|Complainant||Ladbrokes Betting & Gaming Ltd.|
|Panelist||Trotman, Clive N.A.|
|Date of Decision||07.01.2008|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ladbrokes Betting & Gaming Ltd. v. Charles Osstyn
Case No. D2007-1700
1. The Parties
The Complainant is Ladbrokes Betting & Gaming Ltd., of Harrow, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Rouse Legal, London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Charles Osstyn, of Foxhill, Sheffield, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <1adbrokes.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2007. On November 20, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 20, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 November 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2007.
The Center appointed Dr Clive N.A. Trotman as the sole panelist in this matter on December 24, 2007. 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 following facts are essentially sourced from those submitted in the Complaint.
The Complainant, Ladbrokes Betting & Gaming Ltd., is a member of the Ladbrokes Group, which does business in the betting and gaming industry throughout the world. Ladbrokes owns a network of over 2,600 retail betting shops in the United Kingdom, Ireland, Belgium and Italy. Business is done both over the counter and via terminals.
The Complainant also maintains an extensive internet presence world-wide through websites including “www.ladbrokes.com”, “www.ladbrokescasino.com”, “www.ladbrokespoker.com”, “www.ladbrokesgames.com” and about 350 others.
The Complainant has nearly 2 million registered users in at least 200 countries worldwide and operates in 12 languages and 16 currencies. Profits of the Complainant and its parent company were 249 million in 2005 and 268.1 million in 2006.
The Complainant is the proprietor of various trademark registrations include the word mark LADBROKES in the United Kingdom.
The Respondent registered the disputed domain name on February 21, 2007.
5. Parties’ Contentions
The Complainant contends the following, with documentary evidence where necessary.
The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The name Ladbrokes is well known in the betting and gaming industry through the Complainant’s ownership of over 2,600 retail betting shops in the United Kingdom, Ireland, Belgium and Italy and its internet presence at websites including “www.ladbrokes.com”, “www.ladbrokescasino.com”, “www.ladbrokespoker.com” and “www.ladbrokesgames.com”. The LADBROKES word mark was registered in the United Kingdom on January 22, 1993, in respect of betting services, gaming services, and on December 29, 1995 in respect of casino services, gaming services, bingo hall services, football pools services, club and nightclub services.
As a result of its extensive use of and investment in the name, the Complainant also has unregistered rights in the name LADBROKES.
The disputed domain name is identical to the Complainant’s trademark LADBROKES except that the letter “l” (i.e., lower case L) has been replaced with the numeral “1” (one), making the word “1adbrokes”. This, the Complainant contends, is not a distinguishing difference as the overall appearance of the domain name remains virtually identical to and incorporates a substantial part of the LADBROKES trademark, which may lead the public to confuse the two. The risk of confusion arises especially when a search engine is used.
“Essential” or “virtual” identity is sufficient under the Policy to prove identity or confusing similarity between a domain name and a trademark; the Complainant cites Disney Enterprises, Inc., v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449.
The Complainant also cites Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, in which the domain name contained a zero instead of the letter “O”; and Nintendo of America Inc. v. Max Maximus, WIPO Case No. D2000-0588, in which the Panel found that the domain name <gameboy.com>, spelled with the number zero in place of the letter “O”, was confusingly similar to the GAMEBOY trademark.
The Complainant contends that the Respondent’s actions constitute typosquatting, citing CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s use of the LADBROKES trademarks predates the Respondent’s registration of the domain name by many years. The Respondent does not own any trademark in the word “ladbrokes” and has never been authorized by the Complainant or any of its associated companies to use its trademarks. A Google search on November 19, 2007, yielded nothing to suggest that the Respondent is commonly known by the name “ladbrokes”.
Ladbrokes is not a common name and the Complainant can think of no legitimate reason for the Respondent to have registered a domain name based on a typographically erroneous variation of the Complainant’s well-known mark. The name is not generic and bears no relation to the Respondent’s legal or business name.
As far as the Complainant is aware, the disputed domain name does not connect to an active website of the Respondent. Visitors to “www.ladbrokes.com” [the Panel presumes that this should read “www.1adbrokes.com”] are directed to a webpage at “www.123-reg.co.uk”.
The Complainant further contends that the domain name was registered and is being used in bad faith.
According to the information posted on a website operated by the Respondent at “www.osstyn.com”, the Respondent manages Osstyn Consulting. The Respondent was employed by Sureseal Trade Windows Ltd as Independent Business Analyst / IT & Telecommunications Support / Web Developer. One Mr. Jacobs was a director of that company between August 2004 and September 2005 and it can reasonably be inferred that the Respondent was acquainted with Mr. Jacobs at that time. Mr. Jacobs is currently the Managing Director of 8OSS Ltd. On or about June 2007, the Marketing and Sales Department of 8OSS made an unsolicited offer to sell the disputed domain name to the Complainant or “other prospective purchasers”, notably its competitors, for 499.
On June 13, 2007, the Complainant’s representative contacted the Respondent drawing attention to the Complainant’s rights in the LADBROKES name and seeking transfer of the domain name. On June 22, 2007, the Respondent agreed to sell it to the Complainant and asked for 100. The Complainant’s representative asked for evidence of the Respondent’s out of pocket expenses and written confirmation of agreement to transfer. The Respondent did not reply.
The Complainant contends that the foregoing facts demonstrate that the Respondent and 8OSS personnel were acquainted and were aware of the Complainant’s marks and rights at the time of registration of the disputed domain name.
