Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Hilton Group Plc v. Young Nah [2005] GENDND 295 (21 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hilton Group Plc v. Young Nah

Case No. D2005-0184

1. The Parties

The Complainant is Hilton Group Plc, Watford, 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 Young Nah (Young Gyoon Nah), Pohang, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <ladbrokecasino.com> is registered with HANGANG Systems Inc. dba Doregi.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2005. On February 17, 2005, the Center transmitted by email to HANGANG Systems Inc. dba Doregi.com a request for registrar verification in connection with the domain name at issue. On February 21, 2005, HANGANG Systems Inc. dba Doregi.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. In response to a notification by the Center that the Language of the Proceeding is Korean, the Complainant submitted a Korean translation of the Complaint with the Center on March 1, 2005. In response to a notification by the Center that Respondent has not submitted to jurisdiction at the location of the principal office of the Registrar, Complainant filed an appropriate amendment to the Complaint on March 4, 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 March 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2005.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on April 4, 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

Ladbrokes is the betting and gaming division of the Complainant, Hilton Group Plc, an internationally known hotel brand. Ladbrokes owns a network of around 1,900 retail betting shops in the UK, Ireland and Belgium.

Ladbrokes also operates gambling sites (“www.ladbrokescasino.com”, “www.ladbrokes.com”, and “www.ladbrokespoker.com”), which offer customers opportunities for betting and gaming with sports book, casino and poker features. There are more than 600,000 registered users for these sites in at least 160 countries worldwide.

Among the many trademarks owned by the Complainant, the following two registrations are asserted by the Complainant for the purposes of these proceedings:

LADBROKE/LADBROKES word mark in the United Kingdom registered under number 2,004,802, in Class 41 covering “casino services; gaming services; bingo hall services; football pools services; club and night club services”, which was originally registered on December 29, 1995.

LADBROKE CASINO/LADBROKE CASINOS word mark in the United Kingdom registered under number 2,150,603, in Class 41, covering “casino, betting, gaming and gambling services; information and advisory services relating to the same”, which was originally registered on May 15, 1998.

Companies within the Complainant’s Group are also the registrants of over 680 domain names that incorporate either “LADBROKE” or “LADBROKES”, including <ladbrokescasino.com>.

The Respondent registered the disputed domain name on June 13, 2003. In the course of routine investigations, the Complainant discovered this fact, and instructed its attorneys to contact the Respondent. On May 12, 2004, Complainant’s attorneys sent an email to the Respondent regarding the subject domain name. Having received no reply, additional emails were sent on June 9, 2004 and again on July 14, 2004, to which there was likewise no reply from the Respondent. A telephone call was made to the phone number indicated for the Respondent in the registration information, but due to communication difficulties between the answering party and Complainant’s attorney, there was no substantive discussion. However, email exchanges began from that point.

The day after the telephone call was made, Respondent replied via email on August 19, 2004 as follows: “Hello, I am the registrant of this domain name. If you have questions, feel free to contact me.” Thereafter, the Respondent corresponded with the Complainant’s attorney in English on several occasions in connection with the domain name. When offered reimbursement for his reasonable registration costs, the Respondent’s final reply on September 8, 2004, was, “If you really want to get this domain name, I can sell it for 1,200 EUR.”

5. Parties’ Contentions

A. Complainant

The disputed name is identical or confusingly similar to marks in which the Complainant has rights.

More specifically, the Complainant contends that the disputed domain name is identical to the Complainant’s LADBROKE CASINO trademark registration and confusingly similar to its “Ladbrokes Casino” common law trademark (merely omitting the letter “s”).

The Respondent has no rights or legitimate interest in the subject domain name.

More specifically, to the best of Complainant’s belief, the Respondent has no trademark or service mark rights corresponding to the subject domain name. Also, the Respondent has made no use of the domain name since registering it, other than to park it at the domain name park service provided by “trafficz.com”. Complainant further contends that there is no credible reason for the Respondent to choose the subject domain name, since “Ladbroke[s]” is not a common name, and even more uncommon in Korea where the Respondent resides.

The domain name was registered and is being used in bad faith.

