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Arbitration and Mediation Center
The Sporting Exchange Limited v. Grand Slam Co.
Case No. D2003-0800
1. The Parties
The Complainant is The Sporting Exchange Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Ashurst Morris Crisp, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Grand Slam Co., Chopsticks Town, Thailand.
2. The Domain Name and Registrar
The disputed domain name <wwwbetfair.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2003. On October 9, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 10, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2003.
The Center appointed Charles Gielen as the Sole Panelist in this matter on November 25, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the proprietor of the registered UK trademark BETFAIR, filed on March 22, 2000, and registered on April 6, 2001, in class 9 for "gambling, gaming and betting computer software" and in class 41 for "gambling, gaming and Betting Exchanges; on-line and telephone gambling, gaming and Betting Exchanges; lottery services." The Complainant is also the owner of the domain name <betfair.com> which it registered on March 15, 2000. On June 7, 2000, the Complainant launched a "betting exchange" service designed to facilitate transactions involving individuals on two sides of a betting market ("Betting Exchange"). The Betting Exchange is provided from the United Kingdom and is accessible by telephone or through a website hosted in the UK (at the URL "www.betfair.com").
5. Parties’ Contentions
According to the Complainant, it has devoted very substantial resources to promoting its Betting Exchange and developing the BETFAIR trademark and brand. Since launch, its expenditure on advertising and sponsorship activities has exceeded Ј15m. The Complainant furthermore sponsored Fulham Football Club (a club in the English Premier League) for the 2002/3 season. Under that sponsorship, inter alia, all players shirts were branded with the BETFAIR trademark. The Complainant also states he currently has over 50,000 active registered users placing well over Ј50 million of bets in an average week. As a result of its activities, the Complainant has acquired substantial and valuable goodwill and reputation in relation to its Betting Exchange which is represented by the BETFAIR mark. Indeed, as a result of its rapid growth the Complainant has become one of the leading service providers within the sports betting industry in the UK.
The co-founders of the Complainant were awarded the Ernst & Young UK Emerging Entrepreneurs of the Year in 2002, and the Complainant was awarded a Queens Award for Enterprise in the Innovation category in 2003. Due to the success of the Complainant’s Betting Exchange business, the BETFAIR mark has become a famous or well known trademark at least amongst the UK betting public. There can be no question that the Complainant has rights in the BETFAIR trademark and that these pre-date the Respondent’s registration of the Domain Name.
The Complainant argues that the Domain Name is identical or at least confusingly similar to the BETFAIR trademark since it incorporates as its dominant element the Complainant’s registered trademark BETFAIR. The only additional matter in the Domain Name is the prefix "www," which does not serve to distinguish the Domain Name from the Complainant’s registered trademark.
Furthermore, the Complainant states that the Respondent has no legitimate rights or interests in the Domain Name. To the Complainant’s knowledge having undertaken searches, the Respondent does not have any trademark or other rights in the name "wwwbetfair.". The Complainant’s business pre-dates any relevant activities of the Respondents, as is evident from the date of registration of the Domain Name of February 20, 2003. There is no evidence that the Respondent or any business of the Respondent is commonly known under the Domain Name.
Finally, the Complainant argues that the Domain Name was registered and is used in bad faith. The Complainant’s service and its BETFAIR trademark had already achieved notoriety, at least within the UK, by February 2002, when the Domain Name was registered. As noted above, the Domain Name is in active use, linking to a website service which is closely competitive with that of the Complainant and is within the field of the Complainant’s notoriety. The Respondent must be presumed to be associated with that competitive service. The Respondent’s Domain Name takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet. In all the circumstances, it is inconceivable that the Respondent can have chosen a name such as the Domain Name in ignorance of the Complainant’s rights.
In the circumstances, one must conclude that the Domain Name was chosen and is being used both for the general reason that it incorporates the Complainant’s well known BETFAIR mark, in which substantial goodwill resides in the UK and elsewhere, and for the particular reason that users seeking to visit the Complainant’s website will from time to time mistakenly omit the period between the www and the Complainant’s domain name, thus directing to the Respondent (or its associated company) persons intending to use the Complainant’s service.
Moreover, the previous UDRP decisions involving the Respondent (see cases NAF
Case No. 114339 and WIPO Case No. D2003-0136)
are clear evidence of a pattern of conduct by the Respondent of registering
and using domain names in bad faith. The circumstances of those cases are closely
analogous to the present case and there has been bad faith registration and
use of the Domain Name in this case for the same reasons.
The Respondent was given the opportunity to refute the Complainant’s allegations in correspondence but has chosen to make no response to the Complainant’s letter of August 18, 2003. This is consistent with the Respondent’s conduct in the previous UDRP decisions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide upon the Complaint in accordance with the Policy, the Rules and any Rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy says that the Complainant must prove each of the following:
1) 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
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
The Panel decides as follows with respect to each of these 3 points.
A. Identical or Confusingly Similar
The panel decides that the Complainant is correct in its submission that it is the proprietor of the registered UK trademark BETFAIR and that it has acquired substantial goodwill in this mark in a short period of time in any event before the Domain Name was registered. The panel decides that the domain name <wwwbetfair.com> is identical or at least very similar to this trademark. The fact that the Domain Name contains the letter string "www" has no relevance whatsoever since this generic indication does not add any distinctive element to the word "betfair.". It is standing practice in decisions of other Panels that the addition "www" to a trademark has no influence whatsoever on the likelihood of confusion. Therefore the Complainant succeeded in showing that the Domain Name is confusingly similar to the trademark.
B. Rights or Legitimate Interests
It is up to the Complainant to show that the Respondent does not have any rights or legitimate interests to the domain name. The fact that the Policy requires that the Complainant proves this can be very burdensome in a case where the Respondent although having being duly notified of the Complaint, did not file a response. The Complainant stated that it undertook searches on the basis of which it did not find any trademark or any other right with respect to the <wwwbetfair.com>. According to the Complainant there is no proof whatsoever of any predating relevant activities of the Respondent and under those circumstances the Panel takes it as uncontested that the Respondent does not have any rights or legitimate interests in the trademark. Therefore the Panel comes to the conclusion that the second condition of paragraph 4(a) is met.
C. Registered and Used in Bad Faith
With respect to the submission of the Complainant that the trademark is registered and is being used in bad faith the Panel decides as follows.
For assessing bad faith the circumstances mentioned in paragraph 4(b)(i)–(iv) of the Policy are examples which constitute evidence of the registration and use of a domain name in bad faith.
The Panel first of all finds that in this case the Complainant succeeded in showing that Respondent has engaged in a pattern of conduct of registering domain names for the purpose of preventing the owner of trademark from reflecting the mark in a corresponding domain name. In this context reference is made to the earlier decisions mentioned above.
Furthermore the Panel is of the opinion that the Respondent registered and is using the Domain Name in order to intentionally attempt to attract for commercial gain internet users to the website "www.mysportsbook.com" which also provides online betting or at least links to online betting sites that are competing with the one of the Complainant.
The Panel therefore decides that the Respondent registered and is using the Domain Name 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 be transferred to the Complainant.
Dated: December 9, 2003