1179
Nominet UK Dispute Resolution Service
DRS 01179
Globet International Sports Betting Ltd –v- Adriano
Decision of Independent Expert
1. Parties:
Complainant: Globet International Sports Betting Ltd
Country: UK
Respondent: Adriano
Country: GI
2. Domain Name:
globetpoker.co.uk (“the Domain Name”)
3. Procedural Background:
The Complaint was lodged by email with Nominet on August 15, 2003, followed by hardcopy on August 18, 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on August 20, 2003 and informed the Respondent that he had 15 working days within which to lodge a Response. On September 10, 2003 the Respondent sent an email response to Nominet. Nominet entered this in the DRS database and forwarded it to the Complainant on September 11, 2003. A reply was received from the Complainant on September 18, 2003. On the same date, ‘initiate mediation’ documents were generated.
Mediation failed and Nominet so informed the Complainant. On October 21, 2003 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
On October 28, 2003, Andrew D S Lothian, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
The complaint has been correctly lodged and complies with the requirements of The Procedure for Conduct of Proceedings under the Dispute Resolution Service ("the Procedure").
The response sent by email on September 10, 2003 is deficient. In terms of paragraph 5(c) of the Procedure, the response is to be sent both in hard copy and electronic form. The response in this case was only sent by email. The response concluded with a declaration of truth but, because it was an email and was not followed by a hard copy, it did not contain a signature of the Respondent (as required by paragraph 5(c)(v)).
Paragraph 15(c) of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."
In the Expert's opinion the absence of a duly signed declaration on a hard copy version of the response is a significant matter and there are no exceptional circumstances to justify it. It would be open to the Expert to draw an inference that the Respondent is unwilling or unable to subscribe to the truth of the matters in the response and consequently to disregard it the response completely. However, on the basis that the Respondent is not legally represented, and that this is the most probable reason for the absence of a signed hard copy, the Expert will consider the response. Notwithstanding this, without a signed declaration of truth the weight which can be applied to any statements of fact in the response must necessarily be less and the Expert will proceed on that basis.
In a further procedural issue, it should be noted that the Complainant provides details of a UK registered trade mark in its reply to the Respondent's submissions, not in the complaint, under the apparent guise of replying to an issue raised by the Respondent. This requires some consideration. The intention of the Procedure is that the Complainant is entitled to submit a reply to the Respondent's contentions (paragraph 6(a)). No mention is made of the Complainant being allowed to introduce material at that stage which should really have been in the complaint itself. Paragraph 3(b)(v) of the Procedure makes it clear that it is the complaint itself where the Complainant's Rights should be set out. Furthermore, Nominet's letter to the Complainant accompanying the response states "You are reminded that your reply should be confined to new issues arising out of the response."
This is also a significant matter, as to insert the Complainant's submissions on Rights into the reply is to deny the Respondent the opportunity to comment. Having said this, paragraph 16(a) of the Procedure states that the Expert will decide a complaint on the basis of the Parties' submissions, and the detailed assertion of the Complainant's Rights is at least within one of the Complainant's submissions. While the Respondent has not been able to comment on the Complainant's assertions in the reply, the Expert considers that the same degree of latitude should be accorded to the Complainant as has already been shown to the Respondent on the basis that he too is not legally represented. Accordingly, the Expert will consider the reference to the Complainant's trade mark as an assertion of Rights under the Policy.
A final procedural issue is presented for the Expert in assessing the Complainant's Rights. While the Complainant provides the date of registration of its trade mark, no copy certificate is produced and it is not clear in which register the mark was filed. Is the Expert entitled to check publicly available trade mark registers to verify the Complainant's submission? This question has been considered in a good number of previous cases under the DRS.
In Televes UK Ltd v Adam Barrington (DRS 00074) and Commerzbank AG v Castellomedia Limited (DRS 00106), the Experts took the view that they could have regard to readily available public records in reaching their decisions when such material appeared likely to be relevant.
In TNT v Sibley (DRS 421), the Expert considered that the Complaint should be determined on the evidence submitted by the parties in accordance with paragraph 16(a) of the Procedure and not on the basis of any evidence that the Expert has to unearth himself, even where the Complainant had not obtained professional assistance.
In Chivas Brothers Limited -v- David William Plenderleith (DRS 00658) the Expert had to consider whether or not there had been an Assignment of particular trade mark rights. This could be easily determined from an online check at the UK Registry. The question was fundamental to the decision on the complainant's rights in that case. The Expert was conscious that in all probability the complainant possessed the rights claimed for it in the complaint. The Expert therefore decided to check the register, having noted that the principal determining factor was that in all other respects the complaint was a full and properly prepared document.
