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ADMINISTRATIVE PANEL DECISION
Stan James (Gibraltar) Limited v. Domain Investments Limited
Case No. D2007-0374
1. The Parties
The Complainant is Stan James (Gibraltar) Limited, Marina Bay, Gibraltar, represented by Gaby Hardwicke Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domain Investments Limited, James Graham House, South Croydon, Surrey, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <stan-james.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2007. On March 13, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On March 15, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant.
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 March 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for response was April 18, 2007. The Respondent did not submit any response. Accordingly the Center notified the Respondent’s default on May 4, 2007.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on May 10, 2007. 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’s parent company Stan James was founded in 1976. The Complainant Stan James (Gibraltar) UK Limited was founded in 1999 and online trading of its services commenced in 2003. The Complainant trades in the online betting industry. It markets its goods and services both domestically in the United Kingdom and internationally. The Complainant’s business is currently operational in the following countries: United Kingdom, Czech Republic, Canada, Germany, Greece, Israel, Italy, Spain and Sweden. The trading names primarily used by the Complainant are Stan James, Stans Poker, Stans Casino and Stans Games.
The Complainant has trade mark applications for STAN, STANS and STAN JAMES at the European Community Trademark Office in Classes 9, 16 and 41. These applications were filed on July 1, 2005 and June 30, 2005 respectively. Copies of the applications are exhibited to the Complaint. The trademark application for SJ STAN JAMES was also filed in Canada on September 1, 2005 for inter alia online betting and gambling services.
The trademarks subject of the application have been used in the United Kingdom and the other countries in which the Complainant operates on promotional material, printed matter, advertisements, booklets and brochures.
The Complainant uses its trade marks in television advertisements on Sky Sports satellite television channel in the United Kingdom, in sponsoring, (amongst others), the prestigious King George VI Chase at Kempton Racecourse in the UK and when advertising in various print publications including the Racing Post.
In addition to its advertisements on Sky Sports the Complainant also uses its trademarks on advertising on the ESPN Sports Network and in over 250 affiliate and tenancy deals it has in place for online advertising. It advertises in various international gaming publications including Poker Europa and Poker Magazine. The Complainant also sends out weekly emails to current opt-in members and is running offline billboard and bus stop advertisements for its casinos in Liverpool and Manchester. Its marketing strategy also incorporates popular viral games including “www.vivalavolley.com” which again makes use of its trade marks. It has a number of strategies in place across Europe including more magazine advertisements, sponsorship of Poker tournaments and advertising in shopping centres as well as a number of online strategies.
A considerable amount of advertising has been aimed at the general public to raise its awareness of the Complainant and its services marketed under its trademarks. Across selected media the Complainant uses the infringed trade marks in marketing campaigns which have a combined annual budget of Ј5 million.
In the Complaint, the Complainant sets out virtually nothing about the Respondent. Moreover in the absence of a Response there is nothing disclosed by the Respondent as to its trading activities.
The Panel has no alternative in these circumstances but to decide the Complaint on the basis of the Complaint alone.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant submits:
1. The Respondent has registered a domain name that is “clearly” identical to the trademark of the Complainant which could cause confusion in the minds of potential customers looking to find the Complainants website.
B. Rights or Legitimate Interests
The Complainant’s case (and the Complainant has the burden of proof) is that there is no evidence that the Respondent has been commonly known using the domain name in dispute and that on this basis it has no rights or legitimate interests.
1. The Complainant submits that the Respondent’s use of the domain name is in breach of the Complainant’s rights both at common law and as infringement of a registered trademark once the Complainant’s trademark applications proceed to registration.
2. The Respondent has never been commonly known either as an individual business or other organisation by the domain name in dispute.
C. Registered and Used in Bad Faith
1. The domain name was registered and is being used in bad faith. The Complainant submits that the Respondent in using the domain name has intentionally attempted to attract for commercial gain internet users to the Respondent’s website by creating confusion with the Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied from the Complainant’s evidence that it has unregistered trademark rights in the mark STAN JAMES. It does not have registered trademark rights pending the applications referred to in the Complaint proceeding to grant. The Panel is satisfied that the domain name in dispute; <stan-james.com> is identical to the mark STAN JAMES as used by the Respondent, the only difference being the hyphen between “stan” and “james”. Accordingly, the Complainant succeeds in this element.
B. Rights or Legitimate Interests
No evidence is adduced by the Complainant to the effect that the Respondent does not have rights or legitimate interests in the domain name. Because there is no Response there are no contrary submissions from the Respondent.
Pursuant to established UDRP precedent, under this element, Complainant may establish that respondent has no rights or legitimate interests in respect of a domain name by making a prima facie case that respondent lacks rights or legitimate interests and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy. The Panel recognizes that providing a negative can be difficult. However, the Panel finds the Complaint in this case to be so thin that it does not rise to the level of making such a prima facie case. See eg 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie,
WIPO Case No. D2000-1223. In the circumstances, the minimum submission which the Panel would have expected the Complaint to have made would have been documentary evidence as to the Respondent’s use of the Domain Name, eg. for the purpose of linking to the Respondent’s assertedly competing site, for which purpose the presentation of a mere print-out of a web page might have sufficed.
In the absence of any evidence as to the Respondent’s activities and unsupported submissions from the Complainant to the effect:
1. The Respondent has never been commonly known either as an individual business or other organisation by the domain name in dispute; and
2. That it is clear that the Respondent is not embarking on any kind of legitimate non-commercial or fair use of the domain name and is using the Complainant’s name and reputation to attract consumers to the Respondent’s website,
the Panel finds that the Complainant has not succeeded in proving this element.
C. Registered and Used in Bad Faith
The Complainant submits that the Respondent in using the domain name has intentionally attempted to attract for commercial gain internet users to his website by creating confusion with the Complainant’s marks. It submits that the Respondent’s website is called “www.virtualracing.co.uk” which offers very similar services to that of the Complainant.
If the Complaint must be understood to imply that Respondent used the disputed Domain Name to link to its competing services, and if the Complaint would have documented such implication, that would likely have been a basis for a finding in Complainant’s favor. However, the Panel’s difficulty is that there is no evidence at all to support the Complainant’s submissions. The Panel is therefore unable to find in favour of the Complainant bearing in mind that the Complainant has the burden of proof.
The Complainant has failed to prove both that the Respondent had no rights or legitimate interests in respect of domain name in dispute and that the domain name in dispute was registered and is being used in bad faith. The Complaint must therefore fail.
For the foregoing reasons the Complaint is denied.
Clive Duncan Thorne
Dated: May 24, 2007