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and Mediation Center
Betonsports Plc, Bet-On-Sports (Costa Rica), S.A., And Domain Choices Limited v. Tpcr Development SRL
Case No. D2006-0634
1. The Parties
The Complainants are BetonSports PLC, London, United Kingdom of Great Britain and Northern Ireland; Bet-On-Sports (Costa Rica), S.A., San Pedro de Montes de Oca, San Jose, Costa Rica; and Domain Choices Limited, Pontypridd, United Kingdom of Great Britain and Northern Ireland, all represented by Finers Stephens Innocent LLP, United Kingdom of Great Britain and Northern Ireland .
The Respondent is TPCR Development SRL, Escazu, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <betonsportspoker.com> (the “Domain Name”)
is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2006. On May 24, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 26, 2006, the Registrar 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on June 20, 2006.
The Center verified that the Complaint together with the amendment to 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 June 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2006.
The Center appointed W. Scott Blackmer as the sole
panelist in this matter on August 2, 2006. 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 BETonSPORTS plc is a publicly traded company registered in the United Kingdom. A review of its 2005 Annual Report and websites indicates that the company operates -- through subsidiaries in various countries -- casinos, telephone centers facilitating wagers on sports and races, and numerous online gambling (“e-gaming”) websites. The Complainant’s January 20, 2006 letter to the Respondent, discussed further below, claims 1.2 million registered users of its services. BETonSPORTS plc has been characterized in the media as “one of the world’s largest online gambling companies.” See “Not guilty pleas entered in online gambling case,” USA Today, July 31, 20061.
The Complainant’s websites include “www.betonsports.com” and “www.bospoker.com,” the latter hosting online poker games. These domain names were registered by the Complainant Domain Choices Limited in 1998 and 2002, respectively. According to the Complaint, Domain Choices Limited is a UK-registered company that is a wholly-owned subsidiary of the Complainant BETonSPORTS plc.
The Complainant Bet-On-Sports (Costa Rica), S.A. is a company organized and registered in Costa Rica. The Complaint indicates that it is a wholly owned subsidiary of the Complainant BETonSPORTS plc. According to recent press reports, Bet-On-Sports (Costa Rica), S.A. operates a number of e-gaming websites from Costa Rica that have been challenged by United States prosecutors and tax authorities to the extent that they offer online gambling to, and accept payment from, US residents. See, e.g., “Net bookies still placing bets,” CNNMoney.com (July 22, 2006).2 These English-language e-gaming websites, including the two mentioned above, currently display a “BETonSPORTS.com®” logo and the notation, “BETONSPORTS.COM A COMPANY WITHIN THE BETONSPORTS PLC GROUP. A PUBLICLY TRADED COMPANY.” Otherwise, they currently display only an announcement that their facilities have been “temporarily suspended,” “in light of court papers filed in the United States.”
According to the Complaint, the Complainant Bet-On-Sports (Costa Rica), S.A. acquired the registered BETONSPORTS.COM mark in October 2002 from Corporaciуn Moishe S.A. The original Complaint filed with the Center on May 22, 2006 describes Corporaciуn Moishe S.A. as a company “associated” with the Complainant BETonSPORTS plc. The nature of the association is not detailed in the original Complaint. The Amended Complaint does not identify the relationship between the Complainants and Corporaciуn Moishe S.A., apart from referring to an “Asset Transfer Agreement” that was not provided with the Amended Complaint.
The BETONSPORTS.COM standard-character word mark is registered in the European Union (Community Trade Mark No. 1777903), for casino services and bookmaking, and in the United States (US Trademark Registration No. 2583976), for “betting services.” Copies of the trademark registrations were not provided with the Amended Complaint.
A search of the online Community Trade Mark (CTM) database indicates that the CTM was registered to Corporaciуn Moishe S.A. of Costa Rica, based on an August 2000, US trademark application by that company. There is no indication of an assignment to any of the Complainants. The CTM database includes an entry stating that the mark has not acquired distinctiveness.
