WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ladbrokes Betting & Gaming Ltd. v. Privacy Ltd. Disclosed Agent for Yolapt

Case No. D2007-1702

 

1. The Parties

The Complainant is Ladbrokes Betting & Gaming Ltd., 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 Privacy Ltd. Disclosed Agent for Yolapt, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Renova, Ltd., Spain.

 

2. The Domain Name and Registrar

The disputed domain name <ladbrookes.com> is registered with Fabulous.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2007. On November 20, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On November 21, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 November 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2007. The Response was filed with the Center on December 17, 2007.

On December 18, 2007, the Complainant submitted a supplemental filing to the Center, receipt of which was acknowledged on the same day.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 24, 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 following facts are essentially sourced from those submitted in the Complaint.

The Complainant, Ladbrokes Betting & Gaming Ltd., is a member of the Ladbrokes Group, which does business in the betting and gaming industry throughout the world. Ladbrokes owns a network of over 2,600 retail betting shops in the United Kingdom, Ireland, Belgium and Italy. Business is done both over the counter and via terminals.

The Complainant also maintains an extensive internet presence world-wide through websites at “ladbrokes.com”, “ladbrokescasino.com”, “ladbrokespoker.com”, “ladbrokesgames.com” and many others.

The Complainant has nearly 2 million registered users and operates in 12 languages and 16 currencies. Profits of the Complainant and its parent company were 249 million in 2005 and 268.1 million in 2006.

The Complainant is the proprietor of various trademark registrations including the word mark LADBROKES in the United Kingdom.

The Respondent says that it is a company that has purchased a large batch of domain name registrations. The disputed domain name had been registered on April 27, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends the following, with documentary evidence where necessary.

The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The name Ladbrokes is well known in the betting and gaming industry through the Complainant’s ownership of over 2,600 retail betting shops in the United Kingdom, Ireland, Belgium and Italy and its internet presence at websites including “www.ladbrokes.com”, “www.ladbrokescasino.com”, “www.ladbrokespoker.com” and “www.ladbrokesgames.com. The LADBROKES word mark was registered in the United Kingdom on January 22, 1993 in respect of betting services, gaming services, and on December 29, 1995 in respect of casino services, gaming services, bingo hall services, football pools services, club and nightclub services.

As a result of its extensive use of and investment in the name, the Complainant also has unregistered rights in the name LADBROKES.

The disputed domain name is aurally identical to the Complainant’s trademark LADBROKES and visually confusingly similar, except for an additional letter “o” making “Ladbrookes”. This is not a distinguishing difference, as the overall appearance of the disputed domain name is virtually identical to the LADBROKES trademark.

The disputed domain name is confusingly similar to the Complainant’s trademark and may lead the public to think that it belongs to, is affiliated with or is operated by the Complainant. “Essential” or “virtual” identity is sufficient under the Policy to prove identity or confusing similarity between a domain name and a trademark. Confusing similarity exists where letters have been interchanged or replaced with a phonetically similar letter in order to create confusion in the minds of users. The Complainant refers the Panel to the decisions in Disney Enterprises, Inc., v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449; Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707.

The disputed domain name was registered on April 27, 2003. The Complainant’s use of the LADBROKES trademark predates this by many years.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not own any trademark in the word ladbrookes. Nothing found in a Google search indicates that the Respondent is commonly known by the name ladbrookes.

LADBROKES is not a common name and the Complainant can think of no legitimate reason for the Respondent to register a domain name based on a typographically erroneous variation of the Complainant's well-known mark. The disputed domain name is not generic and bears no relation to the Respondent's legal or business name.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. As far as the Complainant is aware, the disputed domain name connects to an active portal website of the Respondent. Visitors to the website of the domain name are directed to an information screen containing links on various betting and gaming topics such as “Football Betting” and “Gambling Online”. The links take the user to websites of the Complainant's competitors. It is contended that this is done for the purpose of deriving commercial gain. The fame of the LADBROKES mark attracts users who believe they are visiting a site of, or authorized by, the Complainant and as a result of this deception the Respondent derives a business opportunity. This is initial interest or bait and switch confusion (Autosales Incorporated, v. Don Terrill, WIPO Case No. D2001-1341; Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998).

