WIPO Arbitration and Mediation Center
Ladbrokes plc, Ladbrokes eGaming Limited, Ladbrokes International Limited, Ladbrokes Betting & Gaming Limited
Paragon Internet Inc.
Case No. D2006-1166
1. The Parties
The Complainants are Ladbrokes plc, Ladbrokes eGaming Limited, Ladbrokes International Limited, Ladbrokes Betting & Gaming Limited, Harrow, Middlesex, United Kingdom of Great Britain and Northern Ireland; represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Paragon Internet Inc., Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <ladbrokes-poker.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2006. On September 12, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On September 12, 2006, 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, 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 13, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 3, 2006. The Respondent did not submit any response, other than to send an automated e-mail stating that Respondent was not accepting junk mail. Accordingly, the Center notified the Respondent’s default on October 5, 2006. Again, an automated “no junk mail” response was received from Respondent.
The Center appointed Bruce E. O’Connor as the Sole Panelist in this matter on November 7, 2006. 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
Given the default of the Respondent, the Panel is entitled to and does draw the inference from that default that all facts alleged in the Complaint are true. See Paragraph 14(b) of the Rules.
The Complainants are the members of the Ladbrokes Group of companies (“Ladbrokes”) that owns a network of over 2,500 retail betting shops in the UK, Ireland and Belgium. Their core business includes business conducted over the counter and via betting terminals in its shops. One of the Complainants operates online gaming websites. One of these sites uses the URL “www.ladesbrokes poker.com”. These sites offer financial betting and gaming including sports book, casino and poker features. Online, Complainants’ services are offered internationally in no fewer than 12 languages using 18 different currencies. Complainants are the registrants of a considerable number of domain names including the term “ladbrokes”. Complainants are realizing substantial profits in their retail and online operations. The website provided by Complainants at ladbrokespoker.com is the busiest virtual poker room in Europe.
One of the Complainants is the registrant in the UK of the trademark LADBROKES for various services including betting gaming services and the applicant for registration in the UK of the trademark LADBROKES POKER for various services including games services provided on-line from a computer network. The LADBROKES registrations predate the registration of the domain name in dispute. All of the Complainants use the LADBROKES trademarks and related trade names in the conduct of their business, with the trademarks being used under license from the Complainant that is the registrant.
The domain name in dispute <ladbrokes-poker.com> was registered on May 28, 2003. A user entering a URL including the domain name in dispute is directed to the Website of Complainants. This direction appears to have been accomplished by creating two separate frames, one pulling data from the “www.ladbrokespoker.com” website and the other being a dummy frame on which the pulled frame sits and which is accessed using the domain name in dispute. Complainants speculate that code establishing the dummy frame may have enabled the operator of the Website using the domain name in dispute to obtain data from customers seeking Complainants’ Website, but have not been able to establish that fact.
Code from the dummy frame establishes a window that directs the user to a website using the domain name <online-slots-winner.com> owned by Respondent. According to the code, this window is currently inactive and the Panel could not find this window at the dummy website operated by Respondent. The Panel notes that a website using the domain name <online-slots-winner.com> features links to online gaming websites, including that operated by Complainants and to other online gaming websites competitive with those operated by Complainants.
Respondent has also registered and is using domain names, e.g., <athurian-casino.co.uk> and <caribbeangold-casino.co.uk>, including the top level domain “co.uk” that consist of terms relating to betting and gaming and a hyphen and that point to the websites of online gaming operators other than Complainants.
Complainants have not attempted to contact Respondent.
5. Parties’ Contentions
Complainants contend that the domain name in dispute is identical to or confusingly similar to the trademark LADBROKES POKER, being distinguished only by a hyphen. Complainants also contend that the domain name in dispute is confusingly similar to the trademark LADROKES, being distinguished only by the hyphen and the generic word “poker.” Complainants contend that the top level and generic domain “.com” should be ignored when making this assessment.
Complainants contend that it is very likely that users attempting to visit the website of Complainants using the domain name <ladbrokespoker.com> will end up through an error in data entry at the dummy site operated by Respondent using the domain name in dispute. Complainants contend that it is well established that domain names that differ from a trademark only by a hyphen (added or omitted) are confusingly similar to the trademark.
Complainants contend that Respondent is not known by the domain name in dispute and has not been authorized by Complainants to use the trademarks of Complainants, and that to the best of Complainants’ knowledge, Respondent has no trademark rights in the domain name in dispute or any similar domain name.