The US trademark database operated by the United States Patent and Trademark Office (USPTO) shows that the mark was registered on the USPTO Supplemental Register by Corporaciуn Moishe S.A. of Costa Rica on June 18, 2002, showing first use in commerce in June 1997. The USPTO database also indicates that the mark was subsequently assigned to the Complainant Bet-On-Sports (Costa Rica), S.A., which is shown as the “last listed owner.”
The Domain Name was created on August 24, 2004. It is registered to “TPCR Development” in Costa Rica. The Complaint asserts that “TPCR DEVELOPMENT SRL” has “confirmed to the Complainants that they are the owners of the Disputed Domain Name,” although the Complaint does not provide details of this confirmation. The Respondent operates an English-language online gambling website at “www.truepoker.com.” The “About Us” page on that website describes the Respondent as follows:
“True Poker is owned by a Costa Rican based corporation (TPCR Development SRL, 951-1260 Plaza Colonial Escazu, Costa Rica) whose founders combine a love of technology, a love of poker, and a high level of integrity. Our Holding Company is: TrueCashier Ltd, Mallow, County Cork; Republic of Ireland.”
According to the Complaint, on January 20, 2006 the Domain Name resolved to the Respondent’s “www.truepoker.com” website, which offered gambling on online poker games in direct competition with the Complainants’ e-gaming websites at that time, particularly the Complainants’ website at “www.bospoker.com.” On that date, counsel for the Complainant BETonSPORTS plc sent the Respondent a letter asserting that registering the Domain Name and pointing it to “www.truepoker.com” is “intended to confuse customers and potential customers of our client into thinking that you are in someway connected with our client,” potentially leading to damage such as lost sales. The letter demanded the transfer of the Domain Name to the Complainant BETonSPORTS plc.
On January 25, 2006, the Complainants discovered that the Domain Name no longer pointed to “www.truepoker.com” but resolved instead to “www.yahoo.com,” as indicated by a printout attached to the Amended Complaint. The Yahoo! web page included general news and advertising links. A June 9, 2006 printout indicates that the Domain Name still pointed to “www.yahoo.com” on that date.
The Domain Name does not currently resolve to any website.
The Complainant BETonSPORTS plc filed the original UDRP Complaint with the Center on May 22, 2006. “Truepoker Management” replied to correspondence from the Center, directed to the Respondent’s registered contact addresses, with an email to Complainants’ counsel and the Center dated June 13, 2006. The email does not include any substantive response to the Complaint or the earlier letter from counsel for the Complainant BETonSPORTS plc. Instead, it alludes to settlement discussions:
“Before you go ahead and file an amended complaint, how about implementing the charitable contribution we discussed as part of a settlement of this matter?”
Apparently such discussions were unavailing, as the
Amended Complaint was submitted to the Center on June 20, 2006 and this proceeding
commenced on June 22, 2006.
5. Parties’ Contentions
The Complainants claim rights to the registered mark BETONSPORTS.COM and argue that the Domain Name <betonsportspoker.com> is confusingly similar. The Complainants assert that the Respondent has no rights or legitimate interests in the Domain Name. They further allege that the Respondent, a competitor, registered and used the Domain Name in bad faith to divert Internet users from the Complainants’ websites for the Respondent’s commercial gain.
The Respondent did not reply substantively to the
6. Discussion and Findings
Under Paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:
“(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.”
As in other cases where a respondent fails to reply substantively to a UDRP
complaint, the Panel must still satisfy itself that the Complainants have met
their overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested
facts, supported by plausible evidence (such as documents or sworn statements),
must provide a sufficient prima facie basis for finding confusing similarity
with the Complainant’s mark and then for inferring that, more probably
than not, the Respondent has no right or legitimate interest in the Domain Name
and has registered and used it in bad faith. See, e.g., Croatia Airlines
d.d. v. Modern Empire Internet Ltd., WIPO
Case No. D2003-0455.
