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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gala Holdings Limited v. Richard Chambers

Case No. D2002-0207

 

1. The Parties

The Complainant is Gala Holdings Limited, a company incorporated in the United Kingdom whose registered office is at New Castle House, Castle Boulevard, Nottingham, NG7 1FT, United Kingdom.

The Respondent is Richard Chambers of Bingo Gala Corporation, Wilmington, City of Wilmington, DE 19801, United States of America. The original Complaint submitted by the Complainant on March 1, 2002, named Bingo Gala Corporation as the respondent in these proceedings. The Complainant was subsequently notified by the WIPO Arbitration and Mediation Center ("the Center"), in an e-mail sent on March 14, 2002, that the registrant of the domain names complained of was Richard Chambers and not Bingo Gala Corporation. The information was provided to the Center by the concerned registrar, register.com. Consequently, the Complainant submitted an amended Complaint naming Richard Chambers as Respondent.

 

2. The Domain Names and Registrar

The domain names which are the subject of this dispute are: <bingogala.com>, <bingogala.net>, <galaslots.com>, <galagold.com>.

The Registrar with which the domain names are currently registered is Register.com, Inc (known as register.com).

 

3. Procedural History

The Complainant initiated the proceeding by filing a Complaint, which was received by the Center by e-mail on March 1, 2002, and in hard copy on March 6, 2002. An amendment to the Complaint was received on March 19, 2002, by e-mail.

On March 11, 2002, the Registrar verified that the domain names were registered with it, that the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy") is applicable and that its records indicate that the domain names are active. The Registrar noted that Richard Chambers is the current registrant of the domain names and that it could not confirm that a copy of the Complaint regarding the domain names was sent to them by the Complainant as required by Paragraph 4(b) of the Policy.

The Complainant was informed that unless the deficiency specified above was cured within five (5) calendar days of the notification, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Complaint would be deemed withdrawn, without prejudice to the submission of a new Complaint by the Complainant. An amended Complaint was received on March 19, 2002.

The Center verified that the amended Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy of the Center. Payment in the required amount to the Center has been made by the Complainant.

On March 22, 2002, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by e-mail, without attachments, and by post, with enclosures. The Center advised that the Response was due by April 11, 2002.

A Response was received from the Respondent, by the Center by e-mail on April 10, 2002, and, in hard copy on April 15, 2002. The Respondent elected to have the dispute decided by a three-member Administrative Panel.

The Panel was appointed on May 10, 2002, panelists Gordon Harris and Mary Padbury, and Presiding Panelist, Prof. Charles Gielen, having filed Statements of Acceptance and Declarations of Impartiality and Independence. The Projected Decision Date was May 24, 2002. This date was extended to June 3, 2002, in accordance with Paragraph 10(c) of the Rules.

 

4. Factual Background

The Complainant is the holder of UK Registered Trade Marks which include the word mark GALA and the stylised mark GALA BINGO as set out below:

TRADE MARK

DATE OF REGISTRATION

CLASS(ES)

GALA

July 8, 1991

Class 41

GALA

July 8, 1991

Class 42

Gala Clubs

September 20, 1991

Class 41

Gala Clubs

September 20, 1991

Class 42

GALA FREESTYLE

January 4, 1996

Class 41

GALA GOLD

January 4, 1996

Class 41

Gala CLUBS BINGO

October 1, 1998

Class 41, 42

Gala CLUBS BINGO

October 1, 1998

Class 41, 42

Gala CLUBS BINGO

October 1, 1998

Class 41, 42

The Complainant has operated bingo clubs in the United Kingdom since the early 1970s. It has made extensive use of the words "Gala" and "Gala Bingo" in relation to the operation of bingo halls and clubs in the UK since 1991. It has 5.1 million members and an average 500,000 people visit its clubs every week. The Complainant currently operates 166 bingo clubs under the "Gala" name in the UK. Approximately Ј8m was spent on advertising and promoting the "Gala" brand in the United Kingdom in the 2000/01 financial year. The Complainant operates the largest estate of slot machines in Europe on its licensed premises, namely, 8,000 machines.

The Complainant is also the registrant of numerous domain names incorporating the name "Gala" which have been used in connection with the Complainant's business in relation to the operation of bingo halls and clubs in the UK, including the following: <galabingo.co.uk>, <gala-bingo.co.uk>, <gala-bingo.com>.