Most recently, in Watermark Group PLC v Watermark Recruitment Bureau, (DRS 00657) the Expert verified that a particular limited company did not exist - taking the view that consulting a publicly available statutory register was permissible. The Expert went on to state that he had not relied upon any further independent enquiries in reaching his decision.
In the present case, it would be stretching matters too far to claim that the complaint is a full and properly prepared document. However, taken with the reply it provides all of the elements required, absent the actual evidence of registration of the trade mark. The Expert once again took the view that a small amount of latitude could be given on the basis that (1) the parties are not represented legally and (2) there was in fact quite a lot of detail provided about the trade mark by the Complainant - the Expert was supplied with an approximate date of filing, the mark description itself and a strong likelihood that this would be found in the UK register. As in the Chivas case above, the Expert was very conscious that the Complainant probably possessed the rights contended for but had omitted to provide evidence of these. On this basis, the Expert decided to check the UK register. As described in Chivas, this is "a check which need take no more than a couple of minutes of the Expert's time".
The Expert found UK trade mark number 2068509 for the word mark GLOBET registered to the Complainant with a date of filing of April 11, 1996. No other independent enquiries were made by the Expert in reaching the decision which follows.
5. The Facts:
The Complainant is a UK registered limited company incorporated in 1995 under its present name.
The Respondent is a private individual with an address in Gibraltar. He is unconnected with the Complainant.
The Respondent registered the Domain Name on April 17, 2003.
6. The Parties’ Contentions:
Complaint
The Complainant's contentions are extremely brief and can be repeated verbatim as follows:-
I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.
I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.
The holding page for www.globetpoker.co.uk that is held by easily.co.uk was referring to the spin room (Victor Chandler), one of our competitors. This page has now been removed by easily once I had explained the situation. The spin room is a product in direct competition with Globet. Globet will launch a new product called Globet poker and this determines the required domain name Globetpoker.co.uk.
Response
In summary, the Respondent's contentions are as follows:-
The Respondent confirms that he registered the Domain Name on April 17, 2003. He submits that the name is currently held by easily.co.uk, points to the Easily holding page, and he further specifies the relevant name servers with which the name is associated.
The Respondent confirms that the Domain Name has been registered with the intent of setting up a Global Betting Poker web site which will trade under the names www.globetpoker.co.uk and www.globetpoker.com. The Respondent states that this site is currently in its development process.
The Respondent states that the trading name GloBetPoker [sic] is currently being processed for registration under the Gibraltar Companies Register in Gibraltar.
Reply
In summary, the Complainant's contentions in reply are as follows:-
The Complainant registered the trade mark 'Globet' in November 1996 and has been trading under the name Globet.com since that time. Globet SA, an affiliated company registered in Uruguay as a casino has been offering the very service that the Respondent proposes under the name Globetcasino.com and the Complainant contends that continued registration would confuse customers.
The Complainant is a UK registered company and as such should have the sole right to use the suffix .co.uk.
With regard to the Respondent's submission relating to registration of Globetpoker in Gibraltar, this is not allowed unless the applicant is already in possession of a betting licence.
The Complainant questions the Respondent's wish to use the name Globet when the response states that he is setting up a Global Betting Poker web site and the domain name GlobalPoker.co.uk is available. The Respondent's intended use of the Globet name is therefore unreasonable.
7. Discussion and Findings:
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and secondly that the Domain Name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).
Complainant’s Rights
The Complainant's name is Globet International Sports Betting Limited and the entry from Companies House provided by Nominet with the papers indicates that it was incorporated in 1995 and has not changed its name since incorporation. This is the sum total of evidence regarding the Complainant's Rights which can be deduced from the complaint and supporting evidence. It will be seen from the verbatim copy of the complaint's submissions noted above that the Expert is given nothing whatsoever by the Complainant to go on with regard to the Complainant's Rights. However, on the basis of the discussion in section 4 above, the Expert took the view that he could accept the submissions of the Complainant regarding its registered trade mark as contained in the Complainant's reply and that the Expert could also verify, using the public register, that the trade mark did exist.
Accordingly, the complaint proceeds on the basis that the Complainant also has a UK registered trade mark, number 2068509, for the word mark GLOBET registered on April 11, 1996.
'Rights' as defined in the Policy includes, but is not limited to, rights enforceable under English law. The UK trade mark referred to above is so enforceable. Lest it be thought that the Expert was stretching matters too far in verifying the existence of the trade mark, the Expert notes that in the circumstances of this particular case he would have found that the Complainant had Rights in the Globet name absent the trade mark on the basis of the Complainant's submission that it has been trading as Globet.com since 1996 taken together with the Complainant's date of incorporation of 1995.
