Ladbroke Group plc. v. Sonoma International LDC

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Ladbroke Group Plc v. Sonoma International LDC

Case No. D 2002-0131

1. The Parties

The Complainant in these administrative proceedings is Ladbroke Group plc a

company incorporated in England and Wales having a place of business at Maple

Court, Central Park, Reeds Crescent, Watford, Herts WD24 4QQ, United Kingdom.

The Respondent is Sonoma International LDC having an address at 60, Market

Square, Belize City, Belize.

2. The Domain Names and Registrar

The domain names in dispute are <ladbrokespoker.com>, <ladbrokepoker.com>,

<ladbrokepoker.org> and <ladbrokepoker.net>.

The Registrar with which said domain names are registered is Network Solutions,

Inc. (hereinafter "the Registrar").

3. Procedural History

On February 8, 2002 the Complaint was received by the WIPO Arbitration and

Mediation Center ("the Center") by e-mail and in hard copy on February 12, 2002.

On February 11, 2002 the representatives of the Complainant sent an e-mail

to the Center notifying the Center that the Complainant had received notification

of non-delivery of all e-mail communications with the Respondent to all e-mail

addresses set out in the Complaint, and non-delivery of the fax sent to the

Respondent at the number set out in the Complaint. However, the Complainant

had received confirmation from the courier of delivery of the hard copy of the

Complaint to the Respondent on February 11, 2002.

On February 14, 2002 the Center sent a Request for Registrar Verification to

the Registrar. On February 15, 2002 the Registrar responded, confirming that

it is the registrar of said domain names <ladbrokespoker.com>, <ladbrokepoker.com>,

<ladbrokepoker.org> and <ladbrokepoker.net> and each of them and

that the Respondent is the current registrant, Administrative Contact and Technical

Contact for each said registration. The Registrar furthermore confirmed in respect

of each said registration that the language of the Service Agreement is English,

and that the said registration had an active status at that time.

While the Registrar did not expressly confirm that the Uniform Domain Name

Resolution Policy ("the Policy") applies to said registrations, the

Complaint contains a statement to the effect that the registration agreement,

pursuant to which the domain names have been registered incorporates the Policy.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute

Resolution Policy ("the Rules") and Paragraph 5 of the WIPO Supplemental Rules

for Uniform Dispute Resolution Policy ("the Supplemental Rules") the Center

reviewed the Complaint to ascertain whether it satisfied the formal requirements

of the Policy, the Rules and the Supplemental Rules and that payment in the

required amount had been made by the Complainant.

On February 19, 2002, the Center sent a Notification of Complaint and Commencement

of Administrative Proceedings to the Respondent. Said Notification was sent

to the Respondent by Post/Courier (with enclosures), by facsimile (Complaint

without enclosures) and by e-mail (Complaint without attachments). A copy of

said Notification was sent to the authorised 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.

The Center received notification of non-delivery of the Notifications of Complaint

and Commencement of Administrative Proceedings due to permanent fatal errors

in the addresses. Similarly the attempt to serve the Notifications by fax was

unsuccessful as the fax number was "busy/no signal". Service of the

hard copy of the Notifications by courier was however successful and the Package

Tracking Report from the courier confirmed that the shipment was delivered on

February 21, 2002.

Said Notification of Complaint and Commencement of Administrative Proceeding

inter alia advised the Respondent that the Administrative Proceeding

had commenced on February 19, 2002 and that the Respondent was required

to submit a Response to the Center on or before March 11, 2002.

No Response was received by the Center and on March 13, 2002, the

Center sent a Notification of Respondent Default to the Respondent by e-mail.

A copy of said Notification of Respondent Default was on the same date sent

to the authorised representative of the Complainant by e-mail. Once again the

Center received a notification of non-delivery in respect of the e-mail sent

to the Respondent, due to permanent fatal errors in the e-mail address.

On March 28, 2002, after having received a Statement of Acceptance and Declaration

of Impartiality in accordance with Paragraph 7 of the Rules, the Center proceeded

to appoint James Bridgeman as Administrative Panel. On the same day the case

file was transmitted to the Administrative Panel.

