The Complainant is GMTV Limited, of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Goodman Derrick LLP, United Kingdom.
The Respondent is Simon Collins, of London, United Kingdom.
The disputed domain name <gmtvbingo.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2009. On June 18, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On June 19, 2009, Tucows Inc. 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” or “UDRP”), 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 June 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2009. The Response was filed with the Center on July 8, 2009.
The Center appointed David Perkins as the sole panelist in this matter on July 23, 2009. 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.A.1 The Complainant is a broadcaster, which has since 1993 broadcast a weekday television programme shown on the ITV1 channel in the United Kingdom [“the GMTV Programme”]. The GMTV Programme has the highest breakfast time audience in Europe attracting up to 13 million viewers each week.
4.A.2 The “GMTV” registered trademark
The Complainant is the proprietor of United Kingdom Trademark
No. 1,501,432 for GMTV. That mark was filed on May 20, 1992 and registered on September 27, 1990. It is registered in Classes 9, 16, 25, 35, 38 and 41.
4.A.3 The GMTV domain name and the GMTV website
The Complainant is the owner of the domain name <gm.tv> which was created on October 18, 2002. That domain name resolves to a website which supports the GMTV Programme. That website has more than 800,000 unique users and attracts more than 8 million impressions per month.
4.A.4 The GMTV Bingo Website
The Complainant says that the domain name <gmtvbingo.tv> was registered in October 26, 2007, by Gamesys Ltd for and on behalf of the Complainant. That domain resolves to a website at which the Complainant has offered online bingo services since October 2007. Internet users who type in the <gmtvbingo.tv> domain name are automatically redirected to the URL: <http:/static.jackpotjoy.com/upload/design/bingo/partners.html? partner=gmtvbingo>. The GMTV brand/mark appears at the top of each page of the GMTV Bingo website exhibited to the Complaint.
4.A.5 There are links from the GMTV website to the GMTV Bingo website and vice versa.
4.A.6 The Complainant exhibits a Google search result using the term “GMTV Bingo”. This lists the GMTV website as the first non-sponsored link. The Complainant asserts that it has unregistered trademark rights in “GMTV BINGO”
4.B.1 In 1999 the Respondent founded Cashcade, which is a United Kingdom online gaming business. He refers to an article reproduced in the Times Online entitled “Punters move from the bingo halls to internet” dated June 15, 2009. That article refers to the auction of Cashcade, in which Independent News & Media is reported as having “a near 20 percent stake”, the auction being expected to fetch between £70 million and £100 million. Cashcade is referred to as recently having reported “… a 91 percent jump in revenues to £33.7 million”, with pre-tax profits doubling to £10.9 million. Cashcade is referred to as “… owner of the popular Foxy Bingo and GetMinted casino web brands”. Foxy Bingo, founded in 2005 is reported to be “ the No. 2 online bingo brand behind Gala”.
4.B.2 The Respondent says that the disputed domain name was registered (on July 30, 2008) when Cashcade were considering a TV show for its bingo website <getmintedbingo.com>. He says that the concept was “GetMinted TV Bingo”, hence the shortened domain name <gmtvbingo.com>. The Respondent says that he also owns the domain name <gmbingo.com> and <getminted.com>. He says that Cashcade own many domain names and market in excess of 50 gaming websites. He states that the business makes in excess of £4 million per month from online bingo revenues.
4.C1 The Complainant exhibits an exchange of email correspondence between the Respondent and Mice and Dice Limited on November 3, 2008. That exchange reads as follows.
“From: Rob Young [Mice and Dice]
To: the Respondent
Subject: Re: Google Bidding Group-Brand bidding continuing
I hope you don't mind me mailing, but on a more personal note, I believe this domain belongs to yourself?
It currently redirects to 888. GMTV being a client of ours have questioned it, would you not prefer to redirect it to them/us as no doubt the destination URL would convert better?
The Respondent replied the same day in the following terms.
“Would love too or you can buy it if you want not fussed either way – good spot!”
5.A.1 Identical or Confusingly Similar
The Complainant says that it has rights in the registered trademark GMTV.
5.A.2 In the light of the extensive use of the GMTV trademark made in relation to the GMTV Programme, the Complainant asserts that a substantial number of people have come to associate the GMTV mark as denoting its services and that, consequently, substantial goodwill and reputation exists in the GMTV mark.
5.A.3 As regards the mark GMTV BINGO, the Complainant's case is that – as a result of substantial use made by it of both that mark and the GMTV mark – a substantial number of people have come to associate the names GMTV and GMTV Bingo when used in relation to the provision of online gaming services and, particularly, the provision of on-line bingo services, as denoting its services. Consequently, the Complainant asserts that a substantial goodwill and reputation exists in the marks GMTV and GMTV Bingo when used in relation to the provision of, particularly, on-line bingo services. Accordingly, the Complainant asserts trademark rights in GMTV BINGO.
