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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset
Case No. D2002-1058
1. The Parties
The Complainant is Emmanuel Vincent Seal, trading under the registered business name of "Complete Sports Betting", of South Australia 5062, Australia. The Complainant is also known as Curly Seal.
The Respondent is Ron Basset of Marleston, South Australia 5033, Australia.
2. The Domain Name and Registrar
The disputed domain name <completesportsbetting.com> is registered with Go Daddy Software Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on November 19, 2002, and in hard copy on November 25, 2002. The Respondent was notified of the Complaint on November 26, 2002. On December 12, 2002, legal counsel for the Respondent requested an extension until December 30, 2002, to file a Response to which the Complainant agreed. The Response was filed by email on December 31, 2002. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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"). The Response was received by the Center one day after it was due.
The Center appointed John Swinson as the sole panelist in this matter on January 10, 2003. The Panel finds that it was properly constituted.
On January 8, 2003, the Complainant’s legal representatives sent an email to the Center requesting that the Complainant be given an opportunity to respond to the Response in order to clarify some issues raised in the Response. The Center replied stating that it will be the sole discretion of the Panel as to whether it agrees to grant the Complainant’s request.
4. Factual Background
The Complainant is a licensed bookmaker in South Australia trading as "Complete Sports Betting". The Complainant offers bookmaking services to people in Australia and around the world. On August 31, 2000, the Complainant registered the business name "Complete Sports Betting" in the State of South Australia, Australia. The Complainant’s principal website is "www.completesportsbetting.com.au" where the Complainant advertises bookmaking services for a range of domestic and international sporting events including horse racing, horse harnessing, AFL football, soccer, rugby union, rugby league, tennis, golf, basketball, cricket and other sports.
The Respondent and Complainant had discussions about possible business dealings to market and promote the Complainant’s business. However, offers proposed by the Respondent were rejected by the Complainant.
The disputed domain name was registered by the Respondent on July 3, 2002.
The disputed domain name once diverted to a website of a direct competitor of the Complainant. The disputed domain name now diverts to a website to another bookmaking website "www.canbet.com.au" which is an Australian licensed bookmaking service that offers both online and phone wagering on Australian, North American and world sporting events. "www.canbet.com.au" is a competitor of the Complainant.
5. Parties’ Contentions
The Complainant is a licensed bookmaker and has operated a bookmaking business since 1995, on galloping, harness racing and sporting events. He has used the name "Complete Sports Betting" to identify his business since July 20, 2000, and he registered the business name "Complete Sports Betting" on August 31, 2000. The Complainant claims that his bookmaking business has grown to be one of the largest in Australia.
The Complainant uses the name "Complete Sports Betting" on all of his business stationery, including business cards, stickers, envelopes, letterhead, flyers, vouchers and advertising, since July 2000, (copies of which were supplied to the Panel).
On January 11, 2001, the Complainant registered the domain name <completesportsbetting.com.au> where he operates his principal web site to market his services in Australia and internationally. The web site includes information about the Complainant and a description of the services provided by the Complainant. The Complainant claims that the Internet has become an extremely important communication and marketing tool for him.
The Complainant claims he has established a significant reputation within the field of bookmaking and has established a significant client base. He currently has over 200 phone account customers and approximately 650 counter customers. For a number of months his principal web received over 55,000 hits per week.
The Complainant alleges the following:
1. The Complainant has unregistered trademark rights in the words "Complete Sports Betting". The disputed domain name is identical to or at least confusingly similar to his alleged trademark "Complete Sports Betting".
2. The Respondent has no legitimate rights or interest in the disputed domain name because:
(a) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and never intended to use the name in connection with a bona fide offering of goods or services;
(b) the Respondent is not commonly known by the disputed domain name and the Complainant has never been authorized by the Complainant to use the name "Complete Sports Betting;
(c) the Respondent registered the disputed domain name for the sole purpose of using the domain name as a commodity to sell or license to the highest bidder; and
(d) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as it has licensed use of the disputed domain name to a competitor of the Complainant ("Canbet" at "www.canbetusa.com") with the intention to misleadingly divert customers of the Complainant to its competitors website.
