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The Gaming Board for Great Britain v. gaming board [2004] GENDND 1344 (18 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Gaming Board for Great Britain v. gaming board

Case No. D2004-0739

1. The Parties

The Complainant is The Gaming Board for Great Britain, High Holborn, London, of United Kingdom of Great Britain and Northern Ireland, represented by Gregory Rowcliffe Milners Solicitors.

The Respondent is gaming board, Newark, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <gbgamingboard.org> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2004. On September 13, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 15, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that 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 September 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default October 7, 2004.

The Center appointed John Swinson as the sole panelist in this matter on October 11, 2004. The Panelist finds that it was properly constituted. 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.

On October 11, 2004, the parties were notified that Mr. Swinson had been appointed and that a decision was, save exceptional circumstances, to be handed down by October 25, 2004.

The language of the proceeding was English.

4. Factual Background

The Complainant is The Gaming Board for Great Britain, a body corporate established in Great Britain under section 10 of The Gaming Act 1968. It is the regulatory body for British casinos, bingo halls, gaming machines and the larger society or local authority lotteries.

The statutory functions of the Complainant include issuing Certificates of Approval for entities applying for gaming licences for casinos or bingo halls and to entities applying to supply gaming machines. The Complainant also administers registrations for entities conducting certain lotteries.

The Complainant has a website at “www.gbgb.org.uk”.

The disputed domain name was registered on or about May 12, 2004. A search of the Registrar’s database indicates that the disputed domain name was registered by the Respondent “gaming board”, and the Administrative Contact Name is also listed as “gaming board”.

The Respondent’s website is hosted by HalfPriceHosting of Louisville, Kentucky, United States of America.

The Complainant’s attention was first drawn to the Respondent’s website on July 19, 2004.

When the Panelist viewed the website at the disputed domain name in October 2004, it comprised only one page with the notice:

“This web site has been temporarily disabled. Please contact the webmaster of this site if you have any questions. Thank you.”

5. Parties’ Contentions

A. Complainant

The Complainant relies on the factual background set out in section 4 (“Factual Background”) above.

The Complainant also contends that in July and August 2004, the Respondent’s site in most respects was a direct copy of the Complainant’s website.

According to the Complainant, the Respondent produced a fabricated website at the disputed domain name, copying in large part the Complainant’s website and:

(a) changing the contact address and telephone number which appeared on its website;

(b) changing the names of the Chairman, Members and Secretary, except for one member of the Complainant, who’s correct name appeared on the Respondent’s website;

(c) including a position that does not exist within the Complainant, namely a Public Relations Officer, stated to be Michael Albright; and

(d) including false lottery fees such as, (1) computer ballot registration - £11,120 and (2) computer ballot renewal - £188.

According to the Complainant, the Respondent’s website at the disputed domain name also included:

(a) genuine fees as shown on the Complainant’s genuine website; and

(b) copies of publications from the Complainant’s website in breach of UK copyright law.

The Complainant further contends that the Respondent’s website was set up to facilitate lottery and sweepstake advance fee fraud. Attached as Annex 3 to the Complaint is an email received from a company called Cash Change UK Ltd, included by way of example of such a type of scheme. The email advised the recipient that she had won a prize in a lottery and requested payment of a processing fee of £3,560. The content of the email represented that it is against gaming control regulations in Britain for this fee amount to be deducted from the prize money, and included a reference to a fake Gaming Board website at the disputed domain name for more details.

The Complainant contends that the Respondent’s website at the disputed domain name also contained the fictitious information:

“Where fees are chargeable to the public winners will be responsible for meeting the stipulated Gaming Board charges as deductions from prizes are not permitted.”

The Complainant’s search of the Companies Registry for England and Wales revealed that the company Cash Change UK Ltd. was registered on July 30, 2004, and that no one has been registered as directory or secretary of the company since the resignation of the original director and secretary (employees of the company formation agents who incorporated the company). The Complainant’s enquiries to the company formation agents revealed that the company was acquired by credit card payment by a “William Anderson”, who gave what was discovered to be a fictitious address.

Accordingly, the Complainant contends that the Respondent has no legitimate interest in the use of the disputed domain name and has registered and is using the domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

In accordance with Rule 5(e) of the Rules, this dispute shall be decided on the basis of the Complaint alone.