Commercial use of a domain name which is so inherently likely to lead to confusion of internet users cannot constitute a bona fide offering of goods or services, nor can it constitute a legitimate non-commercial or fair use of a domain name. The Respondent's registration of the disputed domain name must have been with actual or constructive knowledge of the Complainant's rights in the LADBROKES trademark. It is highly unlikely that the Respondent was unaware of the Complainant and the LADBROKES trademark.

The redirection of Internet users to a site bearing links to a competitor’s site is evidence of bad faith (Beemak Plastics, Inc., v. WestRep Group, WIPO Case No. D2001-1023), as is reliance on typographical errors (Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018).

The Complainant contends that the Respondent’s registration is part of a pattern of conduct which constitutes bad faith under paragraph 4(b)(ii) of the Policy, and cites cases involving the same Respondent (Facebook Inc v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193; Sears Brands, LLC v Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, NAF Case No. 1074743). The Respondent also holds domain name registrations for well known names including <nystatelottery.org>, <metropolitanmuseumofart.org> and <algazera.com>.

The Complainant requests that the domain name <ladbrookes.com> be transferred to the Complainant.

B. Respondent

The Respondent’s contentions commence with a summary (“A”) that ought to be reproduced in full:

“A. SUMMARY

Respondent acquired the disputed Domain Name in a large portfolio pursuant to written agreement signed in April 2007. The agreement contained warranties and representations by the seller (IREIT) stating that the domain names were not in violation of the intellectual property rights of any third party. A standard search of the USPTO and OAMI databases did not reflect any trademark associated with the Domain Name.

“Prior to receiving the Complaint, Respondent had no knowledge of Complainant or its asserted mark. Complainant both registered and is using the Domain Name in good faith.

“The Domain Name has been continuously registered since April 27, 2003 (see Exhibit) without any apparent conflict. The present use is identical to the historical use of the Domain Name. Thus, there is no reason why Respondent should have been aware of the mark and certainly Respondent did not turn a blind eye but rather acted in a reasonably diligent manner.

“Respondent first became aware of Complainant and its claims upon receipt of the UDRP in this matter. Respondent’s counsel immediately contacted Complainant, offering to transfer the Domain Name without charge. On November 29, 2007, Complainant’s counsel informed that the matter was being considered by the Complainant. Respondent’s counsel sent several reminders with a final reminder being sent December 12, 2007. Complainant’s counsel in its reply again noted the matter was still being considered by the Complainant. Respondent’s counsel then sent a further email noting to Complainant the upcoming deadline. On December 13, 2007, Complainant’s counsel sent an email rejecting the proposed settlement without any comment or explanation.

“On the same day (December 13th), Respondent’s counsel sent a reply email reiterating that while Respondent had no prior knowledge of Complainant, Respondent nevertheless was proposing to transfer the Domain Name without condition to Complainant. Respondent reminded Complainant (a) that the proposal was to transfer without condition, (b) that if transfer were agreed, Complainant could recover $1,000 of its filing fees, and (c) it seemed a waste of the panel’s time and resources to continue the matter in the face of the repeated offer to transfer. Complainant responded again rejecting the request to transfer the domain name to the Complainant. As a result, this response is required.

“Although being unaware of Complainant’s claims at the time of registration, Respondent has no desire to retain the Domain Name or even potentially interfere with Complainant or its asserted marks. Without waiving its position as to good faith registration, Respondent desires to transfer the Domain Name to Complainant.

“For these reasons, and those below, Respondent requests that the Domain Name be transferred to Complainant without further findings of fact or liability, including those related to the elements set forth in Paragraph 4(a) UDRP Policy.”