A. Multiple Complainants
Neither the Policy nor the Rules expressly contemplates multiple complainants,
and some UDRP panels have rejected complaints filed by multiple complainants
on the ground that they have not sufficiently identified their respective ownership
rights and requested remedies. See, e.g., Ken Done, Ken Done & Associates
Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution
Case No. AF-0638. In other cases, panels have accepted complaints by multiple
complainants based on agency, licensing, or affiliate relationships. See, e.g.,
Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract
and Commercial, Inc. v. NYIM SkyLabs Corporation and DL Enterprises NYIM, WIPO
Case No. D2004-0220.
Here, the relationship between the Complainants is reasonably clear. The Complainant Bet-On-Sports (Costa Rica), S.A. owns at least the registered US trademark BETONSPORTS.COM. The Complainant Domain Choices Limited registered the domain names for the various BETonSPORTS e-gaming websites, including “www.betonsports.com” and “www.bospoker.com.” And the Amended Complaint asserts, without contradiction, that both of these Complainants are wholly owned subsidiaries of the Complainant BETonSPORTS plc, a relationship that is borne out by corporate, website, and media references to the BETonSPORTS group of companies, citing contacts at Domain Choices Limited or Bet-On-Sports (Costa Rica), S.A. in connection with the online gambling business of BETonSPORTS plc.
A UDRP proceeding must be predicated on a trademark or service mark in which a complainant has rights (Policy, para. 4(a)(i)). As it is not the owner of the BETONSPORTS.COM mark, there does not appear to be any need for the Complainant Domain Choices Limited to appear as a party in this proceeding, but there is no evident prejudice to the Respondent in naming the company as a Complainant. The Complainant Bet-On-Sports (Costa Rica), S.A. owns the US-registered BETONSPORTS.COM mark on which the proceeding is grounded, as discussed below, and so it is a proper UDRP Complainant. Its parent company, the Complainant BETonSPORTS plc, also clearly has an interest in the use of that mark for its online gambling business, although the Amended Complaint does not detail the corporate ownership structure or document a contractual or agency relationship that would allow the parent corporation to assert “rights” in the mark for UDRP purposes. Again, however, there is no evident prejudice to the Respondent in naming the parent company as a Complainant.
Accordingly, the Panel accepts the Amended Complaint as submitted, but any order directed to the Registrar will, in the interest of avoiding confusion, refer only to the Complainant Bet-On-Sports (Costa Rica), S.A., the owner of the US trademark registration for BETONSPORTS.COM.
B. Identical or Confusingly Similar
The Amended Complaint argues the confusing similarity between the Domain Name and the Complainants’ company names and domain names. But these are not relevant to the first element of a UDRP complaint under the Policy, paragraph 4(a)(i). Instead, each Complainant must show that the Domain Name is confusingly similar to “a trademark or service mark in which the Complainant has rights.”
The only mark cited in the Amended Complaint is BETONSPORTS.COM, a composite of a descriptive phrase in English and the top-level domain (TLD) “.com.” Even where the TLD is expressly included in the mark, it is generally not treated as significant for trademark purposes. See, e.g., USPTO Examination Guide No. 2-99 (Sep. 29, 1999) (“When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance. . . . The TLD will be perceived as part of an Internet address, and does not add source identifying significance to the composite mark.”3 Thus, the Panel’s focus is on whether a mark incorporating the descriptive English phrase “bet on sports” has been recognized or proven to be a distinctive indicator that one or more of the Complainants is the source of associated gambling services.
BETONSPORTS.COM is registered as a Community Trade Mark, but none of the Complainants is named as the owner of that mark in the CTM database. The Amended Complaint does not include support for the assertion that this mark has been assigned to the Complainant Bet-On-Sports (Costa Rica), S.A. Therefore, the Community Trade Mark will not be considered for purposes of this proceeding. In any event, the CTM registration is based on the US trademark registration and expressly notes that the mark has not acquired distinctiveness, so the CTM would have little probative value on its own.
