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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eurobet UK Limited v. Dermot O’Connor
Case No. D2002-0211
1. The Parties
The Complainant is Eurobet UK Limited, a United Kingdom Corporation of Barking, United Kingdom. The Complainant is represented by its Group Company Secretary, Mr. Julian Cronk.
The Respondent is Mr. Dermot O’Connor of Killarney, Ireland. The Respondent is represented by Mr. Conor Murphy of Colm Murphy & Co, Solicitors of Kenmare, Kerry, Ireland.
2. The Domain Names and Registrar
The domain names at issue are <eurobet.net> and <eurobet.org>.
The domain names are registered with Tierra Net Inc. (dba Domain Discover) of San Diego, CA, U.S.A. ("the Registrar"). The domain names were registered by the Respondent on December 18, 1998.
3. Procedural History
A Complaint submitted by the above Complainant was received on March 5, 2002, (email) and March 12, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On March 7, 2002, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- confirm that a copy of the Complaint was sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b);
- confirm that the domain names <eurobet.net> and <eurobet.org> are registered with it;
- confirm that the Respondent is the current registrant of the domain names;
- provide the full contact details (i.e., postal address (es), telephone number(s), facsimile number(s), email address (es)) that are available in your WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact, for the domain names;
- confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") applies to the disputed domain names.
- indicate the current status of the disputed domain names;
- indicate the specific language of the registration agreement as used by the registrant for the disputed domain names;
- indicate whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the disputed domain names.
By email dated March 13, 2002, the Registrar advised WIPO Center as follows:
- It is the Registrar of the domain name registrations<eurobet.net> and <eurobet.org>.
- Dermot O’Connor of Killarney, Kerry, Ireland is shown as the "current registrant" of the domain names and also the administrative, billing and technical contact.
- The domain name registrations are currently in "active" status.
- The Registrar has currently incorporated in its agreements the UDRP adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
- The language of the Registration agreement is English.
- The domain name registrant has submitted his Registration agreement to the jurisdiction of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of domain names.
By virtue of the registration agreement, the Respondent is bound by the provisions of the Policy.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on March 25, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint.
The Complainant elected to have its Complaint resolved by a sole panelist; it has duly paid the amounts required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent filed a Response on April 5, 2002 (fax), April 23, 2002 (email), and April 24, 2002(hard copy).
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and requested a declaration of impartiality and independence.
The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On April 25, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. The projected decision date is May 9, 2002.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is an on-line bookmaker and is ultimately owned by Coral Eurobet plc, one of the UK’s biggest bookmakers. The Eurobet business, established in 1995, and acquired by the Coral Group of companies in 1999, has a reputation in the UK and internationally for gambling services. Eurobet has websites located at <eurobet.com> and <eurobet.co.uk> (both first registered in 1995). It has in excess of 100,000 customers in over 100 countries, including Ireland. Its .com website is translated into over ten different languages, as well as being in English. For the year ended September 30, 2001, the turnover for the Coral Eurobet group was in excess of Ј1.3billion, to which the Eurobet internet betting business contributed Ј339.2million. Some 175,000 people visits were made to the two Eurobet sites during the week beginning January 6, 2002, alone (the most recent date for which data is available).
The Complainant and Eurobet (Gibraltar) Limited (formally called Coral Internet (Gibraltar) Limited), are wholly owned subsidiaries of Coral Eurobet plc. Eurobet (Gibraltar) Limited owns, on behalf of the Coral Eurobet group, two European Community trademarks, numbers 272237 and 1936376, registered in October 1998, and January 2002, respectively and UK trademark number 2048351, registered on April 1997. The UK and European Community trademarks, all of which are used to indicate the provision of gaming, gambling, and betting services (class 41), have a substantial amount of goodwill associated with them. Eurobet (Gibraltar) Limited has licensed the use of these trademarks to the Complainant. Complainant is also the beneficial owner of a number of domain names containing the word ‘Eurobet’.
On July 26, 1999, Complainant’s then lawyers contacted the Respondent on behalf of Eurobet Sports Limited (the then owner of European Community trademark number 272237 and the UK trademark with a ‘cease and desist’ letter. The letter stated: "you have recently offered these sites for sale for the sum of Ј20,000 each". Letters from solicitors acting for the Respondent on July 29, 1999 and December 9, 1999, indicated that the domains were being offered for sale. Statements made in these letters included such as: "our clients are not required to disclose what they propose to do with the sites …, nor the basis on which the fee for the transfer is calculated" and "as you previously enquired how our client arrived at the sum of Ј20,000, we would point out that we have come across American cases where sites have been sold for as much as US$150,000.00".
The Respondent has a Community trademark for the word ‘netbet’ registered on September 5, 2000, to be used for a proposed business of internet betting using that name.
5. Parties’ Contentions
The marks in which Complainants have rights are identical to the disputed domain names.
Respondent has been given no rights by the Complainant in respect of the marks.
Respondent has not developed any sites in connection with the names.
The Respondent has not attempted to use the domain names for any meaningful purpose: any such attempt by the Respondent would be an infringement of trademark rights and would amount to passing off.