The Respondent then makes lengthy contentions that may be summarized as follows.

The Respondent expressly accepts that the disputed domain name should be transferred to the Complainant and wishes this to be done. The Respondent has negotiated with the Complainant and indicated acceptance of its demand for transference.

According to some precedent cases, in such a situation the Panel should not make findings of fact but should merely sanction transference of the domain name (The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, citing Williams-Sonoma, Inc v. EZ-Port, WIPO Case No. D2000-0207. Also The Body Shop International plc v. Agri, Lacus and Caelum LLC, NAF Case No. 679564, citing: Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Case No. 212653, Boehringer Ingelheim International GmBH v. Modern Limited. - Cayman Web Development, NAF Case No. 133625, and Alstyle Apparel/Active Wear v. John Schwab d/b/a Alstyle de Mexico, NAF Case No. 170616).

The Respondent further contends that in the circumstances according to some precedent it would be unwise to issue findings of fact or conclusions other than an order transferring the name (Diners Club International Ltd. v. Nokta Internet Technologies, NAF Case No. 720824, and numerous other citations).

The Respondent contends that it did not register the disputed domain name in bad faith and again, without waving rights, expressly requests transference to Complainant without findings being made. It is contended that the domain name was included in a large portfolio acquired from Internet REIT with written warranties that none infringed upon any intellectual property or other legal right of any third party. Following acquisition, a standard trademark search was performed using the USPTO and OAMI databases and no trademark was found in connection with the disputed domain name.

The Respondent denies that it has engaged in a pattern of bad faith conduct and says that the two cases cited went by default owing to pressure of work (Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193; and Sears Brands, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, NAF Case No. 1074743). Furthermore, the only situation in which a pattern of conduct would have been relevant is where a Respondent had registered domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name (the Policy, paragraph 4(b)(ii)), which was not applicable.

The Respondent contends that its use of the domain name has been benign in connection with the Google AdSense program in which search terms result in users being directed to relevant sites.

The Respondent’s contentions conclude with three paragraphs that ought to be reproduced in full:

“Further evidence of good faith is Respondent’s immediate and repeated efforts to communicate with Complainant after becoming aware of its claim and its repeated reminders to Complainant that the transfer was without condition. Respondent has an internal domain name inquiry policy and when a claim is made to Respondent, it always responds timely. If the claim is warranted, or even colorable, Respondent transfers the domain without charge. Such a system is evidence of good faith conduct. Prior to receiving the UDRP Complaint, Respondent had heard nothing from Complainant. Acting pursuant to its internal policy, when Respondent became aware of possible trademark issues, it immediately contacted Complainant to resolve the matter. Respondent has repeatedly communicated its willingness to transfer the Domain Name to Complainant, without any compensation, all in accordance with its inquiry policy. Complainant has without any kind of explanation rejected Respondent’s initiative, thereby making it impossible to reach a settlement on a voluntary basis, despite the fact that a costly and time-consuming UDRP procedure would result in an equally effective transfer of the Domain Name.

“Because of the lack of prior knowledge, the manner in which the Domain Name was obtained and Respondent’s demonstrated willingness and developed policy to avoid any conflicts with third parties, Respondent believes that any finding that it registered the Domain Name in bad faith is unwarranted. NEVERTHELESS [Respondent’s emphasis], Respondent has no desire to hold this Domain Name. In light of even a colorable claim by Complainant, Respondent would prefer to eliminate any potential for conflict. Respondent does not register domain names to unfairly benefit from trademark rights of others or to cause confusion with the business activities of others.

“Accordingly, and in line with the above authority, Respondent requests that the Domain Name be transferred to Complainant without further findings of fact or liability, including those related to the elements set forth in Paragraph 4(a) UDRP Policy.”

 

6. Discussion and Findings

Procedural Matter

The Center holds a supplementary communication received from the Complainant the day after the Response was received. The Policy and the Rules provide for a Complaint and a Response. WIPO UDRP panelists are concerned to maintain the principles of natural justice in accordance with paragraph 10(b) of the Rules, which states:

In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

Correspondingly, paragraph 12 of the Rules provides as follows:

Further Statements

In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.

