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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Coral Group Trading Limited v. Surveybright Limited

Case No. D2001-0590

 

1. The Parties

The Complainant is Coral Group Trading Limited a private company limited by shares and incorporated in the United Kingdom under No. 3688324, whose registered office is at Glebe House, Vicarage Drive, Barking, IG11 7NS, England. It is represented by its Company Secretary Mr. Julian Cronk.

The Respondent is Surveybright Limited, a private company limited by shares and incorporated in the United Kingdom under No. 2864652, whose registered office is at St. Martin’s House, 63 West Stockwell Street, Essex CO1 1HE, England, but with addresses also at: Suite 2376, 9 Chester Mews, London SW1X 7AH, England and 262 Vauxhall bridge road, London SW1V 1BB, England.

The Respondent’s administrative, technical and billing contact is NetBenefit of 10-11 Clerkenwell Green, London EC1R 0DN, England.

 

2. The Domain Names and Registrar

The domain names, which are the subject of this Complaint, are –

<betcoral.com>
<betcoral.net>
<coralbet.com>
<coralbet.net>
<coralbookmakers.com>

The Registrar for all of them is Network Solutions Inc. of Business Affairs Office, 505 Huntmar Park Drive, Herndon, VA 22070, USA ("NSI").

 

3. Procedural History

On April 24, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center via courier on April 26, 2001.

The Center sent a Request for Registrar Verification to NSI on April 25, 2001, by email. NSI responded on the same day and confirmed: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for all of the disputed domain names , (3) that the Respondent, Surveybright Limited, was the current registrant of the disputed domain names, (4) that the Respondent’s contact details were correct, (5) that the NSI Service Agreement Version 5 was in effect for all of the domain names, and (6) that the domain names were ‘in active status’.

On April 30, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier, fax, and e-mail, as well as to its administrative technical, and billing contact.

No more was heard, and the Center sent a Notification of Respondent’s Default to the Respondent on May 23, 2001.

The Center sent a Notification of Appointment of Administrative Panel giving a Projected Decision Date of June 13, 2001, to the Respondent and the Complainant on May 31, 2001, via email. A copy was also sent to the Panel on the same date by email.

The Center sent by email a Transmission of Case File to the Panel, the Respondent and the Complainant on May 31, 2001. The Panel received hard copies of this material on June 3, 2001.

 

4. Factual Background

Activities of the Complainant

The following information was asserted as fact by the Complainant and remains uncontested.

The Complainant is a wholly owned subsidiary of Coral Eurobet plc. which, with its subsidiary companies, are extremely well-known and substantial bookmakers in the United Kingdom with a strong reputation. They trade under the brand name CORAL, which has a substantial amount of goodwill associated with it.

With its origins going back to 1926, Coral is well-established as one of the four largest bookmakers in the UK (the others being William Hill, Ladbrokes and the Tote) and with a turnover in excess of Ј1 billion per annum. Its betting services are delivered via three principal channels: the Internet, its 860 plus betting shops and the telephone. Coral has a corporate website (www.coraleurobet.com) and Internet betting facilities which are accessed, inter alia, at www.coral.co.uk.

The Complainants’ trademarks

The Complainant owns a number of trademark registrations in the United Kingdom and other countries for a wide variety of goods and services, copies of some of which were attached as an Annex to the Complaint. These trademarks mostly consist of the single word CORAL, but the European Community trademark is for the word as well as a coloured device.

 

5. The Parties’ Contentions

A. Complainant

The Complainant draws attention to the facts set out above, and further contends that the Respondent's ownership of the disputed domain names, each of which contains the Complainant's name together with a word indicating "betting", will lead to confusion with the Complainant and with the trademarks in which the Complainant has rights and will therefore damage its reputation. The Complainant maintains that the Respondent has the same directors as a UK company called UKBetting.com Limited which, the Complainant believes, indicates that there is some connection between the two. However no evidence of this apparent link was produced.

