Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The complainant is William Hill Organization Limited of Greenside House, 50 Station Road, Wood Green, London N22 7TP, United Kingdom. The respondent is Fulfillment Management Services Limited of Christchurch House, Vernon Road, Scarborough, North Yorkshire YO11 2NG, United Kingdom.

The domain name in dispute is betwilliamhill.net and the registrar is Core Internet Council of Registrars of Geneva, Switzerland.

The complaint was received by the Center in hard copy on July 19, 2000 and by email on July 24, 2000. It was acknowledged on July 25, 2000, when registration details were sought from the registrar. On August 4, 2000 registration details were confirmed by the registrar. On August 8, 2000 the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee. On August 9, 2000 the Center formally notified the respondent by post/courier, fax and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.

The last day for a response was August 28, 2000. On August 23, 2000, the response was filed by email and on August 25, 2000 in hard copy. The Center acknowledged receipt on August 29, 2000 and on August 31, 2000 invited Alan L Limbury to serve as panelist. On September 1, 2000 Mr Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On September 6, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date of September 20, 2000.

The language of the proceeding was English.

The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements; the complaint was properly notified to the respondent in accordance with paragraph 2(a) of the Rules; the response was filed within time and the administrative panel was properly constituted.

Pursuant to Rule 5(b)(vi), the response identified legal proceedings commenced by the complainant against the respondent and another in relation to the domain names [sic], in which the complainant is seeking an injunction to restrain the defendant's [sic]from passing off and has alleged that the domain name has been used by the respondent. The respondent denies that the domain name has been used.

4. Factual Background (undisputed facts)

The Complainant is the proprietor of UK trade mark registrations GB 2158124 and GB 1383971 for the mark WILLIAM HILL. The Complainant is also the proprietor of trade mark registrations GB 2175369 and EM 914705 for the mark William HILL; trade mark registrations GB 2213272 and EM 1413616 for the mark WILLIAM HILL BETLINK; trade mark registration GB 2050510 for the mark WILLIAM HILL LUCKY CHANCE; GB 2050789 for the mark WILLIAM HILL LUCKY CHOICE; and GB 2050793 for the mark WILLIAM HILL LUCKY BET.

The complainant has, since 1934, also acquired a very substantial and extensive goodwill and reputation in the United Kingdom and worldwide in the name and trade mark WILLIAM HILL as a very well known and substantial bookmaker carrying on business in the United Kingdom and in many other countries of the world, including through its principal web sites, williamhill.co.uk and willhill.com. In 1999, the complainant's turnover was £1.9 billion. It has several million customers.

In addition, the complainant has domain name registrations in williamhill.co.uk, willhill.com, williamhillcasino.com and willhillindex.com. These domain names all have active web-sites from which the complainant trades.

Shortly before April 2000, an employee of the respondent was given a list of names to register as domain names and was asked to identify others that the respondent would wish to utilize and to purchase those at the same time. Pursuant to these instructions, he purchased, on behalf of the respondent, the disputed domain name and another, betwilliamhill.co.uk.

On April 14, 2000, the respondent wrote to the complainant’s solicitors that the respondent does not require these names, did not purchase them with the intent of resale and has no plans to utilize them in any way shape or form and that they will "sit in the file until such time as they expire in terms of registration to ourselves". On June 5, 2000, the respondent declined to transfer the names to the complainant after the complainant offered to pay the respondent’s administrative cost of doing so.

In an attempt to settle the litigation in the High Court of England, on August 8, 2000, the respondent offered an undertaking to the complainant "not to use the names in any way, shape or form within the United Kingdom, European Community or anywhere in the world for any purpose whatsoever".

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trade mark in which the complainant has rights. The domain name in dispute incorporates the whole of the complainant's registered mark WILLIAM HILL.

The Respondent has no rights or legitimate interests in respect of the domain name. The respondent is a limited company with an address in the United Kingdom. It is the proprietor of the domain name "betwilliamhill.net" that incorporates the registered trademark of the complainant.