At present, the Complainant's websites are used for advertising and promotional purposes, the current UK law prohibiting the running of on-line bingo sites by UK based operators. Over the past two years, the Complainant has been in the process of establishing an on-line gaming service under the "Gala" brand. The Gala business will be based in Gibraltar. UK gaming operators have been establishing offshore services under their UK brand names since at least 1998.

The Complainant's licensed bingo clubs have distinctive features including the "Gala Gold" Club, a brand which the Complainant has used in various forms for the past ten years. It was the brand given to some of its older clubs and has also been used as a vehicle through which special promotions and events are offered to VIP members. The Complainant has a registered trade mark for GALA GOLD in class 41.

The Respondent is Richard Chambers.

The website accessed by the domain name <bingogala.com> has the following contact details: Bingo Gala Corporation; Tel/fax +1805 9264122; e-mail <contact@bingogala.com>.

A search undertaken by the Complainant's representatives showed that the registered office of Bingo Gala Corporation is based in Delaware, United States of America.

The trade mark agents acting for the Complainant sent a letter to Bingo Gala Corporation on the assumption that it was the registrant of the domain names in issue, by e-mail on November 19, 2001. The e-mail was sent to address: <admin@bingogala.com>, which is the address for the administrative contact for all four of the domain names. The letter refers to two of the domain names – <bingogala.com> and <galaslots.com>. After writing the letter, the Complainant discovered that two further domain names, <bingogala.net> and <galagold.com>, were registered in the name of Bingo Gala Corporation with the Respondent listed as the administrative contact. The concerned registrar confirmed that the Respondent, and not Bingo Gala Corporation, is the registrant for both of these domain names.

On November 19, 2001, the Complainant's trade mark agents received an e-mail, in reply to their letter, which was sent from the e-mail address <help@bingogala.com>, which was signed by the Respondent.

On November 23, 2001, a Michael Chambers telephoned the Complainant's trade mark agents and said he was calling from a firm of solicitors called Chambers & Chambers on behalf of the Respondent. The firm of Chambers & Chambers is located in Limassol, Cyprus.

The Respondent is a director of two other UK companies, System Holdings Limited and System Processing Limited. The Secretary of System Holdings Limited, Christopher John Chambers, has been a member of one of the Complainant’s bingo clubs since October 31, 2001.

 

5. Parties’ Contentions

A. Complainant

The domain names were registered by registrar.com on November 1, 2000, <bingogala.com>, December 4, 2000, <galaslots.com> and March 8, 2001, <bingogala.net> and <galagold.com>.

The Complainant contends that the domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Complainant relies on its UK registered trade marks which include the word mark GALA and the stylised mark GALA BINGO. Further the Complainant relies on rights arising from use of unregistered trade marks, namely, the words "Gala" and "Gala Bingo" by the Complainant in relation to the operation of bingo halls and clubs in the UK since at least 1991. In addition, the Complainant relies on domain names incorporating the name "Gala" of which it is the registrant and which it has used extensively in connection with its business in relation to the operation of bingo halls and clubs in the UK.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names. It relies upon the fact that it has been operating bingo halls and clubs in the UK since 1991 under and by reference to the names "Gala" and "Gala Bingo". Further, it is not aware of any other use of the names in relation to bingo anywhere in the world other than by companies connected with it and the Respondent. The Complainant contends that the Respondent is not using the domain names in connection with the bona fide offering of goods and services since, at the time the domain names were registered, the Respondent was aware, or should have been aware, of the Complainant's bingo business activities in the UK and substantial reputation and goodwill in the names "Gala" and "Gala Bingo".

Lastly, the Complainant contends that the domain names have been registered and are being used in bad faith. This is on the basis that given the substantial reputation of the Gala brand in the UK it is "inevitable" that the Respondent would be aware of the Gala brand when the Respondent's company, Bingo Gala Corporation, set up its on-line bingo operation. The Complainant points, in particular, to the use by the Respondent's company of a "Gala Gold Club" for members on its website as a misappropriation of a brand which the Complainant has used in a variety of forms over the past ten years. The Complainant also points to the choice of the galaslots domain name as a misappropriation of the reputation and goodwill of the Complainant as the largest operator of slot machines (commonly known as "slots") in Europe.

