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Hilton Group plc. v. Balatulu Enterprises [2005] GENDND 293 (22 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hilton Group plc. v. Balatulu Enterprises

Case No. D2005-0243

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 Balatulu Enterprises, Tunapuna, Trinidad and Tobago.

2. The Domain Name and Registrar

The disputed domain name <ladbrookscasino.com> is registered with Register.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 Register.com a request for registrar verification in connection with the domain name at issue. On March 8, 2005, Register.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 transactions 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. This company and others are subsidiary companies of the Complainant under the ultimate control of the Complainant;

Respondent registered the domain name <ladbrookscasino.com> (the “Domain Name”) on June 22, 2003;

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

The “Casino Fortune” website found at “www.ladbrookscasino.com” has no connection with the Complainant;

Complainant has no knowledge of the Respondent nor of the businesses referred to at the website;

The domain name consists of a misspelling of Complainant’s mark; and

Complainant received no response to two e-mails sent to Respondent (at Respondent’s email address given on the WHOIS database) stating Complainant’s rights to the domain name and asking for a transfer of the domain name.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

As a result of the Complainant’s substantial investment in advertising and promoting its LADBROKES and LADBROKES CASINO trademarks across the world, Ladbrokes has become the best known brand in the global internet/electronic gaming market. Complainant contends further, that, as a result of Ladbrokes’ extensive use of its “Ladbrokes” and “Ladbrokes Casino” names, it enjoys a substantial reputation and goodwill in these names, giving rise to proprietary common law unregistered rights.

The Domain Name is phonetically identical to the Complainant’s trademark and is very similar to the Complainant’s own website address. The omission of the “e” and typing the “o” twice may be a common mistake made by users seeking the Complainant’s services.

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

(1) the Domain Name at issue is identical, aurally or phonetically, to the Complainant’s LADBROKE CASINO trademark registration and to its LADBROKES CASINO common law trademark; (2) visually, the Domain Name is also confusingly similar to the Complainant’s trademarks and (3) that 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 using the Domain Name to host a website offering online casino services; (2) such use of the Domain Name is inherently deceptive and specifically designed to exploit the Complainant’s goodwill in its trademarks; (3) such use cannot be use in connection with a bona fide offering of goods or services; (4) the Respondent is not known by the Domain Name; (5) the Respondent is not authorized by the Complainant or any of its subsidiary or associated companies to use the Complainant’s registered trademark LADBROKE CASINO or its unregistered mark LADBROKES CASINO or any other trademark belonging to the Complainant or any name or names confusingly similar thereto; (6) 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; (7) there is no credible reason for the Respondent to choose the Domain Name and that ‘Ladbroke(s)’ is not a common name; (8) the Respondent’s website at the Domain Name is an online casino which directly competes with the Complainant’s website “www.ladbrokescasino.com”; (9) users are invited to gamble via the Respondent’s website and that this is not legitimate non-commercial or fair use of the Domain Name; and (10) the Respondent has selected the Domain Name to intentionally mislead and divert users to its website.

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 Respondent must have decided to acquire the Domain Name with a view to what it has done, namely to lure users to the site by the Complainant’s trademark as represented by the Domain Name (Paragraph 4(b)(iv) of the Policy); (3) the Respondent must have had the requisite knowledge and intent as alleged because LADBROKES and LADBROKES CASINO are very well known trademarks around the world and must be known to all those operating casinos whether online or otherwise; (4) Respondent’ s website is an online gambling website, offering identical services to those of the Complainant which directly compete with the Complainant’s website at “www.ladbrokescasino.com”; and, (5) that the evidence herein supporting the allegation of bad faith clearly demonstrates that the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website and misleadingly diverting consumers away from the Complainant’s genuine online betting and gaming services.

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 paragraph 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 for LADBROKE CASINO/LADBROKE CASINOS cited by Complainant in its Complaint, as well as Complainant’s alleged extensive use of the LADBROKE/LADBROKES and the LADBROKE CASINO/LADBROKE CASINOS marks, the Panel finds that Complainant has trademark rights in the LADBROKE/LADBROKES and LADBROKE CASINO/LADBROKE CASINOS marks.

The Panel finds that the Domain Name is confusingly similar to Complainant’s registered mark because it incorporates Complainant’s entire mark with only slight misspellings. 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.”).

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 record contains no evidence that Respondent has any trademark rights with respect to the Domain Name. The Panel’s review of Respondent’s website shows that there is no mention anywhere of either the disputed Domain Name or Complainant’s LADBROKE/LADBROKES marks. 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). Consequently, there is no basis for finding that Respondent has, or even purports to have, a legitimate interest in the disputed domain names.

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 Respondent registered and used the Domain Name in bad faith. Complainant’s allegations of bad faith are not contested. Complainant had long been using its trademarks LADBROKE/LADBROKES and LADBROKE CASINO/LADBROKE CASINOS when Respondent registered the Domain Name that is the subject of this Complaint. Respondent’s website at the Domain Name is an online casino which directly competes with the Complainant’s website “www.ladbrokescasino.com” and serves to mislead and divert users seeking to find Complaint’s website. The Panel accepts Complainant’s uncontradicted assertion that Respondent intentionally attempted (for commercial gain) to attract Internet users to the Respondent’s website, 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 the products or services on the Respondent’s website. In addition, Respondent’s misspelling of Complainant’s domain name supports an inference of bad faith. Microsoft Corporation v. Charlie Brown, supra.

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 <ladbrookscasino.com> be transferred to the Complainant.

Lawrence K. Nodine
Sole Panelist

Dated: April 22, 2005