Anders Ström; Unibet.com (International) Ltd, v. GEO Systems Ltd

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Unibet.com

(International) Ltd., and Mr. Anders Ström v.

GEO Systems Ltd.

Case No.

D2001-1250

1. The Parties

The first Complainant in

this administrative proceeding is Unibet.com (International) Ltd., ("Complainant"),

a company limited by shares, with its main business address at The Plaza Commercial

Centre, Bisazza Street, Sliema, Malta. The Company is part of an international

group with the main office in the United Kingdom.

The second Complainant

in this administrative proceeding is Mr. Anders Ström, one of the founders

of Unibet.com who is the current owner of several UNIBET trademarks. Some of

these trademarks are presently being transferred to Unibet.com (International)

Ltd.

Complainant's authorised

representative is L.A. Groth & Co. KB, Johan Sjöbeck, Stockholm, Sweden.

The Respondent in this

administrative proceeding is GEO Systems Ltd. ("Respondent"), Malta.

Respondent is represented by the Global Events Online Group (Global Events Online

S.à.r.l.) that has a 100% ownership in GEO Systems Ltd. and three other

companies.

Respondent’s authorised

representative is GEO Global Events Online AB, Lars Svensson, Stockholm,

Sweden.

2. The Domain Names

and Registrar

The Domain Name at issue

is <unitedbet.com>, registered with VeriSign (Network Solutions Inc.)

("Registrar") of 487 East Middlefield Road, Mountain View, CA, USA.

3. Procedural History

A Complaint ("Complaint"),

pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by

the Internet Corporation for Assigned Names and Numbers ("ICANN")

on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain

Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"),

was submitted to the World Intellectual Property Organization Arbitration and

Mediation Center ("WIPO Center") on October 16, 2001, by e-mail and

was received the next day in hardcopy.

The Acknowledgement of

Receipt of Complaint was issued to the Complainant by the WIPO Center on October

19, 2001.

On October 22, 2001, a

Request for Registrar Verification was transmitted to the Registrar which confirmed

the following day with its Verification Response that the disputed Domain Name

was registered with VeriSign (NSI) and that Respondent, GEO Systems Ltd., was

the current registrant of the disputed Domain Name.

The assigned WIPO Center

Case Manager completed a Formal Requirements Compliance Checklist on October

24, 2001, without recording any formal deficiencies.

The Panel independently

determines and agrees with the assessment of the WIPO Center that the Complaint

is in formal compliance with the applicable requirements.

A Notification of Complaint

and Commencement of Administrative Proceeding ("Commencement Notification")

was transmitted to the Respondent on October 24, 2001, setting a deadline

of November 13, 2001, by which the Respondent could file a Response to the Complaint.

On November 12, 2001, the

WIPO Center received the Response to the Complaint by e-mail.

The Acknowledgement of

Receipt of Response was submitted to the Respondent by the WIPO Center on November

14, 2001.

Complainant requested a

single-member panel. Since Respondent remained silent in this regard, the WIPO

Center invited the undersigned to serve as sole Panelist and transmitted to

him a Statement of Acceptance and Request for Declaration of Impartiality and

Independence which was duly signed and returned to the WIPO Center on November

28, 2001.

The WIPO Center transmitted

to the parties on November 28, 2001, a Notification of Appointment of Administrative

Panel and Projected Decision Date as of December 12, 2001. The Administrative

Panel finds that it was properly constituted and appointed in accordance with

the Policy, the Rules and the WIPO Supplemental Rules.

4. Factual Background

The following facts and

statements appear from the Complaint and its annexes as well as from the Response

and its enclosed documents:

The trademark upon which

the Complaint is based is UNIBET. Complainant registered this trademark in Sweden

for bookmaking in class 41 and under the Madrid Agreement and Protocol in various

other countries, among them the United Kingdom, Germany, France, Denmark, Norway

and Finland. UNIBET is also registered as a service mark in the United States

of America and as a trademark in Australia (with priority since December 17,

1999).

