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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ladbrokes plc, Ladbrokes Betting & Gaming Limited, Ladbrokes eGaming Limited, Ladbrokes International Limited v. Prostoprom

Case No. D2006-1498

 

1. The Parties

The Complainants are Ladbrokes plc, United States of America, Ladbrokes Betting & Gaming Limited, United States of America, Ladbrokes eGaming Limited, United States of America, Ladbrokes International Limited, Gibraltar (the “Complainants”), represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Prostoprom, Woodland Hills, California , United States of America, (the “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name <pokerladbrokes.com> is registered with Go Daddy Software, Inc.

 

3. Procedural History

The Complaint was submitted to the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2006.

At the Center’s request for registrar verification of November 27, 2006, concerning the disputed domain name, Go Daddy Software, Inc. transmitted its verification response to the Center on November 28, 2006, confirming that the Respondent is listed as the registrant of the disputed domain name and providing the contact details for the registrant and the technical and administrative contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, 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”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center sent the Complaint and a formal Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on December 8, 2006, by courier and e-mail, using the contact details listed in the Registrar’s WHOIS database. In accordance with the Rules, Paragraph 5(a), the due date for response was December 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2006.

On December 7, 2006, the Center notified Go Daddy Software, Inc. that the domain name <pokerladbrokes.com> was set to expire on December 23, 2006, and requested confirmation that the domain name would remain locked until the present proceedings would be concluded. On December 7, 2006, Go Daddy Software, Inc. informed the Center that under the Registrar’s policy, the Complainants were to bear the burden of ensuring that the domain name does not expire. Following the Center’s communication to the parties on December 8, 2006, the domain name <pokerladbrokes.com> was renewed and it will expire on December 23, 2007.

The Center appointed Ms. Foteini Papiri as the Sole Panelist in this matter on January 8, 2007. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7. Thus, the Panel finds that it was properly constituted.

Notification of the Appointment of the Administrative Panel and the Projected Decision Date were sent by e-mail to the Complainants and to the Respondent on January 8, 2007.

The registration agreement for the domain name at issue has been done and executed in English by Respondent and Registrar and the Complainants have submitted their Complaint in English. In the absence of any special circumstances for the Panel to determine otherwise, as provided in the Rules, Paragraph 11, the language of this proceeding is English.

The Panel, sharing the assessment of the Center, independently finds that the Complaint was filed in accordance with the requirements of the Policy, the Rules and the Supplemental Rules.

The Panel has not received any requests from Complainants or Respondent regarding further submissions, waivers or extensions of deadlines.

 

4. Factual Background

Because the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and to the extent that the Complainants’ contentions and documents enclosed with the Complaint have not been contested, the Panel finds the following facts as having been sufficiently established:

The First Complainant is the parent company of the Ladbrokes Group of companies, formerly named Hilton Group plc. On February 23, 2006, the company de-merged from its Hilton hotels business and was renamed that day.

The Second Complainant is a wholly owned subsidiary of the First Complainant and on February 23, 2006, changed its name from Ladbrokes Ltd. The Second Complainant is an operating company of the Group in the United Kingdom and is the owner of certain LADBROKES trademarks.

The Third Complainant is an associated company of the First Complainant and is the operator of the Ladbrokes Group’s betting and gaming business in the United Kingdom.

The Fourth Complainant is a subsidiary of the First Complainant and operates the Group’s remote gaming functions including its online gaming website.

The First, Second, Third and Fourth Complainants are members of the Ladbrokes group of companies, which owns a network of over 2,500 retail betting shops in the United Kingdom, Ireland and Belgium. The Complainants have also invested considerably in the online betting and gaming services under the “Ladbrokes” name, offering customers opportunities for financial betting and gaming including sports book, casino and poker features. As a result of the Complainants’ success, Ladbrokes now has nearly 2 million registered users of its websites in at least 200 countries worldwide and its online operation supports no fewer than 12 languages using 18 different currencies.

