Coral Group Trading Limited v. Seven Oaks Motoring Centre Limited

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coral Group Trading Limited .v. Seven Oaks Motoring Centre Limited

Case No: D2002-0012

1. The Parties

The Complainant is Coral Group Trading Ltd of Glebe House, Vicarage Drive,

Barking, Essex IG11 7NS, United Kingdom.

The Respondent is Seven Oaks Motoring Centre Ltd of First Floor Office

Suite, London Road, Hildenborough TN11 9ND, Kent, United Kingdom.

2. The Domain Name and Registrar

The domain names at issue are <coralcasino.com>; <coralscasinos.com>.

The Registrar is Network Solutions, Inc.

3. Procedural History

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

the Complaint on January 7, 2002, (electronic version) and on

January 11, 2002 (hard copy). The Center verified that the Complaint

satisfies the formal requirements of the ICANN 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"). The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is

January 14, 2002.

On January 9, 2002, the Center transmitted via email to Network Solutions,

Inc. a request for registrar verification in connection with this case and

on January 11, 2002, Network Solutions, Inc. transmitted by email

to the Center Network Solutions' verification response confirming that the

registrant is Seven Oaks Motoring Centre Ltd, that the contact for administrative

purposes is Alan Wheatley of Seven Oaks Motoring Centre Ltd and that the

contact for billing purposes is ValueWeb of 3250 West Commercial Blvd.,

Fort Lauderdale, Florida, FL 33309, United States of America.

Having verified that the Complaint satisfied the formal requirements of

the Policy and the Rules, the Center transmitted on January 14, 2002,

to the addresses provided by Network Solutions, Inc. the Notification of

Complaint and Commencement of the Administrative Proceeding. The Center

advised that the Response was due by February 3, 2002. On the

same day the Center transmitted by mail copies of the foregoing documents.

No Response was received from the Respondent by the due date of February 3, 2002.

On February 4, 2002, Notice of Respondent Default was sent to

the Complainant and to the Respondent using the same contact details and

methods as were used for the Notification of Complaint and Commencement

of the Administrative Proceedings. No reply by the Respondent to the Notification

of the Respondents' Default was received.

Having received, Mr. David Perkins' Declaration of Impartiality and Independence

and his Statement of Acceptance, the Center transmitted to the parties a

Notification of Appointment of Administrative Panel and Projected Decision

Date on March 4, 2002, in which Mr. David Perkins was formally

appointed as the Sole Panelist. The Projected Decision Date was March 18, 2002.

The Sole Panelist finds that the Administrative Panel was properly constituted

and appointed in accordance with the Rules and the Supplemental Rules.

Having verified the communication records in the case file, the Administrative

Panel finds that the Center has discharged its responsibility under paragraph

2(a) of the Rules "to employ reasonably available means calculated to

achieve actual notice to Respondents". Therefore, the Administrative

Panel shall issue its Decision based upon the Complaint, the Policy, the

Rules and the Supplemental Rules and without the benefit of any Response

from the Respondent.

4. Factual background

4.1 The Complainant is a subsidiary of Coral Eurobet plc. (together

referred to as Coral). Coral's origins date back to 1926. It is one of

the four largest bookmakers in the United Kingdom. Its annual turnover

is in excess of £1 billion per annum. It has over 860 United Kingdom based

licensed betting shops.

4.2 Coral's bookmaking services are delivered through three principal

channels. Through its licensed betting shops, by telephone and Internet.

Coral's corporate website is at <coraleurobet.com> and its Internet

betting facilities can be accessed at <coral.co.uk>.

4.3 The CORAL Trademark

The Complainant is proprietor of the following registered trademarks

for the word CORAL.

Country

Registration Number

Mark

Class(es)

Date of Registration

European Community

CTM 421,602

CORAL + device

36: 41

December 9, 1996

United Kingdom

1,371,719

CORAL

5

January 20, 1989

United Kingdom

1,159,929

CORAL

16

August 21, 1981

United Kingdom

1,458,437

CORAL + device

35: 36: 41

March 13, 1991

United Kingdom

1,290,818

CORAL

41

October 15, 1986

United Kingdom

2,147,703

CORAL

41

October 9, 1997

United States of America

75/392690

CORAL

36: 41: 42

November 19, 1997

South Africa

96.12124

CORAL + device

36

August 28, 1996

South Africa

96/12125

CORAL + device

41

August 28, 1996

Australia

719,581

CORAL + device

41

October 14, 1996

4.4 The CORAL domain names

Coral also own a number of registered domain names containing the words coral, bet and casino as listed below.

