WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sporting Exchange Limited v. None, G. W.
Case No. D2008-0344
1. The Parties
The Complainant is The Sporting Exchange Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Charlene Kinnear, United Kingdom of Great Britain and Northern Ireland.
The Respondent is None, G. W., Sweden.
2. The Domain Name and Registrar
The disputed domain name <betfair.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2008. On March 7, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On March 7, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent G. W. is listed as the registrant and providing the contact details. In response to a notification by the Center that the Registrant information in the public WhoIs of GoDaddy.com, Inc was “none”, GoDaddy.com, Inc. confirmed on March 13, 2008 that the registrant was indeed “none”. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 17, 2008. The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 20, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 9, 2008. The Response was filed with the Center on March 20, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 21, 2008. 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, The Sporting Exchange Limited, and associated companies within the Betfair Group have for a number of years operated telephone and web-based betting services under the trademark BETFAIR registered by the Complainant in many countries worldwide. Such registrations include inter alia a trademark registration for BETFAIR in the United Kingdom in international classes 9 and 41 with a priority of March 22, 2000, registration number 2226730, and a Community Trademark BETFAIR with a priority of May 12, 2003 in international class 9, registration number 3161205 (the “BETFAIR Marks”).
The disputed domain name was first registered on July 1, 2001.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is identical to the BETFAIR Marks in which the Complainant enjoys rights.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The previously existing Affiliate Agreement between the Respondent and a third party, ValueClick Europe Ltd., did not convey any rights or interests in the Complainant’s intellectual property on the Respondent and has been terminated. Since November 9, 2007, the disputed domain name does not redirect to the Complainant’s website at “www.betfair.com” any more.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith as the Respondent acted in breach of the Complainant’s trademark rights and only agreed to transfer the disputed domain name upon receipt of a disproportionate sum of money, mentioning that he had “other plans” for the domain name and that he previously succeeded in selling <everestpoker.es> at a price of US$ 15,000. The Respondent’s behavior is supposed to amount to passing off and to use the Complainant’s trademark as a vehicle of fraud.
In his response as well as on the website at the disputed domain name the Respondent discusses the Complainant’s statements and allegations:
(1) The Respondent contends that the domain name <betfair.net> was registered before the registrant or the general public became aware of the Complainant, and before registration of any trademarks by the Complainant in the European Union. The Respondent originally had an interest in casinos on the Internet and thought that a domain name like the disputed domain name could perhaps be something to use in the future. Only after quite some time did he find out about the Complainant. The Respondent then joined the Complainant’s affiliate program and redirected traffic from its website at the disputed domain name to the Complainant’s website at “www.betfair.com”, which was only to the Complainant’s benefit.
(2) The disputed domain name is not used for services similar to those of the Complainant.
(3) The Respondent is interested in the domain name because he wishes to have a discussion about domain names.
(4) The Respondent further contends that he has never put up the disputed domain name for sale or had an interest in selling or renting it out, or in disrupting the Complainant’s business or acting to the advantage of the Complainant’s competitors. The Respondent claims that he asked for a “hand over fee” only in response to the Complainant’s apparent lack of interest in a discussion about the domain name and its aggressive tone. Finally, he states that there is no risk of confusion as his website can easily be distinguished from that of the Complainant.
6. Discussion and Findings
The first point to be dealt with is the question as to who is the proper respondent in this case. Originally, the Complainant named G. W. as sole Respondent, and then, in the amended Complaint, “none”. Throughout the correspondence with the Complainant and in its Response, however, G. W. referred to himself as owner of the disputed domain name and Respondent in this administrative proceeding. Consequently, the Panel is convinced that the Respondent G. W. still has an interest in the disputed domain name and will therefore treat him as such, together with “none”.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; 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 disputed domain name fully incorporates the Complainant’s BETFAIR Marks in which the Complainant enjoys rights.
It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the 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) 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) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that the Complainant has to make a prima facie case to fulfill the requirements of paragraph 4(c) of the Policy. The burden of proving that the Respondent has rights or legitimate interests in the disputed domain name will then lie with the Respondent.
As a “publisher”, the Respondent had concluded an Affiliate Agreement with the Complainant as an “advertiser” in the framework of a Publisher Service Agreement between ValueClick Europe Ltd. and the Respondent. Such Affiliate Agreement was terminated after the Respondent no longer redirected traffic from the website at the disputed domain name to the Complainant’s website. The Respondent admits that he earned money from redirecting visitors to the Complainant’s website. His action was based on the value of the BETFAIR Marks, which cannot be considered as a bona fide offering of services under paragraph 4(c)(i) of the Policy conferring rights or legitimate interests on the Respondent (cf. Wal-Mart Stores, Inc. v. Nolen Thorn, WIPO Case No. D2007-0365; Ross-Simons of Warwick, Inc. v. Admin Billing, WIPO Case No. D2004-0696; PartyGaming Plc., WPC Productions Limited, Electra Works Limited, iGlobalMedia Marketing (UK) Limited v. APS Web Developers S.A., WIPO Case No. D2006-0993).
The Respondent has not been commonly known by the domain name under paragraph 4(c)(ii) of the Policy. He is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue, under paragraph 4(c)(iii) of the Policy, either as the current use of the domain name was most probably established after notice of the dispute, namely after the Respondent received the Complainant’s cease and desist letter as he refers to his correspondence with the Complainant on the website at the disputed domain name.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(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 its 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 the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
The question here is whether the Respondent registered the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant or one of its competitors. It is clear that such an intention existed after the date of the registration, however, the Respondent registered the disputed domain name already in 2001, when the Complainant did not enjoy trademark rights in Sweden, where the Respondent is domiciled, but only in the United Kingdom, and when the BETFAIR Marks were in all likelihood not known to the general public. Still, the Respondent
- admits that at the time of the registration of the disputed domain name, he had an interest in casinos on the Internet,
- later took part in a Publisher Service Agreement and made money from the disputed domain name,
- successfully sold another domain name, i.e. <everestpoker.es>, at a price of US$ 15,000, and
- boasted in an email to the Complainant well ahead of the initiation of these administrative proceedings about the fact that he is not a British citizen.
Furthermore, the Complainant registered its domain name <betfair.com> on March 15, 2000, and has actively used it since August 17, 2000, according to the online database at “www.archive.org”. At the time of the registration of the disputed domain name, the Complainant was therefore already present on the Internet, even though its business might not have been known to the general public then. Based on the fact, that the first choice of every commercial domain name registrant would be “.com” but not “.net”, the Respondent in all likelihood found that the domain name <betfair.com> was already taken when he was looking for a domain name and, as a result, registered the name under the gTLD “.net”.
As a result, the Panel comes to the conclusion that it is reasonable to infer, based upon the circumstantial evidence available, that the Respondent was aware of the Complainant and of the Complainant’s relevant trademark (applied for by the Complainant in the United Kingdom more than 15 months before registration of the disputed domain name and registered 3 months before that date) and thus registered the disputed domain name in bad faith.
As to bad faith use, the Respondent agreed to transfer the disputed domain name to the Complainant upon receipt of a “decent offer”, having mentioned that he previously sold <everestpoker.es> at a price of US$ 15,000. The consideration that the Respondent had in mind was obviously more than any out-of-pocket costs that he might have incurred directly related to the domain name.
Finally, the Respondent has also acted in bad faith as he has not only registered the disputed domain name but also admitted to having registered <everestpoker.es>, which is identical to another online gambling provider’s trademark or service mark.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and that the circumstances in paragraph 4(b)(i) of the Policy have also been proven by the Complainant.
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 <betfair.net> be transferred to the Complainant.
Dated: May 5, 2008