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must make out the three elements set out in paragraph 4(a) of the Policy, namely:

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

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

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

The Complainant is the regulatory body for British casinos, bingo halls, gaming machines and the larger society or local authority lotteries and operates under the name “The Gaming Board for Great Britain”. On the Complainant’s website, it uses the names “The Gaming Board for Great Britain”, “The Gaming Board” and “GBGB”. The Complainant’s website includes “gbgb” in the domain name.

The Complainant’s name (“The Gaming Board for Great Britain”) is not registered as a trade or service mark (nor is “The Gaming Board”). However it appears (including from the Complainant’s website) that the Complainant has used the name “The Gaming Board for Great Britain” (together with “The Gaming Board”) in connection with services rendered to the public for some time, and therefore the Complainant would likely be found to have common law trademark rights in that name.

The Respondent operated a website at the disputed domain name, which includes “gb” and “gamingboard” in the name, and the Respondent’s website contained references to the “Gaming Board”.

The Complainant’s common law trademarks (“The Gaming Board for Great Britain” and “The Gaming Board”) are confusingly similar to the disputed domain name textually, the main difference being the “gb” before Gaming Board, which is used to stand for “Great Britain”. In addition, the way in which the Respondent has used the domain name suggests that the Respondent intended users of the Respondent’s website to believe that the website at the disputed domain name was associated with the Complainant.

In the Panelist’s view, the Complainant has common law rights in its name and that the domain name in dispute is confusingly similar with the Complainant’s name. Accordingly, the Panelist finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no legitimate interest in the use of the disputed domain name.

Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondent’s legitimate rights in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Respondent does not meet any of the three elements set out in paragraph 4(c). The Respondent had the opportunity to respond and present evidence that it is a legitimate business that registered the domain name without knowledge of the Complainant’s rights. The Respondent chose not to do so and has not filed any response in this proceeding. The Complainant is not entitled to relief simply by default, however the Panelist can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147).

Creating a website which is a fraudulent and alleged copy of the Complainant’s website is not evidence of a legitimate interest.

The Panelist finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence that the Respondent has used, made preparations to use, or has any intention of using the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate, non-commercial or fair use of the disputed domain.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the domain name in bad faith as:

(a) the Respondent appears to have deliberately hidden its true identity; and

(b) the Respondent’s website in many respects copies the Complainant’s website; and

(c) the Respondent’s website appears to be associated with a fraudulent lottery and sweepstake fee scheme and the fraudulently established company, Cash Change UK Ltd.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if found to be present by a panel, shall be evidence of registration and use of a domain name in bad faith.

In this case the Panelist finds that the Respondent’s conduct constitutes both registration and use in bad faith. The Respondent, in using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s name, as evidenced by the replication of the Complainant’s website content on the Respondent’s website (paragraph 4(b)(iv) of the Policy).

In addition, the Panelist considers the following to be strong evidence that the disputed domain name has been registered and used in bad faith by the Respondent:

(a) the application to register the disputed domain name was made with only “gaming board” provided as the registrant’s name; and

(b) the Respondent’s website contained fictitious information regarding payment of prize processing fees by members of the public; and

(c) the Respondent’s website was referred to in a fraudulent lottery and sweepstake fee scheme email and in association with the fraudulently established company, Cash Change UK Ltd.

The Respondent’s conduct, including the operation of its website at the disputed domain name is conduct likely to lead to the Respondent’s website being associated with the Complainant in the minds of members of the public, and is also conduct likely to cause consequent confusion as to the operator of the website at the disputed domain name.

Any incorrect association of the Complainant with the Respondent’s website and promotion of unauthorised lottery and sweepstake related schemes will, or is at least very likely to, result in damage to the Complainant’s goodwill, as a primary role of the Complainant is to satisfy itself as to the competence and fitness of those operating in the sections of the gaming industry it regulates.

In short, registering a domain name to host a misleading website as part of a fraudulent scheme is clearly bad faith.

Accordingly, the Panelist finds that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist orders that the domain name, <gbgamingboard.org> be cancelled.

John Swinson
Sole Panelist

Dated: October 18, 2004