WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
William Hill Organization Limited v. The trustee for Bean Media Group Trust, Bean Media Group Pty Ltd
Case No. DAU2017-0003
1. The Parties
The Complainant is William Hill Organization Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by SILKA Law AB, Sweden.
The Respondents are The Trustee for Bean Media Group Trust and Bean Media Group Pty Ltd of New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <eurogrand.com.au> and <williamhillcasino.com.au> are registered with NetRegistry Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2017. On February 2, 2017, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain names. On February 7, 2017, NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 10, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 3, 2017.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 14, 2017. 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.
On March 24, 2017, the Panel issued Administrative Panel Procedural Order No. 1, requesting the Complainant to file either: (i) evidence establishing the relationship between Bean Media Group Pty Ltd and the Trustee for Bean Media Group Trust, and why these two apparently different entities should be regarded as being the same domain name holder of the disputed domain names; or (ii) an amendment to its Complaint on the issue of who are the registrants of the disputed domain names, together with evidence supporting such an amendment and, where the registrants are apparently different entities, establishing why these entities should be regarded as being the same domain name holder of the disputed domain names. The Respondents were invited to respond to any evidence provided by the Complainant pursuant to Administrative Panel Procedural Order No. 1. The Complainant transmitted its reply to the Administrative Panel Procedural Order No. 1 on March 26, 2017. The Respondents did not submit any response to that reply.
4. Factual Background
The Complainant is one of the world’s leading betting and gaming companies. It provides betting opportunities on a wide range of sporting events and entertainment. The Complainant is listed on the London Stock Exchange and became part of the FTSE100 in May 2013. It generates revenue of over GBP 1.4 billion per year.
The Complainant has expanded internationally in recent years. William Hill Australia Holdings Pty Ltd is a wholly-owned subsidiary of the Complainant. It was created through the acquisition of Sportingbet (including Centrebet) in March 2013 and <tomwaterhouse.com> in August 2013. The combined group, rebranded as William Hill, is one of the largest online betting companies in Australia, with around 247,000 active customers.
The Complainant registered the trademark WILLIAM HILL in Australia on October 17, 2002, as a word mark, and on March 4, 2015, as a “Fancy Series” mark.
Eurogrand is a business operated by WHG (International) Limited, a wholly-owned company of the Complainant. EuroGrand Casino is an online casino founded in 2006, where users have access to animated casino games and online scratch cards. WHG (International) Limited registered the word trademark EUROGRAND as a European Union Trade Mark on November 6, 2008.
The Complainant, either directly or through licences, controls domain names that include its registered WILLIAM HILL and EUROGRAND trademarks, including <williamhill.com.au>, <williamhillcasino.com>, <williamhill.com> and <eurogrand.com>.
The creation date of the disputed domain name <eurogrand.com.au> is January 21, 2012. The creation date of the disputed domain name <williamhillcasino.com.au> is April 4, 2011.
The Complainant provided screenshots of the websites resolving from the disputed domain names showing that they were used to offer gaming and online casino services. The Complainant did not provide the dates on which these screenshots were taken. The screenshots show that the disputed domain name <eurogrand.com.au> resolved to a website being an online casino called “JackpotCity Casino”, and that the disputed domain name <williamhillcasino.com.au> resolved to a website being an online casino called “Spin Palace Casino”, both of which operate in competition with the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain names should be considered as confusingly similar to the registered trademarks because: (i) the disputed domain names directly incorporate one or other of the Complainant’s registered trademarks EUROGRAND and WILLIAM HILL; (ii) the addition of the merely generic and descriptive word “casino” to the disputed domain name <williamhillcasino.com.au> is insufficient in itself to avoid a finding of confusing similarity; (iii) such confusion is further reinforced by the fact that the word “casino” refers to the Complainant’s core business and is likely to increase the likelihood of confusion; and (iv) the addition of the Second-Level Domain (“2LD”) identifier “.com” and the country code Top-Level Domain (ccTLD) “.au” does not add any distinctiveness to the domain names.
In the Complaint, the Complainant refers to the Respondents in the singular, and contends that the Respondent has no rights or legitimate interests in respect of the domain names because: (i) the Complainant has not found that the Respondent is commonly known by the domain names; (ii) the WhoIs information is the only evidence which relates the Respondent to the domain names; (iii) the domain names resolve to websites that offer gaming and online casino services which are in competition with the Complainant; (iv) the Respondent has made no effort to use the domain names for any purpose that might explain its choice in a manner consistent with having rights or legitimate interests in them; (v) the Respondent is merely using the domain names to offer online gaming services and/or information; and (vi) the Respondent’s use of the domain names cannot be regarded as bona fide as it creates the false impression that the Respondent is either part of the Complainant’s organization or is in some other way authorized by the Complainant when this is not the case.