Respondent registered <unitedbet.com>

as a business name with the Australian Ministry of Fair Trading on January 18,

2000. The disputed Domain Name <unitedbet.com> was first registered with

Atlant Ocean Racing AB end of 1999. According to Respondent, the owners of Atlant

Ocean Racing AB are also the founders of the GEO Group where Respondent is included

as a wholly owned subsidiary. The transfer of the Domain Name from Atlant Ocean

Racing AB to Respondent was completed on August 20, 2001. In addition to the

Domain Name at issue, Atlant Ocean Racing AB registered the Domain Names <unitedbet.net>

and <unitedbet.org> on February 9, 2000. The Domain Name <unitedbet.co.uk>

is also owned by Global Events Online AB and was registered on February 11,

2000.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the Domain Name is

confusingly similar to a trademark or service mark in which the Complainant

has rights; and

- the Respondent has

no rights or legitimate interests in respect of the

Domain Name; and

- the Domain Names were

registered and are being used in bad faith; and

- the Domain Name <unitedbet.com>

should be transferred to the first Complainant (Unibet.com (International) Ltd.).

Additional respective contentions

of the Complainant are contained in the following discussions and findings.

B. Respondent

Respondent disputes all

of the above contentions. As a result, the Domain Name <unitedbet.com>

should remain with the Respondent.

Additional respective contentions

of the Respondent are contained in the following discussions and findings.

6. Discussion and Findings

Paragraph 4(a) of the policy

directs that the Complainant must prove each of the following:

"(i) 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

(ii) that the Respondent

has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain

Name has been registered and is being used in bad faith."

Identical or confusingly

similar Domain Name: Policy 4(a)(i)

The Domain Name at issue

is <unitedbet.com>. Complainant is the holder of the registered trademark

"UNIBET" and alleges that the disputed Domain Name is confusingly

similar to this trademark, save for the TLD ending ".com".

The Policy is silent as

to any definition of "confusingly similar". Paragraph 15(a) of the Rules instructs

this Panel as to the principles the Panel is to use in rendering its decision:

"A Panelist shall decide a Complaint on the basis of the statements and documents

submitted in accordance with the Policy, these Rules and any rules and principles

of law that it deems applicable." This Panel is of the opinion that the possibility

of confusion of two words is primarily to be assessed by the sound pattern of

the words. In addition, the meaning, the script and the visual appearance of

the words have to be taken into account as well.

Both parties agree that

the words "uni", "united" and "bet" are ordinary

words used in the English language. By combining them to "unitedbet"

and "unibet", these words become novel words which Complainant holds

to be confusingly similar. As Respondent correctly states, the phonetics of

the term "unitedbet" seem to be clearly distinctive from the phonetics

of the term "unibet", Complainant's trademark. While "unibet"

is a short and easy word to pronounce, "unitedbet" consists of three

distinctive syllables that have a completely different sound pattern. However,

this dispute is dealing with Domain Names which, by their very nature, are usually

dealt with while using a personal-computer in order to access the World Wide

Web. A possible customer or consumer perceives Domain Names usually when typing

or reading them rather than by pronounciation. Therefore, one should not restrict

its view to the sound pattern but also assess the meaning, the script and the

visual appearance of the words at issue.

It is fair to state that

the visual appearance of "unibet" and "unitedbet" can be

considered to be somewhat similar, especially since the parties seem to be competitors

dealing in the same market of online sport betting. Nevertheless, with regard

to the script as well as the visual appearance, the panel finds it hard to see

a confusing similarity between Complainant’s trademark "unibet"

and the Domain Name of Respondent <unitedbet.com>.

While there are arguments

on both sides, the panel tends to answer the question in the negative and is

of the opinion that Complainant has not sufficiently established the elements

of the Policy's Paragraph 4(a)(i). This is due to the fact that the Panel finds

it hard to establish a confusing similarity in terms of phonetics as well as

regarding script and visual appearance. However, in view of what follows, the

Panel doesn’t see a need to decide this question in a final manner as the other

criteria requested by the Rules do not seem to be fulfilled anyway.