The Complainant Bet-On-Sports (Costa Rica), S.A. is indisputably the current owner of the BETONSPORTS.COM mark registered on the USPTO’s Supplemental Register, as shown in the USPTO database. The Supplemental Register lists marks that are “capable of distinguishing applicant’s goods or services” but are not “registrable” on the USPTO’s Principal Register (see United States Trademark Act, 15 U.S.C. sec. 1091(a)), generally because the marks are descriptive and have not yet acquired a distinctive secondary meaning. Marks registered on the Supplemental Register do not benefit from all of the legal protections afforded marks registered on the Principal Register, such as a presumption of validity (see 15 U.S.C. secs. 1092, 1094). Apart from the right to bring an infringement action in federal court, where the validity of the mark remains to be proven, the owner of a mark registered on the Supplemental Register is in essentially the same position as the owner of an unregistered mark asserting common-law rights.
The Policy, para. 4(a)(i), refers only to “trademarks” and “service marks.” UDRP Panels have not, however, automatically recognized marks listed on the USPTO Supplemental Register, unregistered common-law marks, or marks registered under state laws in the United States (typically without examination for distinctness) as satisfying the first element of a UDRP complaint. Panels have denied transfer of domain names that are identical or confusingly similar to descriptive marks that have not been found to have acquired a distinctive secondary meaning. As the UDRP Panel concluded in Eric H. Bryant v. Norman J. Yerke, e-Resolution Case No. AF-0315,
“Registration on the Supplemental Register is an indication that the mark has not acquired distinctiveness, at least at the time of the registration. Although registration on the Supplemental Register is not a deemed admission of a lack of acquired distinctiveness, 15 U.S.C. sec. 1095, the applicant (Complainant in this case), in order to press its rights, if any, in the mark against others must establish through record evidence that the mark has acquired distinctiveness. Complainant has not done that on this record.”
Evidence of a distinctive secondary meaning for an unregistered descriptive
mark could include the length and amount of sales under the mark, the nature
and extent of advertising, consumer surveys, and media recognition. See, e.g.,
Amsec Enterprises, L.C. v. Sharon McCall, WIPO
Case No. D2001-0083 (insufficient evidence that “American Background”
had acquired a secondary meaning). Similar evidence would support a finding
that a mark registered on the Supplemental Register is, in fact, a valid mark
with sufficient distinctiveness in identifying the source of goods and services
to sustain a UDRP complaint.
Although the Complainants have not quantified their sales or advertising under this mark, the Panel finds that there is substantial evidence in the record and in the public domain demonstrating that the mark has acquired a distinctive secondary meaning associated with the BETonSPORTS group of companies and its offering of online gambling services:
* The Group has offered gambling services under the BETONSPORTS.COM mark since 1997 (according to the USPTO registration);
* The Group has used the domain name <betonsports.com> since 1998;
* BETonSPORTS plc is a publicly traded company in the United Kingdom;
* The Group claims 1.2 million registered users;
* The Group asserts in public filings, such as its Annual Report and press releases, that it is “one of the world’s largest US and Asia-facing, online gaming companies”;
* BETonSPORTS plc has been characterized in the media as “one of the world’s largest online gambling companies” (“Not guilty pleas entered in online gambling case,” USA Today, July 31, 20064);
* The Group’s preliminary results for the fiscal year ended February 5, 2006 report a gaming volume of US$1.7 billion; for comparison, the volume of online gambling worldwide has been estimated at US$12 billion (see, e.g., “Playboy to Join Poker Game,” Chicago Tribune, August 1, 2006);5
* A Google search on “betonsports” produces some 1.75 million “hits,” at least the first tier of which, examined by the Panel, all refer to the Complainant BETonSPORTS plc and its online gambling business, in articles and postings dating from the late 1990s to the present.
Taken together, these facts suggest that the BETonSPORTS group has been a major force in online sports betting and online casino gambling for nearly a decade, especially in English-language markets, and that its branded online sports book and poker facilities are well known in those online gaming markets. None of these facts are contested by the Respondent.
The Panel concludes, therefore, that the BETONSPORTS.COM mark, registered on the USPTO Supplemental Register to the Complainant Bet-On-Sports (Costa Rica), S.A., has acquired sufficient distinctiveness to sustain a Complaint under the Policy.
