WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Professor Nelson Rose v. Domain Manager, Star Enterprises LTD S.A

Case No. D2021-2918

1. The Parties

The Complainant is Professor Nelson Rose, United States of America (“United States”), represented by The Myers Law Group, United States.

The Respondent is Domain Manager, Star Enterprises LTD S.A, Panama, represented by Kilburn & Strode, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <legalgamblingandthelaw.com> is registered with Safenames Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2021. On September 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 17, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2021. The Response was filed with the Center on October 8, 2021.

The Center appointed John Swinson as the sole panelist in this matter on October 18, 2021. 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 is an internationally known legal scholar, a Professor Emeritus at Whittier College and a Visiting Professor at the University of Macau. He specializes in gambling law. He is the author of the 1986 book, “Gambling and the Law”, and other books relating to gambling and legal topics.

The Complainant operates a website at <gamblingandthelaw.com>, which includes information about the Complainant, information about his publications, and a blog on gambling and legal topics.

The Complainant owns United States Trademark Registration No. 2,866,279 for GAMBLING AND THE LAW. This registration resulted from a trademark application that was filed on May 21, 2003. The registration date is July 27, 2004. According to the United States PTO database, this trademark is a “typed drawing”. It is registered in class 16 for “Syndicated and featured articles appearing in a variety of magazines and newspapers on the topic of gambling; and books on the topic of gambling” and in class 41 for “Providing on-line articles on the topic of gambling.”

Even though the Respondent filed a detailed Response, little information is provided in the Response about the Respondent. The Respondent is an entity from Panama. According to the Response, the Respondent acquired the disputed domain name “for use by Gavin Li and his associates and later the company Noodle Brush Ltd. of [London] (of which Gavin Li is a director). Gavin Li and Noodle Brush Ltd. designed, developed and run the website [at the disputed domain name] on the authority of the Respondent and have done so since 2014.” Little information is provided in the Response about Gavin Li or Noodle Brush Ltd.

The disputed domain name was registered on October 7, 2014.

The website at the disputed domain name contains information about various gambling providers, such as online casinos, online poker websites, betting exchanges, and corporate bookmakers. The website also includes gambling news, for example news about new casinos or mergers between companies involved in the gambling industry. The website editor is listed as David Nugent. Mr. Nugent has a biographical page on the website, which suggests that he is the founder of the website. As far as the Panel can ascertain, there is no mention of Gavin Li or Noodle Brush Ltd on the website at the disputed domain name.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following submissions:

The Complainant is an international legal scholar on the topic of gambling law, and has operated a website/blog at <gamblingandthelaw.com> since 1999. This website/blog is called “Gambling and the Law”.

The Complainant owns the registered trademark GAMBLING AND THE LAW as set out in section 4 above.

The disputed domain name is “nearly identical to and certainly confusingly similar to” the Complainant’s GAMBLING AND THE LAW trademark. The disputed domain name simply adds the word “legal” at the beginning of the Complainant’s trademark.

The Respondent’s use of the disputed domain name has and will continue to tarnish the Complainant’s trademark. The advice given on the Respondent’s website regarding gambling law is incorrect and endangers those who follow that advice. Consumers who follow the Respondent’s ill-advised information may later associate that bad experience with the Complainant and his trademark.

The disputed domain name was registered in bad faith.

The Complainant is well-known internationally and has been known for decades prior to the date on which the Respondent registered the disputed domain name.

The Respondent relies on paragraph 4(b)(iv) of the Policy.

B. Respondent

In summary, the Respondent makes the following submissions:

The Respondent purchased the disputed domain name in 2014 based on lexical and phonetical considerations, that is to say the descriptive meaning of the term “legal gambling” for the intended services of providing links to, and information about, legal gambling and betting sites to website visitors in the visitor’s country (which is detected automatically), and with an aim of pointing visitors away from illegal gambling and betting websites. The website at the disputed domain name also includes contextual links to websites providing further relevant information on the law of gambling and other relevant topics.

