WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bet365 Group Limited v. Domains by Proxy, Inc. / Steve Prime
Case No. D2011-1242
1. The Parties
The Complainant is bet365 Group Limited of Stoke-on-Trent, United Kingdom of Great Britain and Northern Ireland, represented by SJ Berwin LLP, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “U.K.”).
The Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America (the “United States”)/ Steve Prime of Moncton, New Brunswick, Canada.
2. The Domain Names and Registrar
The disputed domain names <365bets365.com>, <365casino365.com>, <365poker365.com>, <365wager365.com> (collectively “the Domain Names”) are registered with GoDaddy.com, Inc (“GoDaddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 22, 2011, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the Domain Names. On July 26, 2011, GoDaddy transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 26, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 27, 2011.
The Center verified that the Complaint together with the amended 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 August 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2011. The Response was filed with the Center on August 22, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on August 24, 2011. 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.
After the Panel was appointed, the Center received numerous supplementary filing from the parties, none of them requested by the Panel: the Complainant submitted a “reply” on August 30, 2011, and the Respondent countered with no fewer than four emails (dated August 30 and 31, and September 1, 2011), and a formal “Reply” of his own dated September 2, 2011. In each case, the Center advised the filing party that the Policy makes no provision for supplementary filings, and that it would be for the Panel in its discretion to determine whether the supplementary filing should be admitted and considered.
In view of the exceptional length of the Response (35 pages and 12 exhibits), and the number of supplementary filings, on September 7, 2011 the Panel extended the time for it to give its decision in this case to September 14, 2011.
4. Factual Background
The Complainant is a member of a United Kingdom-based multi-national corporate group. Its key business lies in the online gambling industry, which it operates through a number of websites including “www.bet365.com”. Sub pages of that website include http://poker.bet365.com/en/, and http://casino.bet365.com/en/. The Complainant also provides other forms of gambling services, such as telephone and mobile phone betting.
The Complainant relies upon a number of BET365 registered trademarks, including BET365 figurative and word marks registered in the United Kingdom and in the European Union. The Complainant says that it has been using its BET365 mark since 2001, when it first started trading in Europe. It claims a significant reputation in that mark, derived from its market presence around the world and its 5 million plus members in 200 countries.
The Complainant holds a United Kingdom trademark registration number 2456453 for the word mark BET365, registered with effect from May 23, 2007. The registration covers a variety of goods and services in international classes 9, 28, 35, 36, 38, 41, and 42. The Complainant also holds a number of BET365 figurative marks registered in the United Kingdom, the earliest of which appears to have been registered in 2000.
In addition to the U.K. and Community Trademarks, the Complainant produced evidence that it has been the proprietor of the word mark BET365 in Australia since August 17, 2010. It has also applied to register its BET365 mark in Canada. The Canadian application, made in November 2010, claimed use of the mark in Canada since at least as early as May 2009 in respect of various services, including gaming and gambling services.
The Complainant says that it has not licensed, or otherwise directly or indirectly authorized the Respondent to use its BET365 trademark, or any marks which are confusingly similar to that mark.
The Respondent and PrimeTime Domains
The Respondent is a 28 year old Canadian based in Moncton, New Brunswick, where he is employed full time as a fund raiser for a marketing company. From around 2007, he began to acquire and trade in domain names. He says that he now has about 3,000 of them, all in the “.com” gtld. In one email produced with the Response, the Respondent indicated that his desire was to build up his domain name business to the point where he could retire from his fundraising job, and focus solely on the domain name business.
The Respondent uses at least two different email addresses, one of which includes the expression “Gretzky 99”.
At some point the Respondent came up with an idea for creating domain names in the premium “.com” gtld which he believed would have considerable value. The formula involved taking a number which had some particular meaning or connotation, and forming the domain name by placing that number on either side of a generic expression. The Domain Names are examples of the Respondent adopting this sequence, where the number “365” refers to the number of days in a year.
Other numbers with particular connotations which the Respondent has used to create domain names in this form, include 911, the emergency telephone number used in the United States, in the form <911[genericexpression]911.com>, and 420, a number said to have a marijuana connotation, in the form <420[generic expression]420.com>.
The Respondent has registered over 90 “365” domain names, all in the form “365[generic expression]365.com”, and all registered on May 6, 2011. The Domain Names are among them. Apart from the Domain Names, a number of them have “gambling” themes – e.g. <365bookie365.com>, <365betwire365.com>, and <365bingo365.com>. A total of 182 domain names were registered by the Respondent on May 6, 2011, all of them through GoDaddy. The Respondent produced a GoDaddy invoice showing that he paid a total of USD1,432.34 for the 182 domain names, with the one year registration fee waived and a free privacy service.
On May 11, 2011, the Respondent registered the name “PrimeTime Domains” (referred to hereafter as “PTD”) in the province of New Brunswick, as a business name. The business activity stated on the relevant registration form was “Marketing of premium domain names”, although it appears that PTD also carries out some website development work.
In May 2011, PTD applied to the operators of several betting websites, to join their “Affiliate” programs. Briefly, that would mean providing on websites controlled by PTD advertising for, and links to, the websites operated by the betting companies. In return, PTD would earn a commission.
Among the betting companies to which PTD made application for Affiliate status, were Sports Interaction, of Quebec, Canada (hereafter referred to as “SI”), and the Complainant. Email correspondence produced by the Respondent shows that PTD was notified by SI on May 30, 2011 that its application for Affiliate status with that company had been successful. But PTD’s approach to the Complainant was unsuccessful; the Respondent was notified of that outcome on May 31, 2011.
With its application to the Complainant for Affiliate status, PTD nominated certain of the Respondent’s “365” domain names which would be used by it if its Affiliate application were successful. Those domain names are referred to hereafter as “the 365.com domain names”.
Websites to which the Domain Names have Resolved
The Complainant alleges that, as at June 2011, the Domain Names pointed to a website operated by SI, a company with which the Complainant does not have, and did not then have, any affiliation or relationship. The Respondent denies that allegation, saying that the Domain Names each pointed to landing pages which he created, with the SI website accessible only indirectly by clicking on links provided on those landing pages. The Respondent stated that the purpose of the landing pages was to explain the service offered by the betting company, and to provide a security check to ensure that guests entering the betting company’s website first verified that they were of full age.
Copies of screenshots taken from websites to which each of the Domain Names resolved before the Complaint was filed were produced with the Complaint, but they do not appear to show when the shots were taken.