While both the Center and the Complainant experienced difficulties in communicating

with the Respondent in the view of this Administrative Panel the Center fulfilled

its responsibility to employ reasonably available means calculated to achieve

actual notice to Respondent in accordance with Paragraph 2(a) of the Rules.

In accordance with Paragraph 2(f) of the Rules the Respondent is deemed to have

been served with the Notifications of Complaint and Commencement of Administrative

Proceedings on February 21, 2002 being the date of delivery according

to the Package Tracking Report as confirmed by the courier.

In the view of the Administrative Panel, proper procedures were followed and

this Administrative Panel was properly constituted.

4. Factual Background

The Complainant is an established business engaged in gaming services including

casinos, betting shops and on-line gaming and is the proprietor of approximately

60 registered trademarks throughout the world which comprise the word LADBROKE

or LADBROKES or of which the word LADBROKE or LADBROKES is the dominant feature.

The Complainant’s registered trademarks include, amongst others, the following:

Community

CTM 450494

LADBROKES

Classes

36, 42

USA

2045395

LADBROKES

Class

41

2080710

LADBROKE

Class

42

1811085

LADBROKE

Classes

36, 41

Costa Rica

96112

LADBROKE

Class

41

Dominican Republic

81289

LADBROKE

Class

41

Mexico

439445

LADBROKES

Class

36

441887

LADBROKES

Class

41

441888

LADBROKES

Class

42

There is no information available about the Respondent except for that contained

in the Complainant and in the Registrar’s records which essentially provides

only the name and contact details of the Respondent. As has been noted above

the e-mail address and the fax number provided by the Respondent for contact

purposes appear to be either incorrect or inoperative.

5. Parties’ Contentions

A. Complainant

The Complainant requests the Administrative Panel to issue a decision that

the contested domain names be transferred to the Complainant.

The Complainant has submitted copies of the registration certificates in respect

of the above referenced registered trademarks. The Complainant has also submitted

a copy of the Service Agreement that operates between the Respondent and the

Registrar.

The Complainant submits that it is one of the market leaders in the business

of gaming services including casinos, betting shops and on-line gaming and provides

such services under the service marks LADBROKE and LADBROKES. The Complainant

submits that it has spent a substantial sum of money developing, advertising

and promoting its brand throughout the world and as such enjoys extensive and

widespread goodwill and repute in its service marks worldwide. The Complainant’s

LADBROKES brand has been listed in Interbrand’s Annual Survey of the "World’s

Most Valuable Brands" among the top 100 most valuable brands in the world

in respect of the years 2000 and 2001.

The Complainant submits that it carries on business on the Internet on www

sites accessible at domain names incorporating the LADBROKE and LADBROKES trademarks

including <ladbrokes.com>, <ladbrokecasinos.com> and <ladbrokescasinos.co.uk>.

The Complainant claims that it has rights in the service marks LADBROKE and

LADBROKES and in so far as the whole of the mark LADBROKE appears in the domain

names in issue in these Administrative Proceedings, it is submitted that said

domain names are identical or confusingly similar to the Complainant’s service

marks.

The Complainant submits that this is especially the case having regard to the

fact that the rest of the domain names are comprised merely of the word "poker"

which adds nothing to the mark LADBROKE.

Given that the mark LADBROKE is such a strong mark it is the distinctive feature

of the domain name, to which the word "poker" adds nothing, or very

little. Further, the word "poker" is merely descriptive, being a type

of gaming activity that providers of gaming services are likely to offer. The

Complainant therefore submits that if the domain names are not identical to

the Complainant’s service marks, they are at least confusingly similar to the

Complainant’s service marks.

The Complainant submits that it has neither licensed nor otherwise permitted

the Respondent to use the said domain names or the said service marks.

The Complainant asserts that the Respondent has no rights or legitimate interests

in respect of the domain names because the Respondent’s business has no connection

with the names LADBROKE or LADBROKES. The Respondent does not trade under either

name neither does it offer goods or services under either name. Furthermore

the Complainant asserts that the Respondent has not been and is not commonly

known under either name.