Complainants contend that Respondent is engaged in providing “initial interest confusion” in using Complainants’ trademarks to divert users to Respondent’s website. Complainants contend that the creation of such confusion cannot constitute a bona fide offering of goods or services and cannot constitute a legitimate non-commercial or fair use of the domain name in dispute.
Complainants contend that Respondent, in using the domain name in dispute to host a dummy website, has intentionally attempted to attract for commercial gain, users to the dummy website, by intentionally misleading them and creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the dummy website. Complainants contend that Respondent must have been aware of Complainants trademarks, due to their prior registration and extensive use, and that Respondent’s use of a dummy frame must have been done to earn income or some other commercial benefit from users that had been lured to the site by the use of Complainants’ trademarks. In this regard, Complainants point out Respondent’s registration and use of the domain names of others engaged in the online gaming industry. Complainants contend that such use and registration is in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph (4)(a) of the Uniform Domain Name Dispute Resolution Policy (“Policy”) states that the domain name can be transferred where Complainant has established the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that 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.
A. Identical or Confusingly Similar
The Panel finds that Complainants have established their rights in the trademark LADBROKES.
The Panel also finds that the domain name in dispute is confusingly similar to the trademark LADBROKES. The domain name in dispute incorporates the entirety of that trademark. Simply adding a generic and non-distinctive word to a trademark, as well as a top-level domain, does not result in a combination that avoids confusion. Particularly this is the case where the generic and non-distinctive word (“poker”) is one of the services provided under the trademark LADBROKES. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Yamaha Motor Corporation, USA v. Danny Crescenzi, WIPO Case No. D2005-1269.
The Panel finds that Complainants have met their burden of proof under Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is 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.
The record is clear that Respondent began use of the domain name in dispute before notice of the dispute (through the filing of the Complaint). But, the use of a trademark of others, especially one so well-established and used as the LADBROKES trademark of Complainants, cannot be a bona fide offering of goods and services, as required by Paragraph 4(c)(i). There is no reason whatsoever for Respondent registering a domain name almost identical to that previously used by Complainants, differing only by a hyphen.
Certainly, the Respondent is not commonly known by the domain name, as required by Paragraph 4(c)(ii).
It is more difficult to say that the circumstances of Paragraph 4(c)(iii) have not been met. All that Respondent’s dummy website does is redirect users to Complainants’ website. The speculation by Complainants that Respondent could insert code that would permit Respondent’s website to extract information from users is just speculation, and dismissed. Further, all of the cases cited by Complainants and all of the cases that the Panel has been able to find involve an actual misdirection of customers to a competitive website. Autosales Incorporated v. Don Terrill, WIPO Case No. D2001-1341.
What strikes the Panel is the inclusion of code in the dummy frame that, although not activated at present, will cause a window to appear that gives users the option to access another and clearly commercial website of Respondent that in turn provides access to websites of competitors of Complainants. Complainants will have no control over this access, so that use of the domain name in dispute appears to be with intent for commercial gain to misleadingly divert consumers. The potential for mischief is apparent. If the window in the dummy frame were to be activated, the link to Respondent’s website would damage consumers. Respondent has not otherwise shown a legitimate noncommercial or fair use of the domain name and thus has not met the requirements of Paragraph 4(c)(iii).
The Panel finds that Complainants have met their burden of proof under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four circumstances in particular, without limitation, that demonstrate evidence of the registration and use of a domain name in bad faith. The circumstances of Paragraphs 4(b)(ii) and (iv) appear to be pertinent:
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.
The facts that most impress the Panel are the widely known nature of Complainants’ trademarks and their related gaming operations, the presently inactive window and link to Respondent’s commercial and competitive website, and the history of Respondent in registering and using the domain names of others in the gaming industry, differing only by the addition of a hyphen as is the situation here.
Respondent must have known of Complainants, their trademarks, and their domain names. Robert Bosch GmbH v. Asia Venture, Inc., WIPO Case No. D2005-0946 (“typosquatting” is evidence of bad faith); Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052.
The conduct of Respondent in similar situations involving other online gaming operators bears witness to its intent to prevent Complainants from registering the domain name in dispute. As noted above, 4(b)(ii) clearly applies to the circumstances of this case.
Respondent’s intent to attract Internet users for commercial gain can be inferred from the facts. Confusion as to Complainants’ sponsorship will result once Respondent activates the window and link to its commercial and competitive website, as signaled by the inclusion of corresponding code establishing its dummy frame. Thus, there is also the potential for the abuses described in 4(b)(iv) to occur any time.
The Panel finds that Complainants have met their burden of proof under Paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ladbrokes-poker.com> be transferred to the Complainants.
Bruce E. O’Connor
Dated: November 20, 2006