An email to the Respondent from SI dated June 1, 2011 appears to show that, as at that date, 12 of the Respondent’s domain names resolved (contrary to SI’s requirements) directly to SI’s website. The Domain Names, except <365wager365.com>, were among them. An SI email dated June 20, 2011 noted that 27 of the Respondent’s domain names then resolved direct to the SI website, and a July 5, 2011 email from SI to the Respondent appears to suggest that the Domain Name <365bets365.com> was then pointing direct to the SI website.
The Domain Names are for Sale
At Annex 4 to the Response, the Respondent produced evidence showing that each of the Domain Names is listed for sale on the GoDaddy website at a price of CAD98,134.44.
The Respondent asserted that those prices have been deemed fair and accurate by GoDaddy.
The Website at Pro-linesucks.com
In the Complaint, the Complainant contended that the Respondent was leading a campaign against the government-owned betting agency ProLine, operating from a website at “www.prolinesucks.ca”. The Complainant alleged that the Respondent’s aim was to inform Canadians that Proline had been “cheating and skimming their customers from coast to coast since the inception of Proline over 15 years ago”. The Complainant said in the Complaint that it did not want to be associated with that campaign in any way, and that it was concerned that the Respondent intended to use the Domain Names as leverage in his campaign (referring to an email from the Respondent dated June 22, 2011, in which the Respondent said: “the 365.com Family is basically gravy on top and provides our Anti Proline Network with extra leverage and strengths moving forward”).
In the Response, the Respondent drew attention to the website at “www.proline-sucks.com”, a website (operated quite independently of the Respondent) which was also running an anti-Proline campaign. The Respondent provided evidence that the Complainant had itself been associated with this website before the present Complaint was filed. He produced screenshots of the website at “www.proline-sucks.com” which included advertising material from the Complainant, including a “Special Promotion” being run by the Complainant. Visitors to the website at “www.proline-sucks.com” were invited to click on the banner below for details of the special promotion. The banner consisted of what appears to be the Complainant’s logo, and contained the words: “bet365 JOIN NOW”.
Pre-commencement correspondence between the Complainant and the Respondent
The Respondent did not take the rejection of his application for Affiliate status with the Complainant lying down. On June 1, 2011 he sent an email to the Complainant expressing his disappointment. He said that, being a 10 year client of the Complainant and a Canadian entrepreneur, he had expected a different follow-up answer to his application. He advised that after its Affiliate status application had been rejected by the Complainant, PTD authorized its broker to accept an initial proposal from SI for exclusive use of the 365.com domain names for SI’s marketing purposes. The contract with SI was said to be scheduled to begin officially in July 2011. The Respondent concluded his email by giving the Complainant a “final opportunity” to acquire the 365.com domain names, by going to GoDaddy and purchasing them there; alternatively, the Respondent would consider allowing the Complainant to acquire all of the 365.com domain names in a transaction entered into direct with himself. The 365.com domain names were said to have a value of over USD90,000 each.
On June 2, 2011, the Complainant sent a very short email to the Respondent, enquiring exactly what it was the Respondent was offering the Complainant.
In another lengthy email dated June 2, 2011, the Respondent advised that he was offering the Complainant PTD’s services as a fulltime Canadian marketing company, which would promote and encourage millions of people to switch from their current sportsbook maker, casino, or poker site, and come to the Complainant’s website. The Respondent referred to an “underground backlash” which was said to be growing in Canada against the Government-owned “ProLine” sports betting provider, and contended that there was a great opportunity for a mutually productive and lucrative relationship between PTD and the Complainant. In the meantime, PTD had accepted a “test trial” from SI.
The Respondent said in his June 2 email that SI had not been made aware that the 365.com domain names were currently available for sale on GoDaddy. The Respondent continued:
“I truly believe that sportsinteraction will purchase these Domains once they are made aware of the only place they are currently available for sale Go.Daddy.com.”
The Respondent stated in his email that, for the time being, he had declined an offer to use the 365.com domain names fulltime to promote SI exclusively, and that he stood by his judgment that the Complainant’s was the best site and service for Canadians, and that he wanted to promote the best to his customers. However near the end of his June 2, email the Respondent said:
“It may be your best interest to by [sic] 365 bets365.com from Godaddy.com on your own, and we do not object to that transaction.”
On June 6, 2011, the Complainant sent a brief reply email, advising that the Complainant then had no plans to change its marketing strategy. The email also advised that the Complainant was looking into the issue of the “domains similar to our brand”.
The Respondent replied immediately, with another lengthy exposition of the claimed benefits of the Complainant appointing the Respondent as its partner in developing the Complainant’s business in Canada. He said that GoDaddy had appraised the 365.com domain names, and valued them at over USD50,000 each. He concluded his email by asking the Complainant to make an offer to acquire the 365.com domain names from the Respondent, saying that he would seriously consider such an offer. The Respondent concluded the email by stating:
“It is in your best interest reply promptly as mentioned previously that Sportsinteraction is ambitious and aggressively seeking to acquire the 365.com Family to their portfolio permanently. If bet365 does not want these or serious about pursuing these, then they will be available to the next interested company in line …”
On June 7, 2011, the Complainant sent a further enquiry email, stating that it would now like to explore the Respondent’s offer further, in order to see if it would make any sense for the Complainant to pursue it. The Complainant asked what the Respondent would regard as a sensible price for the 365.com domain names, noting that the Complainant was not sure if it would be interested in purchasing all of them but that that might be price-dependent.
When no reply had been received by June 15, 2011, the Complainant sent the Respondent a further email asking the Respondent to get back to it.
The Respondent replied substantively later the same day, reiterating that the current prices set by GoDaddy for the 365.com domain names were approximately USD90,000 each. The Respondent pressed ahead with his suggestion that the Complainant should make him an offer to acquire the 365.com domain names. He made it clear that the decision on sale price would ultimately be made by PTD, it being “the only company with the power to reduce the GoDaddy price and offer a private sale and a combined sales price for multiple 365.com domains and ever sell them as a complete set”.
The Respondent went on in his June 15, 2011 email to say:
“We understand that ultimately, bet365 would benefit the greatest from these names to expand your portfolio and to eliminate any competition from using these Premium Domains for their benefit moving forward. However, if Bet365 does not wish to seriously pursue and finalize an agreement with either Go Daddy or Prime Time Domains to purchase and transfer these domain names, then they will be available to other companies.
Sportsinteraction does wish to Lock us in a contractual agreement to use the 365.com exclusively as subdomains or promotional sites for sportsinteraction for years to come.”