UK registrations

<coraleurobetcasino.co.uk>

<coral.co.uk>

<coralbet.co.uk>

<coral-eurobet.co.uk>

<coralbet.org.uk>

<coral-eurobet.co.uk>

<coral-casino.co.uk>

<betcoral.co.uk>

<coralscasino.co.uk>

<betcoral.org.uk>

.com Registrations

<coraleurobet.com>

<coralbet.com>

<coral-eurobet.com>

<coral-bet.com>

<coraleurobetcasino.com>

<coralbetting.com>

<betcoral.com>

<coral-betting.com>

<bet-coral.com>

<coralbookmakers.com>

<coral-casino.com>

<coralinternet.com>

<coralgambling.com>

<coral-internet.com>

<coral-gambling.com>

<coralodds.com>

<coralgaming.com>

<coral-odds.com>

<coralinternational.com>

<coralsports.com>

<coral-international.com>

<coral-sports.com>

<coral-spread.com>

<coral-sportsbet.com>

<coralwagering.com>

<coral-sportsbook.com>

<coral-worldwide.com>

.net Registrations

<coraleurobet.net>

<coralcasino.net>

<coral-eurobet.net>

<coral-casino.net>

<betcoral.net>

<coralbookmakers.net>

<coralbet.net>

.org Registrations

<coraleurobet.org>

<coralbet.org>

<coral-eurobet.org>

<betcoral.org>

.tv Registrations

<coraleurobet.tv>

<coral-eurobet.tv>

.info Registrations

<coraleurobetcasino.info>

<coralcasino.info>

4.5 In the light of the foregoing, the Complainant asserts that it is extremely well-known in the United Kingdom under the CORAL mark.

The Respondent

4.6 No Response has been filed by the Respondent and so nothing is known about its business. The Complainant has, however, exhibited to the Complaint a WHOIS Search which shows the Respondent as the registrant of a number of other domain names.

<labrokecasino.com>

<victorchandlercasion.com>:

<ladbrokes.net>

<labrokecasinos.com>

<stanleyleisure.net>:

<churchillscasino.com>

<one2beton.com>

4.7 The Complaint also exhibits the Decision in WIPO

Case No. D2000-0824 where William Hill Organisation Limited succeeded in

obtaining transfer from the Respondent of the domain names <williamhill.org>,

<williamhill.net> and <williamhillcasino.com>.

5. The Parties' Contentions

5.1 Identical or Confusingly Similar

The Complainant asserts that the domain names in issue are confusing similar to its CORAL mark, addition of the word casino indicating betting and gaming and leading to inevitable confusion with the CORAL trademark and damage to the reputation of that mark.

5.2 Rights or Legitimate Interest

The Complainant's case is as follows:

5.2.1 Other than each domain name resolving to a free website holding

page, no use has been made of either domain name.

5.2.2 In any event, any attempt by the Respondent to use either of the domain

names would be an actionable tort - for example, trademark infringement and/or

passing off - so that such use could not be bona fide.

5.2.3 The Complainant has not licensed or otherwise authorised the Respondent

to use the CORAL mark for the purpose of the domain names in issue.

5.2.4 The Respondent has no registered trademarks for "Coral" or "Coralcasino"

nor is there any evidence that the Respondent has been commonly known by either

of the domain names.

5.2.5 In the light of the foregoing the Complainant's case is that the Respondent

cannot establish any of the circumstances in paragraph 4c of the Policy which

demonstrate rights or legitimate interests to the domain names.

5.3 Registered and Used in Bad Faith

The Complainant asserts that the evidence demonstrates circumstances within

paragraph 4b of the Policy, which establish registration and use in bad faith.

5.3.1 There is a pattern of conduct by the Respondent of registering as

domain names well-known third party trademarks. In that respect, the Complainant

points to the use of the Ladbrokes and Stanley Leisure names in other domain

name registrations by the Respondent (see paragraph 4.6 above). The Complainant

also points to the Decision in WIPO Case No.