The Complainant submits that said domain names should be considered as having

been registered in bad faith by the Respondent because the domain names have

not been used in connection with a corresponding www site for the bona fide

offering of goods and services. The Complainant argues that this is evidence

that the Respondent has registered the domain names in order to prevent the

Complainant from reflecting the mark in corresponding domain names. The fact

that the Respondent has registered four domain names which incorporate the Complainant’s

trade marks is sufficient to show that the Respondent is engaged in a pattern

of such conduct.

The Complainant additionally argues that the Respondent must have known of

the existence of the Complainant prior to registering its domain name.

The Complainant claims that it has been making preparations to register and

use the domain names <ladbrokespoker.com> and/or <ladbrokepoker.com>

in connection with the launch of an online poker game in the UK. The launch

was to take place in February or March 2002. This was to complement its existing

online casino games offered under <ladbrokescasino.com>, such as black

jack, roulette, baaccarat and slot machines. It is noteworthy that the Complainant

has not provided any details of the dates on which it commenced to provide these

online casino games or the dates on which it began to make preparations to register

the domain names that are the subject of these proceedings.

The Complainant submits that the registration by the Respondent of these domain

names has disrupted the business of the Complainant. Since it has not been possible

to contact the Respondent, the Complainant states that it cannot be certain

whether the said domain names were registered primarily for the purpose of disrupting

the Complainant’s business, but points out to the fact that its business plans

have been published in the media. The Complainant cites an example of a report

in "The Daily Telegraph" of January 28, 2002 which has been submitted

as an annex to the Complaint. It is noteworthy however that this is more than

a year after the date on which the Respondent registered said domain names.

The Complainant’s representative wrote to the Respondent on January 25, 2002.

The letter was sent by e-mail to the address contained in the Registrar’s WHOIS

database. However, an automatic response was received indicating that there

had been a delivery failure and that the recipient address was rejected.

Neither the telephone nor the fax numbers provided in the WHOIS database were

operative. The Complainant’s representative sent the hard copy of the letter

by courier on January 25, 2002 and the letter was delivered on January 29, 2002.

At the time of submitting the Complaint in these Administrative Proceedings

no response had been received from the Respondent.

The Complainant is concerned that the contact details provided by the Respondent

and available on the WHOIS database are incorrect and may not be the Respondents

correct address. Nonetheless since the Complainant has been making preparations

to use the domain names which are the subject of this Complaint, it was eager

to submit the Complaint without delay.

B. Respondent

There was no Response filed by the Respondent.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove

that:

(i) the domain names registered by the Respondent are 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 domain names in question; and

(iii) the domain names have been registered and are being used in bad faith.

Identical or Confusingly Similar

The Complainant has established that it is the owner of the registered trademarks

LADBROKE and LADBROKES in a number of jurisdictions throughout the world and

this Administrative Panel accepts that it has rights at common law in said trademarks

in those and other jurisdictions.

The second level domain names that are the subject matter of this dispute essentially

consist of two elements firstly they each comprise of the word "ladbroke"

or "ladbrokes" and secondly the additional word "poker".

In the view of this Administrative Panel the most distinctive element of each

of said domain names is the word "ladbroke" or "ladbrokes"

in each case. The second element is a reference to the card game "poker"

with an obvious association with gaming.

This Administrative Panel has no difficulty in deciding that each of said domain

names is confusingly similar to the Complainant’s trademarks. The addition of

the non-dominant element in each case, being a reference to the card game "poker"

makes it more likely to create a confusion with the Complainant’s trademarks

since the Complainant has an established reputation in the gaming industry.

Rights or Legitimate Interest

The Respondent has failed to file any Response in these proceedings. The Complainant

has an established reputation in many jurisdictions throughout the world in

its service marks LADBROKE and LADBROKES. Furthermore according to the report

in "The Daily Telegraph" submitted by the Complainant in support of

its arguments relating to the issue of bad faith, the Complainant has had a

presence on the Internet for the past two years.

The Complainant has asserted that it has neither licensed nor otherwise permitted

the Respondent to use the said domain names or the said trade marks.