The Respondent referred to the exciting potential the 365.com domain names would have for PTD in terms of generating future revenue streams, pointing out that it would lose those revenue streams if the Respondent sold the 365.com domain names to the Complainant. However, if the Respondent sold the 365.com domain names to the Complainant (“the company who benefit the most for brand protection”), that could generate immediate revenue for the Respondent to start other projects and campaigns. The Respondent again asked the Complainant to advise what it felt was a fair price to acquire the 365.com domain names, noting that a purchase by the Complainant “would at the same time be eliminating the association of the 365.com domains with sportsinteraction and the current and future revenue Prime Time Domains will receive from promoting and signing up new customers and The Huge VIP commission Plan we are currently on making our current partnership with sportsinteraction very lucrative …”.
On June 22, 2011, the Respondent sent another email to the Complainant, saying that he had stalled the 365.com website launch trial as long as possible to receive and review any offer the Complainant might make for the 365.com domain names. However, other major stakeholders in the Respondent’s project with SI had apparently insisted that the project should proceed as planned. The Respondent advised that the first site had been launched that afternoon at the Domain Name <365bets365.com>.
The Respondent repeated his criticisms of the ProLine betting service operated in Canada. He said that he had selected SI as the 2011-2012 number one recommended Canadian sportsbook and casino, and that PTD was proud to promote SI to the Canadian market.
The Respondent went on to describe the development proposals for the 365.com domain names, referring to fan pages linked up with other recommended sportsbooks, and with well known social networking websites. Tee-shirts and merchandise were proposed. The implication of all this development, according to the Respondent, was that the 365.com domain names would be worth millions of dollars, whether as an operational business or for resale. The Respondent then said that, with all of that in mind, he had “final authority” to strike a deal with the Complainant. At the time of the email, the Respondent’s arrangement with its major partner was said to involve a three month trial period, which the Respondent could terminate early if it wished. The Respondent went on to say:
“My personal view is that prolinesucks.ca, prolinesecrets.com, ihateproline.com, etc … are all the websites PrimeTime Domains requires to express a message, inform an audience and save Canadian sport betters. The 365.com family is basically gravy on top and provides our anti Proline network with extra leverage and strengths moving forward.”
The Respondent again asked the Complainant to review GoDaddy’s prices for the 365.com domain names. He made it clear that a sale to the Complainant was his preference, saying that the future of the 365.com domain names and the wagering websites was “now in the hands of [the Complainant]”.
The Complainant did not reply to the Respondent’s June 22 email. Instead, its lawyers sent a letter to the Respondent dated June 24, 2011. The letter demanded that the Respondent provide certain undertakings, and it set out the Complainant’s view that the Complainant was entitled to recover certain of the 365.com domain names from the Respondent under the Policy. The Complainant’s lawyers argued that it was clear that the Respondent had prior knowledge of the Complainant and its business, and that the Respondent thought the Complainant might be interested in purchasing the domain names referred to in the letter because of their similarity to the Complainant’s business name, Bet365. The Complainant’s lawyers further alleged that the Respondent had been engaged in a pattern of registering domain names incorporating the trademarks of other famous brands. These were said to include the family of “GRETZKY 99” trademarks, registered in Canada to the well known ice hockey player, Wayne Gretzky. The Complainant’s lawyers noted that the Respondent had no apparent affiliation with Mr Gretzky or his businesses.
The Respondent replied direct to the Complainant, on June 25, 2011. He expressed displeasure at the Complainant bringing lawyers into what the Respondent professed to believe had been “mutual and professional” interactions between the parties. He rejected completely the allegations in the letter from the Complainant’s lawyers. He claimed that PTD was a law-abiding company with no previous legal complaints, and indicated that it did not participate, promote or endorse “copyright infringement of any type”. He denied that the 365.com domain names were confusingly similar to the Complainant’s BET365 logo or brand, or that the 365.com domain names infringed the Complainant’s copyright or trademarks. He generally made it clear that he was upset that the Complainant had, in his view, appeared to show genuine interest in his proposals and then, without warning, had its lawyers send him a cease and desist letter.
The Respondent rejected any suggestion that the Complainant could claim rights in the number “365”, which he said was universally recognized as representing the number of days in the year. Nor could the Complainant claim rights in universally recognized words such as “baseball”, “sports”, and “football”.
Respondent’s email communications with SI
The Respondent was notified by email on May 30, 2011, that PTD’s application for Affiliate status with SI had been accepted.
On June 1, 2011, the Respondent sent a lengthy email to SI, in which he claimed that the minimum sale value of each of the 365.com domain names was USD90,000, as appraised by GoDaddy. The Respondent invited SI to visit the GoDaddy website to check out those values.
The Respondent told SI that he had over “$1 million” worth of domain names working for SI, and that PTD’s domain names portfolio overall was valued at over “$50 million”.
The Respondent’s June 1, 2011 email to SI included the following:
“Did you know that Bet365 has offered a lucrative offer to have PrimeTime Domains and GoDaddy to be their partners and leave Sports Interaction? They have not only offered higher commission structure, they have offered an upfront CASH DEAL to sign with them exclusively. It was a very tempting offer, However PrimeTime Domains decided and chose to decline Bet365 Admirable and Great offer to stay loyal to our Fellow Canadian company Sports Interaction and together we will have CANADA WIDE DOMINANCE.”
The Respondent promised not to direct his domain names direct to SI’s website in the future, and he asked SI to let him know which of his websites were regarded as non-compliant in that respect.
In an email dated June 2, 2011 to SI, the Respondent said:
“… I have been accepted as an affiliate for Pinnacle Sports, Bet365, among other companies and selected Sports Interaction as our premier choice. …”
In the same email, the Respondent asserted that PTD had invested over “$100,000” in its domain name portfolio.
In an email dated June 7, 2011, the Respondent told SI that he was not the owner of the marketing company by which he was employed, so sometimes he would not be able to take PTD calls when he was working on his fundraising activities. He told SI that he had been doing the fundraising work for 5 years, but was slowly transitioning to work fulltime on PTD business, retaining only a part-time role with the marketing company.
On July 5, 2011, SI sent an email to the Respondent advising that it had received a complaint from the Complainant with regard to the Respondent’s website at “www.365bets365.com”, and how that Domain Name redirects to the SI website. SI noted that it knew that the Respondent was working on getting one page websites set up, and asked the Respondent to make getting a website set up at “www.365bet365.com” the Respondent’s top priority.
On July 11, 2011, SI emailed the Respondent again, advising that it had been contacted by the Complainant’s lawyers in regard to some of the Respondent’s domain names, and that it wished to discuss the situation with the Respondent.
