although the Policy requires that the Complainants must prove each of the elements in paragraph 4(a), it is often observed that difficulties are posed for a complainant in proving a negative, namely that the Respondent does not enjoy some right or legitimate interest in the domain at issue. The wording of paragraph 4(c) of the Policy appears to envisage the respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, a finding of “no legitimate right or interest” should normally follow if the respondent does not advance any plausible “right or legitimate interest” case. If the respondent does put forward such a case, the Panel decides the issue on the basis of all of the evidence, with the complainant carrying the ultimate burden of proof. The Panel agrees with that general approach.
In this case, the Complainants have shown confusing similarity between the Trademark and the domain name, and they have not authorized the Respondent’s use of the domain name. The question then is whether the Respondent has demonstrated that it has some right or legitimate interest in the domain name.
The Panel is satisfied that the Respondent has proved that it has a legitimate interest in the domain name. The Panel has reached that view for the following reasons:
(i) The Respondent has a clear legitimate interest in the use of the word “Victor”. Victor is part of the Respondent’s name, and it is the name of the present Chairman of the Respondent.
(ii) The Respondent has clearly proved that “888” is regarded by many Chinese as a lucky number (refer to the article Feng Shui and Chinese Numerology, and the Media Release issued by the Hong Kong Convention and Exhibition Centre). While the parties’ positions differ markedly on the extent to which the Respondent’s website is directed at the United Kingdom market, it is abundantly clear that a large part of the market served by the Respondent’s website consists of Chinese speakers in either Hong Kong or mainland China. The Respondent had an obvious interest in using as part of a domain name, a number believed by many of its customers to be associated with good fortune.
(iii) The Respondent’s group marketing director has sworn an affidavit describing an $888 HK incentive/bonus promotion, which the Respondent has run in Hong Kong since 1999. The Chinese magazine “Soccer Supreme Weekly”, which was used to promote the Respondent’s website when it was launched, also appears to feature an $888 promotion: “$888” appears prominently on the extract from that magazine produced by the Respondent. It therefore appears that the Respondent had not only a general interest in “888”, but also a specific commercial interest in that number, having used it commercially from a time before the Trademark was registered and before the Complainants launched the Complainants’ website.
(iv) The first notice the Respondent had of the present dispute, came in the form of the letter from the Complainants’ solicitors dated August 5, 2004. It is apparent from that letter that the Respondent was already then operating the Respondent’s website. The Respondent had therefore been using the domain name “in connection with an offering of services” before it had notice of the dispute. Provided that use and the offering of the services were bona fide, the Respondent has a complete answer to the Complaint under paragraph 4(c)(i) of the Policy.
(v) Is there sufficient evidence for the Panel to find that the Respondent’s use of the domain name before August 5, 2004, was not bona fide? In the Panel’s view, the answer to that question is “no”. First, there is a sworn affidavit from the Respondent’s group’s marketing director, which explains the Respondent’s reasons for choosing the domain name (in short, building on the established reputation of Victor.com, exploiting the general association of the number 888 with good luck in the minds of many of the Respondent’s customers, and building on the earlier $888 promotions). Secondly, Mr. Randall’s affidavit states categorically that the proposal and decision to include “888” in the site address were made for reasons which had no connection with the Complainants. He denies that there was any intention to use the domain name to create confusion, or to lead people into believing that the Respondent had any connection with the Complainants, or unfairly to obtain a competitive advantage over the Complainants or disrupt their business. The Panel is not in a position to reject as false the Respondent’s explanation for choosing the domain name, especially in circumstances where that explanation (and the Respondent’s denials of any mala fide intent) are plausible and are supported on oath.
(vi) The Complainants put a great deal of emphasis on an argument that the Respondent’s website is targeted at United Kingdom users, who form a substantial part of the Complainants’ customer base. In support, the Complainants refer to the English language option on the Respondent’s website, and they rely on a number of factors which are said to indicate that English is the language used by most customers. In the Panel’s view, the evidence falls short of establishing that the Respondent’s website is targeted at the United Kingdom market. In his affidavit, Mr. Randall has deposed that approximately 99% of the customers using the Respondent’s website are based in the Far East – indeed, he says that the only customers outside of the Far East are users of the Chinese language. The Respondent explains in the Response that the IT infrastructure supporting its various websites is configured so that account-opening details will appear in identical or similar form on all its various websites, regardless of their target market. Mr. Randall has confirmed in his affidavit that the contents of the Response are true. It also appears that, while the launch of the Respondent’s website was promoted in at least one Chinese language magazine and on one Chinese language website, there has been no similar off-line advertising in the United Kingdom. In those circumstances, there is insufficient evidence for the Panel to conclude that the Respondent’s website was launched with the intention of targeting the Complainants’ United Kingdom customers, or that the Respondent intended to divert internet users (actual or potential) from one of the Complainants’ websites to the Respondent’s website. It is true that the Respondent’s website is accessible by United Kingdom-resident English speakers, but the weight of evidence suggests that the Respondent’s target market is in Hong Kong and China.
The defence under paragraph 4(c)(i) of the Policy is therefore made out, and the Complaint must be denied.
C. Registered and Used in Bad Faith
While it is not strictly necessary for the Panel to address this part of the Complaint, the Panel is also of the view that there is insufficient evidence to support a finding of bad faith registration and use. The Panel has come to that view for substantially the same reasons as are set out above under the “Rights or Legitimate Interests” heading. In addition, none of the specific examples of bad faith registration and use set out at paragraph 4(b) of the Policy have been proved, and the Complainants have not advanced any other basis on which the Panel might have found bad faith registration and use.
For all the foregoing reasons, the Complaint is denied.
David E. Sorkin
Dated: November 11, 2004