The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith because: (i) the email address that is listed in the WhoIs information is connected to several poker-related domain names so it is likely that the Respondent is well acquainted with the casino and betting industry, and it is not a mere coincidence that the Respondent registered the domain names; and (ii) the Complainant has demonstrated substantial use and promotion of its trademarks in the betting industry, and it is inconceivable that the Respondent was not aware of the existence of the trademarks with which the domain names are confusingly similar at the time of registration, suggesting the purpose of registering the domain names is to capitalize on the reputation of the Complainant’s trademarks by diverting Internet users seeking products under the Complainant’s trademarks to its own websites.
In response to the Administrative Panel Procedural Order No. 1, the Complainant requests consolidation of the complainants in respect of the two disputed domain names, saying it would be procedurally efficient and fair and equitable to all parties. The Complainant contends that the Respondents are one and the same person, entity or network, are connected to each other and are under common control, and that it is more likely than not that the disputed domain names are subject to common ownership or control. In support of these contentions the Complainant notes that: (i) the disputed domain names are registered with the same Registrar; (ii) the disputed domain names resolve to websites containing the same statement on ownership; (iii) the email address provided as the Registrant Contact Email in the WhoIs data for the disputed domain <eurogrand.com.au> is an email address for a magazine at which the Registrant Contact Name listed in the WhoIs data for the disputed domain <williamhillcasino.com.au> works; (iv) the names of the Registrants are nearly identical; and (v) the Registrant Contact Names listed in the WhoIs for the disputed domain names share the same surname.
The Respondents did not submit any Response to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Issue – Single Complaint against Multiple Domain Names / Respondents
The Complaint was filed in relation to two domain names, <eurogrand.com.au> and <williamhillcasino.com.au>. Despite the fact that the WhoIs data annexed to the Complaint listed “The trustee for the Bean Media Group Trust” as the registrant for the disputed domain name <eurogrand.com.au> and listed “Bean Media Group Pty Ltd” as the registrant for the disputed domain name <williamhillcasino.com.au>, the Complaint named only one Respondent, namely “Bean Media Group Pty Ltd”. It is indisputable that the WhoIs data in this case disclose different registrants of the disputed domain names. The name of each registrant of record is different, and the Australian Business Number for each registrant of record is different. This reflects the fact that the two registrants have different legal statuses – one is an Australian private company, while the other is the trustee of a discretionary trading trust.
Paragraph 3(c) of the Rules states: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. The question that must be addressed, therefore, is whether, despite the registrants of record being different, it can be said that the two disputed domain names are registered by the same domain name holder.
A three-member panel case under the Policy has considered the issue of when it can be said that multiple domain names are registered “by the same domain name holder”. In Mark Livesey QC and The New South Wales Bar Association v. Derek Minus and Dispute Resolution Associates Pty Ltd, WIPO Case No. DAU2014-0011 (“Mark Livesey QC”), the panel expressed the view that the filing of a single complaint in respect of multiple domain names should be permitted only where the holder of each of the domain names is one and the same entity. The panel went on to note: “That does not mean, however, that a single complaint can be brought in respect of multiple domain names only where the registrant of each domain name as disclosed by the WhoIs record is the same person. Paragraph 1 of the Rules defines ʻRespondentʼ to be ʻthe holder of a domain name registration against which a complaint is initiatedʼ. The use of the word ʻholderʼ rather than ʻregistrant’ suggests that the ʻholderʼ of a domain name may be someone other than the registrant of it. Indeed, this must be so because there are situations in which the registrant of a domain name is not in fact the person who holds the true interest in the domain name.”
The three-member panel in Mark Livesey QC, supra, went on to state that the instances in which the “holder” of a domain name may be someone other than the “registrant” of it include: “(i) where a privacy or proxy registration service has been used, because in that situation it may be said that the person who engaged the privacy or proxy service (sometimes called the ʻunderlying registrantʼ or ʻbeneficial ownerʼ) is a ʻholderʼ of the domain name since that person has the power to determine the use to which the domain name is put; (ii) where the registrant is in some way under the control of another person, because in that situation it seems appropriate to consider the other (i.e., the controlling) person as a holder of the disputed domain name; and (iii) where the different registrants of record are, in fact, one and the same entity (i.e., where the different registrant names are simply aliases for a single entity), because in that situation the ʻholderʼ of the disputed domain names is the single entity for which the names of the registrants of record are aliases.”
