WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sportingbet Plc, Internet Opportunity Entertainment (Sports) Limited v. Rough Media
Case No. D2011-0320
1. The Parties
The First Complainant is Sportingbet Plc of London, United Kingdom of Great Britain and Northern Ireland and the Second Complainant is Internet Opportunity Entertainment (Sports) Limited of St Johns, Antigua and Barbuda (“the Complainants”), represented by DWF LLP, United Kingdom.
The Respondent is Rough Media of Singapore, represented internally.
2. The Domain Name and Registrar
The disputed domain name <sportingbetcasino.com> is registered with Bizcn.com, Inc (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2011. On February 17, 2011, the Center transmitted by email to the Registrar, a request for registrar verification in connection with the disputed domain name. On February 18, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details. In response to a notification by the Center that the registrar information in the Complaint was incorrect, the Complainant filed an amended Complaint on February 25, 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 March 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2011. The Response was filed with the Center on March 21, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on March 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.
In the Complaint, the Complainants have requested that English be treated as the language of the proceedings. Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. Here, the Registrar has confirmed that the registration agreement is in English and so English is the language of the proceedings in any event.
The Complainants made an unsolicited supplemental filing on March 25, 2011. On March 27, 2011, the Respondent submitted its own supplemental filing in response.
Paragraphs 10 and 12 of the Rules in effect grant the panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The principles which the panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Complainants did not attempt to establish any exceptional circumstances justifying their supplemental filing. It was simply labelled as a “Reply” and presented as a request to respond to some issues arising in the Response.
Accordingly, the Panel declines to admit either the Complainants’ supplemental filing or the Respondent’s supplemental filing in response. The Panel can say, however, that even had they been admitted none of the supplemental submissions would have affected the outcome of this case.
In the view of the Panel it is unhelpful for parties to simply fire off supplemental submissions without any attempt to justify them. This practice can result in the addition of unnecessary complication and cost to what is intended to be a relatively quick and inexpensive procedure.
4. Factual Background
The Complainants are part of the “Sportingbet” group of companies, an online betting and gaming group.
The First Complainant, which is publicly traded on the London Stock Exchange, operates 30 online betting and gaming websites using a number of different brands.
The Second Complainant owns Community Trade Mark Nos. 4997573 for SPORTINGBETCASINO (figurative) and 4997656 for SPORTINGBETCASINO.COM (figurative), both filed on April 4, 2006, in classes 9, 35, 36, 38, 41, 42.
The disputed domain name was registered on October 5, 2001.
As of May 20, 2010, the disputed domain name resolved to a web page consisting of a photograph of a roast fowl together with the words: “05.02.2010: zzzzzz…”
On August 2, 2010, the Complainants’ solicitors sent a cease and desist letter to the Respondent referring, amongst other things, to what they described as the picture of a turkey and stating that their clients considered this to be disparaging and damaging to their goodwill and reputation. The Respondent replied by email on August 13, 2010, stating “Thank you for the email. There is no case to answer”. On the same date, the Complainants responded, asking for the reasons underlying the Respondent’s claim that there was no case to answer.
As of January 5, 2011, the disputed domain name resolved to a web page branded “Sporting Bet Casino A blog about random thoughts & observations”. The page comprised three articles. One, posted October 13, 2010, simply stated: “This is a blog about random thoughts & observations. If you enjoy it come back for more”. Another article criticized an Indian web developer (posted October 13, 2010). The third criticized Microsoft (posted October 25, 2010).
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainants have operated a number of gaming websites, including a website at “www.sportingbet.com” since September 4, 1997. In addition the Complainants operate a “live casino” via their gaming websites. The Complainants have established considerable goodwill and reputation through the use of the SPORTINGBET mark in marketing literature and through the operation of the website and “live casino”.
The disputed domain name is identical or confusingly similar to the Complainants’ marks. Customers who search the Internet using the Complainants’ marks may be directed to the disputed domain name, creating a likelihood of confusion.
