WIPO Domain Name Decision: D2005-0364

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hilton Group plc v. Mark Bell

Case No. D2005-0364

1. The Parties

The Complainant is Hilton Group plc, Watford, Hertfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Willoughby & Partners, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Mark Bell, Worsley, Manchester, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <ladbrooks.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2005. On April 8, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 8, 2005, Tucows 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 contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the 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 April 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response, as extended, was May 10, 2005. No Response having been received by the due date, the Center notified the Respondent of its default at 2.59 p.m. on May 12, 2005. Later, in the evening of May 12, 2005, the Respondent sent an e-mail to the Center timed at 11.36 p.m. stating that “My Domain name ‘Ladbrooks.com’ has nothing whatsoever to do with ‘Ladbrokes.com’. I have never passed this domain name off as anything to do with ‘Ladbrokes’. I have owned this name for over 4 years and have never been in contact with Ladbrokes over it.”

The Center appointed Jon Lang as the sole panelist in this matter on May 27, 2005. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a public company incorporated in the United Kingdom of Great Britain and Northern Ireland. Its betting and gaming division carries on business under the name Ladbrokes and comprises around 1,900 retail betting shops in the United Kingdom of Great Britain and Northern Ireland, Ireland and Belgium. It has invested considerably in its online betting and gaming services provided under the Ladbrokes name. By way of example, the Complainant maintains the following websites – “www.ladbrokes.com”; “www.ladbrokescasino.com” and “www.ladbrokespoker.com”. The Complainant has, through these websites, more than 600,000 registered users in at least 160 countries, generating turnover in the billions and profits in the millions, with the egaming operation supporting 13 languages in 17 different currencies. There is also an affiliate programme whereby third party websites direct customers to the Complainant’s websites and thereby earn a commission on transactions generated by visitors arriving in this manner.

By virtue of extensive use of its ‘Ladbrokes’ name, the Complainant enjoys a substantial reputation and goodwill in the ‘Ladbrokes’ name and has thereby acquired common law unregistered rights. Moreover, the Complainant is the proprietor of many trade mark registrations including the following registrations:

LADBROKES word mark in the United Kingdom of Great Britain and Northern Ireland (number 1,294,512) in class 36 in respect of betting services and gaming services;

LADBROKE/LADBROKES word mark in the United Kingdom of Great Britain and Northern Ireland (number 2,004,802) in Class 41 in respect of ‘Casino services; gaming services; bingo hall services; football pools services; club and night club services;

LADBROKE/LADBROKES word mark in the United Kingdom of Great Britain and Northern Ireland (number 2,039,353) in class 42 in respect of ‘Hotel, restaurant and bar services; providing holiday homes and chalets; nursing and rest home services; travel agency services for booking accommodation; and

LADBROKES word mark in the European Community (number E450494) in classes 36 and 42 for, inter alia, estate agency services and hotel, restaurant and bar services.

The Respondent is an individual who has registered the domain name, <ladbrookes.com> and it would appear many other domain names relating to certain aspects of gaming services similar to those offered by the Complainant.

5. Parties’ Contentions

A. Complainant

The Domain Name, <ladbrooks.com> has been registered by the Respondent and was (but no longer is) being directed to a website at “www.thewillowsonline.co.uk”. This website contains information about a business operating under the name ‘The Willows Centre’ offering cabaret, business conference and entertainment services. There is no connection between the Complainant and either this business or the Respondent. Enquiries made on behalf of the Complainant reveal that the Respondent was likely to have once worked at the ‘The Willows Centre’ (but that he no longer does). The Complainant is concerned that the Respondent may once again revert to pointing the Domain Name to a third party’s website at some point in the future. At present, the Domain Name merely points to a blank holding page with a UK2.net banner at the top (which contains a link to the “www.uk2.net” website which advertises domain name services). The Complainant’s solicitors wrote to the Respondent on December 23, 2004, setting out their client’s rights and requiring, inter alia, the transfer of the Domain Name. It was after this letter was written that the Respondent re-directed “www.ladbrooks.com” to the “www.uk2.net” holding page. Apart from perhaps this re-direction, there was no response to the letter and further attempts to communicate with the Respondent proved fruitless. For the reasons set out in its Complaint, the Complainant requests that <ladbrooks.com> be transferred to its subsidiary company, Ladbrokes International Limited, which operates the three websites of the Complainant identified above.