An email from SI dated July 14, 2011 makes it clear that the Respondent had sent some information to SI, but did not say what that information was. The July 14 email asked the Respondent to update two websites referred to in the cease and desist letter, namely the websites at the Domain Names <365poker365.com> and at <365baseball365.com>.
The Respondent stated in the Response that PTD’s Affiliate status with SI was terminated when he received a call from SI telling him that its legal team had suggested that the relationship be terminated. It is not clear from the Response when that occurred.
Pre-commencement correspondence between the Complainant and SI
The Complainant’s lawyers wrote to SI on June 24, 2011. They referred to a number of “365” domain names registered by the Respondent, including the Domain Names. They alleged that the Respondent had registered these domain names in bad faith, in order to attract confused customers of the Complainant to the SI website at “www.sportsinteraction.com”, for commercial gain. They further alleged that the Respondent was using this as leverage to pressure the Complainant to purchase the referenced 365 domain names from it. The Complainant’s lawyers placed SI on notice that if it were to acquire the “365” domain names from the Respondent, the Complainant would commence a proceeding under the Policy to recover them. They asked SI to terminate any contractual arrangements it had with the Respondent in respect of any of the “365” domain names mentioned in the letter, and to agree not to enter into any future contractual arrangements with the Respondent in respect of any domain names incorporating the marks “bet365” and/or “365”.
SI replied by email to the Complainant dated July 19, 2011. It advised that it did not have any ambition to acquire the “365” domain names referred to by the Complainant’s lawyers. It denied having instructed the Respondent to source traffic by any means that would abuse or infringe the IP and trademarks of any other company. It said that it did have an affiliate agreement with the Respondent, but that was its only agreement with the Respondent. It said that it only became aware of the marketing tactics being employed by the Respondent when it received the cease and desist letter from the Complainant’s lawyers.
SI advised the Complainant that it had instructed the Respondent to remove any “365” URL’s infringing the Complainant’s trademarks, immediately. It said that it had also more fully reviewed the Respondent’s email correspondence with the Complainant, and that it had noted that the email correspondence:
(a) falsely claimed that SI was the instigator of and party to the Respondent’s marketing tactics; and
(b) misrepresented SI in an attempt to extract payments for the Respondent’s “365” domains from the Complainant.
SI advised that it considered the Respondent to be in breach of his Affiliate agreement with SI, and that his account with SI had been suspended permanently.
Other Betting Websites Operated at Domain Names which Incorporate the Number “365”
The Respondent produced evidence showing that there are a number of betting websites, with no apparent connection with the Complainant, operating from domain names which include the number “365”. These domain names include <365betting.net>, <365dayssportsbook.com>, <365sportsbookie.com>, <bet365sportsbookonline.com>, <gambling-365.com>, <vegas365.com>, <poker365.com>, and <bets365.com>.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Names are each confusingly similar to one or more of the Complainant’s BET365, BET365 stylized, and other BET365 formative marks registered in the United Kingdom and the European Union. The Complainant also has unregistered rights in its BET365 marks: GBP24 billion in wagers have been placed with the Complainant since it commenced trading under its BET365 mark in 2001, and since 2001 the Complainant has spent considerable sums on press and media advertising of its mark throughout the European Union.
2. The dominant and distinctive element of the Domain Name <365bets365.com> is “bet[s]365”. As such, this Domain Name incorporates both parts of the Complainant’s business name and its BET365 trademark. The fact that a disputed domain name wholly incorporates a complainant’s mark is sufficient to establish identity or confusing similarity for the purposes of the Policy, despite the addition of other words to such marks (e.g. in this case, the additional “365” added at the start of the Domain Name). The additional “s” after “bet” does nothing to deflect the impact of this Domain Name on the Internet user.
3. As for the Domain Names <365casino365.com>, <365wager365.com>, and <365poker365.com>, the distinctive element in each case is the “365”. In each case, that element is combined with another “betting” term which is similar in meaning and connotation to the first part of the BET365 trademarks – the word “bet”. Furthermore, given that the Complainant’s BET365 marks are well known in Europe, the Complainant’s customers and the average consumer of betting services in Europe will associate domain names which incorporate “365” and another “betting” term, with the Complainant. Also, it is clear from the Respondent’s emails to the Complainant dated June 15, 2011 and June 22, 2011, that the Domain Names were registered because of their similarity to the Complainant’s BET365 trademarks, and to attract business away from the Complainant through threats.
4. The Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant relies on the following contentions:
(i) The Complainant has not licensed or authorized the Respondent to use its BET365 trademarks, or any marks which are confusingly similar thereto.
(ii) The Respondent initiated all correspondence with the Complainant and has been well aware of the Complainant and its business since at least 2001. The Respondent was well aware of the Complainant’s rights in the mark BET365 at the time of registering the Domain Names.
(iii) SI is a provider of betting and gambling goods and services like the Complainant, and it has no connection or relationship whatsoever with the Complainant and its business. The Respondent thought that he could blackmail the Complainant into purchasing the Domain Names because of their similarity to the mark BET365 and by threatening to sell them to SI, when in fact, the Respondent had no legitimate interests in the “365” formative domain names. The Complainant referred to the Respondent’s email to the Complainant dated June 6, 2011, in which the Respondent stated that SI was “ambitious and aggressively seeking to acquire the 365.com Family to their portfolio permanently. If bet365 does not want these or serious about pursuing these, then they will be available to the next interested company in line”. The Complainant also referred to a reference in the Respondent’s second email of June 15, 2011 to the prospect of an acquisition of the 365.com domain names by the Complainant “eliminating the association of the 365.com domains with sportsinteraction”.
(iv) The Domain Names take advantage of the reputation and goodwill developed in the Complainant’s BET365 trademarks. ‘
(v) The Respondent’s use of the Domain Names tarnishes the Complainant’s brand and the BET365 trademarks.
(vi) The Respondent’s use of the Domain Names is not in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The Respondent has no registered or common law intellectual property rights or other rights in the Domain Names, or in the expressions “bet365” and/or “365”.
(vii) The Respondent registered the Domain Names to attract customers looking for the Complainant’s services (including those offered by the Complainant at its websites at “www.bet365.com and” “www.poker.bet365.com”. The Respondent’s use of the Domain Names creates customer confusion and dilution of the Complainant’s trademarks, and as such cannot be considered to be bona fide.
5. The Domain Names were registered and are being used in bad faith. The Complainant relies on the following contentions:
(i) The Domain Names are confusingly similar to the Complainant’s BET365 trademarks, and the Respondent has no rights or legitimate interests in the Domain Names.
(ii) The Respondent clearly knew about the Complainant’s business and its BET365 trademarks when registering the Domain Names.