The Second Complainant owns a trademark registration for the LADBROKES mark in the United Kingdom, registration No. 1294512, registered on January 22, 1993, in Class 36 in respect of betting services and gaming services and a trademark registration for the LADBROKE mark in the United Kingdom, registration No. 2004802, registered on December 29, 1995, in Class 41 in respect of casino services, gaming services, bingo hall services, football pools services and club and nightclub services. The Second Complainant has also applied for the LADBROKES POKER mark in the United Kingdom, application number 2428119, in, inter alia, class 41 in respect of betting, gaming and gambling services and games services provided online from a computer network. (Complaint, Annex 6).

The Complainants are the owners of numerous domain name registrations, incorporating the “Ladbrokes” and “Ladbroke” name, including, but not limited to <ladbrokes.com>, <ladbrokescasino.com> and <ladbrokesgames.com> (Complaint, p. 8 and Annex 4).

According to WHOIS database records furnished by the Complainants, the record for the disputed domain name <pokerladbrokes.com> was created on December 23, 2005, (Complaint, Annex 1).

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that: (1) the domain name <pokerladbrokes.com> is identical or confusingly similar to the marks in which the Complainants have rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.

In particular, the Complainants contend that they have each used the marks LADBROKES, LADBROKE and LADBROKES POKER in connection with their respective businesses for many years. The Complainants also contend that they operate the web site “www.ladbrokespoker.com”, registered in the name of Ladbrokes Limited, with over 300,000 customers and that as a result of their extensive use of and investment in the names “Ladbrokes”, “Ladbroke” and “Ladbrokes Poker”, the Complainants also own unregistered rights in the names. The Complainants further contend that to the extent that the First, Third and Fourth Complainants have used any of the aforementioned marks, they have done so with the license and consent of the Second Complainant.

The Complainants contend that the domain name <pokerladbrokes.com> is composed of the mark applied for by the Second Complainant, i.e. LADBROKES POKER, save that in the disputed domain name the order of the words has been reversed, where “poker” appears as a prefix to the word “ladbrokes” and that the disputed domain name is, therefore, confusingly similar to the applied mark.

The Complainants further contend that the domain name <pokerladbrokes.com> is confusingly similar to the Second Complainant’s registered marks LADBROKES and LADBROKE, as it incorporates these as its most distinctive elements, the prefix “poker” being merely descriptive of Complainants’ business activities.

The Complainants also contend that the domain name <pokerladbrokes.com> is confusingly similar to the Complainants’ unregistered rights in the marks LADBROKES, LADBROKE and LADBROKES POKER, as it either incorporates these in their entirety in reversed order or it incorporates the marks LADBROKES and LADBROKE in combination with the term “poker” as a prefix indicative of the Complainants’ activities, which may lead the public to confuse the domain name as belonging to, being affiliated with or operated by the Complainants.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainants contend that the Respondent is not generally known under the domain name, does not possess rights in the marks LADBROKES, LADBROKE or LADBROKES POKER, does not use the domain name for any legitimate, non-commercial or equitable purpose or in connection with a bona fide offering of goods and services and the Complainants have not licensed or otherwise authorized the Respondent to register the domain name or use the aforementioned marks.

The Complainants also contend that the domain name was registered in bad faith, as it is highly unlikely that the domain name, incorporating the LADBROKES, LADBROKE and LADBROKES POKER marks as its most meaningful portion or in reversed order, was registered without prior knowledge of the marks. The Complainants contend that the Respondent registered or acquired the domain name primarily for the purpose of free riding on the Complainants’ reputation by making a profit from the Internet traffic that it diverts away from the Complainants’ web sites and online poker services. As the domain name resolves to a third party’s web site, the Complainants contend that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the aforementioned marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on Respondent’s web site or location.

B. Respondent

The Respondent did not reply to the Complainants’ contentions and has not made any submissions whatsoever. Under Paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. Under Paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to “draw such inferences therefrom as it considers appropriate”. No exceptional circumstances have been brought to the Panel’s attention. Accordingly, the Panel makes the findings below on the basis of the material contained in the Complaint.

 

6. Discussion and Findings

This dispute is properly within the scope of the Policy, and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy.