The respondent has no rights in the mark incorporated into the domain name and no legitimate interest in the name.

The domain name was registered and is being used in bad faith. The respondent has refused to transfer the name to the complainant and says the name would be available for the complainant to purchase once the respondent's registration expires in approximately February, 2002, but no price has been mentioned.

By registering and keeping the domain name the respondent is eroding the goodwill inherent in the trademark by means of misrepresenting that the respondent is connected to the complainant.

B. Respondent

The Respondent does not admit the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; does not admit that it has no rights or legitimate interests in respect of the domain name and denies that the domain name was registered and is being used in bad faith.

It has been acknowledged by the complainant's legal representatives that the respondent has not and will not use the disputed domain name, whether in good faith, bad faith or at all.

The respondent has already given the complainant an undertaking that the domain name will not be used in any way, shape or form and has made it clear in its correspondence that it seeks no financial gain, whatsoever, in this matter. There is an automatic registration period for the purchase of a domain name. Once this has expired, anyone is free to purchase the domain name and the respondent will not be renewing its interest. Any amount payable would be to the registration company and not to the respondent.

It is absolutely clear that the respondent has not used the domain name in bad faith or at all. For the complainant to succeed in his complaint, he must show and prove that the domain name has been used in bad faith. The evidence establishes that the respondent is undertaking not to use the domain name and no evidence has been provided to show that the domain name has been used.

The litigation

Rule 18 (a) gives the panel a discretion, where legal proceedings are initiated during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision. In this case, it is not clear whether the litigation is in respect of the domain name dispute. This may explain why the complainant did not notify the panel and the provider of the litigation, as required under Rule 18(b). Be that as it may, it appears to the panel that this administrative proceeding raises different issues from a passing off case (including the important issue of bad faith and whether inactivity may constitute use in bad faith under the Policy) and affords the remedies of transfer or cancellation of domain names, remedies not necessarily available in court proceedings for passing off.

Accordingly, the panel has decided to proceed to a decision, noting that both parties are domiciled in England and that the complainant has submitted to the jurisdiction of that country should the respondent wish to challenge any decision by the panel for transfer or cancellation.

Substantive issues

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is 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 name; and

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

Identity or confusing similarity

The domain name betwilliamhill.net comprises the trademark of the complainant, without spacing, in conjunction with the generic prefix bet (which describes the business activities of the complainant) and the generic suffix net, which is recognized as relating to the Internet. Despite the prefix, the name is essentially identical to the complainant’s trade mark WILLIAM HILL and this is sufficient for the purposes of paragraph 4(a)(i) of the Policy.

Given the complainant’s established reputation, the dominant feature of the domain name, the word williamhill, is likely to cause confusion. Because the complainant is recognized as offering betting services and has registered marks which include the word bet, the use of the generic word bet in the disputed domain name would be likely to cause confusion in the mind of an Internet user as to whether the domain name is associated with the complainant.

The generic words bet and net do not serve to distinguish the disputed domain name from the complainants trademarks: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (Case D2000-0113) and Nokia Corporation v. Nokiagirls.com (Case D2000-0102), holding that the disputed domain names were confusingly similar to the trademark of the complainant, despite the addition of generic words.

In Microsoft Corporation v. Microsof.com aka Tarek Ahmed (Case D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainant’s mark and the mark being strong and immediately recognizable. Here the domain name is not as closely similar to the trade mark as in that case, but confusing similarity is present here for the same reasons.

The complainant has proved the disputed domain name is identical or confusingly similar to its WILLIAM HILL marks.

Illegitimacy

The respondent admits that it does not require the disputed domain name and has no intention of using it in any way, shape or form. It has not sought (nor is there any evidence) to establish any of the circumstances specified in paragraph 4(c) of the Policy. Nevertheless, the complainant bears the onus of proof on this, as on all issues.

In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (Case FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had not used nor developed the domain name for a legitimate noncommercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (Case FA94970).

