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Hilton Group plc v. Forum LLC [2005] GENDND 288 (22 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hilton Group plc v. Forum LLC

Case No. D2005-0244

1. The Parties

The Complainant is Hilton Group plc., Watford, Hertfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Rouse and Co. International, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Forum LLC, Roseau, Dominica.

2. The Domain Name and Registrar

The disputed domain name <labrokespoker.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2005. On March 7, 2005, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On March 9, 2005, Fabulous.com 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 March 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2005.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 8, 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

Complainant states the following:

Ladbrokes is the gaming division of the Complainant, Hilton Group Plc.;

Ladbrokes owns a network of around 1,900 retail-betting shops in United Kingdom of Great Britain and Northern Ireland, Ireland and Belgium. Its core retail business includes business conducted over the counter and via betting terminals in its shops;

Complainant maintains an extensive online presence across the world via the following gambling websites:

a) “www.ladbrokescasino.com”;

b) “www.ladbrokes.com”;

c) “www.ladbrokespoker.com”;

and now has more than 600,000 registered users in at least 160 countries worldwide;

Complainant’s betting and gaming division generated a turnover of approximately £7.3 billion in 2003, with £14.2 million profit in its eGaming operation alone;

Complainant’s eGaming operation is a truly international service, and supports no fewer than 13 languages and in 17 different currencies;

Complainant also operates an Affiliate Program whereby website operators can direct their customers to the Complainant’s websites using links on their own websites;

Complainant owns the following two trademark registrations:

LADBROKE/LADBROKES word mark in the United Kingdom of Great Britain and Northern Ireland registered under number 2,004,802, in Class 41 in respect of ‘Casino services; gaming services; bingo hall services; football pools services; club and night club services′; and

LADBROKE CASINO/LADBROKE CASINOS word mark in the United Kingdom of Great Britain and Northern Ireland registered under number 2, 150,603, in Class 41 in respect of ‘Casino, betting, gaming and gambling services; information and advisory services relating to the same’;

Companies within the Complainant’s Group are also the registrants of over 680 domain names which contain the “Ladbrokes” name;

Complainant owns a non trading UK company under number 02949761 which has been called ‘Ladbroke Casinos Limited’ since its name change on May 1, 1998, and that this company and others are subsidiary companies of the Complainant under the ultimate control of the Complainant;

The domain name <labrokespoker.com> (the “Domain Name”) was registered on January 5, 2004, by Transporto di Networ;

Complainant discovered the domain name at issue while conducting routine investigations;

The website found at “www.labrokespoker.com” links to various online casinos/gambling websites which belong to the Complaint’s competitors; and

Complainant received no response to its e-mail sent on December 14, 2004, to Transporto di Networ advising of Complainant’s rights and attempting to discuss transfer of the Domain Name. A subsequent WHOIS search on March 2, 2005, shows that this Domain Name was transferred to the Respondent herein.

The Domain Name is very similar to the Complainant’s “www.ladbrokespoker.com” website address.

Transporto di Networ, the Respondent’s predecessor in title, has been involved in a number of domain name issues relating to the incorporation of well-known trademarks.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy Complainant contends that:

(1)The Domain Name is aurally or phonetically identical to the Complainant’s common law trademark LADBROKES POKER and visually the Domain Name is confusingly similar to the Complainant’s trademark; (2) the Domain Name is also confusingly similar to the Complainant’s registered trademarks LADBROKE/LADBROKES followed by the word ‘poker’ and, (3) the ‘.com’ suffix should be ignored when making the assessment.

With respect to paragraph 4(a)(ii) of the Policy, Complainant contends that:

(1) the Respondent is not known by the Domain Name and is not authorized by the Complainant or any of its subsidiary or associated companies to use the Complainant’s unregistered trademark LADBROKES POKER or its registered trademark LADBROKE/LADBROKES; (2) to the best of Complainant’s belief the Respondent has no trademark or service mark rights (registered or unregistered) in respect of the Domain Name or any corresponding name; (3) that the redirection of Internet users to websites containing a series of links to other commercial websites is not a bona fide offering of goods and services; and (4) there is no credible reason for the Respondent to choose the Domain Name and that ‘Ladbroke(s)’ is not a common name;

With respect to paragraph 4(a)(iii) of the Policy, Complainant contends that:

(1) when the Respondent was considering whether or not the Domain Name was worth acquiring, the Respondent must have been aware of the Complainant and its trademarks; (2) the redirecting of Internet users to Respondent’s website is motivated by profit and therefore qualifies as bad faith; (3) the Respondent must have had the requisite knowledge and intent as alleged because LADBROKES and LADBROKES POKER are very well known trademarks around the world and must be known to all those operating casinos whether online or otherwise and the Respondent’s website links to many third party online gambling websites in direct competition with the Complainant’s website at “www.ladbrokespoker.com”.