The Complainant contends that the Respondent would have been aware of the Complainant's business at the time of registration and points to a conversation between Michael Chambers and the Complainant's trade mark agents on November 23, 2001, as indicating that the Respondent was well aware of the features of the Complainant's activities despite being (apparently) unaware of the extent of its internet presence. The Complainant contends that the Respondent can have no bona fide reason for its registration of these domain names. The Complainant contends, taking into account these factors, it is not possible to conceive of any plausible, actual or contemplated active use of these domain names which would not be illegitimate, such use being passing off or an infringement of the Complainant's rights under trade mark law.

B. Respondent

The Respondent relies on evidence provided by way of affidavits of Richard Chambers, Michael Chambers and Vadim Esipovich, all sworn April 8, 2002. The Respondent is one of the directors of Bingo Gala Corp. ("Bingo Gala"), a United States Delaware Corporation, incorporated on November 13, 2000. The domain names were registered by the Respondent in his capacity as a director of Bingo Gala for and on behalf of that company. Michael Chambers and Vadim Esipovich are also directors of Bingo Gala.

Bingo Gala has been trading as an on-line bingo operator since December, 2000. The <bingogala.com> site went live on December 12, 2000, and the first player was registered on December 13, 2000. The first of the domain names to be registered by the Respondent on behalf of Bingo Gala was <bingogala.com>. This domain name was registered on November 1, 2000, (and not on November 1, 2001, as asserted by the Complainant). Bingo Gala has always branded its on-line bingo operation as "BINGOGALA".

GALASLOTS is the name given by Bingo Gala to the on-line slot machine game devised by Bingo Gala and which can be downloaded at the <bingogala.com> website. The corresponding domain name <galaslots.com> was registered by the Respondent on December 4, 2000, and these games can be accessed by accessing <galaslots.com> directly.

The domain name <galagold.com> was registered on March 8, 2001, by an employee of Bingo Gala using the Respondent's register.com account and following suggestions from users of BINGOGALA that this would be a suitable name for a picture page for members of BINGOGALA.

The Respondent took the opportunity to register <bingogala.net> at the same time as he registered <galagold.com>. Vadim Esipovich has registered the domain names <bingogala.biz> and <bingogala.info> for Bingo Gala for the same reason.

The Respondent does not make any submission in response to the Complainant's contention that the domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Respondent does dispute that it has no rights to and legitimate interests in the domain names and the contention that they were registered or used in bad faith.

Bingo Gala's income and profit generated by its operation of BINGOGALA and GALASLOTS is substantial ($US3,375,310 and $US1,565,371 in 2000/01). Bingo Gala has spent US$195,000 on on-line marketing.

BINGOGALA is not marketed or promoted in the United Kingdom. It offers US-style bingo games which differ from English-style bingo games in the ways described in Paragraph 9 of the Respondent's affidavit. Bingo Gala only accepts payment in US Dollars and all games are played in US Dollars. Bingo Gala does not employ any personnel in the United Kingdom. Of the 29,064 registered members of BINGOGALA as at March 25, 2002, only 679 gave United Kingdom addresses.

Bingo Gala filed an application to register BINGOGALA as a trade mark in the United States on December 22, 2001. This application is still pending.

In response to the Complainant's contention that the domain name <bingogala.com> was created on November 1, 2001, after Christopher John Chambers became a member of the Complainant's Grantham Bingo Gala club, the Respondent notes that the domain name was registered on November 1, 2000. Christopher Chambers is the Respondent's father and does live in the United Kingdom. He is the Company Secretary of a company of which the Respondent is a director although this company does not undertake any bingo-related activities. The Respondent was unaware that he was a member of the Complainant's club.

In response to the Complainant's contention that the Respondent, Bingo Gala and its associated companies are closely connected with the UK country level domain name, the Respondent contends that the domain name was registered by a third party as part of a BINGOGALA affiliate programme. Under the affiliate programme, individuals are invited to promote BINGOGALA at their own sites in return for 20% of the profit received by Bingo Gala from members who access BINGOGALA through the affiliate programme.

The Respondent also contends that the domain names were not registered or used in bad faith. The Respondent's evidence is to the effect that neither he nor any of his fellow directors were aware of the "Gala" or "Gala Gold" names at the time the domain names were registered. The Respondent did become aware of the Complainant several months before receipt of a Complaint about its domain names. The Respondent contends that he selected the suffix "GALA" for the domain names because of the word's ordinary dictionary meaning and because "gala" in Greek means "good". The Respondent's mother is a Greek Cypriot and he is bilingual. The Respondent contends that he did not register the domain names to disrupt the Complainant's business but for the purposes of a legitimate on-line bingo and slots business without any prior knowledge of the Complainant's reputation in the United Kingdom. The domain name <bingogala.co.uk> has not been registered by the Respondent but a person related to Bingo Gala by virtue only of her membership of Bingo Gala's affiliate programme.