Having regard to the undisputed reputation of the complainant’s trade marks in relation to betting activities, the panel finds that the respondent’s employee must have had those marks in mind when choosing the disputed domain name.

The only interest the respondent appears, on the evidence, to have in the disputed domain name is to deprive the complainant of the opportunity to reflect its mark in that name until the registration expires in 2002, whereupon the respondent has stated it does not intend to renew its interest.

The panel finds this is not a legitimate interest and that the respondent has no rights or legitimate interest in the disputed domain name. The complainant has proved this element.

Bad faith registration and use

The respondent is informed by the Policy that the element the complainant must prove is:

"4(a)(iii) your domain name has been registered and is being used in bad faith".

Paragraph 4(b) provides:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence 1 of the registration and use of a domain name in bad faith:…"

There follow four circumstances, the first three of which relate to registration and the last of which relates to use. Proof of any one of those circumstances shall be evidence of both bad faith use and bad faith registration. But the circumstances enumerated in paragraph 4(b) are not exhaustive.

There is no evidence of circumstances falling within paragraph 4(b) of the Policy. As regards sub-paragraph 4(b)(ii), although there is evidence that the domain name was registered in order to prevent the complainant reflecting its mark in a corresponding domain name, the fact that the respondent registered one other (similar) domain name which it does not intend to use does not establish a pattern of such conduct: see Home Interiors & Gifts, Inc. v. Home Interiors (Case D2000-0010); Ingersoll-Rand Co. v. Gully (Case D2000-021) and Bellevue Square Managers, Inc. v. Web (Case D2000-0056).

The panel has found that the respondent’s employee must have had the complainant’s trade marks in mind when choosing the disputed domain name and that the respondent‘s interest is to deprive the complainant of the opportunity to reflect its mark in that name until the registration expires in 2002.

In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (Case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (Case FA95037).

The panel finds this case indistinguishable from Guerlain S.A. v. HI Investments (Case D2000-0494) in which bad faith registration was found where the respondent, knowing of the complainant’s trade mark GUERLAIN, registered the domain name buyguerlain.com. The panel respectfully adopts the reasoning in that case of panelist Glas:

"The similarities between "Guerlain" and the Domain Name cannot result from a mere coincidence. While Respondent could have chosen a million of other names for his company and his online store, he precisely chose a domain name incorporating Complainant’s name so as to be identical or at least extremely confusingly similar to Complainant’s trademark. By knowingly choosing a domain name consisting of Complainant’s trademark preceded by the verb "to buy", Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties".

The panel finds that the disputed domain name was registered in bad faith.

Although the respondent has not used the disputed domain name in the usual sense, the "use" of a domain name in bad faith does not necessarily mean use on the Internet: Bayshore Vinyl Compounds Inc. v. Michael Ross (Case AF-0187). The ‘use’ requirement has been found not to require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows, (Case D2000-0003); Barney’s, Inc. v. BNY Bulletin Board (Case D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (Case D2000-0400); Video Networks Limited v. Larry Joe King (Case D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (Case D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (Case D2000-0468).

In light of the respondent’s choice of domain name with knowledge (as the panel has found) of the complainant’s marks and reputation in the betting industry and the respondent’s expressed intentions not to use the domain name in any way, shape or form and not to renew its registration upon expiry in 2002, the panel finds the respondent is using the domain name in order to deprive the complainant of the opportunity to reflect its trade marks in a corresponding domain name. The panel finds such use to be use in bad faith.

The absence of a pattern of such conduct is immaterial in this case, since the complainant has separately proved bad faith registration.

The complainant has proved bad faith registration and use.

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain name betwilliamhill.net be transferred to the complainant.

Alan L. Limbury
Presiding panelist

Date: September 17, 2000

Footnotes:

1 The relationship between paragraphs 4(a)(iii) and 4(b) is discussed in Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing Group Inc.(Case AF-0104) and elaborated in Passion Group Inc.v. Usearch, Inc. (Case AF-0250).