B. Respondent

The Respondent did not file a formal Response to the Complaint. However, in response to the Center notifying the Respondent that he was in default, and as noted earlier, the Respondent sent an e-mail to the Center, stating that “My Domain name ‘Ladbrooks.com’ has nothing whatsoever to do with ‘Ladbrokes.com’. I have never passed this domain name off as anything to do with ‘Ladbrokes’. I have owned this name for over 4 years and have never been in contact with Ladbrokes over it.” The Respondent did not provide any further information, in particular, in response to the allegations made in paragraphs 39 to 41 of the Complaint concerning his knowledge and intention at the time he acquired <ladbrooks.com>.

6. Discussion and Findings

The Complainant must show, for the purposes of Paragraph 4(a) of the Policy, that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant states that <ladbrooks.com> is aurally and phonetically identical to its LADBROKES trade mark registrations and visually confusingly similar to the Complainant’s LADBROKE/LADBROKES trade marks. It also states that the differences are unlikely to be noticed by the average consumer and that the ‘.com’ suffix should be ignored for the purposes of comparison.

The only visual difference between the Complainant’s ‘LADBROKES’ trade marks and the Domain Name, apart from the ‘.com’ suffix (which the Panel finds, in accordance with previous Policy decisions, is to be ignored for these purposes) is that there is an additional ‘o’ and no ‘e’ in the Domain Name, neither of which, from an aural or phonetic point of view, distinguish it at all from the Complainant’s ‘LADBROKES’ trade marks. When comparing the Complainant’s ‘LADBROKE’ marks and the Domain Name, there is also an additional ‘s’ in the Domain Name, and whilst not aurally or phonetically identical, there remains a high degree of similarity. Given that from an aural or phonetic point of view, the Domain Name is identical to the Complainant’s ‘LADBROKES’ trade marks and that there is a high degree of visual similarity between the Complainant’s ‘LADBROKE’ (and ‘LADBROKES’) marks and the Domain Name, the Panel finds that the Domain Name is confusingly similar to the trade marks of the Complainant. None of the differences identified is significant enough to support an argument, were one to be made, that the Domain Name is not confusingly similar to the Complainant’s marks for the purposes of Paragraph 4(a)(i) of the Policy. This finding is consistent with earlier UDRP panel decisions. For instance, in Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, it was held that the absence of one “e” in the domain name was not to be regarded as sufficient to avoid a finding that the domain name <estelauder.com> was confusingly similar to the complainant’s mark, ESTEE LAUDER. The Complainant refers to another Panel decision in support of the same argument – Yurtico Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No D2003-0707.

B. Rights or Legitimate Interests

The Complainant asserts for the purposes of Paragraph 4(a) of the Policy that the Respondent has no rights or legitimate interests in the Domain Name.

It states that the Respondent used the Domain Name to point to a website unconnected with the Complainant which advertised a business offering, inter alia, nightclub and entertainment services. The Complainant alleges that such use of the Domain Name is inherently deceptive and specifically designed to exploit the Complainant’s goodwill in its trade marks and that such use cannot therefore be ‘use in connection with a bona fide offering of goods and services’ and refers, in support of this proposition, to the decision in Van Gogh Museum Enterprises BV v. Ohannessian, WIPO Case No. D2001-0879.

The practice of an unrelated third party taking a well known trading name or trade mark and slightly changing its spelling so as to divert Internet users from their intended destination is by no means a new device and there is no shortage of decisions under the Policy where findings for the Complainant have been made in these circumstances. However, every case must be looked at on its own facts.

The Complainant points out that the Respondent is not known by the Domain Name, or authorised to use its registered ‘LADBROKE/LADBROKES’ trade marks or any other mark belonging to the Complainant (or any name(s) confusingly similar thereto). The Complainant submits that there is no credible reason for the Respondent to choose the Domain Name and that ‘Ladbroke(s)’ is not a common name.