3. The Complainant and Respondent have had previous contact with each other, and the Respondent was aware of the reputation and success of the Complainant’s "Complete Sports Betting" business. The Complainant was approached twice by the Respondent to "enter into a business arrangement" with the Respondent (apparently regarding marketing and advertising the Complainant’s business outside of Australia). In late February 2002, the Respondent offered to sell to the Complainant a marketing list as a way of joining the Complainant's sports betting business. The offer was refused. Some weeks later it is alleged the parties again met when the Respondent offered the Complainant 30% of the profits from his business if the Complainant would allow the Respondent to use the Complainant's business facilities. The Complainant once again declined the offer.
4. The Complainant states that during his discussions with the Respondent, the Complainant came to believe that the Respondent had acquired a considerable amount of knowledge about the Complainant's business and reputation.
5. The Respondent approached the Complainant in July 2002, and inquired whether the Complainant would like to purchase the disputed domain name. The Complainant believes that Respondent was aware of the value of the disputed domain name to the Complainant and the detriment he would suffer if the disputed domain name ended up in the hands of a competitor. When asked how much it would cost the Complainant, the Respondent invited the Complainant to submit an offer. When the Respondent was asked by the Complainant to describe the costs involved to transfer the disputed domain name, the Respondent replied:
"We would like you to please submit an offer to us as we have other parties interested in the domain … If you like we will wait until other offers come in then let you know or you can make an offer now. I believe it would be very valuable to you, if you want to be on the world stage."
The Complainant’s offer to purchase the disputed domain name was refused by the Respondent on the basis that the Respondent had licensed use of the domain name to a third party.
6. The disputed domain name was registered and is being used in bad faith on the following grounds:
(a) The disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
(b) The Respondent is using the domain name to intentionally attempt to attract for commercial gain, Internet users to the on-line location of a competitor of the Complainant, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the competitor’s web site and the bookmaking service available on the web site. The Complainant has neither endorsed nor sponsored the web site located at "www.canbetusa.com" nor any of the services available on the web site located at "www.canbetusa.com".
(c) The Respondent was well aware that:
(i) the Complainant catered to gamblers from Australia and around the world who wish to gamble on both Australian and International events;
(ii) the Complainant is extremely well known within the bookmaking industry in Australia and that potential users of the Complainant's web site might be misleadingly diverted to Canbet's web site through the simple omission of a ".au" in the URL;
(iii) "Canbet" caters to Australian gamblers on its web site and is a direct competitor of the Complainant.
(d) At the time the Respondent offered the domain name for sale to the Complainant the domain name resolved to the web site of Thornton Sports at "www.thorntonsportsbet.com.au", a direct competitor of the Complainant, being the other major sports bookmaker in South Australia. The Complainant submits that the Respondent re-directed the domain name to the Thornton Sports web site in order to extract a higher price for the domain name by demonstrating to the Complainant how detrimental it would be if the domain name ended up in the hands of a competitor of the Complainant.
(e) The disputed domain name currently redirects to a web site located at "canbetusa.com", a competitor of the Complainant. Canbet's web site is heavily directed towards Australian residents and therefore would appeal to Australian gamblers. The Complainant further submits that in the bookmaking industry all bookmakers, notwithstanding what events they take bets on, compete which each other for a share of the gambling market.
7. When rejecting the Complainant’s offer to purchase the disputed domain name, the Respondent tried to recant his original offer to sell the name as follows:
"A company that I have been dealing with for a year now have decided that they would like to use the domain name www.completesportsbetting.com. I will be charging them a yearly fee for the use of the name.
So your offer to buy the name off me for $1,000 has been declined.
Thanks for the offer and good luck with your sportsbook.
Please note that the site that will be using it in NO way is using it in bad faith towards your Australian site. The reason why I offered the name to you is because this other company decided against using it once I bought it, but seen they have decided to commence use of it, it is no longer available to you for use. Besides after looking at your site, I don’t think there was any use of you using it as you only cater to the local market and don’t take bets on the Internet.
In regards of me finding lists from other sportsbooks for you to market with, I do not have any, the ones that I thought I had including DAS turned out to be fake. Looking back, I don’t think I would have sold it anyway or used it in anyway as I don’t think that is the right thing to do. If you want to get lists like that I suggest you do a search like on yahoo.com but I think that 99% of the lists would be fake".