In the circumstances, this Administrative Panel accepts that the Respondent

has made out sufficient case to shift the onus of proof onto the Respondent

with regard to the second element of the test in Paragraph 4(a) of the Policy

and that the Respondent has failed to make any effort in support of its case

in this regard.

In the absence of a Response or any communication from the Respondent this

Administrative Panel is satisfied that the Complainant has satisfied the second

element of the test in Paragraph 4(a) of the Policy and has established a prima

facie case that the Respondent has no rights or legitimate interest in said

domain names or any of them.

Bad Faith

Paragraph 4(b) of the Policy sets out the following examples of circumstances

that will be considered by an Administrative Panel to be evidence of the bad

faith registration and use of a domain name:

(i) Circumstances indicating that the domain name was registered or acquired

primarily for the purpose of selling, renting, or otherwise transferring the

domain name registration to the complainant who is the owner of the trademark

or service mark or to a competitor of that complainant, for valuable consideration

in excess of the domain name registrant’s out-of-pocket costs directly related

to the domain name; or

(ii) The domain name was registered in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that the domain name registrant has engaged in a pattern of such

conduct; or

(iii) The domain name was registered primarily for the purpose of disrupting

the business of a competitor; or

(iv) By using the domain name, the domain name registrant intentionally

attempted to attract for financial gain, Internet users to the registrant’s

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 the registrant’s web site or location or of a product or service on the registrant’s

web site or location.

With regard to the question of whether the Respondent has registered and is

using said domain names in bad faith, the Complainant claims that it has been

making preparations to register and use the domain names <ladbrokespoker.com>

and/or <ladbrokepoker.com> in connection with the launch of an online

poker game in the United Kingdom. It claims that the launch was to take place

in February or March 2002, and that this was to complement its existing

online casino games offered under <ladbrokescasino.com>, such as black

jack, roulette, baccarat and slot machines.

The Complainant submits that its business plans in this regard have been published

in the media and the Complainant has furnished this Administrative Panel with

a copy of a report in "The Daily Telegraph" of January 28, 2002,

describing these plans.

The domain names that are the subject matter of this dispute have been registered

since December 13, 2000. The Complainant has not provided any evidence

that its plans were commenced prior to the registration date of the domain names

in December 2000. In fact is would appear that the Complainant did not

commence its plans until a date subsequent to the date on which the Respondent

registered the domain names.

It would appear therefore that these plans are not in any way relevant to these

proceedings except that it is most unlikely that the Respondent registered said

domain names as a response to these plans.

On the other hand the Complainant has a long established reputation in many

jurisdictions in the use of its service marks LADBROKE and LADBROKES in the

gaming industry. It is most unlikely that the Respondents just happened to unintentionally

select the Complainant’s distinctive service marks LADBROKE and LADBROKES and

inadvertently put them in combination with the name of the card game "poker"

when selecting its domain names.

In the view of this Administrative Panel it is most likely that the Respondent

was aware of the Complainant, its reputation in the gaming industry and its

service marks, when the Respondent registered these domain names.

It is significant that the Respondent sought to register a series of domain

names in the .com, .net, and .org gTLDs.

This Administrative Panel therefore concludes that the Respondent sought to

register said domain names because of their association with the Complainant,

the Complainant’s reputation and the Complainant’s business. It would also appear

that the Respondent provided false or misleading information to the Registrar.

Taken together with the fact that the Respondent has not filed any Response

in these proceedings, this Administrative Panel accepts that the Complainant

has established a prima facie case that the Respondent registered said

domain names and each of them in bad faith.

As to whether the Respondent is using said domain names in bad faith, it appears

from the information available to this Administrative Panel that the said domain

names do not resolve to any www site. This passive holding of the domain names

can in certain circumstances be evidence of use in bad faith.

In Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No.

D2000-0003) February 18, 2000) the panelist noted that "[t]he domain

name … does not resolve to a web site or other on-line presence. There is no

evidence that a web site or other on-line presence is in the process of being

established which will use the domain name. There is no evidence of advertising,

promotion or display to the public of the domain name. Finally, there is no

evidence that the Respondent has offered to sell, rent or otherwise transfer

the domain name to the Complainant, a competitor of the Complainant, or any

other person. In short, there is no positive action being undertaken by the

Respondent in relation to the domain name."