The Respondent appears to have made no meaningful use of the sites, which are the subject of this Complaint, and the Complainant contends that any attempt to do so would amount to trademark infringement and passing off and would result in legal action by the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names that are the subject of this Complaint for the following reasons:-

(i) the Complainant has not licensed the Respondent to use any of its trademarks and has given no indication that it allows the Respondent to use the same;

(ii) according to its last published accounts for the year ended October 31, 1999, filed at Companies House in the UK, , a copy of which was attached as an Annex to the Complaint, the Respondent is a property company. The Directors' Report states that the "principal (sic) activity of the company is the collection of rental income as landlords in respect of freehold property". Accordingly, the Respondent has no involvement with betting or gaming;

(iii) The Respondent does not appear to have any legitimate reason to use the name "Coral".

The Complainant contends that the disputed domain names have been registered and are being used in bad faith because the Respondent has registered numerous domain names with which, as a freehold property management company, it appears to have no connection.

Attached as an Annex to the Complaint was a copy of a printout of 50 domain name registered by the Respondent. Because of the restrictions imposed by NSI on its WHOIS database, an inquirer can only obtain the first 50 names on the list, so in fact there may be more. However the list that was filed contains the following:

Names relating to betting or gaming

<gibraltarbet.com>
<getbetting.net>
<justracing.net>
<wonderbet.com>
<betnotax.com>
<betnotax.net>
<ukbetting.net>
<racingcertatinty.com>
<racingmad.com>
<usabetting.com>
<usbetting.com>
<getbetting.com>
<backmenow.net>
<hkbetting.com>
<backhorses.com>

Names relating to other UK bookmakers

<toteplacepot.com>
<ladbrokesbet.com>
<betladbrokes.com>
<classicbookmakers.com>
<bloxhams.com>

[In the Complaint it is stated that the Respondent has registered the domain names <LadbrokeBookmakers.com>, <WilliamHillBookmakers.com>, and <ToteJackpot.com>. However none of these names was on the list, and there is no other evidence of their registration.]

Names of UK individuals prominent in racing, politics or the media

<richarddunwoody.com>
<jeremyPaxman.com>
<mannybernstein.com>
<martinpipe.com>
<barrydennis.com>
<aidanobrien.com>
<moMowlem.com>

The Complainant wrote to the Respondent regarding two of the disputed domain names listed above (<coralbet.com> and <betcoral.com>) in November 1999, advising that the use of these domain names would lead to confusion and would amount to trademark infringement and passing off. The Respondent was also advised that it was an abuse of the domain name registration system to attempt to "make money" out of the registrations. The Respondent's immediate response to the letter was to offer to sell the domain names for the huge sum of Ј20,000 each. The Respondent also offered to sell to the Complainant fifteen other domain names relating to betting and wagering transactions, with the price being available on application. However when this letter was followed by a communication from the Complainant’s legal advisers, the offer to sell was rescinded. If there was any further correspondence between the parties at this time, copies of it have not been produced.

B. Respondent

The Respondent did not respond to the Complaint, but the Complainant forwarded to the Center copies of some correspondence it had exchanged with the Respondent in April and May 2001. Included amongst this was a copy of a letter dated June 27, 2000, from the Respondent to NetBenefit, its administrative, technical and billing contact instructing NetBenefit to cancel all five of the disputed domain names.

 

6. Discussion and Findings

Since the Respondent has not submitted a response, not only does the Panel have no alternative but to accept as true all of the factual contentions made by the Complainant, but the Respondent is also in default, in accordance with paragraph 6 of the Notification of Complaint:

Even though there has been no response the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the complaint." Which the Panel will now do.

Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, that all of three elements are present in its Complaint. The Panel will now consider each of them in detail:

"4(a)(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights."

There is no doubt that the Complainant has registration rights in the trademark CORAL. This is not identical to any of the disputed domain names but it is included in all of them together with either the word ‘bet’ or the word ‘bookmakers’.

There have been other Decisions in which a complaint was upheld when the Respondent merely added a descriptive term to an otherwise distinctive or well-known trademark. See, for example, Cases D2000-0265 Sporoptic Pouilloux S A v. William H Wilson (buyvuartsunglasses.com), D2000-0275 Caterpillar Inc. v. Roam the Planet Ltd (catmachines.com), D2000-0494 Guerlain S A v. HI Investments (buyguerlain.com), D2000-1207 Fortnum & Mason PLC v. Corporate Business Sales Limited (fortnumandmasondirect.com), and D2000-1113 Woolworths plc v David Anderson (woolworthsdirect,com).