The Complainant claims the response from the Respondent above is evidence that the Respondent knew his behavior was a clear example of registering and using the domain name in bad faith and does not reflect at all what the Respondent knew and believed about the Complainant’s business.
The panel will consider the Response, even though it was one day late.
The Respondent asserts that the Complainant has not proven any of the three major elements in Paragraph 4(a) of the Policy.
A summary of the Respondent’s submissions are as follows:
1. The words used by the Complainant to trade, "complete sports betting" are common terms used in a generic, or at best descriptive manner to describe the Complainant’s online sports betting services. The Complainant has offered no proof of secondary meaning of this generic or merely descriptive term and therefore has no enforceable trademark rights under the Policy.
The Complainant must prove that the words "Complete Sports Betting" have acquired a "secondary meaning" or "acquired distinctiveness" i.e., proof that consumers exclusively associate the mark with Complainant. Business Architecture Group, Inc. v. Reflex Publishing, (NAF Case No. 97051 June 5, 2001). Absent proof of secondary meaning of a non-registered generic or descriptive mark, a complainant has no enforceable trademark rights under the Policy; Successful Money Management Seminars, Inc. v. Direct Mail Express, (NAF Case No. 96457 March 7, 2001, - seminar and success are generic terms); Pet Warehouse v. Pets.com (WIPO Case No. D2000-0105 - pets and warehouse are generic terms).
2. "Complete sports betting" is a descriptive term subject to substantial third party use on the Internet. A Google.com search for "complete sports betting," without "completesportsbetting.com.au" (to exclude possible references to Complainant) yielded over 100 third party uses of the term. The term "sports betting" by itself yielded 540,000 such results. Because the disputed domain name incorporates a common descriptive or generic term not solely associated with Complainant, Respondent has rights and a legitimate interest in the disputed domain name, regardless of how it is using it: Energy Source Inc. v. Your Energy Source (NAF Case No. 96364 February 19, 2001, regarding <yourenergysource.com>.
3. The Respondent has rights and a legitimate interest in the disputed domain name because he is using the disputed domain name to build a comprehensive portal site offering bookmaking services for a "complete" range of sports, including horse racing, football, soccer, basketball, cricket, golf, tennis, and auto racing and other information about sports betting, sports injury updates, weather forecasts, live sports scores, sporting events calendar, contests, and sports betting site ratings. The web site will generate revenue from the sale of advertising. At present, Respondent is using the disputed domain as part of an affiliate program with Canbet, an online sports betting web site. The Respondent attached a business plan summary which he prepared. The Respondent claims he has invested several thousand dollars on marketing the web site.
The use of a descriptive domain name to derive revenue from a web site related to the descriptive meaning of the domain name establishes the Respondent’s legitimate interest in the domain name. Sweeps Vacuum v. Nett Corporation (WIPO Case No. D2001-0031); Dial-A-Mattress Operating Corp. v. Ultimate Search (WIPO Case No. D2001-0764).
4. The Respondent did not register the disputed domain name for the purpose of selling, renting or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name, or to disrupt Complainant’s business or attract customers seeking to purchase its services.
5. The Respondent did not register and is not using the disputed domain name in bad faith. The Respondent is entitled to register a domain name which incorporates common, words which are appropriate to describe a web site related to sports betting.
6. The Respondent’s offer to sell the disputed domain name to the Complainant arose in the context of several meetings between the parties concerning marketing and advertising the Complainant’s business outside Australia. Whilst the Respondent rejected the Complainant’s offer, no counter-offer was made by the Respondent. This proves that the Respondent was not interested in selling the disputed domain name. Also the fact that the sales discussions took place after the parties had met a number of times shows that selling the disputed domain name was not the Respondent’s primary purpose in registering it. Whilst it is true that the disputed domain name was pointed to Thornton’s Sports, this was accidental and only occurred for 48 hours. The error was a result of the Respondent having pointed a number of other domain names to Thornton’s Sports as part of a marketing deal.