Neither the Respondent nor the website “www.thewillowsonline.co.uk”, nor the blank holding page to which the Domain Name now points, appear to have any legitimate connection with the Complainant. It is expressly provided in Paragraph 14(b) of the Rules, that a Panel shall draw such inferences from a party’s non-compliance (with the Rules) as it considers appropriate. This Panel draws the inference, based on the lack of any Response or meaningful response to the Complaint, that the Respondent could not have said anything that would be regarded as supportive of an assertion that it did in fact have rights or legitimate interests in the Domain Name. Given that the Panel accepts that the Respondent is not authorized to use the Complainant’s ‘LADBROKE/LADBROKES’ trade marks or any other trade mark belonging to the Complainant or any name or names confusingly similar thereto, the Panel finds for the Complainant that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if found proved by the Panel, would be evidence of registration and use of a domain name in bad faith. For instance, sub-paragraph 4(b)(iv), gives the example of a registrant using a domain name to intentionally attempt ‘…. to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

The Complainant suggests that when the Respondent was considering whether or not to acquire the Domain Name, he must have been aware of the Complainant and its marks and must have acquired the Domain Name with a view to luring users to the “www.thewillowsonline.co.uk” site. In support, the Complainant relies on the following matters:

a) LADBROKE/LADBROKES are very well known marks and must be known to all those operating gaming or entertainment services;

b) The Respondent is knowledgeable about the gambling industry as he has registered other domain names relating to aspects of gambling services similar to those offered by the Complainant. These include: <121roulette.co.uk>, <121bets.co.uk>, <casino365.co.uk>, <gamblecity.co.uk>, <pokerparlour.co.uk>, <slotsonline.co.uk>, <spin2win.co.uk>, <throwthedice.co.uk>, <wheelofortune.co.uk>.

The Complainant states that the Respondent is likely to be very familiar with the Complainant’s Ladbrokes business.

The Complainant also refers to the results of internet searches carried out which strongly suggest that domain name registrations in the Respondent’s name have been made which target, (by incorporating misspellings), the ‘Wanadoo’ brand.

In all the circumstances, the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website of a third party by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the business advertised on the website, and has diverted consumers away from the Complainant’s online betting and gaming services.

There are a number of past decisions under the Policy in which findings of bad faith registration and use have been made in similar circumstances. For instance Bay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068, where bad faith was established on it being found that the Respondent took advantage of the eBay mark and profited by diverting users seeking the eBay website to the Respondent’s site. Whilst there is no clear evidence of commercial gain, in the absence of any contrary evidence from the Respondent, it is difficult to come to a conclusion other than that the Respondent did at least attempt to attract, and perhaps did attract, internet users to “www.thewillowsonline.co.uk” for commercial gain. Given the lack of any connection between the Complainant’s marks and that site, but the degree of similarity between the Complainant’s marks and the Domain Name, there must be at least a likelihood of confusion on the part of users. The Panel finds therefore that the Respondent’s diversion of Internet users to “www.thewillowsonline.co.uk” did constitute bad faith registration and use for the purposes of the Policy.

Whilst the Respondent, after the Complainant’s solicitors wrote to him, did re-direct the Domain Name to the UK2 holding page this cannot, in the circumstances, prevent a finding of bad faith use. The non-exhaustive list of circumstances which are indicative of bad faith registration and use clearly envisage inactivity or a passive holding of a domain name in certain circumstances. Thus it is not always necessary to point to any positive use of the domain name and certainly not at all times. Indeed, it cannot be a proper interpretation of the Policy to suggest that it allows a Respondent to avoid a finding of bad faith use if he simply re-directs a domain name, or perhaps ceases to use it at all, where circumstances suggest bad faith registration in the first place and perhaps prior bad faith use. This would make a nonsense of the Policy. A Respondent could simply re-direct a Domain Name at the conclusion of an administrative proceeding back to where it was pointing at the time a Complaint was made, leaving the Complainant to start the process all over again. Indeed, this is what the Complainant fears.

Finally, the Panel is supported in its finding by the Respondent’s very limited response which makes no attempt to explain why he registered <ladbrooks.com>, or answers any specific allegation of the Complainant. The Respondent’s failure to provide any explanation whatsoever for its interest in the Domain Name, despite opportunities for it to do so, and its failure to properly participate in these proceedings, must raise the presumption that there is indeed nothing he could justifiably say that would support a case that he did not register the Domain Name in bad faith or that he was not using it in bad faith.

As to the Respondent’s other registrations described by the Complainant, whilst it is indeed the case that past conduct has been taken into account by other UDRP panels (for instance, in W.W. Grainger, Inc. v. wwgranger/Administrator Domain, WIPO Case No. D2004-0762) in determining the question of bad faith, given the Panel’s findings it does not now need to decide any question by reference to the Respondent’s past pattern of behavior.

7. Decision

In the light of the above findings, the Panel concludes that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy and in accordance with Paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <ladbrooks.com> be transferred, as requested by the Complainant, to its subsidiary company, Ladbrokes International Limited.

Jon Lang
Sole Panelist

Dated: June 10, 2005