Hilton Group plc; Ladbrokes Limited / Ladbrokes E-gaming / Ladbrokes v. Universal Internet Technologies, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hilton Group and Others v. Universal Internet Technologies Inc..

Case No. D2001-0812

1. The Parties

The Complainants in this administrative proceeding are:

a) Hilton Group Plc, a United Kingdom publicly listed company whose principal place of business is at Maple Court, Central Park, Reeds Crescent, Watford, Herts, WD24 4QQ, United Kingdom ("the First Complainant");

b) Ladbrokes Limited a United Kingdom limited liability company whose principal place of business is at Maple Court, Central Park, Reeds Crescent, Watford, Herts, WD1 1HZ, United Kingdom ("the Second Complainant");

c) Ladbrokes E-gaming Limited a United Kingdom limited liability company whose principal place of business is also at Maple Court, Central Park, Reeds Crescent, Watford, Herts, WD1 1HZ, United Kingdom ("the Third Complainant"); and

d) Ladbrokes International Limited whose principal place of business is at

57/63 Line Wall Road, Gibraltar ("the Fourth Complainant").

represented by Olswang, solicitors, of 90 Long Acre, London WC2E 9TT. The Respondent is Universal Internet Technologies, Inc., Global Gaming Systems and Licensing, European Division, Bloomsbury, London WC1E 7QF, United Kingdom.

2. The Domain Names and Registrar

The domain names in issue are <ladbrokesportsbook.com> and <ladbrokessportsbook.com> ("the Domain Names"), the Registrar of which is Tucows, Inc..

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received

on June 20, 2001, an electronic version of the Complaint and

on June 22, 2001, a hard copy of the Complaint and accompanying documents. The

Center verified that the Complaint satisfies the formal requirements of the

ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"),

and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").

The Complainant made the required payment to the Center. On June 26, 2001, the

Center formally notified the Respondent that this administrative proceeding

had been commenced and that that date is the formal date of the commencement

of this administrative proceeding.

On June 21, 2001, the Center transmitted via e-mail a request for registrar

verification in connection with this case. On June 22, 2001, Tucows transmitted

via e-mail to the Center its Verification Response, confirming that the registrant

is Universal Internet Technologies, Inc., Global Gaming Systems and Licensing,

European Division, Bloomsbury, London, WC1E 7QF and stating that the administrative,

technical and billing contact is in each case Global Gaming Systems and Licensing,

European Division, Bloomsbury, London, WC1E 7QF.

No Response has been filed by the Respondent. The Center attempted unsuccessfully

to send notification of the Complaint to the Respondent by courier (with all

accompanying exhibits) and by fax. However, there is nothing to suggest that

the e-mail notification, which the Centre also sent, was not received. Notification

of Default was sent by e-mail to the parties on July 17, 2001. In view of the

fact that the Respondent ignored the Complainants’ objections to the Respondent’s

registration of the Domain Names before these proceedings were instituted, the

Panelist concludes that the Respondent has deliberately chosen not to respond

to the Complaint, but that it has received adequate notice of the same.

On July 24, 2001, this Panelist was appointed by the Center. The Panelist has

filed a Statement of Acceptance and Declaration of Impartiality, and his decision

is due to the Center by August 7, 2001.

4. Factual Background

(a) The First Complainant is the registered proprietor, inter alia,

of United Kingdom and United States trademarks in respect of the marks LADBROKE

and LADBROKES. (UK Nos. 2,004,802 and 2,039,353 and US Nos. 74-672068 and 75-004230).

It also owns a number of other trademarks which incorporate the word LADBROKE,

together with other more or less descriptive words (e.g. LADBROKE CASINO).

(b) Between them, the Complainants are the registrants of the

following domain names which incorporate the trademarks Ladbroke or Ladbrokes:

Domain

Name

Registrant

Date

of Registration

ladbrokes.co.uk

Ladbrokes Limited

Prior to 2 August

2000

ladbrokes.com

Ladbrokes International

Limited

13

January 2000

ladbrokecasinos.com

Hilton Group Plc

5

May 1999

ladbroke-casinos.com

Hilton Group Plc

5

May 1999

ladbrokesfantasy.com

Ladbrokes eGaming

Ltd

15

August 2000

ladbrokesfantasy.co.uk

Ladbrokes eGaming

Ltd

15

August 2000

ladbrokesfootball.com

Ladbrokes eGaming

Ltd

15

August 2000

ladbrokesleague.co.uk

Ladbrokes eGaming

Ltd

15

August 2000

ladbrokesleague.com

Ladbrokes eGaming

Ltd

16

August 2000

ladbrokegroup.com

Hilton Group Plc

26

May 1998

(c) The domain names at issue were registered on the following

dates:

<ladbrokessportsbook.com> on August 2, 2000,

<ladbrokesportsbook.com> on February 21, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:

i) The First Complainant is a publicly listed company with two major operating

divisions - Hilton International (which owns the rights to the Hilton name outside

the USA) and Ladbroke Betting & Gaming (which is one of the world's largest

commercial off-track betting and gaming organisations).

ii) The First Complainant was formerly known as Ladbroke Group Plc but changed

its name on May 14, 1999. It is one of the largest companies listed on the London

Stock Exchange and has a market value of approximately £3 billion, a turnover

of around £4 billion and employs more than 55,000 people worldwide.

iii) The Second Complainant is a subsidiary of the First Complainant and was

established by incorporation on October 1, 1963. Since that time it has traded

as a bookmaker under and by reference to its name or the mark LADBROKES.

iv) The Third Complainant is a related company to the First Complainant and

was established by incorporation on April 3, 2000. Since that time it has traded

as a consultancy company under and by reference to its name and the mark LADBROKES.

v) The Fourth Complainant is a subsidiary of the First Complainant and is a

Gibraltar company which was established by incorporation on August 10, 1992.