The Domain Name is confusingly similar to the BETONSPORTS.COM mark. The phrase “bet on sports” – the distinctive portion of the mark – is incorporated in its entirety. The added descriptive word “poker” does not reduce the likelihood of confusion but rather exacerbates it, since the BETONSPORTS Group does offer online poker games (using its initials in the domain name <bospoker.com>, as it does in <boscasino.com>).
The Panel concludes that the Amended Complaint establishes the element of confusing similarity to a mark in which at least one of the Complainants has rights.
C. Rights or Legitimate Interests
The Amended Complaint and the January 20, 2006 letter from the Complainants’ counsel indicate that the Complainants have not authorized the Respondent to use the BETONSPORTS.COM mark.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name. There is no evidence that any of these apply to the Respondent here. Based on the record in this proceeding and an examination of the Respondent’s website at “www.truepoker.com,” it does not appear that the Respondent offers online gambling or any other goods or services under a name corresponding to the Domain Name (Policy, para. 4(c)(i)), or that the Respondent has been commonly known by that name (Policy, para. 4(c)(ii)), or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name (Policy, para. 4(c)(iii)).
The Respondent engaged in communications with the Complainants’ counsel and the Center concerning this dispute but submitted no Response to the Amended Complaint and offered no reasons for choosing the Domain Name.
Under these circumstances, the Complainants are entitled to a presumption, which has not been rebutted, that the Respondent has no rights or legitimate interests in the Domain Name.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating bad faith. The Amended Complaint paraphrases one of these -- Policy, paragraph 4(b)(iv):
“(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your 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 your web site or location
or of a product or service on your web site or location.”
Such an intention can very plausibly be inferred in this case, from several undisputed facts:
* The Complainants operate one of the world’s largest online gambling businesses, using the phrase “Bet on Sports” in their company and domain names as well as in the registered BETONSPORTS.COM mark;
* The Complainants have received considerable attention from the general news media internationally, in the United States and British Isles, and in Costa Rica;
* The Respondent directly competes with the Complainants in hosting online poker games directed to the English-speaking market;
* The Respondent for an unknown period of time pointed the Domain Name to its own online poker website at “www.truepoker.com”;
* Both the Complainants’ and the Respondent’s online poker websites are operated from Costa Rica, under ultimate ownership of companies in the British Isles;
* There is no evidence in the record or on its website that the Respondent itself offers gambling on sports events – thus, it is hard to imagine why the Respondent would choose to include the phrase “bet on sports” in the Domain Name unless it wanted to take advantage of the fame of the Complainants’ mark and divert Internet users to the Respondent’s own online poker website.
It is, therefore, highly unlikely that the Respondent was unaware of the Complainants’ online gambling business associated with the BETONSPORTS.COM mark when the Domain Name was registered in August 2004. The Respondent appears to have taken deliberate steps to include otherwise irrelevant words in the Domain Name and to use the Domain Name to redirect traffic to its own, competing, online poker website.
The Panel finds that the facts cited above support an inference of bad faith
in the registration and use of the Domain Name. And although the Respondent
has communicated with the Complainants’ counsel and the Center concerning
this dispute, it has not offered an alternative explanation for its registration
and use of the Domain Name. The Panel concludes, therefore, that the Complainants
have satisfied the third element of their Complaint under the Policy.
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, <betonsportspoker.com>, be transferred to the Complainant Bet-On-Sports (Costa Rica), S.A.
W. Scott Blackmer
Dated: August 11, 2006
1 Available online at www.usatoday.com/tech/news/2006-07-31-betonsports-pleas_x.htm.
2 Available online at http://money.cnn.com/2006/07/22/news/international/bc.costarica.betting.reut/index.htm.
3 Available online at www.uspto.gov/go/tac/notices/guide299.htm.
4 Available online at “www.usatoday.com/tech/news/2006-07-31-betonsports-pleas_x.htm”
5 Available online at “www.chicagotribune.com/business/chi-0608010419aug01,1,3213245.story?coll=chi-business-hed”.