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: nor has it given any indication that it allows the Respondent to use the same or to act as its agent; and
ii) The Respondent, Dermot O’Connor, does not have rights in respect of any trademarks for the name ‘Eurobet’ and is not recognisable by that name. The headed paper on which the Respondent has written indicates that his business, Dermot O’Connor & Co, is that of registered auditors and accountants and management consultants. No indication is given of his being involved in any business associated with betting.
The domain names have been registered and are being used in bad faith for the following reasons:
i) Eurobet is one of the world’s largest internet bookmakers and has been in existence since 1995, after the Respondent registered the domain names. The Complainant believes that the Respondent must have been aware of Eurobet’s existence when the domain names were purchased, a point which has not been denied in the correspondence from the Respondent.
ii) The only reason for acquiring domain names, which each contain the word ‘bet’, would be to use them in connection with a bookmaking, gaming or betting business. The Respondent has not been involved in the bookmaking industry (if he had been, this would only confirm that he had knowledge of Eurobet as a substantial betting and gaming organisation).
iii) The Respondent’s subsequent conduct leads to the conclusion that he possessed an intention to act in bad faith at the time of registration. Even if it could be argued that he was not aware of Eurobet when he first considered registering the domain names (which is highly unlikely) it is inconceivable that a professional accountant would not have researched the competition in the on-line bookmaking industry, the names and reputations of such businesses and the trademarks registered, prior to deciding to register domain names and set up a legitimate business.
iv) The domain names were registered in December 1998, and within six months they had been put up for sale at a sum far in excess of out-of-pocket expenses. The domain names have never been used so the extremely high price could not be justifiable. It is obvious that the domain names were acquired for no other purpose than to sell them to Eurobet (the most likely buyer) or a competitor of Eurobet. Subsequent correspondence, although using the words ‘without prejudice’ in places where offers are made to the Complainant to purchase the domain names, are unambiguous in their intention. In order to resolve this matter, in January 2000, the Complainant agreed in principle to pay a transfer fee for each domain name of Ј3,000. Thereafter, repeated attempts were made to contact Mr. O’Connor.
v) The Respondent is either seeking to disrupt the Complainant’s business by trying to divert business to the Respondent’s own site or attempting to extract a payment from the Complainant for the domain names.
vi) The Respondent has never tried to make use of the domain names, notwithstanding that he has now owned them for over three years. If he had had a legitimate reason for registering them, he would have wished to proceed with his business and would have approached the Complainant with a view to resolving the problems he faced, rather than solely endeavouring to sell them.
The Respondent is a registered Auditor and Accountant based in Killarney, Co. Kerry. In 1998, he became interested in online betting and decided to establish a presence and site on the internet under the title "Netbet". He registered the trademark Netbet and owns that company and business name in the Republic of Ireland. In the course of establishing this project and in order to attract financial backers, the Respondent registered certain names incorporating the concept of online gambling including, inter alia, the disputed domain names. This was done entirely bona fide. The Respondent estimates that he spent up to 1000 hours working the project and has invested heavily in it, his investment included contesting trademark applications.
While the Respondent is and was aware of the existence of Coral Bookmakers, the Respondent was never aware of the name or presence of Eurobet, its business and competitive position prior to the registration of the domain names. The three trademarks owned by the Complainant, two were registered after the Respondent commenced his own work in the area. The Respondent only registered four names which is not consistent with the allegation that the actions were in bad faith. The Respondent is not a "cybersquatter". His main interest is in the name "netbet".
The only reason the two disputed names were registered is that they were available. The Respondent was not trying either to disrupt the Complainant’s business by trying to divert business from the Respondent’s own side or to attempt to extract a payment from the Complainant for the domain names. The assertion by the Complainant that the sole purpose of the registration was to obtain a significant sum of money from the Complainant is rejected. Respondent is the secretary of W.K. O’Connor & Sons Limited, a company with extensive property interests in south-west Ireland, and which employs approximately 100 employees in construction. He is also the secretary of Hydam Limited, a company which specializes in the production of energy from wave power, and for which he has raised almost Ј3million for research.
The fact that the Respondent has not sought to use the disputed domain names indicates his bona fides. He was aware of the contentions made by the Solicitors for the Complainant and has refrained from using them and aggravating the situation. The failure of the Complainant to seek to assert ownership of the names in the intervening considerable period of time indicated difficulty in pursuing the matter through the Courts. In particular, the initial letter from the Complainant’s Solicitors indicated that they would take action prior to August 7, 1999, whereas no legal proceedings were ever issued prior to the Complaint herein. The only reason the Respondent sought to dispose of the names is, that he was satisfied that a sufficient presence would be gained using the style and title "netbet".