The public recognition and goodwill embodied in the Complainants’ marks is threatened and eroded by the Respondent’s use of the disputed domain name.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interest in the disputed domain name because the Complainants have not licensed or otherwise permitted the Respondent to use any of the marks or to apply for or use any domain name incorporating any of those marks.
There is no evidence that the Respondent has made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent is not commonly known by the disputed domain name.
There is no evidence that 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 at issue.
The disputed domain name is being used to host a blog entitled “A blog about random thoughts and observations”. The blog does not represent a legitimate noncommercial or fair use of the disputed domain name as it contains a number of defamatory and racist remarks. Further, there is a risk that customers may mistakenly consider that these remarks are being either made or endorsed by the Complainants.
Registered and Used in Bad Faith
The disputed domain name originally re-routed to a picture of a turkey. This picture is damaging to the Complainants’ goodwill and reputation.
The disputed domain name currently re-routes to the blog entitled “A blog about random thoughts and observations”. The blog makes a number of disparaging comments about third parties and is damaging to the Complainants’ goodwill and reputation.
The disputed domain name is likely to create confusion in the minds of the general public as to the ownership of the website and endorsement of the comments contained within blog.
The Complainants have a strong reputation and are widely known, as evidenced by the substantial use within the United Kingdom and 30 other countries.
The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name. The Respondent has responded to the pre-action correspondence and stated that there is “no case to answer”. The Respondent has not expanded upon this response despite further communications. This suggests that the disputed domain name has been registered to prevent the Complainants from using their mark in a corresponding domain name.
It is not possible to conceive any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by passing off or an infringement of the Complainants’ marks.
Identical or Confusingly Similar
The disputed domain name is not identical or confusingly similar to a trade mark in which the Complainants have rights.
The words "sporting bet casino" are generic. In English, the phrase "sporting bet" is a commonly used term meaning “sports betting”. By extension, the phrase "sporting bet casino" is also generic.
Accordingly, the Respondent has legitimate rights in the disputed domain name.
The fact that "sportingbetcasino", as used and claimed by the Complainants, is one word does not make the term fanciful or distinctive. It lacks distinctiveness in plain text.
In addition, the Complainants have failed to establish that the Respondent, in registering the disputed domain name and operating its website in the manner claimed, is attempting to divert customers of the Complainants. The Complainants use the domain name <sportingbet.com> to market their casino and online gaming activities to users.
A Google.com search for the terms "sportingbetcasino" or "sporting bet casino" shows that the first few pages of results are mainly connected with the Complainants. There are no search results for "sporting bet casino" which link to the Respondent's website.
This refutes the Complainants’ argument that the Respondent is diverting users away from the Complainants’ website, as users searching for the terms that correspond to the disputed domain name have no way of finding the Respondent's website through virtually all search engines.
Rights or Legitimate Interests
The Respondent has rights or legitimate interests in the disputed domain name.
A blog (or Internet journal) constitutes a bona fide offering of services, namely a noncommercial and fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark at issue.
The Respondent is writing a noncommercial blog/journal on eclectic topics, which is hosted on the disputed domain name. This is a legitimate use of a domain name. Furthermore, the writing of this blog on "random thoughts and observations" does not in any way infringe on the Complainants’ trade mark in the classes listed.
No content relating to Complainants’ main business of online gaming has ever been shown on the website. It would be apparent to any prudent observer that a blog consisting of distinct disparate topics unrelated to online gaming did not involve expression of the views of the Complainants and that such a site was not associated with the Complainants in any way.
Therefore there is no likelihood of confusion. The disputed domain name is unlikely to mislead Internet users into thinking that the website operated by the Respondent has been authorized by the Complainants or is affiliated with the Complainants.
In addition, the Respondent is using the disputed domain name for personal e-mail. This constitutes bona fide good faith use.
Registered and Used in Bad Faith
The disputed domain name has not been registered and is not being used in bad faith.