7. It does not constitute bad faith where a Respondent merely registers a common descriptive word or term. In Decision Support Technology, Inc v. Bassetts E-mail Service (NAF Case No. 94333 - June 16, 2000) the panel explained that:
"The mere fact that a generic term is also the subject of a trademark registration (or registrations) in one or more jurisdictions does not mean that a party like Respondent, which has registered numerous domain names using words which may or may not also be used as trademarks, is automatically guilty of "bad faith". Obviously, the use of such a word "prevents" the trademark owner from having a corresponding domain name. More, however, is required to establish the "pattern" referred to in Paragraph 4(b)(ii) of the Rules."
8. There is no evidence to support the Complainant’s allegation that the Respondent intentionally attempted to attract, for financial gain, Internet users to the disputed domain name by creating a likelihood of confusion with Complaint’s mark. Intention cannot be proven by the mere registration of a domain name incorporating a generic term. In Canned Foods, Inc. v. Ult. Search Inc., No. FA 96320 (NAF Feb. 13, 2001) the Panel explained:
"Where the domain name is a generic term, it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them. There are dozens of other enterprises that use the term "Grocery Outlet," therefore one cannot conclude that Complainant must necessarily be the special target."
9. The Respondent also helpfully referred to Lumena s-ka zo.o. v. Express Ventures LTD (NAF Case No. 94375 May 11, 2000) where the panel found no bad faith where domain name incorporates generic term, absent direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest.
6. Discussion and Findings
Based on the Complaint and Response the Panel did not find it necessary to consider any further submissions from the parties. Accordingly, the Panel does not allow the Complainant to make further written submissions.
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the Policy, namely:
(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant does not have a registered trademark for "completesportsbetting".
However, it is clear from many, many prior decisions that the reference to "rights" in Paragraph 4(a)(i) of the Policy includes both registered and unregistered trademark rights.
The Respondent contends that the alleged mark is generic or merely descriptive, and that the Complainant has not offered evidence, which establishes common law trademark rights in the term. The Panel disagrees.
The Respondent also cited some U.S. court decisions, which are somewhat unhelpful where both parties appear to reside in Australia.
Common law trademark rights exist when a party can establish goodwill and reputation in and to a name: David Gilmour a.o v. Ermanno Cenicolla (WIPO Case No. D2000-1459). Paragraph 4(a)(i) of the Policy does not focus on how strong or weak those trademark rights may happen to be. Action Sports Videos v. Jeff Reynolds (WIPO Case No. D2001-1239). The Action Sports Videos decision is relevant because it demonstrates that rights under the Policy can exist in marks which are descriptive and which have no secondary meaning.
The Complainant has used the "complete sports betting" mark to advertise and promote its products and services to the Australian and International market since July 2000. The Complainant registered a business name for "Complete Sports Betting" on August 31, 2000, and has been trading as "Complete Sports Betting" since July 20, 2000. The Complainant provided the Panel with evidence of his use of the business name "Complete Sports Betting" including copies of his business cards, stickers, envelopes, letterhead, flyers, vouchers and advertising. Evidence was produced showing that the Complainant’s principal website at "www.completesportsbetting.com.au" had over 55,000 hits per week for the 31 week period ending October 8, 2002. The Complainant has over 200 phone account customers and approximately 650 counter customers.
Clearly the Complainant has developed significant goodwill and reputation in the "complete sports betting" mark. In the Panel’s view, the Complainant has provided enough evidence to show that he has common law trademark rights in "Complete Sports Betting" under the Policy.
Therefore, the Panel finds that the Complainant has rights in the unregistered trademark "complete sports betting" and that the disputed domain name is identical or confusingly similar to the "complete sports betting" mark.
B. Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparations to use, the contested domain name or a name corresponding to the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute; or
(ii) it (as individuals, a business, or other organization) has been commonly known by the contested domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the contested domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is not disputed that the Respondent is not commonly known by the disputed domain name, or that the Complainant has not authorized use by the Respondent of the words "complete sports betting".
