William Hill Organization limited v. Netmax Multimedia

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

William Hill Organization Limited v. Netmax Multimedia

Case No. D2001-0455

1. The Parties

The Complainant is William Hill Organization Limited, a company incorporated under the laws of England and Wales, having its principal place of business at Greenside House, 50 Station Road, Wood Green, London N22 7TP, England.

The Respondent is Netmax Multimedia having an address at Jan van Goyenstraat 3, Nijmegen, Gelderland 6522 ES, Netherlands.

2. The Domain Name and Registrar

The domain name in issue in these Administrative Proceedings is <wilhill.com>. The registrar with which the domain name is registered is Tucows.com Inc. (hereinafter "the Registrar").

3. Procedural History

On March 29, 2001, the WIPO Arbitration and Mediation Center ("the Center") received the Complaint in hard copy.

On April 3, 2001, the Center sent an e-mail to the Complainant advising the Complainant that the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") required that the Complaint should be submitted in electronic form and in hard copy.

On April 3, 2001, the Center sent a request for Registrar Verification to the Registrar. On April 4, 2001, the Registrar responded to the Center by e-mail and stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name <wilhill.com>, confirmed that the Respondent was at that time the registrant of the said domain name, provided contact details for the Respondent including the administrative contact, the technical contact and the billing contact for the said domain name, and confirmed that the Uniform Domain Name Dispute Resolution Policy (hereinafter "the Policy") applied to the said registration and that the said registration was currently "on hold" within the Registrar's system.

On April 4, 2001, the Complaint was received by the Center by e-mail and a further hard copy was received on April 5, 2001.

On April 9, 2001, the Complainant filed a request to amend paragraph 3(b)(xiii) of the Complaint relating to the Complainant’s agreement to submit to the jurisdiction of the Courts in Canada in the event of a challenge to the decision of this Administrative Panel.

On April 9, 2001, the Center reviewed the Complaint and was satisfied that the Complainant complied with the Rules and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy (hereinafter "the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.

On April 9, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name <wilhill.com> to the Respondent by post/courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on April 9, 2001, and that the Respondent was required to submit a Response to the Center on or before April 28, 2001.

On April 17, 2001, the Complainant sent to the Center by e-mail copies of e-mail correspondence between the Complainant and the Respondent which consisted of an e-mail purporting to be from the Respondent to the authorized representative of the Complainant dated April 10, 2001, and a reply from the authorized representative of the Complainant dated April 17, 2001.

On May 1, 2001, as no Response had been filed by the Respondent, the Center sent a Notification of Respondent Default to the Respondent by post/courier and by e-mail and a copy of said Notification was at the same time sent to the authorized representative of the Complainant by e-mail.

On May 4, 2001, the Center invited James Bridgeman to act as Administrative Panel in these proceedings.

On May 10, 2001, having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member.

On May 10, 2001, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties and advised that absent exceptional circumstances, the Administrative Panel was required to forward his decision to the Center by May 25, 2001. On the same date, the case file was transferred to the Administrative Panel.

In the view of the Administrative Panel, the proper procedures were followed and the panel was properly constituted.

4. Factual Background

The Complainant is a very well known and substantial bookmaker based in the United Kingdom and has existed since 1934. During that time the Complainant has used the trademarks and service marks <WILLIAM HILL> and <WILL HILL> in connection with the provision of its betting services. The Complainant is the proprietor of a number of registered trademarks and service marks including UK registration GB 2232558 <WILLHILL> in classes 9, 36 and 41. Furthermore, the Complainant is the owner of a pending application EM 1274505 for registration of a Community Trademark <WILL HILL> in classes 9, 36 and 41. The Complainant is also the proprietor of UK registration GB 1383971 <WILLIAM HILL> registered in class 36; UK registration GB 2175369 <WILLIAM HILL> registered in class 41; UK registration GB 2227658 <BETWILLIAMHILL> registered in classes 9, 36, 42; UK registration GB 2228925 <BETWILLHILL> registered in classes 9, 36 and 41; and European Trade Mark EM 914705 <WILLIAM HILL> registered in classes 16, 35 and 41.

In addition to its business in the United Kingdom, the Complainant carries on similar business in many other countries including business transacted through its principal web sites established at the domain addresses <williamhill.co.uk> and <willhill.com>.

