Complainants are PartyGaming Plc. and PartyGaming IA Limited, of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
Respondent is Harry Thomas, of Miami, Florida, United States of America.
The disputed domain name <gamebukers.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2008. On August 21, 2008, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On August 21, 2008, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 19, 2008.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on September 23, 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 the Rules, paragraph 7.
The Center was requested by the Panel to re-notify Respondent of the Complaint to cure a potential defect, using a revised email address. On September 26, 2008, the Center re-notified Respondent of the Complaint, extending the date for Response to October 16, 2008. Respondent did not submit any response.
The Panel issued Procedural Order No. 1 on October 22, 2008 (the “Order”), requesting that Complainants submit within five days “specific evidence that would indicate that, prior to the time of Respondent's registration of the disputed domain name <gamebukers.com>, Complainants had trademark or service mark rights in the term ‘gamebookers' or ‘gamebookers.com.'” The Order provided Respondent a further three days to respond to any submission by Complainants. The substance of Complainants' October 27, 2008 response to the Panel's Order is discussed below; Respondent provided no response.
Complainant PartyGaming IA Limited (“PGIA”) owns Community Trade Mark registration number 005829056 in respect of the GAMEBOOKERS mark within the European Union. A wholly-owned subsidiary of the Complainants' company group owns numerous domain name registrations based on variants of the words “gamebookers” and “gamebrokers.”
Respondent registered the disputed domain name <gamebukers.com> on March 12, 2005, and uses the page to which the domain name routes to link to a Spanish-language sports betting and gaming site “www.miapuesta.com.”
Complainants aver that, along with their related group of companies, they are one of the world's leading online gaming and sports betting groups, having provided such services since 1997. The ultimate parent company of the group, Complainant PartyGaming Plc, allegedly listed its shares on the London Stock Exchange with a market capitalization of over eight billion US dollars in June, 2005. Complainants further aver that their group has over 1,200 employees in headquarter and operations offices in Gibraltar, India and London.
Complainants contend that “the Group currently provides online gaming and sports betting services to individuals in over 100 countries and, as such, boasts considerable goodwill in its various brands in the many jurisdictions around the world in which it operates.”
In August 2006, Complainants allege, a group subsidiary acquired the assets and business of “Gamebookers Group Limited,” an online sports book operator based in Bulgaria. The acquired company allegedly owned the domain name <gamebookers.com> first registered on March 3, 2000.1
Complainants represent that the domain name <gamebookers.com> is currently registered to a wholly owned subsidiary of Complainants' group of companies “IGM Domain Name Services Limited.” Yet another subsidiary of the group allegedly operates the website to which <gamebookers.com> routes, and another subsidiary owns the Community Trade Mark (PGIA, as noted above). Complainants contend that “GAMEBOOKERS.COM is the homepage of Gamebookers, an online sports book, which has been providing sports betting services since 1998.”
Complainants also aver that the “Gamebookers” name is subject of pending trademark applications by PGIA in Aberbaijan, Croatia, Japan, the Russian Federation, Ukraine, Canada and the United States of America.2
Complainants summarily aver that the “www.gamebookers.com” website has been subject of extensive advertising and promotion and that as a result the “mark GAMEBOOKERS has become famous and well known worldwide.”
Complainants aver that from September 2005, Respondent redirected the disputed domain name to route users to “an affiliated version of the homepage of Miapuesta.com, a direct competitor of Gamebookers.”
In their Complaint, Complainants make the following legal arguments:
1. That the various registrations and applications held in the name of PGIA entitle both Complainants to “rights in the Mark.”
2. That the disputed domain name <gamebukers.com> retains the phonetic pronunciation of the mark GAMEBOOKERS and that the deliberate substitution of letters is an example of “typo squatting,” which has been found in UDRP cases to comprise confusing similarity.
3. That Respondent is not known by the disputed domain name has not acquired trade or service mark rights to it and lacks license or authorization. The Complainants further contend that the redirecting of users to “www.miapuesta.com”, a commercial online “sports betting services [website] in direct competition with the Complainant[s]” is not a bona fide offering of goods or services and that Respondent has no rights or legitimate interests in respect of the disputed domain name.
4. That Respondent registered and is using the name in bad faith for commercial gain to divert and confuse Internet users since the disputed domain name was registered after adoption and use of the mark GAMEBOOKERS, and that the widespread use and fame of the mark means that Respondent had actual knowledge of Complainants' rights when Respondent registered the domain name.