(iii) The Respondent has registered and used the Domain Name, intentionally to attempt to attract, for commercial gain, Internet users to the competitor gaming website of SI, by creating a likelihood of confusion with the Complainant’s BET365 trademarks, as to the source, sponsorship, affiliation, or endorsement of the websites.
(iv) The Respondent registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant, who was the owner of the trademark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Names. The Respondent has used the association of the Domain Names with SI as leverage to pressure the Complainant to purchase the Domain Names for extortionate prices (referring to the Respondent’s email dated June 1, 2011).
(v) The Domain Names are designed to disrupt and harm the Complainant’s business by diverting potential customers away from the Complainant’s authentic website to the third party competitor website of SI, to generate revenue for the Respondent. This causes commercial detriment in terms of consumer confusion, lost sales and goodwill, and the loss of the Complainant’s general ability to communicate and transact with existing and potential customers.
(vi) The Respondent’s complete lack of intellectual property rights in the Domain Names and the marks “BET365” and “365”, further demonstrates bad faith. The Respondent is guilty of “opportunistic bad faith” (citing Veuve Clicquot Ponsardin, Maison Fondee en 1772 v The Polygenix Group Co, WIPO Case No. D2000-0163).
(vii) The fact that the Respondent has taken active steps to conceal his true identity by employing the privacy protection services of Domains by Proxy, is also evidence of bad faith.
(viii) The Respondent has engaged in a pattern of registering domain names that incorporate the trademarks of other famous brands. The Respondent uses the email address “[…]@99gretzky99.com”, which includes the domain name <99gretzky99.com>. That domain name incorporates the family of “Gretzky 99” trademarks registered in Canada to Mr. Wayne Gretszky, the famous ice hockey player who wore the number “99” on his jersey. It is clear that the Respondent has no affiliation with Mr. Gretzky or his business, and there can be no legitimate reason for the Respondent’s use of that email address.
(ix) The Complainant does not want to be associated in any way with the Respondent’s “Proline sucks” campaign, and is concerned that the Respondent intends to use the Domain Names as leverage in his campaign.
The Respondent contends:
1. The Complainant has no “universal” rights in “365” or in any of the generic words “casino”, “poker”, “wager”, and “gambling”. “365” just refers to the number of days in a year.
2. There is no likelihood of confusion between the Domain Names and the Complainant’s trademarks. There has been no previous affiliation or other commercial connection between the Complainant and the Respondent or PTD, and the parties use different colors and logos on their websites. Furthermore, the Complainant is based in Europe, and is not at all well known in Canada. The Respondent and SI both operate in North America. PTD is Canadian-owned and operated, and has no advertising or customers in Europe. The only thing in common between the Complainant’s trademarks and the Domain Names, is the number “365”, a generic expression which is used by many other operators of websites with no connection or affiliation with the Complainant (including a number of betting websites).
3. The Respondent has not been copying the Complainant’s logo or colors, or otherwise infringing the Complainant’s copyright or trademarks.
4. The Respondent has not made any threats to the Complainant. The Complainant has taken quotes from the Respondent’s emails out of context in that regard. In reality, the Respondent was just giving the Complainant additional selling features, including great brand protection and the elimination of competition. In fact, PTD went beyond the normal call of duty by making these Domain Names potentially available to the Complainant.
5. If the Complainant had a valid interest in the Domain Names, it would have registered them itself.
6. The Respondent and the Complainant had a great business relationship and worked professionally together until the Complainant, without notice or provocation, brought in its lawyers against PTD. Prior that time, both parties had participated equally in discussions relating to the possible acquisition of the 365.com domain names by the Complainant. It was the Complainant who kept following up wanting a price for the 365.com domain names.
7. The Complainant acted wrongly and maliciously in writing to SI, making false accusations and telling bold lies about PTD and the Respondent. The Respondent had a great relationship with SI before SI received the cease and desist letter from the Complainant’s lawyers.
8. SI only terminated its Affiliate relationship with PTD in the face of the Complainant’s unjustified threats, and possibly only for the purpose of saving face.
9. The Respondent has never manipulated any customers visiting websites at the Domain Names into believing that the websites are in any way related or affiliated to the Complainant. The websites were legitimately promoting the services of SI.
10. As for the use of a privacy shield in registering the Domain Names, that was not done for any bad faith purpose. It was simply offered free by GoDaddy for one year, and the Respondent accepted it.
11. There is hard evidence that the Complainant defamed the Respondent and/or PTD, and is attempting to reverse domain name to hijack the Domain Names, by making false accusations in the Complaint about PTD damaging the Complainant’s reputation, because of PTD’s involvement in the anti-Proline network. The Complainant says that it did not want anything to do with anti-Proline, but in reality the website at “www.proline-sucks.com” (which has a clear anti-Proline message) has banners and promotions by the Complainant posted on it.
13. The Respondent owns a “brand” consisting of the <#[generic expression]#.com> domain name sequence, and the Domain Names are only four out of approximately 100 such “365” domain names registered by the Respondent.
14. The Respondent and PTD have no history of copyright or trademark infringement, or other illegal activity. The Domain Names were not acquired by the Respondent in bad faith.
6. Discussion and Findings
A. Procedural Issues – Unsolicited Supplementary Filings, and the Length of the Response
The Panel declines to accept or consider any of the supplemental filings.
First, the Rules contemplate a relatively fast-track administrative proceeding, with short timeframes for a Respondent to file a response and for the panel to give its decision. The Rules contemplate that each party will have only one opportunity to present its case, and parties have no express right to submit supplementary filings.
However, the Panel does have a discretion to accept and consider supplementary filings when the justice of a particular case so requires. That might occur, for example, where a respondent raises relevant facts or argument in its response which the complainant could not with reasonable diligence have anticipated when it filed its complaint. However there are no hard and fast rules limiting the circumstances in which a panel may accept a supplementary filing, beyond the requirement at paragraph 10(b) of the Rules that each party must be given a fair opportunity to present its case.
In this case, the unsolicited “Reply” did not raise any new matter which the Complainant could not reasonably have anticipated when it filed its Complaint. It consisted substantially of a repetition of the arguments already advanced by the Complainant in its Amended Complaint. In those circumstances, the Panel declines to accept the Complainant’s “Reply”.
The Respondent’s numerous supplementary filings were largely directed to the proposition that the Complainant’s “Reply” should not be considered by the Panel. The Complainant’s “Reply“ has not been accepted by the Panel, and in those circumstances procedural fairness does not require that the Respondent’s numerous emails and purported “Reply” of his own should be admitted and considered.