The Respondent is required to submit to a mandatory administrative proceeding in accordance with Paragraph 4(a) of the Policy, because the Complainants assert, in compliance with the Rules of Procedure, that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Under Rules, Paragraph 10(a), the Panel is allowed, inter alia, to independently visit the Internet in order to obtain additional light in this default proceeding. On January 19, 2007, the Panel attempted to visit Respondent’s web site at the URLs “www.pokerladbrokes.com”, using the Internet Explorer browser. The domain name <pokerladbrokes.com> opened to a web site offering gambling services and incorporating several links directing visitors to, inter alia, third parties’ web sites.

A. Identical or Confusingly Similar

The present dispute over the domain name <pokerladbrokes.com> is put forward by multiple Complainants: Ladbrokes plc, Ladbrokes Betting & Gaming Limited, Ladbrokes eGaming Limited and Ladbrokes International Limited, which are collectively presented by the Complainants’ representative as members of the Ladbrokes Group of companies. Indeed, the e-mail contact for all four Complainants appears to be the same.

Although neither the Policy nor the Rules provide for multiple Complainants, there is no provision explicitly excluding a single Complaint brought by multiple related parties with a common interest in the disputed domain name. While the invoked trademark registrations concern the United Kingdom and the owner of these registrations is specified as the Second Complainant, the Complainants’ representative states: “To the extent that the First, Third and Fourth Complainants have used any of the trade marks referred to above, they have done so with the license and consent of the Second Complainant.” Furthermore, the remedy requested by all Complainants is the transfer of the domain name to the Fourth Complainant.

In light of the fact that the provisions of the Policy and the Rules do not exclude a single Complaint brought by multiple related parties with a common interest in the dispute domain name nor do they provide guidance as to when subsidiaries, associated companies or affiliates should, or must, join in a Complaint and in light of the fact that such a Complaint has not been contested by the Respondent, the Panel accepts the designation of all four companies as Complainants.

The Panel will accordingly proceed to examine the question whether the Complainants have rights in the trademarks and whether the disputed domain name is identical or confusingly similar to these trademarks.

It has been demonstrated that the Second Complainant owns a trademark registration for the LADBROKES mark in the United Kingdom, registration No. 1294512, registered on January 22, 1993, in Class 36 in respect of betting services and gaming services and a trademark registration for the LADBROKE mark in the United Kingdom, registration No. 2004802, registered on December 29, 1995, in Class 41 in respect of casino services, gaming services, bingo hall services, football pools services and club and nightclub services.

It has also been contended that to the extent that the First, Third and Fourth Complainants have used any of the trade marks referred to above, they have done so with the license and consent of the Second Complainant. None of the invoked trademark registrations is in the name of the First, Third or Fourth Complainants.

The first limb of the test under the Policy requires that the disputed domain name be identical or confusingly similar to a trademark or service mark in which Complainant has rights. In other words, the Complainant is not required to be the owner of the trademark or service mark. It has been accepted in other Administrative Panel Decisions that “[…] a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark”.¹ The Panel concurs with the view expressed in other Administrative Panel Decisions that the Complainant may through its affiliation to the owner of the trademark or service mark registration have demonstrated rights in the registered trademark or service mark² and that the Policy does not require that Complainant have exclusive rights in the trademark or service mark.³

Furthermore, the registration of the trademark LADBROKES and LADBROKE in the United Kingdom is sufficient, in order for the Complainants to establish trademark rights, as the examination of whether the Complainants have rights in a trademark under the Policy, “[…] does not require a Complainant to show that it has trademark rights in the Respondent’s country nor that its trademark rights are in respect of the particular goods or services of the Respondent. It is sufficient that a Complainant establish that, at the time of filing the Complaint, it has some rights in a trademark anywhere in the world. These include rights flowing from registration, rights flowing from use having led to distinctiveness or rights as licensee […]”⁴

The issue of the territorial effect of the trademark registration may, however, be of importance in terms of the other two limbs of the test, i.e. rights or legitimate interests, and bad faith registration and use.

In view of the above, the Panel is satisfied that the Complainants have demonstrated that they have rights in the registered trademarks LADBROKES and LADBROKE, which are registered by the Second Complainant.