5.A.4 The Complainant says that the disputed domain name is confusingly similar to its distinctive GMTV registered trademark and is identical to its GMTV Bingo unregistered mark in which it claims substantial reputation and goodwill. As to the former, use of the registered GMTV mark with the suffix “Bingo” of itself gives rise to a likelihood of confusing similarity.
5.A.5 First, the Complainant says that the Respondent is neither licensed nor otherwise authorised to use either of its GMTV registered and GMTV Bingo unregistered trademarks.
5.A.6 Second, the Respondent has not been commonly known by the disputed domain name and consequently cannot bring himself within paragraph 4(c)(ii) of the Policy.
5.A.7 Third, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within paragraph 4(c)(iii) of the Policy. This is because the disputed domain name resolves to the website “www.888ladies.com”, which offers competing online bingo services to those at the GMTV Bingo website. This will misleadingly divert Internet users intending to access the GMTV Bingo website to the “www.888ladies.com” website. The Complainant states its belief that the Respondent will receive click through revenue for each Internet user diverted to that website from the disputed domain name.
5.A.8 First, the Complainant says that the circumstances set out in paragraph 4(b)(iv) of the Policy are present. Namely, according to the Complainant, the Respondent has intentionally attempted to attract for commercial gain, Internet users to “www.888ladies.com” website, by creating a likelihood of confusion with the GMTV and GMTV BINGO marks as to the source, sponsorship, affiliation or endorsement of the disputed domain name and/or the website to which that domain name resolves.
5.A.9 As to registration in bad faith, the Complainant points to a message posted by the Respondent on December 22, 2007, which the Complainant says clearly demonstrates the Respondent's awareness of the GMTV and GMTV Bingo marks. The text of that Notice is as follows:
By Simon Collins on December 22, 2007
GMTVBINGO is brought to UK bingo players by JackPotJoy.co.uk – the site has over 40 bingo rooms and is a very successful partnership one of the earliest signed by the team at Gamsys. As GMTV.co.uk is advertised on TV daily, it is probably one of the bigger partners for JackPotJoy.com.”
In the circumstances, the Complainant says that the use to which the Respondent has subsequently put the disputed domain name – see, paragraph 5.A.7 above – is demonstrably in bad faith.
5.A.10 Second, the Complainant relies on paragraph 4(b)(iii) of the Policy, asserting that the Respondent registered the disputed domain name (in July 2008) primarily for the purpose of disrupting a competitor, namely the online bingo services offered at the GMTV Bingo website. The disruption is the diverting away mislead Internet users seeking the GMTV Bingo website to the “www.888ladies.com” website: see, paragraph 5.A.7 above.
5.A.11 Third, the Complainant relies on paragraph 4(b)(i) of the Policy, asserting that the disputed domain name was registered primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to that name. As evidence of this, the Complainant points to the email exchange on November 3, 2008 – described in paragraph 4.C.1 above – wherein the Respondent offered to sell the disputed domain name to the Complainant.
5.B.1 First, the Respondent says that the GMTV trademark is registered only in the United Kingdom and, consequently, cannot impact on Gtld “.com” domain names such as the disputed domain name.
5.B.2 Second, the Respondent says that the Complainant does not own the <gmtv.com> domain name and, consequently cannot use that against the disputed domain name.
5.B.3 Third, the Respondent says that the Complainant has no registered trademark for <gmtvbingo.com>.
5.B.4 Fourth, there is nothing unique about the GMTV Bingo mark, since the Complainant's <gmtvbingo.tv> domain name resolves to a site which “… is a simple reskin of JackPotJoy's site …”. That is simply a marketing arrangement and the website is in no way associated with the Complainant's business. Effectively, the GMTV Bingo online service is totally outsourced to JackPotJoy and the Complainant has no actual involvement with that service. The references to GMTV on that website are restricted to “… a very basic logo in the head of the page”.
5.B.5 Fifth, the Respondent says that the Complainant cannot reply on its GMTV trademark to give it rights to any domain name using the GMTV prefix. For example, the Complainant could not, the Respondent says, legitimately asserts right to online bingo market in Italy by claiming entitlement to <gmtvbingo.it>.
5.B.6 The Complainant apparently has an online shopping website but has not registered <gmtvshopping.com> as a domain name. The Complainant cannot, the Respondent says, expect to assert rights in the GMTV mark retrospectively against third party domain names incorporating GMTV as a prefix.
5.B.7 Accordingly, the Respondent's case appears to be as follows:
- The disputed domain name is not confusingly similar to the Complainant's registered GMTV trademark;
- The Complainant has no rights in GMTV BINGO as a registered trademark nor did it register <gmtvbingo.com> as a domain name.