The Respondent was unaware of the Complainant's business at the time the domain names were registered. It operates a different style of bingo to that offered by the Complainant in its bingo clubs and has a different geographical market. In response to the Complainant's reliance on the telephone conversation between its trade mark agents and Michael Chambers, the Respondent notes that this occurred after Bingo Gala had been notified of the Complainant's objection to the use of the <bingogala.com> and <galaslots.com> domain names so is not probative.

The Complainant placed some reliance on registration of the domain names of other bingo related companies by the Respondent being <bingomecca.com> (the business name of the second largest bingo operator based in the UK) and <bingoassociation.com> (the domain name of various bingo industry bodies across the world). The Respondent contends that <bingomecca.com> was registered for use as an Arabic language bingo site and that the Respondent had no knowledge of Mecca Bingo operating in the United Kingdom. Further, the Respondent contends that <bingoassociation.com> was registered by Vadim Esipovich with the aim of creating an association for on-line bingo operators.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to make out three elements.

The "domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights."

The domain names in issue are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. (See The Forward Association, Inc. v. Enterprises Unlimited (NAF Claim No. FA0008000095491), The Stanley Works and Stanley Logistics, Inc v. Camp Creek Co., Inc. WIPO Case No. D2000-0113, Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 and Fiber-Shield Industries, Inc. v. Flame Shield (NAF Claim No. FA0106000097634).

The Complainant has set out a substantial reputation and goodwill, both registered and unregistered, in the names "Gala", "Gala Bingo" and "Gala Gold".

The domain names <bingogala.com> and <bingogala.net> are confusingly similar to the registered stylised trade mark GALA BINGO and to the unregistered "Gala Bingo" as they are a simple reversal of the order of the words constituting the Complainant's trade mark.

The second element of <bingogala.com> and <bingogala.net> and the first element of <galaslots.com> are identical to the UK registered trade mark GALA. Certain elements of the domain names, namely "bingo" and "slots", may be viewed as being descriptive of the types of activities conducted on the website, operated by the Respondent's company.

The domain name <galagold.com> is identical to the UK registered trade mark GALA GOLD.

Lastly, all the domain names are confusingly similar to the other registered and unregistered trade marks of the Complainant which include the words "Gala" and/or "Bingo".

The Respondent "has no rights or legitimate interests in respect of the domain name"

If the Panel finds any of the matters in Paragraph 4(c) of the Policy to be proved, based on the evaluation of all the evidence, that is said to demonstrate the Respondent's rights or legitimate interests in the domain names.

There is evidence, before any notice to the Respondent of the dispute, of use of domain names corresponding to the domain names in contention with a bona fide offering of goods or services.

There is no evidence that the Respondent, as distinct from its products, has been commonly known by the domain names in terms of Paragraph 4(c)(ii) of the Policy.

Lastly, there is no evidence that the Respondent is making a legitimate non-commercial use of the domain names without intent for commercial gain to misleadingly divert consumers or tarnish the trade mark or service mark in issue in terms of Paragraph 4(c)(iii) of the Policy. It is apparent that the Respondent's use is commercial.

The "domain name has been registered and is being used in bad faith"

If the Panel finds evidence of any of the matters set out in Paragraph 4(b) of the Policy that shall be evidence of registration or use of a domain name in bad faith.

There is no evidence suggesting that the Respondent has registered the domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant.

Further, there is no evidence that the Respondent has registered the domain names in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. Evidence advanced by the Complainant has been countered by a plausible explanation by the Respondent.

There is no evidence that the Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor.

Lastly, there is no evidence that the Respondent, by using the domain names, has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line location, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

From the evidence provided, it seems probable that the domain names were likely to have been registered in ignorance of the Complainant's UK trade mark rights and intended for internet based goods or services aimed primarily at the US market.

 

7. Decision

Accordingly, the Panel has decided that the Respondent has registered domain names which are identical or confusingly similar to trade marks in which the Complainant has rights but that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in respect of the domain names and that the domain names have been registered and are being used in bad faith.

The Complaint is dismissed.

 


 

Prof. Charles Gielen
Presiding Panelist

Gordon Harris
Panelist

Mary Padbury
Panelist

Dated: June 3, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0207.html

 

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