The Complainants also contended that the Second Complainant applied for the trademark LADBROKES POKER in the United Kingdom. As registration has not materialized yet, neither the Second nor the other Complainants can establish that they have rights in LADBROKES POKER as a registered trademark. However, the Complainants have also contended that they hold unregistered rights in the name “Ladbrokes Poker” (Complaint, p. 9). According to the consensus view of WIPO Panel Views on Selected UDRP Questions, in order for the Complainant to successfully assert common-law or unregistered trademark rights, “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark.”

In the present case, although the Complainants argue that they have unregistered trademark rights in respect of the name “Ladbrokes Poker”, and although this may well be true, they have not produced the necessary evidence to support their contentions. Therefore, the Panel has no choice but to proceed solely on the basis of the registered trademark rights in LADBROKES and LADBROKE.

In respect of the question whether the disputed domain name is identical or confusingly similar to these trademarks, it is important to point out that it is established practice to disregard the absence of spaces, as well as the top-level part of the domain name, when assessing whether the domain name is confusingly similar to the mark at issue, as such elements are dictated by the very nature of the DNS, which does not permit the existence of spaces and the inclusion of a gTLD or a ccTLD is necessary to distinguish one namespace from others.

The domain name <pokerladbrokes.com> consists of the descriptive term “poker” preceding the registered mark LADBROKES or LADBROKE with the addition of an s, which constitute its most significant meaningful portion and are incorporated in the domain name in their entirety.

The Complainants have used the mark LADBROKES and LADBROKE in connection with a wide variety of goods and services. As a consequence, the public has come to perceive goods and services that are offered under these marks or a variation of the same as emanating from or being endorsed by or affiliated with the Complainants. The addition of the term “poker” as a prefix to the mark LADBROKES, indicative and descriptive of the Complainants’ services and operations, and equally the use of the descriptive term “poker” as a prefix and the addition of an s to the LADBROKE mark, are variations of the LADBROKES or LADBROKE mark, which the average consumer would expect the Complainants or their affiliates to use in connection with the mark LADBROKES or LADBROKE to identify their goods or services, especially since the Complainants are primarily using these marks in connection with goods and services in the betting and gaming business, including poker services.

The incorporation of the term “poker” in the Respondent’s domain name attempts to create confusion in the minds of the consumers with the Complainants’ operation of betting and gaming services. Given the nature of the services that Complainants provide, the use of the descriptive term “poker” in combination with the mark LADBROKES or LADBROKE does not only fail to distinguish the domain name from the marks, but also reinforces the association of the domain name with the marks. In that sense, the Respondent creates a likelihood of confusion in the minds of the consumers, who expect the domain name <pokerladbrokes.com> to resolve to web sites owned by, operated by or affiliated with the Complainants. The Respondent has not contested Complainants’ contentions as to Complainants’ rights in either the mark LADBROKES or the mark LADBROKE.

The Administrative Panel finds that the domain name <pokerladbrokes.com> is confusingly similar to the LADBROKES and LADBROKE mark, in which the Complainants have proven to have rights, pursuant to Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants have a strong presence in the betting and gaming business, both through retail business and online, and the Complainants’ first use of the LADBROKES and LADBROKE marks predate the domain name registration. Because the LADBROKES and LADBROKE trademark registrations, as set out above, were issued before the registration of the disputed domain name, the Panel finds that, in the circumstances of this case, the Respondent most likely knew about the Complainants and the trademarks at issue.

The available evidence indictaes that neither the second Complainant nor its subsidiaries or affiliated companies have granted, tacitly or otherwise, the Respondent any license, rights, permission or authorization to use the LADBROKES or LADBROKE marks or incorporate these in a domain name registration. There is no business link between the Complainants and the Respondent, the Respondent is not related in any way to the Complainants and there is no sponsorship, endorsement or affiliation between them that would justify the Respondent registering a domain name that wholly incorporates the LADBROKES or LADBROKE marks.

Currently, the domain name <pokerladbrokes.com> opens to a web site offering gambling services and incorporating several links directing visitors to, inter alia, third parties’ web sites.