D2000-0824 (William Hill) (see paragraph 4.7 above).

5.3.2 The Respondent registered the domain names in question primarily for

the purpose of selling them to the Complainant for consideration in excess of

the documented out of pocket costs relating to those registrations. In that

respect, the Complainant again refers to WIPO

Case No. D2000-0824 where William Hill's solicitors produced a file note

of a telephone conversation with Mr. Steve Reed of the Respondent in which he

rejected an offer of £500.00 for the 3 domain names in issue in that case and

threatened to sell those names to other parties. Here, the Complainant exhibits

a cease and desist letter to the Respondent dated September 20, 2001,

and a reply from the Respondent dated November 15, 2001, stating:

"I have today received your correspondence regarding my domain names, what

exactly are you propose?"

The Complainant's solicitors answered

"We are willing to meet your reasonable out of pocket expenses connected with

the transfer."

but nothing further was heard from the Respondent. This the Complainant suggests

was because by that date the Decision in the William Hill case (Decision

dated September 4, 2000), had issued and the Respondent was, therefore,

aware that a direct attempt to sell the domain names could amount to an indication

of bad faith.

5.3.3 Inactive or passive holding of a domain name of the type which applies

in this case amounts to registration and use in bad faith (the Telstra

case : WIPO Case No. D2000-0003). By registering

the domain names, the Complainant is clearly prevented from reflecting its CORAL

trademark in corresponding domain names, Those names are being held by the Respondent

for no other reason than in the hope that money will be offered for them. The

Respondent's past conduct is relied upon as similar fact evidence.

5.3.4 By registering and keeping the domain names, the Respondent is both

eroding the goodwill in the Complainant's CORAL trademark and misrepresenting

some form of connection with the Complainant.

6. Findings and Conclusions

6.1 The Requirements of the Policy

Paragraph 4(a) of the Policy provides that the Complainant must prove each

of the following;

- That the Respondent's domain name is identical or 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 name has been registered and is being used in bad faith.

6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular

but without limitation, if found by the Panel to be proved based on its evaluation

of all the evidence presented, shall demonstrate the Respondent's rights or

legitimate interests for the purpose of paragraph 4(a)(ii).

6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found

by the Panel to be present, shall be evidence of the registration and use of

a domain name in bad faith. The Policy states that those circumstances are not

exhaustive of the circumstances indicating registration and use in bad faith.

6.4 Identical or Confusingly Similar

Obviously, the domain names in issue are virtually identical to the Complainant's

CORAL trademark. Addition of the suffixes casino(s) only serve to increase

likelihood of confusion given the bookmaking businesses of the Complainant.

The Complaint succeeds in establishing the requirement paragraph 4(a)(i) of

the Policy.

6.5 Rights or Legitimate Interests

No Response has been filed and there is no evidence of any rights or legitimate

interests in respect of either of the domain names in issue. Specifically, it

is clear that the Respondent could not in any event bring itself within any

of the circumstances set out in paragraph 4(c) of the Policy. The Complaint,

therefore, succeeds in establishing the requirement of paragraph 4(a)(ii) of

the Policy.

6.6 Registered and Used in Bad Faith

The previous conduct of the Respondent (see paragraphs 4.6 sand 4.7 above),

coupled with failure to submit a Response are powerful evidence indicating registration

and use in bad faith of the type prescribed in paragraphs 4(b)(i) and (ii) of

the Policy. As to passive holding of the domain names amounting to use in bad

faith, the Panel points to its conclusion that the Respondent has no rights

or legitimate interests in the domain names, the well-known status of the Complainant's

CORAL name and mark in, at least, the United Kingdom, the total absence of evidence

of any actual or contemplated good faith use of the domain names by the Respondent,

and the difficulty of conceiving of any use of those names by the Respondent

that would not be illegitimate. The Complaint, therefore, succeeds in satisfying

the third limb of paragraph 4(a) of the Policy.

7. Decision

In the light of all the foregoing circumstances, the Panel finds that the Complainant

has proved each of the three elements of paragraph 4(a) of the Policy. Accordingly,

the panel require that the domain names <coralcasino.com> and <coralscasinos.com>

be transferred to the Complainant.

David Perkins

Sole Panelist

Dated: March 18, 2002