The length of the Respondent’s Response
The Response ran to no fewer than 34 full pages, together with 12 annexes, some which contained further argument penned by the Respondent. It must have been well in excess of the 5,000 word limit prescribed by paragraph 10(b) of the Supplemental Rules. Furthermore, much of it was unnecessarily repetitive.
None of that assisted the Respondent. As will be seen, the Respondent did have some valid arguments, but they were relatively narrow in focus, and the Panel had to read through a great deal of material which clearly lacked any merit. In such circumstances, there can be a danger that meritorious points raised by a party making such a submission might be lost, or not given appropriate weight. The Panel has worked hard to ensure that that has not happened here, but if the Respondent is ever involved in proceedings under the Policy in future, it is strongly recommended that his position be put more concisely, and he may wish to consider seeking legal advice for that purpose.
B. What the Complainant must prove under the Policy
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
C. Identical or Confusingly Similar
How WIPO UDRP Panels have applied paragraph 4(a)(i) of the Policy
The Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (‘WIPO Overview 2.0’)” notes at paragraph 1.2, that the test at paragraph 4(a)(i) of the Policy requires that the complainant’s trademark should generally be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient for a respondent to prevent a finding of confusing similarity. Paragraph 1.2 of the WIPO Overview 2.0 goes on to say:
“Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumerical string in the domain name. …”
WIPO Overview, 2.0 notes that some panels have additionally required that, for a disputed domain name to be regarded as confusingly similar to the complainant’s trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. WIPO Overview 2.0 notes in that regard:
“Such panels would typically assess this risk having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an Internet user unfamiliar with any meaning of the disputed domain name seeking the complainant’s goods or services on the worldwide web would necessarily comprehend such distinguishing value viz-a-viz the relevant mark”.
WIPO Overview 2.0 notes the consensus of WIPO UDRP panels that the content of a website would usually be disregarded in the assessment of risk of confusing similarity under paragraph 4(a) of the Policy (although the content of the relevant website may be highly relevant to the assessments to be made under paragraphs 4(b) and/or 4(c) of the Policy).
The Domain Name <365bets365.com>
The Panel is satisfied that the Complainant has proved this part of its Complaint in respect of this Domain Name.
First, the Panel notes that the Complainant is the registered proprietor in the United Kingdom of the word mark BET365, and that that mark is repeated almost exactly in the <365bets365.com> Domain Name (the only differences are that this Domain Name has an additional “365” at the beginning, and interposes an “s” between the “bet” and the second “365”). Visually and aurally this Domain Name is very close to the Complainant’s BET365 mark, and it conveys the same impression, or idea.
In the Panel’s view, the addition of the letter “s” between the “bet” and the “365” is insignificant, and the addition of the “365” at the beginning of this Domain Name serves only to underline the fact that the Domain Name combines both elements of the Complainant’s word mark. That mark is readily “recognizable as such” within this Domain Name. In the result, the additions which the Respondent has made to the Complainant’s word mark are insufficient to avoid a finding of confusing similarity (the “.com” suffix is not taken into account in the comparison).
The Domain Names <365casino365.com>, <365wager365.com>, and <365poker365.com>
A straightforward visual or aural comparison of the Complainant’s trademark with the alphanumeric strings in these Domain Names can only result in the conclusion that they look and sound quite different from the Complainant’s BET365 mark. The word “bet” is not included in these Domain Names at all, and in those circumstances it cannot be said that the Complainant’s mark is “recognizable as such” within them (to borrow from the language at paragraph 1.2 of WIPO Overview 2.0).
The Complainant argued that the element “365” of the Complainant’s mark is combined in these Domain Names with other terms (“casino”, “wager”, and “poker”) which have a “betting” connotation, and that that combination is likely to mislead Internet users as to the source, sponsorship, affiliation, or endorsement of the Domain Names. In terms of the WIPO Overview 2.0, the Complainant appears to be arguing that Internet users may actually believe there to be a real connection between these Domain Names and the Complainant or its services. The Panel does not accept that submission.
First, “bet” and “365” are both common, every day expressions in the English language. The evidence shows that the Complainant has relevant trademark rights in them in combination, but there is nothing in the evidence which would suggest that the Complainant has any rights in respect of the element “365” on its own. Furthermore, the words “casino” and “poker” are not synonyms for the word “bet” in the English language, and they do not convey the same impression. One may “bet”, or place a “bet”, without going near a casino or playing poker. The fact that those words are terms which may be used in the Complainant’s field of business does not, in the Panel’s view, make them confusingly similar to the word “bet”.
In Meat and Livestock Commission v David Pearce aka OTC/The Recipe for BSE, WIPO Case No. D2003-0645, the panel noted that in addressing the “confusingly similar” issue under the Policy, it is appropriate to bear in mind the observations of Lord Simonds in Office Cleaning Services v Westminster Window & General Cleaners (1946) 63 RPC 39, that where names consist of descriptive elements, small differences suffice to distinguish. The disputed domain names in that case were <britishmeat.com> and <britishmeat.org>, and the panel was not satisfied on the evidence as a whole that those domain names were confusingly similar to any marks in which the complainant had rights. The panel noted that, given that the term “British meat” is the normal and natural term to describe meat produced in Britain, it was not satisfied that the disputed domain names would be regarded by Internet users as indicating a website of the complainant.
Nor is the Panel satisfied in this case that any significant number of Internet users would regard these Domain Names as indicating a website of the Complainant. The word “Bet” is an integral part of the Complainant’s trademarks, and in the Panel’s view Internet users who are aware of the Complainant are unlikely to know it as anything other than “Bet 365”, with the “Bet” included. Those Internet users would appreciate that many traders might wish to adopt domain names suggesting that their services are available 365 days of the year, and they would not expect the Complainant to have any rights in respect of generic expressions such as “casino” and “poker”.
In respect of the Domain Name <365wager365.com>, the Complainant can argue that the Domain Name does include a synonym for the word “bet”. But in the Panel’s view, Internet users are generally savvy enough to appreciate that corporations with trademarks containing (as an integral part) an ordinary dictionary expression, do not normally substitute some synonym for that expression which neither looks nor sounds like it.
The Panel notes the evidence produced by the Respondent that there are many domain names which incorporate the number “365” in them, and that a fair number of them are associated in one way or another with the betting industry. Some of these have been registered by the Respondent (e.g. <365betwire365.com> and <365bookie365.com>), and the registrations of these domain names have not been challenged by the Complainant in the present proceeding. The Panel does not regard that as a decisive factor in the Respondent’s favor – for all the Panel knows, the Complainant may be pursuing complaints separately to recover these other domain names – but the existence of such other “365” domain names does tend to reinforce the Panel’s view that Internet users are unlikely to confuse these Domain Names with the Complainant’s BET365 mark.