Consequently, the Complainant cannot assert that the disputed domain name is confusingly similar to the limited rights it has to GMTV.
5.B.8 As noted in paragraph 4.B.1 above, at the time when the disputed domain name was created [July 2008] Cashcade was considering a TV bingo show for its GetMinted website. Hence, the abbreviation “GMTVBingo”, which was used for the domain name. Although not specifically asserted by the Respondent, the Response is, presumably, to be read as claiming use of that abbreviation in the form of the disputed domain name to be in connection with a bona fide offering of services and/or a fair use without intent to mislead/divert consumers.
5.B.9 The Respondent does not comment on his December 22, 2007 Notice – set out in paragraph 5.A.9 above.
5.B.10 Nor does the Respondent address the Complainant's assumption that he receives click through revenue for Internet users of the disputed domain name landing at the “www.888ladies.com” online bingo website, which competes with the JackPotJoy.com website to which the Complainant's <gmtvbingo.tv> domain name resolves and at which the Complainant's GMTV mark is featured.
5.B.11 As to the email exchange of November 3, 2008, the Respondent says that he received legal advice that he should reject Mr. Young's suggestion that he redirect the disputed domain name to the “www.JackPotJoy.com” website, since to do so would be tantamount to admitting that he had no legitimate rights in the disputed domain name. The Respondent says that he regarded Mr. Young's proposal “…a sharp practice approach to rob me of the domain …”.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the 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.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 The Complainant has demonstrated that it has rights in the registered trademark GMTV. Under the Policy, the fact that it is a United Kingdom registration is immaterial.
6.5 The Complainant has no registered trademark rights in GMTV BINGO. However, given the well-known status of the GMTV mark in the Untied Kingdom it is reasonable to assume that members of the public would association GMTVBINGO with the GMTV Programme such that, were a third party to make unauthorized use of the GMTV trademark in that way, it could be prevented as passing-off. This is, in the Panel's view, bolstered by the fact that the Complainant is apparently the beneficial owner of the <gmtvbingo.tv> domain name which was registered and used almost 2 years before the disputed domain name.
6.6 However, regardless of whether the Complainant has trademark rights in GMTV BINGO, the Panel considers that use of the well-known GMTV prefix with the descriptive suffix “bingo” is confusingly similar to the GMTV mark.
6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.8 It is apparent that seven (7) months before the disputed domain name registered (in July 2008) the Respondent was well aware of the Complainant's extension of its business to online bingo in partnership with the “www.JackPotJoy.com” website: see, the Respondent's Notice of December 22, 2007 set out in paragraph 5.A.9 above. Consequently, the Respondent knew that any plans to develop an online bingo service through its GetMinted website using GMTV as an abbreviation were likely to conflict with the Complainant's existing GMTVBingo business. Accordingly, the Respondent cannot bring himself within the bona fide harbour of paragraph 4(c)(i) of the Policy.
6.9 The Respondent does not seek to bring himself within paragraph 4(c)(ii) of the Policy.
6.10 The Respondent does not deny that he receives revenue from using the disputed domain name to link to the “www.888ladies.com” online bingo website. Given that the Panel has found confusing similarity in relation to paragraph 4(a)(i) of the Policy and that the Respondent's use of the disputed domain name is not bona fide, the Respondent cannot claim legitimate non-commercial or fair use under paragraph 4(c)(iii) of the Policy.
6.11 Accordingly, the Complaint succeeds in demonstrating that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
6.12 The Complainant's GMTV trademark was linked to the <gmtvbingo.tv> domain name and the online bingo website to which it resolved in October 2007. As noted in paragraph 4.A.4 above, that link was referred to in the Respondent's Notice of December 22, 2007. Seven (7) months later the Respondent registered the disputed domain name with the intention of using it for an online bingo website, which would compete directly with the GMTV BINGO website. Manifestly, such use would contravene the Complainant's rights in the GMTV mark. Consequently, the disputed domain name cannot have been registered in good faith. The Respondent cannot absolve himself in this respect by relying on the Complainant's apparent failure itself first to register the disputed domain name, rather than or in addition to the <gmtvbingo.tv> domain name.
6.13 The actual use being made of the disputed domain name [see, paragraph 5.A.7 above] clearly falls within the circumstances set out in paragraph 4(b)(iv) of the Policy. Consequently, the Complaint meets the two requirements of paragraph 4(a)(iii) of the Policy.
6.14 In the circumstances, it is not necessary to make any holding with regard to the Complainant's case under paragraph 4(b)(i) and (iii) of the Policy. But, as regards the Respondent's email of November 3, 2007, that email does not, in the Panel's view, constitute evidence to support a finding of bad faith under paragraph 4(b)(i) 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 <gmtvbingo.com> be transferred to the Complainant.
Dated: August 4, 2009