In response to the Administrative Panel Procedural Order No. 1, the Complainant requested “consolidation of the Respondents.” This request was misguided, and reflects a misunderstanding of the Policy. Paragraph 4(f) of the Policy provides that where there are multiple disputes between a respondent and a complainant, either party may petition “to consolidate the disputes” before a single panel. As the wording makes clear, paragraph 4(f) expressly applies only to multiple disputes between a single respondent and a single complainant – it does not expressly apply to multiple disputes between a single complainant and multiple respondents (the position in this case). Where, as is the situation in this case, a single complainant seeks to bring a single complaint against multiple respondents, it will only be permitted to do so where the requirements of paragraph 3(c) are satisfied.
In response to the Administrative Panel Procedural Order No. 1, the Complainant made a number of assertions (summarised in Section 5A, above) that are relevant to the issue of whether it can be said that the two disputed domain names have been registered by the same domain name holder. One of these assertions – namely, that the Registrant Contact Names listed in the WhoIs for the disputed domain names share the same surname – is not supported by the evidence. The WhoIs data for the disputed domain name <eurogrand.com.au> lists the Registrant Contact Name as the registrant’s name, repeated, not as a person with a surname. The other assertions are, however, supported by evidence. Of those other assertions, the most pertinent is that the disputed domain names resolve to websites containing the same statement about ownership of the website. When considered in combination, the Complainant’s substantiated assertions suggest that there is a single person that has practical control over the disputed domain names. It is of significance that the Respondents did not reply to these assertions; indeed, it is of significance that the Respondents did not respond in any way to the Complaint. When all of these matters are taken into account, the Panel is willing to conclude that the Respondents are under common control, and thus that the “holder” of each of the disputed domain names is the same person. Accordingly, the Panel finds that this single Complaint is properly brought against both of the disputed domain names, despite the fact that the registrant of record for each domain name is different.
B. Identical or Confusingly Similar
When the ccTLD identifier “.au” and the 2LD identifier “.com” are ignored (as is appropriate in this case), the disputed domain name <eurogrand.com.au> consists solely of the Complainant’s registered trademark EUROGRAND. Accordingly, the Panel finds that the disputed domain name <eurogrand.com.au> is identical to a trademark in which the Complainant has rights.
When the ccTLD identifier “.au” and the 2LD identifier “.com” are ignored (as is appropriate in this case), the disputed domain name <williamhillcasino.com.au> consists of the Complainant’s registered trademark WILLIAM HILL with the addition of the descriptive term “casino”. The Panel finds the addition of the term “casino” does not lessen the inevitable confusion of the disputed domain name with the Complainant’s WILLIAM HILL trademark. This is because “casino” is a descriptive term for one of the activities carried out by the Complainant under its WILLIAM HILL trademark. Accordingly, the Panel finds that the disputed domain name <williamhillcasino.com.au> is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Respondents are not a licensee of, or otherwise affiliated with, the Complainant, and have not been authorized by the Complainant to use either its EUROGRAND trademark or its WILLIAM HILL trademark. The Respondents have not provided any evidence that they have been commonly known by, or have made a bona fide use of, either of the disputed domain names, or that they have, for any other reason, rights or legitimate interests in either of the disputed domain names. The evidence provided by the Complainant shows that each of the disputed domain names was used to resolve to a website offering gaming or online casino services that are in competition with the Complainant. According to the present record, therefore, the disputed domain names are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names.
D. Registered or Subsequently Used in Bad Faith
The disputed domain names were registered a number of years after the Complainant first registered its EUROGRAND and WILLIAM HILL trademarks. The evidence on the record provided by the Complainant with respect to its use of its EUROGRAND and WILLIAM HILL trademarks, combined with the absence of any evidence provided by the Respondents to the contrary, is sufficient to satisfy the Panel that the Respondents knew of the Complainant’s trademarks and knew that they had no rights or legitimate interests in the disputed domain names. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondents’ use of the disputed domain names indicates that the Respondents have used the disputed domain names to attract, for commercial gain, Internet users to websites by creating confusion in the minds of the public as to an association between those websites and the Complainant. For all these reasons, the Panel is satisfied that the disputed domain names have been registered and are being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <eurogrand.com.au> and <williamhillcasino.com.au> be transferred to the Complainant.
Andrew F. Christie
Date: April 10, 2017