The Respondent appears to have no corporate, partnership or fictitious business name or business listing registration under the disputed domain name, nor has it claimed any rights with respect to this domain name. The Respondent also failed to demonstrate legitimate interests or bona fide offering of goods or services in respect of the disputed domain name.

In any case, the result of the test independently conducted by the Panel did not show any evidence as to independent rights or legitimate interests of the Respondent in the domain name pursuant to Paragraph 4(c) under the Policy, nor could the Panel find any indication of bona fide offering of goods or services. Furthermore, there is no evidentiary support that the Respondent, as an individual, business, or other organization, has been commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name.

Therefore, the Administrative Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue, pursuant to Paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

According to Paragraph 4(a)(iii) of the Policy, the Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.

The Complainants contend that the domain name was registered or acquired in bad faith and primarily for the purpose of free riding on the Complainants’ reputation. The Complainants submitted evidence that the disputed domain name had been registered on December 23, 2005, by another registrant (Complaint, Annex 9), i.e. a different registrant to the one in this default proceeding. Following a communication from Complainants’ representatives on July 21, 2006, requesting removal from the web site of content likely to cause confusion and requesting transfer of the disputed domain name, on a subsequent date unknown to the Complainants, the disputed domain name appeared to have been transferred to the Respondent in this proceeding. However, the e-mail address for the administrative and technical contacts remained the same as previously and the web site, to which the disputed domain name currently resolves, is very similar to that hosted by the prior registrant, incorporating the Ladbrokes logo (Complaint, Annex 10).

It could be inferred, in the circumstances of this case, that the previous registrant is in fact the same entity as the current registrant. Be that as it may, the Panel notes that the web site, to which the disputed domain name resolves wholly incorporates the registered LADBROKES and LADBROKE marks. It would therefore seem likely that the Respondent had actual knowledge of the marks. This is evident from the reproduction of the Complainants’ corporate logo in the web site of the alleged Respondent’s predecessor in title and in the Respondent’s web site, to which the disputed domain name currently resolves and the offering of services similar to those offered by the Complainants (Complaint, Annexes 7 and 10). The Respondent failed to submit a Response, contesting this element.

As mentioned above, the domain name <pokerladbrokes.com> currently resolves to a web site offering gambling services and incorporating several links directing visitors to, inter alia, third parties’ web sites. The Complainants contend that by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the registered marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location in the meaning of Paragraph 4(b)(iv) of the Policy.

Because of the fact that the Respondent is actively using the domain name to divert Internet traffic to its website and to other third parties’ web sites active in a line of business at least similar to that of the Complainants and because the Respondent, in doing so, is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the registered marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location, the Administrative Panel is satisfied that the circumstances surrounding Respondent’s conduct are indicative of registration and use of the domain name in bad faith according to Paragraph 4(b)(iv) of the Policy.

For all the aforementioned reasons, the Administrative Panel finds that the Complainants have proven Paragraph 4(a)(iii) under the Policy.

Consequently, all the prerequisites for cancellation or transfer of the domain name are fulfilled, according to the remedies available under Paragraph 4(i) of the Policy.

The Complainants have requested transfer of the domain name to the Fourth Complainant, Ladbrokes International Limited.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pokerladbrokes.com> be transferred to the Fourth Complainant, Ladbrokes International Limited.

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Foteini Papiri
Sole Panelist

Dated: January 22, 2007

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¹ Administrative Panel Decision, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796, under 6(i).

² Administrative Panel Decision, Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756, under 6.A.

³ Administrative Panel Decision, Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993, under 6 where it is stated: “It is also abundantly clear from the evidence filed by the Respondent that there are literally dozens of other entities trading under and by reference to precisely the same name. Accordingly, the Complainant’s rights in respect of the name are by no means exclusive. […] In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of "exclusive rights" is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that the Complainant has a bona fide basis for making the Complaint in the first place.”

⁴ Administrative Panel Decision, Kabushiki Kaisha ASTY and Kabushiki Kaisha F.D.C. PRODUCTS v. LiHai, WIPO Case No. D2003-0963, under 6.A. See also Administrative Panel Decision, Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668.