The Respondent’s basis for claiming rights and legitimate interest in the disputed domain name can be summarized as follows:
(a) the words "complete sports betting" are descriptive, and therefore he is entitled to register the disputed domain name to establish (in good faith) a web site which provides comprehensive information in relation to sports betting (including betting services for a number of sports) from which he intends to derive income from the sale of advertising on the website; and
(b) the disputed domain is currently being used in connection with a sports betting affiliate program with Canbet (a competitor of the Complainant); and
(c) the Respondent has a business plan summary relating to a complete sports betting website.
The business plan summary is undated, and none of the materials submitted by the Respondent state when the business plan summary was created. It may or may not have been created after this dispute started. It is a very broad features list and competitive summary. No supporting materials showing how this plan was being implemented (at considerable cost, according to the Respondent). The Panel gives little weight to the Respondent’s business plan summary.
When considering whether the Respondent has rights or legitimate interests in the disputed domain name, it is necessary to consider the relationship of the parties, their previous dealings and any knowledge that the Respondent may have of the Complainant’s services.
Previous decisions recognize that consideration of good faith is a key issue in determining whether use is bona fide under the policy. See World Wrestling Federation Entertainment, Inc. v. Rift, WIPO Case No. D2000-1499, ("not all use prior to notice of the dispute can qualify as bona fide use"). As explained in Ciccone v. Parisi, WIPO Case No. D2000-0847, intentional infringing use should not be viewed as bona fide use:
"We . . . conclude that use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
In The Marigny Corporation v. Discount Coffee.com, Inc (WIPO Case No. D2001-0354) the respondent (a former employee of the complainant) registered a domain name, which was confusingly similar to a mark in which the complainant had rights. The web site for the domain name diverted to a site, which sold goods that competed with the complainant’s goods. The respondent claimed it had a legitimate interest in the domain name because the complainant’s mark was generic and the respondent used the domain name to sell coffee and related products before receiving notice of the dispute. In that case the panel held:
"Here, there is no dispute that respondent has used the domain name for a commercial site relating to coffee. However, that alone is insufficient for a finding of legitimate interest … It appears that respondent used the domain name as a means of attracting Internet users to its site where it sells coffee and related products and services. This use appears to be a deliberate infringement of Complainant’s rights. Accordingly, I find that Respondent lacks any right or legitimate interest in the domain name."
Similarly, in this case the Respondent was well aware of the Complainant’s bookmaking business, so much so that he was interested in forming a business relationship with the Complainant.
In fact, it appears that the Respondent has significant knowledge of the online world and online sports betting. The Respondent appears to own the domain name <syndicateig.com> which is a site to form syndicates to place bets. The whois records from the Go Daddy registrar site show the following entry for the owner of this domain name:
Syndicate Investment Group
Paradise, California 95969
The Respondent also appears to own the domain name <wgplays.com>. This domain name appears to mean "wise guy plays". The Canbet website includes, on a sign up page, a question asking users where they heard of Canbet. One option is wgplays.com. The whois records from the Go Daddy registrar site show the following entry for the owner of the wgplays.com domain name:
Paradise, California 95969
A google search on "wgplays" returns some spam email, some from "email@example.com", promoting sports gambling. The email includes a "click here for more information" link to http://www.benisp.com/ron1.htm. At present, that link is inactive. The benisp.com domain name is also registered with Go Daddy, and has the following whois record:
40 Elgar Avenue
Adelaide, South Australia 5098
The relationship between Mr. Pix and the Respondent is uncertain, but it is strange that a South Australian ISP would have "ron1" as a file name and that the Respondent, who has the first name of "ron", appears to be involved in spam directing users to the "www.benisp.com" website.
The Respondent’s submissions also include references to deals he has done with Canbet and Thorton’s Sports.
The Respondent had met with the Complainant a number of times prior to registering the disputed domain name.
In short, even giving the Respondent the benefit of the doubt where the facts may be unclear or disputed, what is clear is that the Respondent understands Internet sports betting and knew of the Complainant’s business and trade name prior to registering the disputed domain name.