The picture of the chicken, not a turkey, is in no way disparaging or damaging to the Complainants’ goodwill and reputation. It was used merely as a placeholder page.
The Respondent’s blog is not illegal or defamatory of the Complainants. It is simply an assertion of free speech. It would be apparent to any prudent observer that a blog consisting of distinct disparate topics unrelated to online gaming did not involve expression of the views of the Complainants and that such a site was not associated with the Complainants in any way. There is no likelihood of confusion or damage to the reputation of the Complainants.
The disputed domain name was registered on October 5, 2001, more than five and a half years prior to registration of the Complainants’ trade mark in 2007. As the domain registration date precedes the trade mark registration dates, the Respondent did not have knowledge of the trade marks at the time of registration of the disputed domain name and therefore could not have registered the disputed domain name in bad faith.
The Complainants’ submissions are not sufficient to establish that the Respondent knew of the Complainants’ trade mark rights in 2001 and that it registered the disputed domain name in bad faith.
The Respondent did not know of the Complainants or their trade marks when the Respondent registered the disputed domain name. A simple search of the Singapore trade mark online database for "Sporting Bet" or "Sportingbet Casino" reveals that the Complainants do not have valid registered trade marks in Singapore, where the Respondent is based.
In addition, the Complainants have not demonstrated business activities in Singapore, either at the time of registration of the disputed domain name or at present.
In addition, the registrant “Rough Media” has remained the same during the registrar transfer of the domain from Godaddy.com to Bizcn.com, which does not constitute a new registration ("updated date August 25, 2010") for the purposes of the Complaint. The "updated date" in the disputed domain name WhoIs record is not significant, since it represents only the date when the disputed domain name was last renewed or updated for minor changes such as a new email address.
The Complainants have lost two other UDRP cases based on similar circumstances to the current dispute: Internet Opportunity Entertainment Limited v. Zubee.com Networks Inc., WIPO Case No. D2006-1086 (<sportingbet.net> and <sportingbets.biz>) and Sportingbet plc v. OEX Trader, ADNDRC Claim No. 0200003 (<sportingbet.net>). In this case, the Complainants have once again failed to present any evidence of trade mark rights at the time of the registration of the disputed domain name in 2001.
In addition, the Complainants have failed to file a timely UDRP complaint. There has been nearly four years of inaction following registration of their trade marks. If the equitable doctrine of laches and the facts of this case are taken into account, the lengthy period of delay before the Complainants have sought relief under the Policy further undermines the Complainants’ claim of bad faith use under the Policy. In the following cases, panels have found for respondents, having taken into account the doctrine of laches: CareFree Homes II, L.P. v.Worldwide Media, Inc. / Domain Administrator, NAF Claim No. FA1351494 and The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1349045.
Reverse Domain Name Hijacking
Based on the Complainants’ flimsy evidence and argument, the action is a desperate, far-reaching attempt to acquire the disputed domain name via reverse domain name hijacking.
The Respondent’s argument is supported by the Complainants’ history of two failed actions based on similar circumstances to this case, where the Complainants failed to present any evidence of its rights in the trade mark at issue at the time of the registration of the contested domain names.
The Complainants have acted in bad faith by initiating this dispute. They should have known that they were unable to prove that the Respondent lacked legitimate rights or interests or that there had been bad faith.
6. Discussion and Findings
The Respondent relies on the defence of “laches” based on the delay of some four years between registration of the Complainants’ trade marks and the filing of this case.
Paragraph 4.10 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0) addresses the issue of delay as follows:
“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”
The Respondent invokes CareFree Homes II, L.P. v.Worldwide Media, Inc. / Domain Administrator, supra, but in that case the panel specifically stated that its decision was not based on laches.
The Respondent refers also to The New York Times Company v. Name Administration Inc. (BVI), supra, where the panel did indeed hold that the circumstances supported a decision based on laches.