The Complainant runs over 1500 betting offices in the United Kingdom, and operates a substantial telephone betting service in other European jurisdictions.

In the absence of any Response, there is little information about the Respondent save for the abovementioned details provided to the Registrar in connection with the registration of the said domain name <wilhill.com>.

5. Parties’ Contentions

A. Complainant

The Complainant requests this Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.

The Complainant submits that the said domain name is identical or confusingly similar to a trademark in which the Complainant has rights. In this regard the Complainant submits that it is the proprietor of aforementioned trademark registration and the pending application. The Complainant established its first Internet site in June 1996, to promote its telephone betting business and submits that it has since developed a substantial business through the web sites accessible via the domain addresses <williamhill.co.uk> and <willhill.com>.

The Complainant asserts that it is a well-known and substantial bookmaker and has several million customers throughout the world.

By reason of the above, the Complainant claims to have acquired a very substantial and extensive goodwill and reputation in the United Kingdom and worldwide in the name and trademarks <WILLIAM HILL> and <WILLHILL>.

The Complainant submits that the said domain name in dispute incorporates part of the Complainant's registered service mark <WILLIAM HILL> and all of the Complainant's registered service mark <WILLHILL> except for one letter "l".

The Complainant submits that the Respondent's domain name is confusingly similar to the said trademarks in which the Complainant has rights.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the said domain name. The Complainant states that the Respondent is not a licensee of the Complainant, nor is it otherwise authorised to use the Complainant's mark. There is no element on the web site of the Respondent, or within the Respondent's name, which justifies the use of the word <WILHILL> within the said domain name.

The Complainant has furnished evidence that the Respondent has established a web site at the said domain address <wilhill.com>. The Complainant submits that an examination of the Respondent’s web site, and the limited information available in respect of the Respondent, show that there is no evidence that the Respondent has any legitimate rights in respect of the domain name. There appears to be no resemblance between the name <WILHILL> and the images appearing on the web site.

The Complainant submits that the said domain name was registered and is being used in bad faith. According to the Policy at paragraph 4(b)(iv), it is considered bad faith use if a Respondent uses a domain name to attract for commercial gain, Internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site.

The Complainant submits that the web site, which appears when the URL <wilhill.com> is typed in, contains pornographic images. The Complainant has submitted printouts of examples of some pages on the site as an annex to the Complaint. The Complainant submits that the said domain name is being used to automatically re-direct and divert Internet users to the web site appearing at netmax.nl.

Internet users are trapped into the Respondent’s web site and before they can exit the web site, the visitor must view advertisements for the Respondent. Furthermore visitors to the Respondent's web site are forced to visit other pornographic web sites by way of "pop ups" automatically linking the Respondent's web site to many other pornographic sites. The Respondent is therefore gaining commercially by unfairly using the goodwill of the Complainant to attract an increased number of Internet users to visit the Respondent's web site.

The Complainant submits that the Respondent has used the Complainant's trade

mark and service mark to attract Internet users to this site and by doing so,

the Respondent has tarnished the Complainant's goodwill by using a confusingly

similar name to display pornography as well as confuse Internet users as to

a possible endorsement of the Respondent's site. The Administrative Panel has

considered in the cases Yahoo! Inc v. Cupcake Patrol (WIPO

Case No. D2000-0928) and Yahoo! Inc v. Internet Entertainment Group

(WIPO Case No. D2000-1595), that it is

unacceptable use of a domain name when a Respondent associates the Complainant's

trade mark with pornography against its wishes. In this case, the Respondent

is intending to gain commercially by misleadingly diverting customers and tarnishing

the Complainant's trademark with pornography.

Any typographical errors (which are common) by Internet users intending to

access the <willhill.com> web site result in the Internet user being taken

to the pornographic web site operated by the Respondent. In this way, the Respondent

intends to divert potential users of the Complainant's web site to the Respondent's

site. According to the Administrative Panel's decision in cases such as Oxygen

Media, LLC v. Primary Source, (WIPO Case

No. D2000- 0362), and Altavista Company v. Andrew Krotov (WIPO

Case No. D2000-1091), it was considered that using a domain name which intentionally

captured the typographical errors of Internet users was bad faith use.

