The Complainant is Ladbrokes Digital Australia Pty Ltd of Lutwyche, Queensland, Australia, represented by King & Wood Mallesons, Australia.
The Respondent is Crownbet Pty Limited of Melbourne, Victoria, Australia.
The disputed domain name <starbetaffiliates.com.au> (the “Disputed Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2018. On April 23, 2018, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On May 16, 2018, Tucows Inc. 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 May 17, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2018.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 20, 2018. 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.
The Complainant, Ladbrokes Digital Australia Pty Ltd (“Ladbrokes”), operates an online wagering business in Australia and is a wholly owned subsidiary of London Stock Exchange listed GVC Holdings PLC, a constituent member of the Financial Times Stock Exchange 250 and one of the world’s largest gambling companies. The “Betstar” branded business was founded in 2006 and is operated by the Complainant, who holds registrations for the trademark BETSTAR in Australia, and variations of that mark, which it uses to designate various wagering and gaming products and services in classes 9, 16, 28, 38 and 41. See for example, Australian Registration No. 1132532 for BETSTAR, registered from August 30, 2006. The Complainant owns an Australian registered business name for the word “Starbet” registered from May 21, 2014 (the “Starbet Business Name”). It also owns the domain names <betstar.com> and <betstar.com.au> and operates a website relating to its wagering business at the latter domain name.
The Disputed Domain Name <starbetaffiliates.com.au>, was created on February 20, 2018 and appears to be inactive.
The Complainant cites its registrations of the trademark BETSTAR in Australia, and related marks consisting of, or including those words, as prima facie evidence of ownership. It also cites extensive use of the trademark BETSTAR in Australia, and registration of the word “Starbet” as a registered business name as prima facie evidence of “rights in a name” for the purpose of paragraph 4(a)(i) of the Policy.
The Complainant submits that its trademark BETSTAR is distinctive and that it has common law or unregistered rights in the STARBET mark, and that its rights in each mark predate the Respondent’s registration of the Disputed Domain Name <starbetaffiliates.com.au>. The Complainant submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety its trademark, and that the similarity is not removed by the addition of the descriptive term “affiliates”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the marks BETSTAR or STARBET or the Starbet Business Name. The Complainant contends that the Respondent “is a corporate bookmaker which operates under the name CrownBet Pty Limited”…and “is not commonly known by the Disputed Domain Name”.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of bad faith registration, the Complainant contends that “the Respondent is a fierce competitor of the Complainant…[and]…is clearly aware of the Complainant, and of the Complainant’s BETSTAR brand, as it interacts with the Complainant on a regular basis”. The Complainant also contends that the Disputed Domain Name was registered “with full knowledge of the Complainant’s rights” in “a bad faith attempt to confuse consumers”. On the issue of bad faith use, the Complainant contends that the Respondent’s failure to use the Disputed Domain Name “is further evidence of bad faith” having regard to the circumstances of this case which involve “the strong reputation of the Complainant, the Trademarks and the Starbet Business Name, and he clear bad faith registration”.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered or subsequently used in bad faith.
Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel finds that cases decided under the UDRP can be of assistance in applying the Policy to this case.
The Policy applies to domain names that are identical or confusingly similar, not only to a trademark or service mark, but to any “name” in which the complainant has rights including the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority. The Panel finds that the Starbet Business Name registered on May 21, 2014 gives Complainant “rights in a name” within the meaning of paragraph 4(a)(i) of the Policy. The Complainant has produced sufficient evidence to demonstrate that it has rights in the name STARBET. The Complainant has also produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BETSTAR.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Starbet Business Name, the Panel observes that the Disputed Domain Name <starbetaffiliates.com.au> is comprised of (a) an exact reproduction of the Starbet Business Name; (b) followed by the word “affiliates”; (c) followed by the country code Top-Level Domain (“ccTLD”) suffix “.com.au” all in one continuous domain name.
It is well established that the “.com.au” country code designation used as part of the domain name should be disregarded in the determination of confusing similarity (see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “starbetaffiliates”.
