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UK Betting PLC v. Pam Oldfield [2005] GENDND 1420 (31 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

UK Betting PLC v. Pam Oldfield

Case No. D2005-0637

1. The Parties

The Complainant is UK Betting PLC, Leeds, United Kingdom of Great Britain and Northern Ireland (the “Complainant”), represented by Clare Moore of Pipex Communications UK Limited, Nottingham, Nottinghamshire, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Pam Oldfield, London, United Kingdom of Great Britain and Northern Ireland (the “Respondent”).

2. The Domain Names and Registrar

The disputed domain names <ukbet.com> and <ukbet.org> (the “Domain Names”) are registered with Domainsite.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2005. On June 20, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 20, 2005, the Registrar 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.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 1, 2005. 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 July 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2005. The Response was filed with the Center on August 5, 2005.

The Center appointed Tony Willoughby as the sole panelist in this matter on August 22, 2005. 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, UK Betting PLC, is a company incorporated in the United Kingdom. It provides online betting services. The Complaint contains next to no information on the company save that it has been trading under the name UK Betting PLC for seven years and operates “the UK’s leading sport content and betting sites”.

Certainly from its main betting sites at “www.ukbetting.com” and “www.totalbet.com” it appears to conduct substantial business within its field of operation.

The Respondent registered the Domain Names on February 11, 2004, and March 24, 2005 respectively. Both of the Domain Names are connected to Sedo directory parking pages featuring links to a variety of betting sites.

On March 8, 2005, the Respondent wrote to the Complainant offering to sell the domain name, <ukbet.com>, for £25,000. The Complainant rejected the offer. Over the following two months, the Respondent made several other approaches to the Complainant offering to sell the Domain Names for ever reducing sums of money. The last offer dated May 19, 2005, nominated a price of £7,950 for the pair.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its corporate name UK Betting PLC and its domain name <ukbetting.com>, names which it claims are trade marks in which the Complainant owns unregistered rights.

In its original form the Complaint contains no specific claim to any trade mark rights. In its amendment to the Complaint, the relevant claim reads as follows:

“UK Betting PLC operates the UK’s leading sports content and betting sites and is a public company listed on the London Stock Exchange Alternative Investment Market (AIM) and therefore have [sic] an active investment in associated branding and have [sic] established substantial goodwill and reputation in connection with the name.

UKBETTING.COM is not a registered trade mark, however it is the UK registered company name used in connection with the online betting services provided by this business.”

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names.

The Complainant contends that the Respondent is not commonly known by the Domain Names, nor does the Respondent offer any directly related services. The Sedo parking pages connected to the Domain Names are simply directory pages featuring links to betting sites of others.

At the time that the first version of the Complaint was sent to the Respondent, the Sedo parking pages indicated that the Domain Names were for sale.

The Complainant contends that in doing what she is doing the Respondent is not making a legitimate, non-commercial or fair use of the Domain Names.

The Complainant contends that there is potential for diversion of the Complainant’s clientele to the Complainant’s competitors, links to whose site feature on the Sedo parking pages.

The Complainant also refers to the correspondence in which the Respondent has been straining every nerve to sell the Domain Names to the Complainant for a substantial profit.

The Complainant contends that this is not indicative of a Respondent with rights or legitimate interests in respect of the Domain Names.

The Complainant further contends that the Domain Names were registered in bad faith and are being used in bad faith.

The Complainant points to the correspondence and contends that the Respondent registered the Domain Names for one reason only, namely to sell them to the Complainant at a substantial profit.

B. Respondent

The Respondent denies that the Domain Names are identical or confusingly similar to any trade mark or service mark in which the Complainant has rights. The Complainant contends that she conducted searches prior to registering the domain name <ukbet.com> and found no trace of any trade mark comprising “UKBET”.

The Respondent contends that the Domain Names are composed solely of the common descriptive term “UK BET”, a term featuring the ordinary words “uk” and “bet”. The Respondent contends that the Domain Names are generic and commonly descriptive.

The Respondent draws attention to other descriptive domain names where slight variants are owned by different registrants e.g. <ukdomain.com> and <ukdomains.com> and <ukshop.com>, <ukshops.com> and <ukshopping.com>, all of which are separately owned.

The Respondent contends that she has rights or legitimate interests in respect of the Domain Names. She says that she registered <ukbet.com> on February 11, 2004, with a view to developing it as a gambling website. For various reasons she was unable to pursue her objective.

The Respondent says that she only listed the Domain Names for sale after discussions with interested parties had ended. The interested parties to which she refers are gambling services companies with which she was hoping to co-operate.

The Respondent produces a draft of a webpage that she said she was hoping to develop with a website developer at the time that the WIPO Complaint was received.

The Respondent denies that the Domain Names were registered in bad faith and are being used in bad faith. She says that when she was trying to sell the Domain Names she had not singled out UK Betting PLC. She had approached a number of other companies. She produces in evidence a copy of an email from Coral Eurobet Holdings Limited indicating that that company was interested in purchasing the domain name <ukbet.com> providing that the price was right. That email was dated February 19, 2004. The Respondent observes that it is not unlawful for a domain name registrant to seek to sell a generic domain name. The Respondent states that she registered <ukbet.org> in order to protect the main domain name, <ukbet.com>.

The Complainant contends that she is not using the Domain Names in bad faith. They are being used to provide directory links to gambling companies and thereby provide a legitimate service to the public.

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The first hurdle that the Complainant has to overcome is to prove that it has relevant trade mark rights. There are no registered rights, but are there unregistered rights?