In the result, the Panel finds that the Complainant has failed in these Policy proceedings to show that the Domain Names <365casino365.com>, <365poker365.com>, and <365wager365.com> are confusingly similar to the Complainant’s trademark. That finding is fatal to the Complaint in respect of those three Domain Names, and the Complainant will be denied to that extent. The Complainant has succeeded here in showing that the Domain Name <365bets365.com> is confusingly similar to the Complainant’s trademark BET365 for purposes of the first element of the Policy. Accordingly, the Panel will proceed to a consideration of the second and third elements of the Policy with respect to the Domain Name <365bets365.com>, as set out below.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of WIPO Overview, 2.0 as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Complainant has established that the Domain Name <365bets365.com> is confusingly similar to the Complainant’s BET365 mark. It has not authorized the Respondent to use that mark, or any mark confusingly similar thereto, whether in a domain name or otherwise. The Respondent has not suggested that he (or any organization or business operated by him) is commonly known by this Domain Name; there is therefore no question of him enjoying a right or interest in it of the kind described at paragraph 4(c)(ii) of the Policy. The Respondent does not claim any trademark or other intellectual property right in any expression corresponding to this Domain Name.
The <365bets365.com> Domain Name resolves to a website (the SI website) operated by a competitor of the Complainant.
The foregoing circumstances sufficiently establish a prima facie case of “no rights or legitimate interests” in respect of the Domain Name <365bets365.com>. The evidential onus therefore shifts to the Respondent, to show by plausible evidence that he does have some right or legitimate interest in respect of this Domain Name.
For the reasons set out in section 6E of this decision, the Respondent has failed to discharge that evidentiary burden. The Panel is satisfied that the Respondent registered and has used this Domain Name in bad faith, and in those circumstances there can be no question of the Respondent claiming that his use of this Domain Name has been in connection with any bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), or has been a legitimate or fair use under paragraph 4(c)(iii) of the Policy. Nor can the Respondent’s argument that he simply registered and used a domain name comprised of two ordinary, every day English expressions avail him. The evidence has not established that the combination “bet365” is an ordinary, every day English expression, and the Panel is in any event satisfied (again, for the reasons set out in section 6E) that the Respondent deliberately “targeted” the Complainant’s trademark, and did not register it solely for its attraction as a generic or descriptive expression. In those circumstances the Respondent’s use of this Domain Name cannot be regarded as bona fide: see, for example, mVisible Technologies, Inc v. Navigation Catalyst Systems Inc, WIPO Case No. D2007-1141, citing Landmark Group v DigiMedia.com, L.P., NAF Claim No. 285459: pay-per-click landing pages are legitimate if the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks.
For the reasons set out above, the Complainant has established that the Complainant has no rights or legitimate interests in respect of the Domain Name <365bets365.com>.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.
The Complainant has also proved that the Domain Name <365bets365.com> was registered and is being used in bad faith. The Panel has come to that view for the following reasons:
1. There is no dispute that the Respondent knew about the Complainant and its BET365 mark when he registered this Domain Name. He acknowledged in an email to the Complainant that he was a 10 year client of the Complainant.
2. This Domain Name is confusingly similar to the Complainant’s BET365 mark, and the Respondent had no authority from the Complainant to register and use such a domain name. Indeed, the similarity between this Domain Name and the Complainant’s BET365 mark is such that the Respondent could not have failed to appreciate that many Internet users who were familiar with the Complainant would mistakenly assume that any website established at this Domain Name must be operated or endorsed by the Complainant. Confusion of that sort was inevitable because of the use of both expressions “bet” and “365” in the Domain Name. If the Respondent appreciated the likelihood of confusion, it follows that in proceeding to register this Domain Name and use it, he must be taken to have intended to create the confusion.
3. It does not matter that the website at this Domain Name might not look like the Complainant’s website. By the time a confused Internet user looking for a site associated with the Complainant arrives at the website to which this Domain Name resolves, the Respondent has successfully “hooked” that Internet user, and the confusion created by the Domain Name has done its work: the Respondent has attracted increased Internet traffic to the website at the Domain Name, and thus maximized the possibility of a greater number of Internet users accessing the SI website, generating greater commission revenue for the Respondent.
4. It is common ground that the Respondent has been deriving commission revenue from SI for traffic he or PTD has directed to the SI website. In those circumstances, the Respondent’s use of this Domain Name falls squarely within paragraph 4(b)(iv) of the Policy – by using the Domain Name <365bets365.com>, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website to which this Domain Name has resolved. (If the Domain Name has in fact been pointed direct to the SI website, as the Complainant contended, the SI website would be an “other online location” of the Respondent for the purposes of this paragraph of the Policy.)
5. There is at least one additional basis on which the Panel believes this Domain Name has been registered and used in bad faith. The starting point is that this Domain Name was one of some 182 domain names registered by the Respondent on May 6, 2011, and the total price paid by the Respondent for all 182 domain names was only USD1,432.34. A few days later, on June 1, 2011, the Respondent was asserting that each of his premium 365.com domain names had a value of over USD90,000. The Respondent contended that that value was supported by GoDaddy, but did not produce anything in the nature of a written appraisal from GoDaddy which might have supported that claim.
6. When the Respondent’s application for Affiliate status with the Complainant was turned down, the Respondent lost no time in telling the Complainant that PTD had accepted an initial proposal from SI to use the 365.com domain names for promotion of SI’s website. The Respondent described SI as “very aggressive” with its marketing in Canada and around the world, and generally made it very clear to the Complainant that if the Complainant did not do a deal with him, the 365.com domain names would be used to promote SI. As early as June 1, 2011, the Complainant was given a “final opportunity” by the Respondent to acquire the 365.com domain names. In the Panel’s view, the commercial threat was unmistakable: if the Complainant did not deal with the Respondent, a number of domain names, including one which the Panel has found was confusingly similar to the Complainant’s trademark, would be pointed to the website of one of the Complainant’s competitors. That threat was continued throughout the Respondent’s June 2011 correspondence with the Complainant, and the Respondent’s contention that he was merely pointing out additional selling features to the Complainant does nothing to obscure that reality. Nor is there any merit in the Respondent’s contention that the Complainant was a willing participant in apparently amicable negotiations for the sale and purchase of the 365.com domain names. The Complainant advised the Respondent on June 6 2011 that it was looking into the issue of “domains similar to our brand”, and the Complainant appears to have done nothing beyond asking the Respondent to explain his position, and in particular state what he regarded as a fair price for the 365.com domain names. Had that price been, say, USD30 each, it might well have made commercial sense for the Complainant to purchase the 365.com domain names rather than take action against the Respondent under the Policy.