The disputed domain name is neither identical or almost identical, nor confusingly similar to the GAMBLING AND THE LAW trademark because that trademark is a descriptive term and cannot function to distinguish the goods or services of one entity from those of another.

As a result, the term GAMBLING AND THE LAW cannot be monopolised by the Complainant and must remain available for use in relation to the provision of information about laws on gambling.

Furthermore, there is no likelihood of confusion between “gambling and the law” and “legal gambling and the law”, especially in the context of the descriptive use relating to the provision of information on gambling. The additional word element at the beginning of the disputed domain name “legal” clearly distinguishes it from the Complainant’s mark, visually, aurally, and conceptually.

The services offered by the Respondent are used in connection with a purpose relating to the generic and descriptive meaning of the term “legal gambling and the law”.

The Respondent has a legitimate interest in the disputed domain name.

The disputed domain name was bought legitimately through the usual domain name trading channels. The disputed domain name was purchased due to its topical relevance to the planned use of the domain, which is, and always has been, for the provision of information about legal gambling websites and news articles about the laws and developments in the laws on gambling.

The Respondent has been using the disputed domain name in connection with a bona fide offering of services connected with the provision of information about legal gambling websites and news on gambling laws and developments since 2014.

This situation falls squarely within paragraph 4(c)(i) of the Policy.

The Respondent is also making legitimate noncommercial and fair use of the disputed domain name, within the meaning of paragraph 4(c)(iii) of the Policy, without intent for commercial gain to misleadingly divert consumers or to tarnish any trademark at issue. In particular, the Respondent offers information and news about legal gambling on its website. This constitutes fair use.

The Complainant’s contention, that the Respondent’s website has or will tarnish the Complainant’s mark is denied. The Complainant has provided no information or evidence that there has been any diversion or tarnishment in the many years since registration.

The Complainant has not provided any specific details of alleged incorrect information on the Respondent’s website. The purpose of the Respondent’s website is clearly not the provision of legal services, but rather the provision of news about gambling and development in gambling laws and links to legal gambling websites.

The Respondent has never suggested it would be interested in selling the disputed domain name, nor is there any evidence it registered the disputed domain name to prevent the Complainant from using his trademark.

The Respondent is not a competitor who is using the name to disrupt the Complainant’s business. The Respondent is not using the disputed domain name to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion. Due to the descriptive nature of the disputed domain name, Internet users will expect to find information about legal gambling opportunities and news about gambling laws and developments when searching the term, not information about, or specifically from, the Complainant. The design of the Respondent’s website in no way suggests any link to the Complainant.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

An asserting party needs to establish that it is more likely than not that the claimed fact is true. An asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, UDRP panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence. Snowflake, Inc. v. Ezra Silverman, WIPO Case No. DIO2020-0007.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The first element of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

As stated above in Section 4, the Complainant owns a United States registered trademark for GAMBLING AND THE LAW.

The disputed domain name includes the Complainant’s trademark GAMBLING AND THE LAW in its entirety. The only difference is that there is the addition of the word “legal” at the beginning of the disputed domain name. This addition of “legal” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s GAMBLING AND THE LAW trademark under the Policy. The addition of “legal” in fact affirms such confusing similarity (because the last word of both the Complainant’s trademark and the disputed domain name is “law”). The Respondent’s assertion that the additional word element distinguishes it from the Complainant’s mark, visually, aurally, and conceptually is plainly incorrect as a matter not only of common sense but also Policy precedent.

Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. See, for example, Consumer Reports, Inc. v. Wu Yan, Common Results, Inc., WIPO Case No. D2017-0371.

The Respondent asserts that the Complainant’s trademark is a descriptive term and cannot function to distinguish the Complainant’s goods and services from those of the Respondent, particularly where the Respondent is using the term “legal gambling and the law” in a manner relating to its descriptive meaning.

Clearly the trademark is registered and it is well established that a UDRP panel cannot normally go behind the registration of a trademark by a competent national authority or seek to weaken its operation or effect, even where the Respondent argues that the Complainant’s trademark is a descriptive term. See Tomatis Developpement SA v. Mozart-Brain-Lab, WIPO Case No. D2009-1790; Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, LLC / Ravindra Patel, gbe, WIPO Case No. D2017-0807.