Respondent's Rights or

Legitimate Interests in the Domain Name: Policy 4(a)(ii)

It is first convenient

to recall that, according to paragraph 4(c) of the Policy, a Respondent may

establish its rights or legitimate interests in the Domain Name, among other

circumstances, by showing any of the following elements:

"(i) before any

notice to you [Respondent] of the dispute, your use of, or demonstrable preparations

to use, the Domain Name or a name corresponding to the Domain Name in connection

with a bona fide offering of goods or services; or

(ii) you [Respondent]

(as an individual, business, or other organization) have been commonly known

by the Domain Name, even if you have acquired no trade mark or service mark

rights; or

(iii) you [Respondent]

are making a legitimate noncommercial or fair use of the Domain Name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the

trade mark or service mark at issue."

As rightly stated in Infinity2

Incorporated v. Total Health Wellness, NAF Claim Nr. FA0094867,

"the purpose of UDRP Subparagraph 4(c)(i) is to exclude from the UDRP process

cases of entities who use or prepare to use a Domain Name without knowledge

that their doing so was or would be disputed." The Response and the enclosed

Annexes indicate, that Respondent registered and began using the disputed Domain

Name in connection with a site offering online sport betting prior to any knowledge

of this dispute.

Respondent’s authorized

representative wrote in his letter of June 13, 2001, that Respondent has operated

its website <unitedbet.com> from Western Australia since February 2000.

Even though this assertion has not been proven by Respondent, there are clear

indications for this being the case: the Domain Names <unitedbet.net>

and <unitedbet.org> were registered with Atlant Ocean Racing AB whose

owners appear to be the founders of the GEO Group where Respondent is included

as a wholly owned subsidiary, on February 9, 2000. Only two days later,

on February 11, 2000, GEO Global Events Online AB, another 100% owned subsidiary

of the GEO Group registered the Domain Name <unitedbet.co.uk>. On January

18, 2000, Respondent registered <unitedbet.com> as a business name with

the Australian Ministry of Fair Trading. Complainant holds that Respondent only

registered the disputed Domain Name <unitedbet.com> on August 20, 2001.

However, this appears to be the date when Atlant Ocean Racing AB transferred

the disputed Domain Name to its self-owned subsidiary GEO Systems Ltd., the

Respondent in the dispute at issue. Respondent asserts that Atlant Ocean Racing

AB registered <unitedbet.com> at the end of 1999. Even though Respondent

fails to prove this assertion, in light of the above, the assertion seems credible.

Furthermore, Complainant itself by providing Annex Y – a printout of Respondent’s

website, dated October 9, 2001, about the history and structure of <unitedbet.com>

– delivers another proof of the fact that Respondent commercially used its website

<unitedbet.com> before any notice of this dispute.

Thus, Respondent seems

to have a legitimate interest in the Domain Name because it made commercial

use prior to notice of this dispute. Use prior to this dispute being admitted,

the question arises whether Respondent’s use was bona fide. Not all use prior

to notice of the dispute can qualify as bona fide use. As stated in Madonna

Ciccone v. Dan Parisi, WIPO

Case No. D2000-0847, "use which intentionally trades on the fame of

another cannot constitute a ‘bona fide’ offering or service. … to conclude otherwise

would mean that a Respondent could rely on intentional infringement to demonstrate

a legitimate interest, an interpretation which is obviously contrary to the

intent of the Policy."

However, in the case at

issue, Respondent’s use of the name <unitedbet.com> cannot be said to

be clearly intended to trade on Complainant’s trademark. As we have seen above,

the similarity between the two names in the eyes of this Panel is not strong.

Another argument in this regard is the fact that the design of the two websites

is completely different and shows no intent whatsoever of Respondent to invoke

confusion.

Subparagraph 4(c)(ii) rules

that who has been commonly known by the Domain Name has demonstrated his rights

or legitimate interests to the Domain Name. The Panelist admits that his knowledge

about the online sport betting "scene" is by far not sufficient to

decide whether Respondent’s website <unitedbet.com> has a sufficient reputation

on its own in this field. However, by checking some appropriate link-pages and

directories to English language online betting and bookmaker sites, it seems

that <unitedbet.com> indeed has a reputation on its own and appears to

be a direct competitor of <unibet.com> with equal rights and about the

same prestige.