In terms of paragraph 2 (a)(i) for the Complainant to succeed, such Rights must be in respect of a name or mark which is identical or similar to the Domain Name. The mark is 'GLOBET' and the Domain Name is 'globetpoker.co.uk'. The mark is not identical, but is it similar?
The first (.uk) and second (.co) levels of the Domain Name are disregarded as being wholly generic. This leaves a comparison between 'globetpoker' and 'GLOBET'. The Expert is satisfied that on an ordinary comparison between these two, the latter is similar to the former. In the Expert's opinion, it is the use of the word 'globet' which is the focus of the domain name and which renders it distinctive, the word 'poker' being of a more generic, descriptive or qualifying nature.
Accordingly, the Expert finds on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.
Abusive Registration
It is then necessary to turn to the second limb: is the Domain Name, in the hands of the Respondent, an abusive registration? Paragraph 1 of the Policy defines “abusive registration” as “a domain name which either:
(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”
Paragraph 1(i) focuses on the time when the registration was made while paragraph 1(ii) focuses on use of the domain name after registration.
The Complainant's submissions on Abusive Registration are even more scant than its submissions relating to its Rights. In effect, the substantive submissions can be distilled down to the following:-
(1) The Respondent's proposed use of the Domain Name would give rise to consumer confusion and (2) the holding page for the web site associated with the Domain Name originally referred to the spin room (Victor Chandler), a competitor of the Complainant.
For his part, the Respondent (1) does not address the confusion point (in fairness, the Complainant's submissions on this topic were not made in the complaint but in the reply) and (2) denies that the name server details have ever been modified to point anywhere else.
Both of these submissions relate to the use of the domain name post registration and consequently to paragraph 1(ii).
The Complainant's submissions relating to confusion correspond approximately to paragraph 3(a)(ii) of the Policy, a factor in the list of non-exhaustive factors which may be evidence that the Domain Name is an abusive registration.
Paragraph 3(a)(ii) of the Policy calls for circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
The Complainant's submission is that the Respondent's proposed use of the Domain Name would confuse consumers as 'an affiliated company' registered in Uruguay named Globet SA has been offering the same service as that proposed by the Respondent. This submission does not make out a case under paragraph 3(a)(ii) which calls, in the Expert's view, for evidence of actual confusion having taken place through actual use of the Domain Name.
The Complainant's submission stating that the web site associated with the Domain Name originally referred to one of the Complainant's competitors might have taken it further. However, it is impossible to say with any precision what has actually happened on the basis of the Complainant's submission alone, and no evidence whatsoever is provided in support. Was there a link on the holding page? Was there a textual reference to the spin room? Did the Domain Name forward or point to the spin room? Were screenshots taken? Was any correspondence entered into with Easily? None of this is covered by the Complainant in evidence or submissions.
The Expert has allowed a degree of latitude to the Complainant earlier on the basis that it is clearly not legally represented, but this latitude can never extend to making the Complainant's case for it - the Complainant must state 'why the Domain Name should be considered to be an Abusive Registration in the hands of the Respondent; and discuss any applicable aspects of paragraph 3 of the Policy, as well as any other grounds which support the Complainant's assertion' as paragraph 3(v) of the Procedure has it. In the present case the Complainant has plainly failed to do this.
The response does not shed any further light on the matter. The Respondent's submission that the name servers associated with the Domain Name have never been changed does not directly answer the Complainant's submission. However, the Respondent need not answer the Complainant's case at this point - in the first instance it is for the Complainant to prove, on balance of probabilities, that there has been an abusive registration and in the Expert's view the submissions of the Complainant alone do not do so.
For the sake of completeness, the Expert will consider the remaining submissions of the Complainant. The fact that the Complainant is a UK registered company clearly does not, on its own, give it the sole right to use the suffix .co.uk. The submission relating to the registration of Globetpoker in Gibraltar requiring a betting licence does not take the Complainant anywhere in particular and no supporting evidence is provided. Equally, the fact that the Respondent chose the name Globet when GlobalPoker is available is not of assistance.
As the Complainant has not raised a case for the Respondent to answer, it is unnecessary to consider the Respondent's submissions in the context of paragraph 4 of the Policy.
8. Decision:
The Expert finds that on the balance of probabilities, the Complainant has Rights in a name which is identical or similar to the Domain Name but that the Complainant has failed to prove that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert therefore directs that the Complaint in respect of the Domain Name be refused.
Andrew D S Lothian
Date: November 3, 2003