However, this Panel subscribes to the view expressed in WIPO Overview 2.0 that laches does not generally apply to the Policy. In any case, the Respondent has not put forward a compelling argument as to why laches should apply. The Respondent invokes only a four year delay from what it says is the date of registration of the Complainants’ trade marks. The Respondent does not suggest that the Complainants have been aware of the Respondent’s activities for any significant period of time or that there has been any detrimental reliance on the part of the Respondent.
B. Identical or Confusingly Similar
The Complainants own registered trade marks for the terms SPORTINGBETCASINO and SPORTINGBETCASINO.COM both in stylized form on a rectangular background.
The Respondent claims that the phrase "sporting bet casino" is generic and lacks distinctiveness but it has provided no evidence showing that this is a commonly-used combination of words. In the Panel’s view, the phrase is not an obvious one. In any case this situation falls well short of the example of a figurative mark being unlikely to generate rights which is given in paragraph 1.1 of WIPO Overview 2.0 - namely where the design element in a word plus design mark is found to be the sole source of distinctiveness.
“[A] s figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall.”
Here, the terms SPORTINGBETCASINO and SPORTINGBETCASINO.COM are the dominant feature of the Complainants’ marks and the design elements are minimal.
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ trade marks.
The Panel finds that the Complainants have established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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 the 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.”
Here, the Complainants have not licensed or otherwise authorized the Respondent to use their trade marks.
As to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent has ever used the disputed domain name in connection with a bona fide offering of goods or services.
There is no evidence that paragraph 4(c)(ii) of the Policy applies.
Nor is there any indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy.
The Panel has been provided with evidence concerning two distinct, and apparently noncommercial, uses of the disputed domain name – first, as an alleged “placeholder” page including a picture of a roast fowl. The Panel has concluded below that, on balance, the purpose of the first use was to disparage the Complainants. Even if this were to be treated as genuine noncommercial criticism, the Panel subscribes to “View 1” expressed in paragraph 2.4 of WIPO Overview 2.0 that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trade mark. Here, the disputed domain name consists simply of the name used by the Complainants “sportingbet” plus a generic term “casino”, which is closely associated with the Complainants’ service.
The Panel has found below that the second use, as a blog of “random thoughts and observations”, was designed purely to try and justify the Respondent’s registration of the disputed domain name.
Accordingly, in the Panel’s opinion, neither of these forms of use in the present case could be described as “legitimate” or “fair”.
The Respondent also asserts that it is using the disputed domain name for personal email and that this constitutes bona fide good faith use. However, it is not necessary to consider the point as the Respondent has provided no evidence demonstrating such use.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Issue of awareness
The Respondent denies that it was aware of the Complainants or their trade marks when it acquired the disputed domain name.
Paragraph 3.1 of WIPO Overview 2.0 says this:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date … when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”
The Respondent’s awareness or otherwise of the Complainants and their rights on acquisition of the disputed domain name is therefore a critical issue in this case.
The creation date shown in the WhoIs printout for the disputed domain name is October 5, 2001. The Respondent states that it was the party who registered the disputed domain name on that date. The Complainants have produced no archive printouts or other evidence indicating that the Respondent only acquired the disputed domain name at a later point. The Panel will therefore take 2001 as the relevant acquisition date.
The Respondent observes that the Complainants’ trade marks registered in 2007 (with effect from 2006 in fact) post-date the disputed domain name. However, this would not matter if there were evidence that the Respondent nonetheless registered the disputed domain name in contemplation of prior unregistered rights of the Complainants. The Complainants do indeed say that they have operated a number of gaming websites, including “www.sportingbet.com”, since 1997.
The Panel notes that the Respondent is located in a different jurisdiction (Singapore) to the Complainants and that the Complainants have provided no evidence of any nature demonstrating use of “Sporting Bet” prior to registration of the disputed domain name in 2001. The Panel is mystified by the omission, given that the lack of similar evidence was cited as a factor in the Complainants’ failure to win a previous UDRP case. (See further below).
Is there nonetheless any other evidence indicating that the Respondent was likely to have been aware of the Complainants’ unregistered rights on acquisition of the disputed domain name?