The addition of a descriptive word such as the word “affiliates” to a Disputed Domain Name does not necessarily avoid the confusing similarity between the Disputed Domain Name and the Starbet Business Name; see, for example: La Française des Jeux v. EINFO Pty Limited, WIPO Case No. D2007-1101 (the descriptive term “affiliate”…“subordinate to the distinctive mark …suggested “access to the activity with which that mark is closely associated, namely gambling. The additional terms are in no way suggestive of dissimilar goods or services.”). The Disputed Domain Name is therefore confusingly similar to the Complainant’s Starbet Business Name.
In considering the elements of paragraph 4(a)(i) of the Policy, the contents of a website or inactivity of the Disputed Domain Name in any marketing sense is irrelevant. In The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case No. DAU2003-0001, the panel held that: “the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases”.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy lists (illustratively rather than exhaustively) the ways that a respondent may demonstrate rights or a legitimate interest in a domain name:
(i) before any notice to [the Respondent] of the subject matter of the dispute, [the Respondent’s] bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) [the Respondent has] (as an individual, business, or other organization) been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
For the purposes of the Policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration (see Note 2 to the Policy).
As to (i), the Disputed Domain Name <starbetaffiliates.com.au> is inactive. Therefore, there is no evidence that the Respondent has made any use or that it has made demonstrable preparations to use the Disputed Domain Name in connection with an offering of goods and services (not being the offering of domain names that the Respondent has acquired for the purpose of selling, renting or otherwise transferring). On this point, the Respondent satisfies none of the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, though to be fair that case is of limited utility in circumstances such as these where there is no relationship between the Parties.
Nor is there any evidence that the Respondent satisfies (ii) or (iii) above. The Complainant alleges that the Respondent tabled a “Trade Mark Use Agreement” that it did not execute that would have amounted to a “release from the Complainant in relation to its use of ‘StarBet’”. The Panel accepts that the Complainant has not licensed or otherwise permitted the Respondent to use any of the Complainant’s trademarks nor to apply for or use any domain name incorporating these marks. In these circumstances, the Complainant has made out a prima facie case.
The fact that the Respondent chose to register a domain name that includes a name owned by the Complainant calls for an explanation, which the Respondent could have given in a Response. By its failure to submit a Response, the Respondent has not rebutted the prima facie case.
In the circumstances, the Panel can find no evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds for the Complainant on the second element of the Policy.
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both:
(i) circumstances indicating that [the Respondent] registered or [the Respondent] has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent] has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) [the Respondent] has registered the domain name primarily for the purpose of disrupting the business of another person; or
(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online locations, 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 location.
(v) if any of [the Respondent’s] representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The unlikelihood that the Disputed Domain Name would contain the Complainant’s StarBet Business Name, or a version of it that inverts the dominant terms “star” and “bet” in the Complainant’s trademarks, was pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademark searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The trademark BETSTAR is so widely known in Australia for online wagering that it is inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it. Registration in these circumstances has been held to amount to bad faith registration under the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
According to the Complaint, the Respondent is a corporate bookmaker which operates under the name “Crownbet Pty Limited”. This Panel finds that on balance the Respondent, which also appears to operate a gaming business in Australia, appears to have given a false warranty to its Registrar regarding its compliance with auDA’s policies. In the absence of a reply containing evidence to the contrary, the Panel accepts the Complainant’s contention that Respondent did not, and does not, meet the eligibility and allocation criteria set out in auDA’s “Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs” for the “.com.au” domain space, a further indicator of bad faith registration and use under paragraph 4(b)(v) of the Policy for the reason that the Disputed Domain Name is not an exact match or acronym of the Respondent’s name, the Respondent does not own any trademark rights in Australia, and the Respondent is not providing any goods.
Further, the Panel notes that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use” (See WIPO Overview 3.0, section 3.3). Such a finding is supported by the Complainant’s contention, accepted by this Panel, that the Respondent “operates in direct competition with the Complainant”.
This Panel finds that the Respondent has taken the Complainant’s Business Name STARBET and incorporated it into the Disputed Domain Name with the word “affiliates” without the Complainant’s consent or authorization, leading this Panel to conclude on the balance of probabilities, that:
- the Respondent knew of the Complainant’s business and registered the Disputed Domain Name to prevent the Complainant from reflecting the name in a corresponding domain name (paragraph 4(b)(ii) of the Policy); and
- the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business or activities of the Complainant (paragraph 4(b)(iii) of the Policy).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <starbetaffiliates.com.au> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: June 25, 2018