WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sporting Exchange Limited (trading as 'Betfair') v. Ben Williams
Case No. D2007-1248
1. The Parties
The Complainant is The Sporting Exchange Limited (trading as 'Betfair'), London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Ben Williams, Ormskirk, Lancashire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The Disputed Domain Name <betfairdirect.com> (the “Domain Name”) is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2007. On August 24, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. The registrar replied on August 24, 2007 confirming the identity of Respondent as the registrant of the Domain Name. 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 August 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2007.
The Center appointed Dawn Osborne as the sole panelist in this matter on October 1, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant registered the trademark BETFAIR in 28 different countries worldwide including as a Community Trade Mark and in the United Kingdom of Great Britain and Northern Ireland with registrations going back to May 2000. The Registrant registered the Domain Name on February 10, 2006.
5. Parties’ Contentions
The assertions made by the Complainant can be summarised:
The trade mark BETFAIR has been registered by the parent company of the Betfair Group, The Sporting Exchange Limited in 28 countries, including Community Trade Marks. Amongst the numerous registrations of the trade mark, BETFAIR has been registered in the United Kingdom of Great Britain and Northern Ireland whereby all registrations took place before the registration date of the Domain Name. The Complainant’s registrations generally cover classes 9 and 14, although it has some registrations in classes 16 and 36.
Mr Williams is an affiliate of the Complainant and therefore has an association with it. However, in no respect does this give him permission to claim any rights to or interests in the Complainant’s intellectual property rights. The Respondent agreed in its affiliate agreement that “None of your promotional activities may infringe an advertiser’s proprietary rights (including but not limited to trademark rights)” where the Complainant is in the position of advertiser. Further the agreement stipulated, “You acknowledge that you obtain no proprietary rights. . .”. Therefore, the Respondent has no rights or legitimate interests in respect of the Domain Name.
In May 2007, the Complainant approached the Respondent by email, offering him the opportunity to transfer the Domain Name to The Sporting Exchange Limited in exchange for transfer costs. The Complainant believed this to be a generous offer based on the facts, i.e. breach of the agreement by Mr. Williams. A response was received from Mr Williams’s representative, Mr. Chris Dutton. They agreed to the terms, but only if a large sum of money was paid in addition. In the first instance, a sum of £11,000 was requested. A subsequent offer was made by the Complainant of £3,000. Mr. Williams under the direction of Mr Dutton, indicated that a sum of £6,500 would be considered. The Complainant believed this to be unacceptable and declined.
In an email on August 2, 2007 from Mr. Dutton the Complainant was informed that Mr. Williams was considering selling the Domain Name to interested third parties. This was despite the Respondent’s breach of the Complainant’s trade mark rights. Mr Dutton indicated the interested third parties included competitors of Betfair. The Complainant made an offer whereby Complainant would pay for the transfer of the Domain Name and offered the opportunity of a licence to Mr. Williams to continue using the Domain Name for a three month period. This would enable the Respondent to redirect traffic to a new domain name under an alternative name. The Complainant received an e-mail from the Respondent which was intended for Mr. Dutton which stated “cheeky bastards, what’s the next move guv? I reckon I might stop my Betfair promotion at cj.com and tell them I’m gonna stick a load of Ladbrokes banners on. See how they like that.” This is a clear indication of the bad faith on the Respondent’s part.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trade marks. The addition of the non distinctive word “direct” does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s trade marks.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent agreed not to claim any rights to the Domain Name in its Affiliate agreement. The Respondent has not filed a Response and does not appear from the available case record to have any rights or legitimate interest in the Domain Name. The Panel accordingly finds that the Respondent has no such rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of the domain name in bad faith including “the Respondent has registered or has 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 trade mark 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”.
In the absence of a Response from the Respondent, there appears to be no reasonable explanation of the facts other than that the Respondent registered the Complainant’s trade marks as a domain name with an intent to use them to demand unwarranted profit from the Complainant or to sell to the Complainant or its competitors for profit in the circumstances of this case the Panel finds the Domain Name to have been registered and used in bad faith.
In light of the foregoing, the Panel decides that the Domain Name is confusingly similar to the Complainant’s trade marks and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.
Accordingly, in light of the above, the Panel requires that the registration of the Domain Name <betfairdirect.com> be transferred to the Complainant.
Date: October 9, 2007