The Respondent is "astonished and outraged" that the Complainant has exhibited correspondence written on a "without prejudice" basis between Solicitors with his Complaint. The Respondent alleged in his correspondence that, if appropriate he will submit to the jurisdiction of the Irish Courts. In that jurisdiction matters set out "without prejudice" cannot be used in evidence. Such correspondence is clear evidence of the Complainant’s belief that the Respondent acted in good faith. Far from proceeding with the action referred to in the ‘cease and desist letter’, the Complainant entered into negotiations over prices for the site. The Complainant respectfully suggests that the removal of the privilege offered by "without prejudice" means that in this jurisdiction such correspondence constitutes an open offer which can be accepted by the Respondent to form a binding contract. If the Complainant believed that the Respondent was acting in bad faith, the Complainant should not place such offer on record. If the Complainant believes that the Respondent acted in bad faith the Complainant should have taken steps to enforce his ownership of the sites at some stage in the past two-and-a-half years.
The Respondent believes that the totality of his actions clearly support the contention that the Respondent was engaged in establishing his own internet gambling operation, which he is entitled to do. It was in the course of such project that he registered or acquired the domain names. This was not "primarily" for the purpose of selling, renting or otherwise transferring domain names. The Respondent’s primary aim was to build up a presence in internet gambling and not to sell any names to the Complainant or a competitor. The Complainant has recognized the legitimacy of the Respondent’s position by placing an offer on record. This offer was placed on record despite threats of legal remedies, which were subsequently not pursued in the considerable period of time that has elapsed.
The Uniform Domain Name Dispute Resolution Policy requires that each of the three elements set out in paragraph 4(a) are shown to be present and the Complainant has not done so. In particular, the domain names have not been shown by the Complainant to have "been registered and are being used in bad faith".
The Complainant cannot prove registration and use of the domain names in circumstances indicating that the Respondent has acquired the name "primarily" for the purposes of reselling, renting or otherwise transferring same as suggested by the Complainant.
The Respondent has demonstrated his intention to use the domain name in connection with a bona fide offering of goods or services as permitted by paragraph 4(c) of the Uniform Domain Names Dispute Resolution Policy.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no legitimate rights or interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
The disputed domain names are identical to the marks in which Complainant has an interest. The first criterion is proved. It is not challenged by Respondent.
As to the second criterion, the Complainant gave the Respondent no legitimate rights or interests in respect of the domain names. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, should demonstrate a Respondent’s rights or legitimate interests to a domain name.
The Respondent seems to rely upon paragraph 4(c)(i) i.e. that, before notice of the dispute, he used or made demonstrable preparations to use the name with a bona fide offering of goods and services. The Respondent cannot succeed in this contention. The evidence is that he conducts or wishes to conduct an internet gambling operation under the name ‘netbet’: He obtained a trademark for this name. There is no suggestion that he had taken any demonstrable steps to use the disputed domain names in respect of this business. Since registration of the name, he has not developed them. The Complainant has proved the second criterion.
With regard to bad faith, both registration and use must be proved. The Panel considers that bad faith registration can be inferred from the following:
(a) The expression ‘eurobet’ has been in extensive use by the Complainant or its predecessors since 1995, in many European countries, including Ireland.
(b) Such use has been established by the registration of a Community marks and of the domain name <eurobet.com>.
(c) The Respondent is both a professional man and a businessman with wide interests. Before setting up his ‘netbet’ business and seeking investors for it, he conducted considerable research. One would have thought that searching Community trademark registers to check the legitimacy of proposed domain names would have been an elementary part of such preparation. Also, the existence of the Complainant and its mark must have been part of any due diligence exercise. Clearly, anybody wanting to set up an internet betting business would want to know all about competitors.
(d) Ireland is a member of the European Community and the letters ‘euro’ have special significance for all member states in the Community. Enterprises like the Complainant which seeks a pan-European presence often seek to use the word ‘euro’ in naming their ventures.
The Panel considers bad faith registration proved. It must be inferred that Respondent knew about the Complainant’s mark at the date of registration. Subsequent events support this inference.
Respondent makes much objection about ‘without prejudice’ correspondence being provided by the Complainant. The Panel is of the view that ‘without prejudice’ correspondence should not be exhibited, although the Panel notes that the label ‘without prejudice’ should only be applied in well-defined circumstances such as when an offer or counter-offer is being conveyed.
Disregarding the alleged ‘without prejudice’ correspondence therefore, the Panel considers bad faith use can be inferred from the following:
(a) The letter of Complainant’s solicitors of July 26, 1999, alleging an offer by Respondent to sell the sites for Ј20,000 each. The Respondent has never denied making this offer.
(b) The domain names have never been developed into websites. The Respondent’s reasons for not so doing do not impress. Failure to develop a website is a common indicator of bad faith use.
(c) If Respondent carries on a legitimate business of internet betting under the name ‘netbet’, it is hard to see what good faith reasons there could be for keeping in his ownership domain names which reflect the name of the business of a competitor in the gambling industry.
(d) Respondent’s claim that he registered the domain names ‘to build up a presence in internet gambling’ lacks conviction in the light of the above.
For the foregoing reasons, the Panel decides:
(a) That the domain names <eurobet.net> and <eurobet.org> are identical to the trademark to which the Complainant has rights; and
(b) That the Respondent has no rights or legitimate interests in respect of the domain names; and
(c) That the domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <eurobet.net> and <eurobet.org> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: May 9, 2002