In these circumstances, it is relevant to consider whether the Respondent has provided a plausible explanation for its selection and use of the disputed domain name which is independent of the Complainants and their rights.
Before considering the Respondent’s explanation, it is perhaps worth mentioning that the disputed domain name is readily understandable when viewed as the name of the Complainant’s gaming website (“sporting bet”) plus the gaming-related term “casino”, particularly given the “live casino” service which the Complainants say that they operate on their website (although here again the Complainants have not helped their case by failing to provide evidence showing when they started the “live casino” service). However, when one divorces the disputed domain name from the context of the Complainants’ name, one is left with a somewhat unusual assortment of gaming-related terms.
It is notable that the Respondent does not specifically state why it chose the disputed domain name. The Respondent centers its case on use of the disputed domain name for “a blog about random thoughts & observations”. The Respondent is presumably implying that it chose the disputed domain name because of the link between randomness in gaming and the randomness of the subject matter of its blog. If so, the Panel finds such a connection rather tenuous. To the Panel, it seems odd to use a disputed domain name consisting of a non-obvious combination of gaming-related terms for a blog which the Respondent admits is entirely unconnected with gaming.
In any case, the Panel doubts that the Respondent did indeed select the disputed domain name for such a purpose. It appears that the Respondent only started to use the disputed domain name for a blog following the Complainants’ cease and desist letter in 2010. If, as the Respondent claims, it registered the disputed domain name as long ago as 2001, and if, as the Respondent appears to claim, it was originally registered for the purpose of its “random” blog, then why wait some nine years before starting the blog, and only then after the approach by the Complainants?
Then there is the Respondent’s previous use of the disputed domain name for a website consisting of a photograph of a roast fowl (to use a neutral term) together with the words: “05.02.2010: zzzzzz…” The Complainants claim that the picture is in fact a turkey and that it is derogatory and disparaging of the Complainants. In reply, the Respondent says only that it is a chicken, not a turkey, that the page was in no way disparaging or damaging to the Complainants’ goodwill and reputation and that it was used merely as a placeholder page.
Even if it is a chicken (and the Panel does not feel confident that it can accurately distinguish between a roast turkey and a roast chicken), and even if one accepts that the word “chicken” does not have the same pejorative association as “turkey”, it is nonetheless a somewhat unusual image to use as a placeholder page and one which requires an explanation from the Respondent. But there is none.
Nor has the Respondent even mentioned the reference to “05.02.2010: zzzzzz…” which appears directly beneath the picture. Use of the term “zzzzzz” in connection with a commercial entity also has an obvious potential negative connotation, implying slumber, inaction, lack of awareness etc.
Previous use of the disputed domain name
The Panel notes that the Respondent is also reticent as to how, if at all, it has used the disputed domain between 2001 until 2010. Has there been a “placeholder” page in place for all of this nine year period? Or has the Respondent previously used the disputed domain name in some other way and, if so, how?
The Panel considers it significant that, in response to the Complainants’ cease and desist letter, the Respondent simply stated that there was no case to answer. And it appears that the Respondent did not reply to the Complainants’ subsequent request to provide the reasons underlying that brief statement.
The Panel expects that an innocent respondent first confronted with such allegations would be at pains to provide some form of justification, whether to explain its purpose in registering the disputed domain name, or to deny awareness of the Complainants or to deal with the allegations of disparagement or otherwise – rather than simply issuing a terse denial.
Previous UDRP cases involving the Complainants
The Respondent invokes two prior UDRP cases where the Complainants were unsuccessful. The Respondent claims that the circumstances were similar to those in the present dispute.