Unregistered trade mark rights are rights to stop unauthorized third parties using a name or mark which is likely to lead to deception. In other words, they are common law rights in passing off.

To succeed in a passing off action one has to prove (inter alia) a reputation and goodwill in respect of the name or mark in question. Descriptive names are capable of acquiring distinctiveness (e.g. BRITISH AIRWAYS and BRITISH PETROLEUM), but the more descriptive the name, the more by way of evidence that a court will require to establish reputation and goodwill; moreover, the more descriptive the name, the narrower the ambit of protection that a court will afford to the name.

Accordingly, to demonstrate a reputation and goodwill in respect of a name as descriptive as 'UK BETTING', the court will require details of trading such as length of trading under the name, volume of sales under the name, advertising expenditure in respect of the name, independent evidence from traders, customers etc, etc. For the purposes of an administrative proceeding such as this, the relevant information can be provided in short form, but the Panel still needs to be satisfied that the relevant reputation and goodwill subsists in respect of the name or mark.

While the Panel has no information of that kind before it, at the invitation of the Complainant the Panel has visited the principal websites of the Complainant and, as indicated above, it is plain that substantial business is conducted through those sites. The Panel has visited that part of the site at “www.ukbetting.com” featuring corporate information on the Complainant and accepts that if a third party were to start up in competition with the Complainant under the name UK Betting, the Complainant would be likely to succeed in a passing off action to restrain that third party.

On that basis the Panel finds that on the balance of probabilities the Complainant has trade mark rights in the name UK BETTING.

However, as indicated above, where the name in question is very descriptive, the ambit of protection to be afforded to it is likely to be very narrow.

UK BETTING is a highly descriptive name. Such rights as subsist in the name will be weak. The Panel doubts that a Court would restrain use of a name such as UK BET at the suit of the Complainant without cogent evidence of likelihood of confusion/deception. The Complaint contains no evidence of any likelihood of confusion or deception, simply an unsupported assertion that there is potential for diversion of business. Interestingly, under the heading of ‘Bad faith registration and use’ (paragraph 4(a)(i) of the Policy), the Complaint contains no allegation along the lines of paragraph 4(b)(iv) of the Policy (i.e. broadly, use of a domain name to deceive Internet users for commercial gain), but simply a contention that the Respondent registered the Domain Names with a view to selling them to the Complainant or a competitor for profit (paragraph 4(b)(i) of the Policy).

At all events, the Complainant has failed to satisfy the Panel that the Domain Names are confusingly similar to the Complainant’s trade mark UK BETTING and the Complaint fails.

This case has raised an interesting point. As indicated below, the Panel is by no means certain that the Respondent can fairly be said to have rights or legitimate interests in respect of the Domain Names and finds on the evidence adduced, notwithstanding the Respondent’s assertions to the contrary, that the Respondent registered the Domain Names in order to sell them at a profit to someone engaged in the business of online gambling in the United Kingdom (i.e. either the Complainant or a competitor of the Complainant). On that basis, had the Complainant been able to overcome this, the first hurdle, which is generally recognized to be a low hurdle, the Complaint might well have succeeded and the Respondent would have been deprived of two manifestly descriptive domain names.

In the view of this Panel, in circumstances such as this where the Complainant’s trade mark is at the descriptive end of the scale of distinctiveness, the extent of the Complainant’s trade mark rights and the issue of confusing similarity needs to be looked at very carefully, if injustice is not to result.

B. Rights or Legitimate Interests

Given the finding of no confusing similarity, it is unnecessary for the Panel to make a finding under this head. However, the Panel’s doubts expressed above as to whether the Respondent can fairly be said to have rights or legitimate interests in respect of the Domain Names, call for an explanation.

The issue is as to whether the Respondent’s use of the Domain Names constitutes a bona fide offering of a service within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent claims that she registered the Domain Names as descriptive names in order to use them for “a gambling website, which would have a Casino and Poker room”. There is no evidence of any substance before the Panel to demonstrate that the Respondent was seriously proposing to do anything of the sort, simply a couple of undated and very rudimentary draft webpages, which could have been generated at any time. If operating a gambling website was truly her purpose, there should be in existence a wealth of other and more convincing material to demonstrate her plans.

Instead, the Respondent has parked the Domain Names on a Sedo directory site featuring prominent links to a variety of gambling-related sites and less prominent links to a number of other trading sites. Initially, the Sedo page indicated that the Domain Names were for sale. She claims that she “removed the domain for sale feature …. three days before receiving the WIPO complaint”. However, the email which she produces to support that claim is inconclusive, and the fact remains that she did offer the Domain Names for sale.

While there is no reason in principle why the use of a predominantly descriptive domain name for the purpose of a directory service appropriate to the domain name should not constitute a bona fide service within the meaning of paragraph 4(c)(i) of the Policy, the circumstances set out above do not make such a finding easy in this case.

C. Registered and Used in Bad Faith

Again, there is no need for a finding under this head. However, and notwithstanding the protestations of the Respondent to the contrary, the Panel is satisfied that the Respondent registered the Domain Names in order to sell them to a business engaged in the field of online betting services in the United Kingdom, in other words to the Complainant or a competitor of the Complainant.

As the Respondent points out, there is nothing reprehensible in trading in generic names, but the fact is that if a complainant succeeds in overcoming the first two hurdles under paragraph 4(a) of the Policy, paragraph 4(b)(i) of the Policy will bite irrespective of whether or not the domain name in question is generic.

7. Decision

The Complaint is dismissed.

Tony Willoughby
Sole Panelist

Dated: August 31, 2005