B. Respondent

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

6. Discussion and Findings

Even though the Center gave Respondent sufficient notice under paragraph 2(a) of the Rules, Respondent has not responded to the Complaint. Where respondent does not respond to the complaint, the Panel shall decide the dispute based upon the complaint. Rules, paragraph 5(e), paragraph 14(a). The Complaint is to be decided on the basis of the statements and documents submitted. Rules, paragraph 15(a). Under Rule 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate.” The Respondent’s default does not automatically result in a decision in favor of the Complainant. Subject to the principles with regard to the second UDRP element, the Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the respondent’s default, paragraph (4) of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. The Vanguard Group, Inc. v. Lorna Kang WIPO Case No. D2002-1064 (<vanguar.com>; transfer); Berlitz Investment Corp. v. Stefan Tinculescu WIPO Case No. D2003-0465 (<berlitzsucks.com>; transfer); Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan WIPO Case No. D2004-0383 (<brookehogan.com>; transfer denied).

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the 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 Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Given the trademark registrations for LADBROKE/LADBROKES and the common law uses of LADBROKES POKER alleged by Complainant in its Complaint, the panel finds that Complainant has trademark rights in the LADBROKE/LADBROKES and LADBROKES POKER marks.

The Panel finds that the Domain Name is confusingly similar to Complainant’s unregistered mark because it incorporates Complainant’s entire mark LADBROKES POKER with only the omission of the “d” in LADBROKES. See Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (“The Respondent’s domain name misspelling of the Complainant’s trademark is designed to confuse and take advantage of Internet users who do not know the correct spelling of the Complainant’s mark or name or who mistyped it. Prior WIPO cases have found that such conduct alone creates a prima facie inference of bad faith.”).

In addition, the Panel finds that the Domain Name is confusingly similar to Complainant’s registered mark because it incorporates Complainant’s entire mark LADBROKES with only the addition of the generic term ‘Poker’. See America Online, Inc. v. Viper, WIPO Case No. D2000-1198, in which <aolgirls.com> was found confusingly similar to the trademark “aol”.

B. Rights or Legitimate Interests

Respondent is not known by the Domain Name and is not authorized by the Complainant or any of its subsidiary or associated companies to use the Complainant’s trademark.

The records contain no evidence that Respondent has any trademark rights with respect to the domain name.

Respondent’s website at the Domain Name is a series of links to sites that directly compete with the Complainant’s website “www.ladbrokespoker.com” and serves to mislead and divert users seeking to find Complaint’s website. See FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915 (…the fact that the Respondent uses the domain name to divert Internet users for its own benefit and profit to its portal website that provides hyperlinks to websites of Complainant’s competitors or websites which provide advertisements for or links to Complainant’s competitors is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain names). This is sufficient evidence to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (<croatiaairlines.com>; transfer); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (<belupo.com>; transfer).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered in bad faith. Complainant’s allegations of bad faith are not contested. Complainant had long been using its trademarks LADBROKE/LADBROKES and LADBROKES POKER when the Domain Name that is the subject of this Complaint was registered. The Respondent must have been aware of the Complainant’s rights in the mark and that it was, therefore, infringing the Complainant’s trademark when it registered the subject Domain Name.

Regarding “use in bad faith” the Panel notes that paragraph 4(b)(iv) of the Policy includes use of the domain name intentionally to attract users for commercial gain, as evidence of bad faith. Respondent used the Complainant’s well known trademark in the e-gaming industry to attract users to Respondent’s website thereby linking and redirecting the said users to other competing e-gaming websites. The Panel finds this to be clear evidence of the intention by the Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. Therefore, the Panel finds that the domain name is being used 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, <labrokespoker.com> be transferred to the Complainant who can, in turn, transfer the domain name to its subsidiary company, Ladbrokes International Limited, if it so chooses.

Lawrence K. Nodine
Sole Panelist

Dated: April 22, 2005