Since that time it has traded as a bookmaker under and by reference to its name

and the mark LADBROKES.

vi) Any attempt by the Respondent to supply services under or by reference

to the Domain Names in the United Kingdom or the United States of America will

amount to an infringement of one or more of the Ladbrokes trademarks, as such

use will amount to the use in relation to the supply of services of an identical

or similar sign and would be likely to cause confusion and/or take unfair advantage

of and would be detrimental to the distinctive character and repute of the relevant

trademark or marks.

vii) The Complainants have each used the trademarks and names LADBROKE and

LADBROKES in connection with their respective businesses for many years. To

the extent that they have used any of the trademarks referred to above, the

Second to Fourth Complainants have done so with the licence and consent of the

First Complainant.

viii) The Respondent has no rights or legitimate interests in respect of the

Domain Names. The Domain Names are being used to "point" to a gaming

website called www.WorldWager.com. The Domain Name <worldwager.com> is

registered to Apogee International Finance and Escrow whose address is recorded

as being: 34-20 Calle 34, Panama City, Panama. The use that the Respondent is

making of the Domain Names is clearly designed to attract, for commercial gain,

Internet users to the relevant website by creating a likelihood of confusion

with the Complainants' marks as to the source, sponsorship, affiliation or endorsement

of the website or the service available at that website.

ix) On or about April 26, 2001, the Complainants' solicitors wrote to the Respondent

demanding that it transfer the Domain Names to the Second Complainant. A copy

of the letter was sent by post and e-mail to the Respondent. The copy of the

letter sent by post was returned un-opened. No response was received to the

e--mail copy of the letter.

x) On or about May 18, 2001, a further letter was sent to the Respondent by

e-mail and post. The hardcopy of this letter was returned to the Complainants'

solicitors on May 22, 2001, marked "Gone away no longer at this address".

B. Respondent

As noted above, no Response has been filed.

6. Discussion

The onus is on the Complainants to prove each of the three elements set out

in paragraph 4(a) of the ICANN policy, as follows:

i) the domain name is identical or confusingly similar to a or service mark

in which the Complainant has rights; and

ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

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

As to element (i), the Panelist has no hesitation in finding that each of the

Domain Names is confusingly similar to the First Complainant’s trademarks LADBROKE

and LADBROKES. These trademarks are extremely well known in gaming and betting

circles, and they are the only distinctive elements of the Domain Names. It

is striking that the www.WorldWager.com website (to which the Domain Names point)

is described as "The worlds leading online Sportsbook".

As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has

done nothing to demonstrate that it has any rights or legitimate interests in

the Domain Names. There is nothing to suggest that any of the circumstances

mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of

the dispute preparation to use the Domain Names, being commonly known by the

Domain Name or making a legitimate non-commercial or fair use of the Domain

Names). The facts put forward by the Complainants in paragraph 5(viii) above

plainly demonstrate that the Respondent’s interest in the Domain Names was not

in connection with a bona fide offering of goods or services, but rather

to take advantage of the reputation of the Complainants’ Marks to divert would-be

users of LADBROKE betting services to WorldWager. In the absence of any justification

from the Respondent of its activities in relation to the Domain Names, the Panelist

concludes that the Complainants have established element (ii).

So far as element (iii) is concerned, it is sufficient that the Complainants

demonstrate that one of the four circumstances mentioned in paragraph 4(b) of

the ICANN Policy applies.

Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as

follows:

"by using the domain name, [Respondent has] intentionally attempted to

attract, for commercial gain, Internet users to [its] website 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 [Respondent's]

website or location, or of a product or service on [Respondent's] website or

location."

It is difficult to conceive of a more blatant attempt to attract Internet users

to the www.WorldWager.com website through the registration and use of the Domain

Names simply as pointers to the latter website. That the Respondent has been

acting in bad faith throughout is to be inferred from its refusal to acknowledge

any communication from the Complainants’ solicitors or from the Centre, and

from the fact that both Domain Names remain active to this date.

The Panelist therefore concludes that the Respondent registered and has been

using the Domain Names in bad faith.

7. Decision

In the light of the findings in paragraph 6 above, the Panelist concludes that:

- the domain names <ladbrokesportsbook.com> and <ladbrokessportsbook.com>

are confusingly similar to the trademarks LADBROKE and LADBROKES of the First

Complainant;

- the Respondent has no rights or legitimate interests in the domain names;

- the domain names have been registered and are being used in bad faith.

Accordingly, as requested by the Complainants, the Panelist orders that the

domain names <ladbrokesportsbook.com> and <ladbrokessportsbook.com>

be transferred to the Second Complainant, Ladbrokes Limited.

Christopher Tootal

Sole Panelist

Dated: July 31, 2001

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