7. In an email to the Complainant dated June 6, 2011, the Respondent asserted that GoDaddy had classed and appraised the 365.com domain names. He said that “each Domain Name has been Appraised, Evaluated and Listed over USD 50,000 for each 365.com Domain Name in our Portfolio”. The Respondent did not explain how or why the USD90,000 GoDaddy appraisal figure mentioned in his separate emails sent to the Complainant and SI on June 1, 2011, had been reduced to USD50,000.
8. It is not in dispute that the Complainant rejected the application by the Respondent/PTD to join its Affiliate program. Nevertheless, on June 2, 2011, the Respondent sent an email to SI advising it that “… I have been accepted as an affiliate for … Bet365, among other companies …”.
9. In an email to SI dated June 1, 2011, the Respondent claimed that PTD’s domain names portfolio was valued at over “$50 million”. It is difficult to reconcile that statement with the Respondent’s advice in his email to SI dated June 7, 2011, that he had been doing fundraising work for 5 years, but was slowly transitioning to work fulltime on PT business.
10. The only sensible conclusion the Panel can reach having regard to the matters listed above, is that the Respondent, having succeeded in registering a domain name (the Domain Name <365bets365.com>) which was extremely similar to the Complainant’s BET365 mark, saw the opportunity to apply commercial pressure on the Complainant, with the goal of either deriving substantial revenue as a member of the Complainant’s Affiliate program, or selling the 365.com domain names to the Complainant at inflated prices. Those circumstances would fall precisely within paragraph 4(b)(i) of the Policy, if it were not for the fact that the Respondent’s primary intention on May 6, 2011 when this Domain Name was registered may have been to join the Complainant’s Affiliate program, rather than to sell the 365.com domain names to the Complainant: his first step was, after all, to make application to the Complainant to join its Affiliate program.
11. However, the Respondent must have expected that the Complainant might baulk at appointing as an Affiliate someone who had registered at least one domain name that was confusingly similar to its trademark, and when that did in fact happen and the Respondent’s application for Affiliate status was declined, the Respondent immediately proposed the sale of the 365.com domain names to the Complainant. In view of the short time period between the date of registration of the 365.com domain names (May 6, 2011) and the Respondent raising the question of sale (on June 1, 2011), it is a reasonable inference that the Respondent probably had sale to the Complainant in mind as his “plan B” option, when the 365.com domain names were registered.
12. If the Respondent’s intentions for the 365.com domain names on May 6, 2011 were conditional in that way, the circumstances might not strictly fall within paragraph 4(b)(i) of the Policy. But as this Panel noted in Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857, that does not matter. Paragraph 4(b) of the Policy does not limit the kinds of situation in which panels may find bad faith registration and use – it merely provides a non-exhaustive list of circumstances which, if established, will be evidence of bad faith registration and use. In the Roust case, this Panel took the view that the respondent had registered the disputed domain names with the bad faith purpose of applying illegitimate commercial pressure on the complainant, with a view to securing an exclusive distributorship of the complainant’s products. On the facts in Roust, the Panel inferred that the Respondent probably intended from the beginning that, if it could not secure the exclusive distribution agreement, it would seek to sell the disputed domain names to the complainant at a profit. The Panel in Roust concluded that the application of commercial pressure of that sort constituted bad faith registration and use under paragraph 4(a)(iii) of the Policy, notwithstanding that the circumstances did not fall within the specific category of bad faith registration and use described at paragraph 4(b)(i) of the Policy.
13. In this case, the Respondent registered a domain name (the Domain Name <365bets365.com>) which is so similar to the Complainant’s BET365 mark that the Respondent must have appreciated the confusion that would result. He then used that confusion, and an overt threat to make the Domain Name available to one of the Complainant’s competitors, as leverage to secure his own commercial ends. If his primary intention from the outset was to sell the Domain Name (and the other 365.com domain names) to the Complainant or to one of its competitors at a profit, then he is caught by paragraph 4(b)(i) of the Policy. If on the other hand his primary intention was to secure a different kind of commercial benefit from the Complainant (being admitted to its Affiliate program), with sale of the 365.com domains to the Complainant to be proposed only if that did not occur, that was no less a registration and use of the Domain Name in bad faith, as it involved the attempted exercise of illegitimate commercial pressure similar to that with which the Panel was concerned in the Roust case.
14. It is not necessary to refer to the various other arguments referred to by the Complainant. The matters traversed above provide sufficient proof that the Domain Name <365bets365.com> was registered and is being used in bad faith by the Respondent.
F. Reverse Domain Name Hijacking
The Respondent’s allegations that the Complaint was brought in bad faith, or in an attempt at reverse domain name hijacking, are rejected.
The Complainant has been successful with the Complaint in respect of one of the Domain Names, and its case failed in these proceedings in respect of the other Domain Names only because, in the Panel’s view, those Domain Names were not sufficiently similar to the Complainant’s mark to permit a finding of “confusing similarity” for purposes of the Policy. The Complainant’s case on those three Domain Names was not beyond sensible argument, particularly as the terms “casino”, “poker”, and “wager” all have relevance to the betting industry in which the Complainant carries on its business. Having regard to that fact, and the Panel’s findings on the rights or legitimate interests and bad faith issues in respect of the Domain Name <365bets365.com>, there is no basis for a finding that the Complaint was brought in bad faith.
The Respondent argued that certain actions of the Complainant, including having its lawyers write the cease and desist letter to SI, were malicious. The Panel does not accept that allegation on the evidence which has been produced, and in any event the main question must be whether the Complainant had a reasonably arguable case to recover the Domain Names under the Policy. If a complainant does have a reasonably arguable case for recovery of a disputed domain name, that will usually be a complete answer to any allegation of reverse domain name hijacking, even if the complaint has not been successful. In this case, the Complainant has been partially successful, and the fact that it may have made some arguments in its Complaint which were wrong or misconceived (for example, its claimed concern over the anti-Proline campaign, when the Complainant had itself been associated with a similar campaign operated through the website at “www.proline-sucks.com”), does not provide any basis for a finding of reverse domain name hijacking.
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 <365bets365.com> be transferred to the Complainant. The Complaint in respect of the Domain Names <365casino365.com>, <365poker365.com>, and <365wager.com> is denied.
Dated: September 14, 2011