5. That Respondent's registration of a “common misspelling” of the mark is further evidence of bad-faith registration and use.
On the basis of the foregoing, Complainants request transfer of the disputed domain name to “Complainant” (without specifying which of the two Complainants they have in mind).
Respondent did not reply to the Complainants' contentions.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainants must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Although the disputed domain names are not identical to Complainants' trademark, the Panel agrees with Complainant and concludes that Respondent's domain name is confusingly similar to Complainants' trademark.
As noted above, Complainant PGIA owns a Community Trade Mark registration for the GAMEBOOKERS mark. It is alleged, without contradiction, that Complainant PartyGaming Plc is the ultimate parent company of PGIA. The Panel therefore finds that each Complainant “has rights” in the trademark in the sense to which Policy paragraph 4(a) refers. E.g., Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night, Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796.
The fact that Complainants' trademark rights may not have arisen until after Respondent registered the disputed domain name does not prevent the Panel from finding confusing or substantial similarity.3
Removing the “.com” suffix from the disputed domain name, as panels routinely do when analyzing confusing similarity,4 the Panel agrees with Complainants' contention that the phonetic pronunciation of “gamebukers” is nearly identical and confusingly similar to the sound of Complainants' GAMEBOOKERS mark. Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033; Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123. Furthermore, given that Respondent's website redirects to a Spanish-language online betting service, the fact that the vowel “u” in Spanish sounds like the English letters “oo” supports the Panel's finding of confusing similarity.
Complainants appear to mix without distinction their phonetic similarity argument with the concept of typo squatting. Although the Panel disagrees with Complainants' argument that this is a typical case of typo squatting, as explained below, the Panel concludes that the disputed domain name is confusingly similar to Complainants' mark and that therefore, the requirements of Policy paragraph 4(a)(i) are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id.,(citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
In the absence of a response, the Panel accepts as true Complainants' allegations that Respondent is not known by the disputed domain name, has not acquired trade or service mark rights to it, and lacks license or authorization. The Panel also accepts Complainants' contention that the redirecting of users to “www.miapuesta.com”, a commercial online “sports betting services [website] in direct competition with Complainant[s]” is not a bona fide offering of goods or services and that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds, however, that Complainants fail to establish the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel is not prepared to infer, as urged by Complainants, that Respondent when he registered the disputed domain name was aware of Complainants' GAMEBOOKERS trademark - without a more concrete showing.
Complainants refer to (1) various domain name registrations including the words “gamebookers” and “gamebrokers,” (2) international activities of several allegedly related companies, and (3) pending trademark applications and a Community Trade Mark registration that issued after Respondent registered the disputed domain name.
Complainants provide a long list of domain names owned by their commercial group including the words “gamebookers” and “gamebrokers” but do not provide dates for those registrations, with one exception: the March 2000 <gamebookers.com> registration owned by their Bulgarian predecessor.
Inexplicably, Complainants provide no specific evidence about the volume of online activity, revenue, or the history of the website allegedly operated by their Bulgarian predecessor. Complainants also summarily aver that the “www.gamebookers.com” website was subject to extensive advertising and promotion, but nowhere provide the dates, costs, or coverage of such promotion.
Complainants vaguely allege that their group of companies and an online betting service under the name “gamebookers.com” was active for several years before Respondent's disputed domain name registration. Significantly, however, Complainants do not attempt to link the “various brands and many jurisdictions in which [the group] operates” with the brand name GAMEBOOKERS (emphasis added).5
Therefore the Panel is unable to weigh Complainants' insistence that their GAMEBOOKERS mark was so widespread or famous that Respondent necessarily would have been aware of it at the time of his domain name registration.
Even if Respondent does not reply, Complainants must establish each element of Paragraph 4(a) of the Policy. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
Precisely because the Complaint lacked specific evidence regarding the nature, history, and existence of Complainants' legal trademark or service mark rights, the Panel issued Procedural Order No. 1. The extent of such rights, and when and how they arose, is highly relevant to the question of bad faith registration. See, e.g., Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544.
In response to the Order, Complainants submitted the following statement:
Further to the Panelist's request of October 22 2008, please find attached documentation which shows that GAMEBOOKERS.COM was registered on March 13 2000. Per the submissions in the Complaint, a sports betting service has been provided by the website reached via this domain name ever since this date. Further, this service has always been provided under the trade/service mark GAMEBOOKERS. Accordingly, the Complainant's rights in the mark pre-date any rights that the Registrant might claim.