Complainant contends that Respondent must have been aware of Complainant and its trademarks when he obtained registration. Further, the Respondent must have decided to acquire the domain name with a view to what it has done, namely either to sell it at a profit to the Complainant or a competitor of the Complainant or with a view to park it at a domain name park service, such as “trafficz.com”, and thereby earn income from Internet users visiting the site. To further support its contentions, Complainant also noted that Respondent has registered a number of other domain names that incorporate distinctive trademarks, noting <accorservice.com>, <ibmclub.com> and <jandwgroup.com>.

B. Respondent

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

6. Discussion and Findings

While the default language of the proceedings is Korean by virtue of the language of the relevant registration agreement and an absence of agreement otherwise between the parties, the Panel is of the opinion that it would be appropriate under the circumstances to render its decision in English, as explained below.

Respondent has demonstrated some competency in English, as evidenced by his email communications with Complainant’s attorneys during negotiations and his choice of a domain name containing an English dictionary word. On the other hand, neither the Complainant nor their attorneys appears to have any ability to communicate in the Korean language, and they rely upon the assistance of third-party translators. But most importantly, the Panel notes that Respondent has decided to not participate in the proceedings, despite being served with notices from the Center in the Korean language and having received a Korean translation of the Complaint. Under these circumstances, the Panel finds it fair and more appropriate to render its decision in the language of the Complainant.

A. Identical or Confusingly Similar

The Complainant has submitted evidence of its registered trademark for “LADBROKE CASINO/LADBROKE CASINOS”, which was registered long before the Respondent obtained registration for the disputed domain name. In this regard, the subject domain name <ladbrokecasino.com> is essentially identical the Complainant’s registered trademark. While the actual trademark also consists of the portion “/LADBROKE CASINOS”, it is rather clear that this is simply a plural redundancy of the first portion, perhaps registered in this manner to, in principal, protect both singular and plural variations of the mark.

In any event, the Panel finds that the first requirement has been met, as the domain name is essentially identical to Complainant’s registered trademark.

B. Rights or Legitimate Interests

Complainant has made sufficient allegations to support its position that Respondent has no rights or legitimate interests in the subject domain name. Respondent has not responded to the Complaint or these allegations. Since the Complainant’s allegations appear well-founded and reasonable on the basis of the case record before the panel, and are undisputed, this Panel accepts the Complainant’s assertions as true, and concludes that the second requirement has been met.

C. Registered and Used in Bad Faith

The Panel finds that there is ample evidence of bad-faith as required under Paragraph 4(a)(iii) of the Policy.

First, the Panel notes that the Respondent has offered the price of 1,200 Euros to “sell it” to the Complainant. Given the fact that the subject domain name was registered on June 14, 2003, and in the meantime has only been parked at “trafficz.com”, the offered price is clearly in excess of possible out-of-pocket costs directly related to the domain name. The Respondent has not offered any explanation to the contrary. Accordingly, the Respondent’s sale offer falls squarely within the scope of the example of bad-faith provided in Paragraph 4(b)(i) of the Policy.

Further, parking the domain name at “trafficz.com” was apparently done for the purposes of generating income through the revenue policy of “trafficz.com”, as supported by the allegations and evidence submitted by the Complainant. It is also apparent and undisputed, that Respondent registered the disputed domain name, fully aware of Complainant’s trademark rights, to attract Internet users who would then be redirected to “trafficz.com” for Respondent’s financial gain. The Panel is very familiar with the Korean language and can find no plausible reason for the Respondent to have legitimately conceived and registered the disputed domain name, other than to take advantage of Complainant’s trademark. In this regard, the facts also fall within the scope of the example of bad-faith provided in Paragraph 4(b)(iv) of the Policy.

Further, Complainant has pointed out that the Respondent is no stranger to these proceedings. In fact, a prior Panel has already decided against the Respondent. Accor v. Young Gyoon Nah, WIPO Case No. D2004-0681 (October 24, 2004). Complainant has also noted that Respondent holds or held the registration for <ibmclub.com>, incorporating the obviously well-known “IBM” trademark. Given these circumstances, the Panel finds that Respondent can be said to have engaged in a pattern of bad-faith conduct. See Paragraph 4(b)(ii).

Given the ample evidence and un-refuted assertions by the Complainant, the Panel finds that the third and final element has also been established.

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, <ladbrokecasino.com> be transferred to the Complainant.

Ik-Hyun Seo
Sole Panelist

Dated: April 21, 2005