The additional words ‘bet’ and ‘bookmakers’ both directly describe the principle activities of the Complainant so, in the opinion of the Panel, all of the disputed domain names are confusingly similar to the Complainant’s trademarks, and paragraph 4(a)(i) is therefore proved.

"4(a)(ii) you have no rights or legitimate interests in respect of the domain name."

In connection with this paragraph, the Complainant has established an arguable case, so the burden of proof is therefore now shifted to the Respondent to show, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed domain names.

By its default, the Respondent has done nothing directly to contest the allegations of the Complainant that it lacks any rights or legitimate interests in the disputed domain names, but indirectly it appears to have acknowledged this by voluntarily seeking to cancel them.

Since no circumstance has been evidenced by the Respondent that could reasonably support an inference in its favor under paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain names and that paragraph 4(a)(ii) has been proved.

"4(a)(iii) the domain name has been registered and is being used in bad faith."

With regard to ‘bad faith’, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive.

By its default, Respondent has not responded directly to the allegation of the Complainant that the Respondent registered the domain names in bad faith. The burden of proof for doing so is on the Complainant which, in the opinion of the Panel, it has fully discharged.

The Respondent did offer to sell two of the disputed domain names to the Complainant for Ј20,000 each which is very considerably more than its out-of-pocket expenses in registering them, and which is a breach of paragraph 4(b)(i) of the Policy, even though it subsequently withdrew this offer. The Respondent has also registered a quantity of domain names with which it clearly has no connection, many of them relating to betting, or to other UK betting or gaming organisations. This would appear to point to a pattern of intending to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, which is a breach of paragraph 4(b)(ii) of the Policy. Alternatively the Respondent registered the domain names primarily for the purpose of disrupting the business of the Complainant, which is a breach of paragraph 4(b)(iii) of the Policy.

The Complainant’s name and trade mark are well-known in the United Kingdom, and not just among the betting fraternity, so the Respondent must have known them. Therefore, applying and paraphrasing the test in the case of Telstra Communications Limited v. Nuclear Marshmallows [D2000-0003] one could perhaps say that "[T]he trademark [CORAL] is one of the best known trademarks in [the United Kingdom], and it is inconceivable that the person or persons behind the Respondent would not be aware of this fact ……[B]y virtue of the widespread use and reputation of the trademark [CORAL], members of the public in [the United Kingdom] would believe that the entity owning the domain name …. was the Complainant or in some way associated with the Complainant".

Taking all of the above points into consideration, the Panel has had little difficulty in concluding that the disputed domain names were registered in bad faith.

However, it should not be overlooked that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith and, as has already been said above, the examples given in Paragraph 4(b) are not exclusive. It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. The Telstra case, referred to above, was one of the earliest Panel decisions, and it established (at paragraph 7.9) that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." The question that must always be asked in these circumstances is: what are those ‘certain circumstances’, and this can only be answered by reference to the facts of a specific case, and to the Respondent’s behavior.

In the present case, although NSI has confirmed that the disputed domain names are all ‘active’, each web page is currently bereft of any information other than displaying a message that the "owner has not yet chosen to point it to its own web site".

There is some evidence that the Respondent’s activities are frowned on under the Policy, for example: its non-response to the Complaint, its immediate offer to sell only two (out of five) of the disputed domain names for as much as Ј20,000 each, and its established pattern of registering domain names to which it is plainly not entitled.

These proceedings were binding on the Respondent. Nevertheless it failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that it had been duly notified by the Center. In particular, Respondent has not denied that it registered or is using the domain name in bad faith.

The Panel therefore concludes that the Respondent did indeed register and has used the domain name in bad faith.

 

7. Decision

In the result, the Panel, having found that the domain names registered by the Respondent are similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of any of the domain names, and that the domain names have been registered and are being used in bad faith, the complaint succeeds

Accordingly, the Panel directs that the registrations of the domain names <betcoral.com>, <betcoral.net>, <coralbet.com>, <coralbet.net>, and <coralbookmakers.com> be transferred to the Complainant.

 


 

David H. Tatham
Sole Panelist

Dated: June 6, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-0590.html

 

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