This brief response and document simply shows that “gamebookers.com” was registered as a domain name in the year 2000 and repeats the summary allegations of the complaint that a sports betting service was provided on the “www.gamebookers.com” website since that date. 6 There is no specific evidence on trademark existence or usage prior to Respondent's domain name registration, only a repetitive averment by Complainants' legal department which lacks supporting exhibits or declarations.
The Panel does not doubt that Complainants may be heavy players in the online gaming and sports betting industry, however, as noted, the record in these proceedings fails to prove that “www.gamebookers.com”- a particular website and service among Complainants' many companies and businesses - has enjoyed fame or been in widespread use at any time.
Complainants appear to build their entire case on the notion that this is a typical case of typo squatting, in which panels routinely find bad-faith registration. The Panel, however, disagrees with their position.
As discussed above, in these proceedings Complainants have not shown their mark to be famous. The Panel also finds that the mark GAMEBOOKERS is not inherently distinctive. The mark consists of two common words in combination that somewhat obviously refer to Complainants' betting and gaming business, using terms traditionally understood for many years to describe sports betting (“game” and “bookers”).
Each of the typo squatting cases to which Complainants refer turned on the existence of famous marks, fantasy marks, or involved serial cybersquatters. Volvo Trademark Holding, AB. V. Unasi, Inc., WIPO Case No. D2005-0556; Acuity, Inc. v. Netsolutions Proxy Services, WIPO Case No. D2005-0564; Pfizer Inc. v. Mark Catroppa, WIPO Case No. D2002-1100; Swarovski A.G v. Modern Empire Internet Ltd, WIPO Case No. D2006-0148; Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161; Ameriquest Mortgage Company v. Phayze Inc., WIPO Case No. D2002-0861; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627.
The Panel finds that Complainants have demonstrated none of these elements to be present in this case.
In short, the Panel concludes that Complainants in this case fall short of demonstrating that their mark was famous or that Respondent was actually aware of their business under the name “gamebookers” when Respondent registered the disputed domain name. Neither have Complainants demonstrated the existence of common-law or unregistered trademark rights, which might support a showing of bad faith registration on the part of Respondent.7 Complainants' Bulgarian predecessor might have made widespread use of the name “gamebookers” but Complainants fail to show the evidence.
There is no evidence before the Panel to establish that Respondent is a professional domain name registrant, or that Respondent has a history of abusive domain name registration. For the Panel to accept Complainants' invitation to infer that Respondent had (or should have had) knowledge of the mark in 2005 would be inappropriate under the circumstances.
In light of the Panel's conclusion that Complainants fail to establish bad faith registration under paragraph 4(a)(iii) of the Policy, it is unnecessary to address the element of bad faith use. 8
For all the foregoing reasons, the Complaint is denied.
Jeffrey D. Steinhardt
Dated: November 14, 2008
1 This date is in fact incorrect; in a later submission responding to the Order, Complainants correctly note that the first registration was instead on March 13, 2000.
2 Although Complainants write that “copies of all registration certificates and/or applications are produced at Annex 4” to the Complaint, the only such document is a photocopy of the certificate of Community Trade Mark registration number 005829056.
3 The Policy makes no specific reference to the date as of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
4 E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
5 Moreover, the Panel notes that Complainants' references to the domain name registrations for variants of the name “gamebrokers” are not of themselves relevant to this proceeding.
6 Complainants do not state whether their Bulgarian predecessor or some other party provided services through the “www.gamebookers.com” website from (either) 1998 or 2000. As previously noted, in their Complaint, Complainants state that “www.gamebookers.com” is the homepage of Gamebookers, an online sports book, which has been providing sports betting services since 1998. This reference potentially appears to contradict Complainants' response to the Order and at a minimum would have benefitted from Complainants providing the evidence requested by the Panel.
7 Complainants do not provide any priority date claims connected with the several trademark registrations for which they have applied. Complainants' Community Trade Mark issued January 22, 2008, nearly three years after registration of the disputed domain name.
8 The Panel's findings are limited to the record before it. Had evidence demonstrated pre-existing registered or unregistered trademark rights under any potentially relevant applicable law, a famous trademark, or had Complainants shown the reach or historical levels of activity of the gamebookers.com website, the outcome of this proceeding might have been different.