Finally, the Complainant submits that as the word <WILHILL> does not have any meaning (either in Dutch or in English) that the Complainant is aware of, it is submitted that the Respondent is using the domain name to attract for commercial gain, Internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site.

B. Respondent

There was no Response filed by the Respondent.

6. Discussion and Findings

Preliminary Matter

On April 17, 2001, the Complainant sent to the Center, a copy of certain correspondence, which purports to have been an exchange of e-mails between the parties in these Administrative Proceedings. This Administrative Panel has not admitted this correspondence in evidence, as the Complainant did not follow proper procedures.

Substantive Matters

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the domain name in

dispute 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 respect of the said domain name; and

(iii) the said domain name has been registered and is being used in bad faith.

The Complainant has furnished prima facie evidence that it is the owner

of a number of trademarks and service marks set out above including in particular

UK trade mark registration GB 2232558 for the mark <WILLHILL>.

Furthermore, the Complainant has submitted that it has a long established reputation

and goodwill in the use of the name <WILLIAM HILL>, but has not furnished

any evidence whatsoever of this reputation.

The evidence of these registrations and the pending application for a Community

Trade Mark, supplied by the Complainant is in the form of a schedule or list

of registrations and the pending application and although it would be preferable

to have more formal evidence, in the absence of any challenge by the Respondent,

it is sufficient in that the Complaint contains a certificate of the Complainant’s

authorised representative inter alia to the effect that the information

contained therein is to the best of the Complainant’s knowledge complete and

accurate. In the circumstances, this Administrative Panel accepts this prima

facie evidence of the Complainant’s registrations and pending application.

This Administrative Panel accepts that there is a clear similarity between

the said domain name <wilhill.com> and the Complainant's <WILLHILL>

trademark and service mark. Furthermore, this Administrative Panel accepts that

because there is only one letter in the difference between the said trademark

and the said domain name <wilhill.com>, the similarity is likely to cause

confusion among users of the Internet.

This Administrative Panel is further satisfied that the Complainant has established

a prima facie case that the Respondent has no rights or legitimate interest

in the said domain name. In this regard, this Administrative Panel is conscious

that the second limb of the test set out in paragraph 4(ii) of the Policy requires

the Complainant to prove a negative and in the manner that this problem has

been approached in earlier decisions, this Administrative Panel is influenced

by the following facts: the Complainant is the owner of a well known trademark

and service mark <WILLHILL>; the Complainant has an established presence

on the Internet since 1996: the Complainant has not granted any rights or license

to the Respondent to use the said trademark and service mark; and on the evidence

submitted by the Complainant there does not appear to be any connection whatsoever

between the word <WILHILL> and the business of the Respondent.

In the circumstances, in the absence of any Response from the Respondent, this

Administrative Panel is satisfied that the Complainant has satisfied the second

limb of the test.

This Administrative Panel further accepts the Complainant’s submission that

the Respondent is using the said domain name to attract for commercial gain,

Internet users to the Respondent's web site, by creating a likelihood of confusion

with the Complainant's trade mark as to the source, sponsorship, affiliation

or endorsement of the services on the Respondent's web site. Because of the

similarity of the said domain name and the Respondent’s <WILLHILL> trademark,

it is clear that Internet users who are intending to access the Complainant’s

web site, who make a simple typographical error will access the web site operated

by the Respondent. This Administrative Panel accepts that the Complainant has

made out a prima facie case that the Respondent has registered and is

using said domain name in order to create such a diversion to attract the Complainant’s

customers.

In the circumstances and in the absence of any Response from the Respondent,

this Administrative Panel accepts that the Respondent has therefore made out

a prima facie case, sufficient to satisfy the third limb of the test

in Paragraph 4 of the Policy.

7. Decision

With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules

this Administrative Panel decides that the domain name <wilhill.com> is

confusingly similar to the Complainant's service mark, that the Respondent has

no rights or legitimate interest in respect of that domain name and that the

Respondent has registered and is using that domain name in bad faith. Accordingly,

this Administrative Panel decides that said domain name <wilhill.com>

should be transferred to the Complainant.

James Bridgeman

Sole Panelist

Dated: May 31, 2001

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