The apparent strength or reach of a trademark is not normally a relevant issue for determination in connection with the first element of the Policy but it may be particularly relevant in respect of the second or third elements. See Enrique Salinas Pérez v. Buydomains.com, Inventory Management, WIPO Case No. D2011-1950.

The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s GAMBLING AND THE LAW trademark, disregarding the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant.

Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.

The Complainant makes only one submission in relation to the second element. The Complainant states that the website at the disputed domain name purports to provide “expert advice” on the status of gambling laws and regulations in various countries, but that advice is in fact inaccurate, and accordingly, the website at the disputed domain name may tarnish the Complainant’s reputation and users may later associate their bad experience on that website with the Complainant.

The Complainant’s submission does not adequately address the requirements of the second element. The Complainant says nothing as to why the Respondent, which has been operating the website at the disputed domain name for over six years, has no rights or legitimate interests in the disputed domain name.

The Panel reviewed the website at the disputed domain name. At least in relation to Australia, where the Panel is located, the Panel agrees with the Complainant that the Respondent’s website is inaccurate and misleading in some respects. However, even if that is the case, the fact that the Respondent’s website may be inaccurate does not demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

This does not seem to be a situation where the website has been hastily built to fabricate rights, or where the website is a computer-generated template with nonsensical content (though the Panel does note that some of the content here could be automatically drawn from external sources). See, for example, Gateway Fiber LLC v. Wix.com Ltd., Wix.com Ltd. / Ali Oudah, Ayadi Group, WIPO Case No. D2021-1736, where the website had placeholder content, which helped show that the Respondent was not actually providing services, or if the Respondent was providing a service, then the use of the trademark by the Respondent was not bona fide. That is not the situation here.

At the same time, given the somewhat unusual composition of the disputed domain name – using both the terms “legal” and “the law” in a repetitive manner, it would appear that this raises the possibility of an inference of targeting of the Complainant, and as such the Panel finds that the Complainant has established a prima facie case under the second element.

The Respondent first relies on paragraph 4(c)(i) of the Policy. The Respondent has used the disputed domain name in connection with an offering of goods and services (namely, providing news and information services) before notice of the dispute with the Complainant. There is no evidence before the Panel that suggests that such use (over a 6-year period) is not bona fide use, and the Complainant made no explicit submissions to the contrary in this regard.

The Respondent also relies on paragraph 4(c)(iii). The Response states:

“In addition, or in the alternative, the Respondent is making legitimate noncommercial and fair use of the disputed domain name, within the meaning of 4(c)(iii) of the Policy, without intent for commercial gain to misleadingly divert consumers or to tarnish any trademark at issue. In particular, the Respondent offers information and news about legal gambling on its website. This constitutes fair use.”

When the Panel reviewed the website at the disputed domain name, the Panel found that the Respondent likely is making a commercial use of the disputed domain name. The Respondent refers users to other gambling websites, and appears to be receiving affiliate or associate revenues in doing so. VKR Holding A/S v. Private Registration / Joe Hawtin, WIPO Case No. D2020-0687; Donald J. Trump v. SD Dillon, WIPO Case No. D2015-0077; and Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058. The Panel concludes that contrary to assertions in the Response, the Respondent’s use of the disputed domain name is by all appearances a commercial use.

Accordingly, on the balance of the evidence before the Panel, the Panel finds that the Respondent has rebutted the Complainant’s case pursuant to paragraph 4(c)(i) of the Policy, but not under paragraph 4(c)(iii) of the Policy.

The Complainant fails to meet the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

There is no tangible evidence before the Panel that suggests that the Respondent registered the disputed domain name to trade-off the Complainant’s reputation, or with knowledge of the Complainant, or to confuse or divert Internet users.