The Complainant says the domain name was later on offer for 299 on <sexsynames.com>, a broker registered in the name of Mr. Jacobs. The Complainant contends that this is the same Mr. Jacobs as the Managing Director of 8OSS.
The Complainant cites Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554 (typosquatting is the obverse of a legitimate non-commercial or fair use of a domain name) and Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694 (offer to sell a domain name by a respondent who does not operate an active website does not qualify as a bona fide offering of goods or services).
The Respondent’s registration of the domain name was with actual or constructive knowledge of the Complainant’s rights in the LADBROKES trademark. This is based on the Complainant’s valid and subsisting trademark registrations, its active Internet presence, the Ladbrokes Group’s international reputation and prominence on High Streets throughout the United Kingdom. It is highly unlikely that the Respondent was unaware of the Complainant and the LADBROKES trademarks. The Complainant cites Charleston Alexander Jewelers, Inc. v. Virtual Sky, NAF Case No. 452231 (registration of a domain name confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s superior rights is tantamount to bad faith registration and use).
The unsolicited letter from 8OSS Ltd offering to sell the domain name targeted the Complainant. It stated and showed knowledge that internet search engines pick up web addresses that contain numbers substituted for letters. In its offer to sell the domain name for 499, 8OSS suggests that if the Complainant does not respond immediately, the domain name will be offered for sale to others, implicitly including the Complainant’s competitors.
The Complainant thus contends that the circumstances indicate that the domain name was registered for the sole purpose of resale to the Complainant or its competitors for profit. Such conduct is bad faith registration under paragraph 4(b)(i) of the Policy. The Complainant cites ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (typosquatting is evidence of bad faith registration).
The Complainant requests that the disputed domain name <1adbrookes.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has documented that it holds established and registered rights in the distinctive trademark LADBROKES. The disputed domain name is <1adbrokes.com>, which differs from the trademark in that the initial letter “L” has been replaced with the figure “1” (one). It is well established in precedent that the gTLD identifier “.com” or its equivalent, being an essential part of a domain name, has no bearing on the question of confusing similarity. Since domain names are (in the present context) restricted to alphanumeric characters and certain punctuation symbols, the test of confusing similarity is confined to those characters. Conventionally domain names are used in lower case. In popular typefaces such as Times New Roman or Courier the figure “1” and the letter “l” are difficult to distinguish, except from the context. The domain name <1adbrokes.com> is found on the facts to be confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case to the effect that the Respondent has no rights or legitimate interests in the mark LADBROKES. The Complainant has not authorized the Respondent to use the trademark. A reasonable search has failed to locate any bona fide interest of the Respondent in the LADBROKES mark. There is no evidence to suggest that the Respondent has been commonly known by the mark.
The Respondent has not availed itself of any of the defences provided for in paragraph 4(c) of the Policy, nor, since these are without limitation, any other defence, nor replied at all. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
On the totality of the evidence, the Respondent has registered a domain name with an appearance at least confusingly similar and in general effect almost indistinguishable from the Complainant’s distinctive trademark and the reflection of this trademark in the Complainant’s websites. It could be argued that the figure “1” is at the left of the QWERTY keyboard, whereas the letter “l” is to the right, making it unlikely that a typist would confuse the two. The same distinction might not apply to a novice typist. More pertinent, however, is that Internet users often find their way to a website more indirectly than by typing in the full URL. They may click on a link from another site or from a search engine. In those circumstances it is the reading rather than the sending of the domain name that matters. Many users would be unlikely to notice the difference between “1” and “l” in the URL of a site to which they were about to be redirected. It is reasonable to infer that many users would be confused into reading <1adbrokes.com> as <ladbrokes.com>, and would presume <1adbrokes.com> to link to an authentic website of the Complainant. This is a form of deception known as typosquatting.
The main grounds of bad faith recognized without limitation in paragraph 4(b) of the Policy are, briefly, the intention to sell the domain name, to block someone else from registering it, to disrupt someone’s business, or to attract visitors by deception. The evidence is that the disputed domain name has been offered unsolicited for sale to the Complainant for sums ranging up to 499 (GBP). The Complainant has provided a copy of a letter from 8OSS Ltd in which the terms of the offer included a reference to “other prospective purchasers”, insinuating entities wanting to compete with or cause nuisance to the Complainant. The Complainant has established on the balance of probabilities a linkage from the Respondent Charles Osstyn through Osstyn Consulting to Mr. Jacobs and 8OSS Ltd. The reasonable interpretation of the Respondent’s stance is an intention to sell the disputed domain name directly or indirectly for profit, which is evidence of bad faith in the terms of paragraph 4(b)(i) of the Policy:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
The Panel finds bad faith registration and use proven in the terms of paragraph 4(b)(i) of the Policy.
The circumstances by which bad faith may be found under paragraph 4(b) of the Policy are without limitation. The deviousness of replacing the letter “l” of LADBROKES with the figure “1” leaves little room for doubt that the Respondent was aware of the widely known trademark. The domain name was offered for sale by the Respondent’s associate specifically to the Complainant, in terms that included “exclusive offer to you”, and “... if you do not respond immediately I will open this offer to other prospective purchasers”. The registration of a well-known trademark of which the respondent must have been aware has been held to be, in and of itself, evidence of bad faith (Veuve Cliquot Ponsardin, Maison Fonde en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). The Panel finds bad faith registration and use proven additionally on this ground.
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 <1adbrokes.com> be transferred to the Complainant.
Dr Clive N.A. Trotman
Dated: January 7, 2008