WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Westgate Las Vegas Resort, LLC v. Domain Trustees, Domain Trustees UK Limited
Case No. D2018-2650
1. The Parties
The Complainant is Westgate Las Vegas Resort, LLC of Las Vegas, Nevada, United States of America (“United States”), represented by Greenspoon Marder, LLP, United States.
The Respondent is Domain Trustees, Domain Trustees UK Limited of London, the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <superbook.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2018. On November 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2018, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the language of the registration agreement is English;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name. 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 2, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Amongst other things, the Complainant operates a casino and resort in Las Vegas in the United States. Part of that complex is a facility of more than 30,000 square feet which can seat 350 people in front of a 220 foot long video wall to watch and bet on sports contests and races. According to the Complainant, it is the largest such facility in the world.
The Complainant has been offering its betting services by reference to the trademark SUPERBOOK from its casino since 1986. In addition to the facility at its casino, the Complainant offers these services via a SUPERBOOK mobile app, from a website and also has a Twitter account.
The Complainant owns a registered trademark in the United States, United States Trademark No. 1519150, SUPERBOOK, for legal sports and race wagering services in International Class 36. The application was filed on June 5, 1987 and registered in the principal register on January 3, 1989.
The disputed domain name was first registered by an English company, SportingBet PLC, on August 17, 1996. Since that date, the registration has been held be a number of different companies in a number of different countries. At some point between November 24, 2016 and April 1, 2017, the registration passed from Jazette Enterprises in Gibraltar, Overseas Territory of the United Kingdom, to the Respondent.
It appears that since March 2012, the disputed domain name has redirected to, or mirrors, the website at <superbook.ag>. That domain name is registered to Gaming Ventures Ltd, a company located in Antigua. This website offers betting services on a wide range of sports, most prominently sports in the United States. The footer on the website pages bears a badge “EST 1996”; presumably claiming the business or website was established in 1996.
Gaming Ventures Ltd did hold an offshore gaming licence. According to the Complaint, the licence lapsed in 2015 without renewal.
There is no information about the relationship, if any, between the Respondent and Gaming Ventures Ltd.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the United States Trademark No. 1519150 for SUPERBOOK.
The disputed domain name is identical to this trademark, apart from the addition of the generic Top-Level Domain (“gTLD”), “.com”.
The second stage of the inquiry under the first requirement of the Policy simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the gTLD component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective Parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and so the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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) [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 trademark or service mark rights; or
(iii) [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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it in any way. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
As noted in section 4 above, the disputed domain name does resolve to a website which offers betting services. The Complainant contends that these services are not a good faith offering under the Policy for two reasons. First, the Complainant contends that online betting services require a licence to be legitimate and any licence that Gaming Ventures Ltd held lapsed without renewal in 2015. There is no evidence before the Panel to contradict that allegation.
Secondly, it is plain from the website to which the disputed domain name resolves that it is heavily targeted at sports in the United States, although with some navigation sports competitions outside the United States can be bet on, and on customers based in the United States. Use of someone’s trademark as the brand of one’s own goods or services in direct competition with, and without permission from, the trademark owner does not qualify as a bona fide offering of goods or services under the Policy.
Accordingly, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As noted above, the disputed domain name has been held by a number of different companies from a number of different countries over time. There is no information available about any relationship between the Respondent and any previous holder. The usual rule in such circumstances is that the date the Respondent became the registrant is the relevant date for the assessment under the third limb of the Policy.
The words “super” and “book” are both ordinary English words in everyday use. Their use in the present combination, however, appears at least in the United States to have significance in relation to betting services only as the Complainant’s trademark.
The heavy emphasis on the website to which the disputed domain name resolves on sports and customers in the United States where the Complainant has registered its trademark ordinarily provides a strong inference that the disputed domain name has been registered and is being used to take advantage of the Complainant’s trademark. By intentionally targeting Internet users using a domain name confusingly similar to the Complainant’s trademark within that trademark’s scope of protection, the Panel considers that the Respondent’s actions fall within paragraph 4(b)(iv) of the Policy, even if the Respondent is also mimicking third-parties providing similar services.
It might perhaps be argued that the Respondent was seeking merely to continue an existing usage of the term in connection with longstanding betting services. As the Complainant points out, laches or delay is not usually a disentitling factor under the Policy. See WIPO Overview 3.0, section 4.17. In any event, the Respondent has not sought to make that claim here. Nor has the Respondent otherwise sought to deny the Complainant’s allegations or justify its use and adoption of the disputed domain name. Moreover, it appears that from its first registration the disputed domain name has been used to promote betting services particularly to customers in the United States in apparent breach of the Complainant’s trademark.
In these circumstances, therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <superbook.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: January 7, 2019