In Sportingbet plc v.OEX Trader, supra (<sportingbet.net>), a 2002 decision, the panel found against the First Complainant under paragraph 4(a)(i) of the Policy on the grounds that it had failed to provide any evidence of goodwill in support of a claim to common law rights in the term “sportingbet”. The First Complainant thus fell at the first hurdle in that case. But here the Complainants have relied on their 2006 registered trade marks which, as the Panel has concluded above, suffice to establish trade mark rights under paragraph 4(a)(i) (notwithstanding that they post-date the disputed domain name). In connection with bad faith, the Panel must assess the likelihood that the Respondent was aware of the Complainants and any prior unregistered rights as at the date of registration of the disputed domain name. The evidence or otherwise of prior goodwill is one part in that assessment but, as explained above, there may be other factors evidencing such knowledge.
In Internet Opportunity Entertainment Limited v. Zubee.com Networks Inc., supra (<sportingbet.net> and <sportingbets.biz>), the Second Complainant (or at least one of the companies within the Complainant’s group - as the complainant name is slightly different to that of the Second Complainant) failed to make a prima facie showing of a lack of rights or legitimate interests. This was partly on the basis of lack of evidence of unregistered rights in the names “sportingbet” or “sportingbet.com” as at the time of registration of the disputed domain names and of use of the names in the respondent’s location (Canada) but also partly because the respondent, which owned several sport books and casino websites, was offering what appeared to be bona fide services through the disputed domain names. So, in that case there was evidence that the domain name had been registered for a genuine purpose whereas here the evidence suggests otherwise. In the Panel’s view there is a material distinction between the use of the term “sportingbet” for gaming purposes and use of the less obvious variation “sportingbetcasino” in the (non-gaming related) manner explained above.
As stated in paragraph 4.7 of WIPO Overview 2.0, the general standard of proof under the UDRP is "on balance" - often expressed as the "balance of probabilities" or "preponderance of the evidence" standard.
The Panel has carefully weighed up all the evidence in the case. While the facts here are far from clear, the Panel notes in particular the following:
(1) The lack of a clear explanation by the Respondent as to why it chose the disputed domain name.
(2) The implausibility of the connection between the disputed domain name and “a blog about random thoughts & observations” (if the Respondent claims that was its purpose in registering the disputed domain name). And the fact that the Respondent started using the disputed domain name for such a blog only after being confronted by the Complainants and some nine years after the date when the Respondent allegedly acquired the disputed domain name. These circumstances suggest to the Panel that the disputed domain name was not registered for the purpose of the blog but, rather, that the blog was an “after the event” attempt by the Respondent to justify its registration.
(3) The failure of the Respondent to fully explain its use of the “turkey” page on its website.
(4) The lack of information from the Respondent as to how it has used the disputed domain name since the date of alleged acquisition in 2001.
(5) The Respondent’s reluctance to provide any form of justification for its registration or use of the disputed domain name in response to the cease and desist letter from the Complainants.
Although it is difficult to draw any precise conclusion as to why the Respondent registered the disputed domain name, on balance the Panel thinks it reasonable to infer from the foregoing that the Respondent did so in contemplation of the Complainants’ rights and in order take unfair advantage or cause unfair detriment to the Complainants in some indeterminate manner.
As to use in bad faith, the Panel concludes on balance that, in the absence of a credible alternative explanation, the Respondent has indeed used the disputed domain name to disparage the Complainants by means of the “turkey” page. As stated above, while criticism is potentially a legitimate activity, that is not the case here as the Respondent has used for that purpose a domain name which is closely aligned to the Complainants’ trade marks and which was likely to make a misrepresentation to users that any associated website was connected with the Complainants. As the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 puts it, the disputed domain name would “catch by surprise” visitors intending to reach the Complainants’ website. In those circumstances, the Respondent's actions are tainted whether or not it intended the web page as a genuine noncommercial criticism site.
Therefore, in the Panel’s opinion, although this case does not fall squarely within any of the non-exhaustive circumstances evidencing bad faith in paragraph 4(b) of the Policy, the factors outlined above nonetheless amount to registration and use of the disputed domain name in bad faith.
The Panel finds that the Complainants have established the third element of paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <sportingbetcasino.com>, be transferred to the Second Complainant.
Dated: April 11, 2011