Whilst the Complainant’s trading name "Complete Sports Betting" may be descriptive, the Respondent knew of the reputation and goodwill that the Complainant had established in this name and registered the disputed domain name with knowledge of the Complainant’s rights and reputation. Under these circumstances, it cannot be concluded that the Respondent is offering bona fide goods or services or making a "fair" use of the disputed domain name when the goods and services that the Respondent intends to offer using the disputed domain name are in direct competition with those of the Complainant. The intention appears to be to cause confusion amongst the gaming community so that those who are interested in the Complainant’s services are diverted to a web site of the Respondent or a competitor of the Complainant.
The Respondent relies upon Lumena s-ka zo.o. v. Express Ventures LTD (NAF Case No. 94375 May 11, 2000). That decision stated:
"In addition, given the generic nature of the domain name, Respondent has at least the arguable position that were it to use lumena.com merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to customers and does not tarnish a trademark."
Here, the Panel finds that the Respondent’s use of the domain name is misleading to consumers, and that the Respondent was aware that confusion would likely arise when registering the disputed domain name.
Accordingly, the Respondent has failed to demonstrate that it has any rights or legitimate interests under paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4 of the Policy provides that evidence of bad faith registration and use by the Respondent includes (without limitation):
(i) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name; or
(ii) using the disputed domain name to attempt to intentionally attract for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location."
The Panel finds bad faith under both these limbs of the Policy.
The correspondence from the Respondent to the Complainant when offering the disputed domain name for sale, and then rejecting the Complainant’s offer suggests that:
(a) the Respondent was aware of the value of the disputed domain name to the Complainant and that it would be detrimental for a competitor of the Complainant to acquire or use the disputed domain name; and
(b) it was attempting to extract from the Complainant the highest amount of money that the Complainant was prepared to pay by suggesting that other parties (presumably, parties that were competitors of the Complainant) were interested in the disputed domain name,
evidenced by the comment "We would like you to please submit an offer to us as we have other parties interested in the domain … If you like we will wait until other offers come in then let you know or you can make an offer now. I believe it would be very valuable to you, if you want to be on the world stage".
The Panel is also of the view that the Complainant’s subsequent correspondence to the Complainant refusing the offer to purchase the domain which attempts to retract the offer suggests that the Respondent knew that it’s actions were not in good faith. The email appears to be a transparent attempt to "cover the Respondent’s tracks" almost in anticipation of a claim that the Respondent has acted in bad faith.
The facts here are similar to those in The Marigny Corporation v. Discount Coffee.com, Inc, WIPO Case No. D2001-0354.
The Panel finds that the Respondent registered the domain name with knowledge of the Complainant’s business and its reputation to lead Internet users to a site in direct competition with the Complainant. The disputed domain name is being used in a way to intentionally attract Internet users to a competitor’s website by creating a likelihood of confusion with the name and mark of the Complainant. This conduct is contrary to paragraph 4(b)(iv) of the Policy: World Wrestling Federation Entertainment, Inc. v. Rift Id.; Ciccone v. Parisi Id. In particular, the Panel notes that the Respondent has a business relationship with Canbet unrelated to the disputed domain name.
The Respondent’s claim that the mark is generic or descriptive of the Complainant’s business and the cases cited by the Respondent including Canned Foods, Inc. v. Ult. Search Inc and Lumena s-ka zo.o. v. Express Ventures LTD do not legitimize the Respondent’s actions due to the Respondent’s prior knowledge of the Complainant’s goodwill and reputation in the trading name "Complete Sports Betting".
The cases cited by the Respondent can be distinguished because of the Respondent’s knowledge of the Complainant’s business. Here there has been a deliberate attempt to confuse Internet users and it is reasonable to conclude that the Complainant is the "special target". The evidence suggests that the Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest.
In addition to the Response, the Respondent submitted a signed declaration. This declaration does not state where it was signed, was not witnessed, and does not comply with any laws in Australia relating to swearing of affidavits or the making of declarations. As such, it is given the same weight as the assertions of the Respondent’s counsel, Mr. Ari Goldberger, Esq., made in the Response.
The Respondent’s conduct is also likely to be in breach of the Australian Trade Practices Act. This may be additional grounds of bad faith. Infotechnology Pty Ltd v. Estore Pty Ltd, WIPO Case No. D2002-0069.
For the reasons outlined above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <completesportsbetting.com> be transferred to the Complainant.
Dated: January 26, 2003