The only evidence or submission that the Complainant makes on this element is that the Complainant is a well-known international legal scholar in the gambling field. That is true. But, despite the inference of possible targeting raised above, it does not necessarily follow that the Respondent was in fact aware of the Complainant when registering the disputed domain name, or that the Respondent registered the disputed domain name to divert Internet users who are looking for the Complainant to the Respondent’s website. The Complainant seeks to rely on his status as “a well-known international scholar on gambling law for decades preceding Respondent’s registration of the disputed domain name.” As a general point, in the case of descriptive trademarks (even where registered, and here incontestable at the national office), small differences between the trademark and a disputed domain name can make it more difficult for a complainant to demonstrate that a respondent registered the disputed domain name with the Complainant in mind. The Panel notes here that the Respondent claims “The domain name ‘legalgambling.com’ was not available at the time the Disputed Domain Name was purchased and the website was developed. ‘legalgamblingandthelaw’ was a logical descriptive alternative, given the purpose and subject matter of the website.” While this may be true, it also raises a question of what other options the Respondent may have considered (for example, a quick first attempt shows that “legalgamblingforyou.com” is available), and whether it would have come across the Complainant and his website (on this the Respondent is silent). While this certainly raises suspicions, the burden falls on the Complainant.

While the concerns of potential tarnishment (especially if the information the Respondent provides is not accurate) do not strike the Panel as implausible, there is no evidence before the Panel of actual consumer confusion over the past six years during which time both Parties seem to have been running active websites (albeit not from the record to where the Respondent could said to have relied on not previously hearing from the Complainant).

The Respondent’s website looks different to the Complainant’s website, and on its face targets a different type of consumer to that targeted by the Complainant. There is no evidence that the Respondent has copied material from the Complainant’s website or set out to tarnish the Complainant’s trademark. Although not alone determinative, this would seem to suggest that the Respondent is not trying to divert Internet users who are looking for the Complainant to the Respondent’s website.

Nothing moreover in the record or a search by the Panel reveals any other circumstance that the Respondent has engaged in similar conduct. It has not been a respondent in any other Policy proceeding, and, so far as the record reflects, it is not an aggregator of domain names. The ordinary rule of requiring proof of knowledge of the trademark and targeting to establish bad faith registration should therefore apply. The Complainant’s mark is not arbitrary, fanciful, or unique. At the same time, the Panel is not impressed by the Respondent’s narrow assertion that “a brief search did not reveal any trademark registrations for ‘LEGAL GAMBLING AND THE LAW.’” Given also the descriptiveness of the trademark and disputed domain name, there is little in the record aside from the somewhat odd composition of the disputed domain name (using both “legal” and “the law”) to suggest either actual knowledge or a reason why the Respondent, in Panama or England or elsewhere, who does not appear to be a lawyer, should have been aware of the Complainant. As far as the record suggests, there has been no actual confusion, and the Complainant did not write to the Respondent prior to bringing these proceedings.

Do the facts and circumstances before the Panel suffice to prove bad faith here? The Panel believes they do not. At most they support an inference which is not taken further by the Complainant with supporting facts and arguments. The Policy’s placing the burden of proof on a complainant requires more than a possibility or supposition. Instalaciones De Domótica, Electricidad y Telecomunicaciones, S.L. v. Shen Zhe, 沈哲 , WIPO Case No. D2017-2561.

The Panel finds that the Complainant fails on the third element of the Policy in relation to the disputed domain name.

The Panel also notes that this case presents a close question and that while the Complainant has failed to meet its burden here (the pleadings being fairly conclusory), this would not prevent him from taking his case up in court should it wish.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: November 1, 2021

Addendum

On November 3, 2021, the Complainant wrote to the Center, and requested that the Complainant and the Respondent be permitted to submit a supplemental filing detailing the ways in which the Respondent’s website “does not provide correct information about legal gambling, misinformation about which would tarnish the Complainant given the nearly identical nature of the disputed domain name and his registered trademark.” Disregarding the lateness of this request, the Panel considers that such additional submissions are unnecessary. The Panel considers that even if the Respondent’s website has incorrect information, that alone does not assist the Complainant in the present circumstances to meet the requirements of the Policy.