In the present case, having regard to all the circumstances and given that the Parties are professionally represented and seek the identical remedy, the Panel does not see any reason to request further statements and exercises its discretion not to ask for the supplementary communication to be produced.

Common Ground between Complainant and Respondent

The present case is unusual, but not unique, in that the Respondent has filed a detailed response indicating that it is willing for the disputed domain name to be transferred to the Complainant as requested, and that it tried to promote such a transfer without charge or condition prior to the commencement of this proceeding. The thrust of the Response is that the Respondent now wants the transfer to be made summarily without any findings being made against it in the terms of paragraph 4(a) of the Policy.

Paragraph 17(a) of the Rules states:

If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.

According to the Respondent, several offers made to the Complainant for transfer of the domain name without charge or condition were not accepted. The Respondent says that on December 13, 2007, the Complainant twice rejected the Respondent’s offer of a transfer, for whatever reason. Consequently the Parties did not agree on a settlement within the meaning of paragraph 17(a) of the Rules and the Panel cannot terminate the proceeding.

The Respondent also posits that the Complainant made the demand for a transfer, which the Respondent accepts, constituting a binding agreement. On the facts, however, there was never a meeting of minds prior to the proceeding that led to any such proposition progressing to agreement and implementation. On the contrary, the fact is that the Panel has a valid Complaint before it. In its Response the Respondent has formally consented to have the dispute decided by a single-member Administrative Panel.

The Policy by which the Parties are bound provides that they are required to submit to a mandatory (emphasis added) administrative proceeding in the event that a Complainant has made the appropriate assertions under paragraph 4(a), namely:

(i) your [Respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

The Complainant has made the relevant assertions as above and it is mandatory for the Panel to proceed.

The Panel is bound by the terms of the Policy and the Rules, which do not expressly provide for a summary decision. A recognized weakness of a summary or default decision is that it could lead to the capture of a domain name by deviousness, for instance when a legitimate owner was known to be distracted. Thus in every dispute, including those uncontested or where there is no Response, the Complainant must establish its case.

Whether it is necessary in the present case for the evidence to be examined in detail is a different question. Paragraph 15 of the Rules empowers the Panel to decide the complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

The Respondent has cited (above) numerous domain name decisions in different jurisdictions as authority for the Panel to accept the Respondent’s acquiescence to a transfer and to move directly to a conclusion without making findings of fact (e.g., the brief decision in Williams-Sonoma, Inc, d/b/a Pottery barn v. EZ-Port, WIPO Case No. D2000-0207). The obvious danger in doing so is that in a hypothetical dispute where a power imbalance might exist between the parties, particularly between a powerful complainant with substantial legal backing and a weaker unrepresented respondent, the respondent with a good case might be overawed and needlessly compliant.

It is therefore essential for the Panel to be certain that any apparent capitulation by the Respondent is genuine and has been made in a fully informed manner. On the facts of this case, it is apparent that both Parties are well represented and have presented articulate submissions, and accordingly the Panel will proceed to a Decision on the basis that the actions of the Respondent were fully informed.

The Panel’s obligation is to answer the question at the heart of the matter, which is whether the disputed domain name should be transferred to the Complainant. The Complainant and the Respondent each says that it should. Notwithstanding the Respondent’s denial of certain ingredients of paragraph 4(a) of the Policy, it would not be appropriate if settlement of the dispute led to a finding that flew in the face of the clear, common and informed objective of both Parties.

Accordingly, without further findings of fact, the Panel makes an order transferring the disputed domain name to the Complainant.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 15 of the Rules, the Panel orders that the domain name <ladbrookes.com> be transferred to the Complainant.


Dr Clive N.A. Trotman
Sole Panelist

Dated: January 7, 2008