WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Hill Organization Limited v. WhoisGuard, Inc. / DOMAIN MANAGER, FIDGET MEDIA
Case No. D2019-0031
1. The Parties
The Complainant is William Hill Organization Limited of London, United Kingdom, represented by Freeths LLP, United Kingdom.
The Respondent is WhoisGuard, Inc. of Panama, Panama / DOMAIN MANAGER, FIDGET MEDIA of Luton, United Kingdom, represented by internally.
2. The Domain Name and Registrar
The disputed domain name <williamhilll.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2019. On January 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 15, 2019 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 January 21, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2019. The Center received an email communication from the Respondent on January 29, 2019. On February 12, 2019, the Center notified the Parties that it will proceed to appoint the Panel.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 19, 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
The Complainant is a private limited company incorporated under the laws of England. It is a provider of betting and gaming services.
The Complainant is the owner of various registrations for the trademark WILLIAM HILL including, for example, United Kingdom trademark number 00001383971 for the word mark WILLIAM HILL registered on January 24, 1992.
The disputed domain name was registered on December 20, 2001.
According to evidence submitted by the Complainant, on January 4, 2019 the disputed domain name resolved to a website at “www.wilhil.co.uk” which appeared to be promoting betting-related services under the name “Sports Winner”.
5. Parties’ Contentions
The Complainant submits that it has traded by reference to the mark WILLIAM HILL for over 85 years and that it is one of the best known names in the gambling industry. It states that is has over 2,100 betting shops in the United Kingdom and 292,000 active online clients and produces a report on its corporate profile and financial highlights, including turnover of GBP 879 million in 2016. The Complainant also refers to its consumer-facing website at “www.williamhill.com” and submits that its WILLIAM HILL name and mark are widely recognized both in the United Kingdom and internationally.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It states that the disputed domain name is virtually identical to its trademark WILLIAM HILL with the addition only of one further letter.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It submits that it has not licensed the Respondent to use its WILLIAM HILL trademark, that the Respondent has no independent rights in that trademark and that the Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends that the mere appearance of the disputed domain name will deceive Internet users into believing it is owned or operated by the Complainant. The Complainant contends that the Respondent is seeking to take advantage of the confusion caused by that deception in order to attract Internet users to its own website concerning sports betting.
The Complainant requests the transfer of the disputed domain name.
The Panel directs that the Respondent’s email communication dated January 29, 2019 shall stand as its formal Response in this proceeding.
In that email, the Respondent states that it represents an individual named William Hill, who registered the disputed domain name being unable to register <williamhill.com>. It states that this individual has used the disputed domain name as an email address and is not passing off the disputed domain name as being connected with the Complainant.
The Respondent does not exhibit any evidence in support of the above contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s trademark WILLIAM HILL but for the addition only of a further letter “l” at the end of the disputed domain name, ignoring the generic Top-Level Domain (“gTLD”) “.com” which is typically to be disregarded for the purpose of comparison. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. The Respondent has attempted to answer that case by asserting that it registered the disputed domain name on behalf of an individual named William Hill who has used it as an email address. Leaving aside the fact that the Respondent has exhibited no evidence of this individual or his email account, the Panel finds it inherently unlikely that an individual would register a misspelling of his name for this purpose. The Respondent’s explanation is also inconsistent with the Complainant’s evidence that the Respondent has used the disputed domain name for the purpose of a website relating to sports betting.
In the view of the Panel, there can be no reasonable explanation for the Respondent’s registration and use of the disputed domain name otherwise than to take advantage of Internet users who may make an error while typing the Complainant’s name, i.e., the practice commonly known as “typosquatting”. The registration and use of a deliberately misleading domain name with the object of confusing Internet users cannot give rise to rights or legitimate interests and the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel repeats its observations made in respect of rights or legitimate interests above. In particular, the Panel finds that, by using the inherently misleading disputed domain name for the purpose of a website concerning sports betting, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel therefore concludes that the disputed domain name has been registered and is being 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 <williamhilll.com> be transferred to the Complainant.
Steven A. Maier
Date: February 21, 2019