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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Sporting Exchange Limited v. Josh Adams

Case No. D2008-0343

1. The Parties

The Complainant is The Sporting Exchange Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Charlene Kinnear, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Josh Adams, of Northampton, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <betfairpromotions.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2008. On March 7, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 7, 2008, eNom transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 11, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2008.

The Center appointed Ian Blackshaw as the sole panelist in this matter on April 9, 2008. The Panel finds that it was properly constituted. The Panel 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.

4. Factual Background

The Complainant, the parent company of the Betfair Group, has registered the trademark BETFAIR in 28 different countries (including the Community Trade Mark Office, which covers the jurisdictions of the European Union). It has generally been registered in classes 9 and 41, although it has also been registered in other classes in some jurisdictions. For example, class 16 in Malaysia and Western Samoa and, along with classes 9 and 41, class 36 in the United States of America.

Amongst the numerous registrations of the trademark BETFAIR that have been registered in the United Kingdom of Great Britain and Northern Ireland (reg. nos. 2226730, 2233992), all of these registrations were made by the Complainant before the registration date of the domain name by the Respondent.

A full list of the Complainant’s trademark registrations throughout the world has been provided to the Panel (Annex 3 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

By incorporating the Complainant’s trademark BETFAIR in the disputed domain name, the Respondent has incorporated the BETFAIR brand identically. Not only is this a clear trademark infringement, it is also likely to lead customers to believe that any services the Respondent may offer in the future come from the Complainant.

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent has not been granted, at any time, permission to express any rights

to or interest in the Complainant’s intellectual property rights.

The Respondent is not associated with the Complainant in any way through any recognized affiliate schemes currently in force.

At the time the disputed domain name was registered by the Respondent, the Complainant’s trademark BETFAIR had been registered for nearly six years and is a globally recognized brand.

There is no website attached to the disputed domain name which indicates that the

domain name has been registered as an instrument of fraud as was established in the ‘One in a million case’.

Through registration of the disputed domain name, the Respondent, therefore, cannot claim any rights or legitimate interests in respect of the domain name.

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))

The Respondent was first approached over his unauthorized use of the Complainant’s trademark BETFAIR in November 2007, by email, where he was offered the opportunity to transfer the disputed domain name to the Complainant, with the understanding that the Complainant would meet the base transfer costs, and pay the Respondent an additional Ј50. Considering the Respondent was in breach of the Complainant’s trademark rights, the Complainant believed this to be a very generous offer. However, the Respondent on November 17, 2007 responded stating that he would only agree to the transfer upon receipt of a disproportionate sum of money, namely, Ј250.

The Complainant responded to the Respondent’s email on November 26, 2007, explaining that the Complainant was not interested in negotiating; and gave the Respondent another opportunity to transfer the disputed domain name over to the Complainant, stating that, in the event of the Respondent not accepting the Complainant’s offer, the Complainant would seek legal action against the Respondent with WIPO. The Respondent then responded on November 26, 2007 with the words:

“Go Ahead”.

The Respondent’s use of the disputed domain name cannot be classed as anything other than use in bad faith, as the Respondent can a) sell the website to competitors and b) make commercial use of the website himself, which amounts to ‘passing off’ and using the Complainant’s name as a vehicle of fraud.

The Respondent is clearly infringing the Complainant’s trade mark rights; he registered the disputed domain name in bad faith; and he has no reason to continue to withhold a domain name that identically incorporates the Complainant’s brand which the Complainant may legitimately wish to use.

The Complainant’s interest lies in trying to recover the disputed domain name. If the situation remains as it is, the Complainant’s business will continue to be disrupted as the Complainant is unable to make use of the legitimate domain name.

Copies of the email correspondence exchanged with the Complainant, referred to above, have been provided to the Panel.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them.

6. Discussion and Findings

To qualify for cancellation or transfer of the domain names at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain names 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; and

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the Complainant’s trademark BETFAIR. The only difference between the disputed domain name and the Complainant’s BETFAIR trademark rests in the mere addition by the Respondent of the descriptive term “promotions” to the BETFAIR trademark. This difference is immaterial for trademark distinguishing purposes. See Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273 (finding that the combination of the complainant’s mark “yahoo” with a number of generic words such as a city name or single and two letter abbreviations for a country name, gave rise to a domain name which was confusingly similar to the registered mark of the complainant); see also, eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (applying the same principle); see further Group Kaitu, LLC v. Sergei Vasiliev WIPO Case No. D2006-1229.

Furthermore, the addition of the suffix “.com” to the disputed domain name is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing feature for trademark purposes under the Policy. See The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112; Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617; and Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademark BETFAIR, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through wide-spread registration around the world and use in commerce for several years prior to the registration of the disputed domain name by the Respondent.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

– whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s widely known trademark BETFAIR and its commercial use around the world, the Respondent must in all likelihood have known, when registering the disputed domain name, that the Respondent could not have – or, indeed, claimed – any such rights or interests. Indeed, as was pointed out in Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors), WIPO Case No. D2000-0644, “it strains credibility” that the Respondent was oblivious of the existence of the Complainant’s widely known and widely-used trademark BETFAIR when registering the disputed domain name. Apart from that, if the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to this Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.

Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark BETFAIR in the disputed domain name. Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s widely known and widely-used trademark inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services (see further on this point below) and the consequential tarnishing of the Complainant’s widely known and widely-used trademark BETFAIR and also the valuable goodwill that the Complainant has established in its trademark through wide-spread commercial use over several years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s] web site or location or of a product or service on its web site or location.”

Based on the record in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its widely known and widely-used trademark BETFAIR. In the particular circumstances of the present case, the Panel takes the view that it was unlikely that the registration of the disputed domain name by the Respondent was coincidental, but rather more likely to have been intentionally made with the Complainant’s widely known and widely-used mark specifically in mind.

Again, by registering and using the disputed domain name incorporating the Complainant’s widely known and widely-used trademark BETFAIR, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, the fact that the disputed domain name includes the widely known and widely-used trademark BETFAIR of the Complainant, registered by the Complainant several years before the Respondent registered the disputed domain name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. For a domain name can only be used in good faith by the owner of the respective right or by a licensee, neither of which is the situation in the present case.

Furthermore, the email correspondence exchanged between the Complainant and the Respondent, referred to above by the Complainant, leads the Panel to draw the inference that the Respondent has registered and is also using the disputed domain name in bad faith contrary to the provision of paragraph 4(b)(i) of the Policy, which provides as follows:

“(i) circumstances indicating that [the respondent] has registered or has acquired the domain name primarily for the purpose of selling……. the domain name registration to the complainant who is the owner of the trademark or service mark …….. for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name;”

Finally, the failure of the Respondent to answer the Complainant’s Complaint or take any part in the present proceedings is, in the view of the Panel, another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <betfairpromotions.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: April 15, 2008