In its Response, Respondent

informs this Panel that during autumn 2001, Complainant was engaged in talks

with Respondent about a possible acquisition of the GEO Group, including the

Domain Name <unitedbet.com> and its operations. From Respondent’s website

<unitedbet.com> we learn that in the meantime, <unitedbet.com> has

been acquired by a third online sport betting company "24hbet AB".

However, its business still runs under the name <unitedbet.com> but powered

by <24hbet.com>.

The ICANN dispute resolution

process is mainly intended for the relatively narrow class of cases of "abusive

registrations", and Domain Name disputes between "legitimate"

claimants - as it appears to be the case in this proceeding - are intended to

be relegated to the ordinary courts.

In conclusion, the Panel

finds that Respondent has established its rights or legitimate interests in

the contested Domain Name within the meaning of Policy 4(c)(i) in that before

notice of the instant dispute it used the contested Domain Name in connection

with its bona fide offering of its goods and services. If this contention is

sustained, it effectively trumps all other elements of the Complaint and requires

a finding that Complainant is not entitled to the relief requested in this proceeding.

Domain Name Registered

and Used in Bad Faith: Policy 4(a)(iii)

The third element to be

established by Complainant is that the Domain Name has been registered and used

in bad faith.

Paragraph 4(b) states the

following four (non-exclusive) circumstances which, if found to be present,

are deemed to provide evidence of bad faith in registering and using the Domain

Name:

"(i) circumstances

indicating that you [Respondent] have registered or you [Respondent] have acquired

the Domain Name primarily for the purpose of selling, renting, or otherwise

transferring the Domain Name registration to the Complainant who is the owner

of the trade mark or service mark, or to a competitor of that Complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the Domain Name; or

(ii) you [Respondent]

have registered the Domain Name in order to prevent the owner of the trade mark

or service mark from reflecting the mark in a corresponding Domain Name, provided

that you have engaged in a pattern of such conduct; or

(iii) you [Respondent]

have registered the Domain Name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the Domain

Name, you [Respondent] 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 your location."

Complainant alleges that

Respondent registered and used the Domain Names in bad faith and maintains that

"the striking similarity between the Respondent’s Domain Name and the Complainant’s

trademarks as well as the similarity of services amounts to passing off"

and that "average Internet users may be confused as to whether the Respondent

is somehow sponsored, endorsed, authorized, affiliated or supported by the Complainants."

This Panel is nevertheless of the opinion that Respondent made sufficient efforts

as to clearly differentiate its products and services from the ones of Complainant

and hence no evidence of bad faith according to Policy Subparagraph 4(b)(iv)

can be established. Respondent’s use of the Domain Name <unitedbet.com>

does not in itself evidence an intent to attract Internet users to its website

by creating a likelihood of confusion with Complainant’s mark. At any stage

of this proceeding Respondent’s website looked quite different from Complainant’s

site, neither the former nor the actual "logo" of <unitedbet.com>

showed any striking similarity to Complainant’s "logo", and since

the date that <unitedbet.com> has been acquired by a third party, the

website shows the brandname and logo of <24hbet.com>. Thus, the source,

sponsorship, affiliation, and endorsement of Respondent’s website has been indicated

very clearly and the chances of confusion with Complainant’s website are slight.

In assessment of the contentions

and the facts mentioned above, the Panel concludes that the requirements of

paragraph 4(a)(iii) of the Policy have not been sufficiently made out by the

Complainant, and that Respondent's bad faith registration and use of the Domain

Name have not been proven.

7. Decision

In view of the circumstances

and facts discussed above, the Panelist finds that the Respondent has sufficient

rights or legitimate interests in respect of the Domain Name, and that the Respondent's

Domain Name has not been registered and are not being used in bad faith.

As a consequence, the Panelist

concludes, according to paragraph 15(e) of the Rules, that the dispute is not

within the scope of paragraph 4(a) of the Policy in force. Therefore, the remedy

requested by Complainant pursuant to Paragraph 4(i) of the Policy is denied.

The Respondent shall not be required to transfer to Complainant the Domain Name

in dispute.

This holding does not in

any way prejudice proceedings commenced before the courts according to paragraph

4(k) of the Policy.

Bernhard

F. Meyer-Hauser

Sole Panelist

Dated: December

10, 2001