The panelist noted that "the relevant issue is not whether the Respondent

is undertaking a positive action in bad faith in relation to the domain name,

but instead whether, in all the circumstances of the case, it can be said that

the Respondent is acting in bad faith" and concluded that "it

is possible, in certain circumstances, for inactivity by the Respondent to amount

to the domain name being used in bad faith."

The panelist concluded that "it must be recalled that the circumstances

identified in paragraph 4(b) are "without limitation" - that is, paragraph 4(b)

expressly recognises that other circumstances can be evidence that a domain

name was registered and is being used in bad faith."

He went on to say that "[t]he question that then arises is what circumstances

of inaction (passive holding) other than those identified in paragraphs 4(b)(i),

(ii) and (iii) can constitute a domain name being used in bad faith? This question

cannot be answered in the abstract; the question can only be answered in respect

of the particular facts of a specific case. That is to say, in considering whether

the passive holding of a domain name, following a bad faith registration of

it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel

must give close attention to all the circumstances of the Respondent’s behaviour.

A remedy can be obtained under the Uniform Policy only if those circumstances

show that the Respondent’s passive holding amounts to acting in bad faith."

In the present proceedings there is very little known about the Respondent.

The following can be inferred from the information supplied by the Respondent

to the Registrar and the information supplied in the Complaint:

1. the Respondent registered the domain names in December 2000 and in the

view of this Administrative Panel the Complainant has established a prima

facie case that the Respondent registered said domain names in bad faith;

2. on the balance of probabilities, at the time of registration, the Respondent

was aware that the Complainant had an established international reputation in

the trademarks LADBROKE and LADBROKES and had established an Internet presence

for its gaming services;

3. the Respondent intentionally chose to register domain names each of which

are comprised of two elements viz. a combination of the Complainant’s

service marks LADBROKE and LADBROKES and the name of a card game "poker";

4. any attempt to actively use any of the said domain names would inevitably

lead to a likelihood of confusion to the source, sponsorship, affiliation, or

endorsement of the registrant’s web site among users of the Internet who would

inevitably be led to believe that such a www site would be owned by, controlled

by, established by or in some way associated with the Complainant;

5. the contact details supplied by the Respondent to the Registrar were

incorrect at the time of registration or have not been kept up to date and this

would appear to be directly in conflict with the obligations to provide accurate

information required under clause 4 of the Service Agreement between the Respondent

and the Registrar;

6. the Respondent has engaged in "passive holding" of these domain

names;

7. there is no information as to the business activities of the Respondent

and the Complainant has made out a prima facie case that the Respondent

does not have any rights or legitimate interest in said domain names;

8. the Respondent has failed to file a Response or make any attempt to traverse

the claims and submissions made by the Complainant;

9. taking into account all of the above, it is not possible to conceive

of any plausible actual or contemplated active use of the domain name by the

Respondent that would not be illegitimate, such as by being a passing off, or

an infringement of the Complainant’s rights under trademark law.

In the circumstances outlined above this Administrative Panel is satisfied

that the passive holding of the said domain names the subject of these Administrative

Proceedings amounts to a use of said domain names in bad faith by the Respondent.

In the view of this Administrative Panel the Complainant has therefore made

out a prima facie case sufficient to satisfy the third element in Paragraph

4 (a) of the Policy.

7. Decision

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

it is the decision of this Administrative Panel that the Complainant has established

that said domain names <ladbrokespoker.com>, <ladbrokepoker.com>,

<ladbrokepoker.org> and <ladbrokepoker.net> and each of them are

confusingly similar to a service mark in which the Complainant has rights, that

the Respondent has no rights or legitimate interest in said domain names and

that the Respondent has registered and is using said domain names in bad faith.

This Administrative Panel therefore directs that said domain names <ladbrokespoker.com>,

<ladbrokepoker.com>, <ladbrokepoker.org> and <ladbrokepoker.net>

shall be transferred to the Complainant.

James Bridgeman

Sole Panelist

Dated: April 10, 2002

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