Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 04359

Decision of Independent Expert

1. Parties

Complainant: Checkodds Ltd. (the "Complainant")

Country: UK

Respondent: Oddschecker (Jersey) Ltd. (the "Respondent")

Country: JE

2. Domain Name

< checkodds.co.uk> (the "Domain Name")

3. Procedural Background

The complaint of the Complainant was entered in the Nominet system on 11 January 2007. Nominet validated the complaint on that same date and dispatched a copy of the complaint to the Respondent. A response was received from the Respondent and entered in the Nominet system on 31 January 2007, and was forwarded to the Complainant on that same date. A reply was received from the Complainant and entered in the Nominet system on 8 February 2007, The Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the "Policy"), and on 15 March 2007 Nominet selected Christopher Gibson to act as Expert in the case.

The undersigned (the "Expert") has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality. The undersigned was appointed as Expert in this case on 15 March 2007.

4. Outstanding Formal/Procedural Issues (if any)

There are no outstanding formal/procedural issues.

5. The Facts

The Complainant, Checkodds Ltd., was incorporated as a private company with Companies House on 13 December 2005. It operates a web site at www.checkodds.com and provides on-line betting odds comparison and betting related information services under the name "Checkodds". It filed in the UK for a trade mark on 28 January 2006 and received a registered trade mark, CHECKODDS No. 2412330, on 22 December 2006. The trade mark is registered in class 35 (advertising services).

The Nominet WHOIS records confirm that the Domain Name was registered on 29 April 2004 for the Respondent, Oddschecker (Jersey) Ltd., located in Jersey. The Respondent acknowledges that it operates a business model similar to that of the Complainant's. At the time of the complaint, the URL <www.checkodds.co.uk> resolved to the Respondent's website at www.oddschecker.com.

6. The Parties' Contentions

Complainant's Complaint

The Complainant contends that it has Rights in respect of a name or mark which is identical or similar to the Domain Name, and that the Domain Name in the hands of the Respondent is an abusive registration. The Complainant's contentions in its complaint are summarized below:

(i) CHECKODDS is both the Complainant's company name and a trade mark owned by the Complainant. The Complainant has advertised using the name CHECKODDS since 1 September 2006 and spent about £58.75 on such advertisements.

(ii) The Respondent is a direct competitor of the Complainant, as they are providing the same services and operating in the same market, and this is corroborated by the Respondent's website.

(iii) The Domain Name in the hands of the Respondent is abusive because it is being used by the Respondent in a way which is intended to confuse Internet users by redirecting them to the Respondent's site at . It is reasonably foreseeable that users visiting the website associated with the Domain Name assume that it is owned and operated by the Complainant, and that by redirecting them to , the Respondent is intentionally confusing and misleading them. This redirection is done in such a way that the name of the Domain Name stays on the address bar of the users' Internet browser software, while the content of the web site is available on the browser.

(iv) The Complainant provided TRACERT results for the Domain Name to show that it is being used to point at the Respondent's web site.

Respondent

The Respondent objects to the Complainant's complaint and requests that the Expert deny the remedy requested by the Complainant. The Respondent's contentions are summarized below:

(i) The Complainant is claiming rights in its name or trade mark as a result of activity that was conducted subsequent to the date of Respondent's registration of the Domain Name.

(ii) The Respondent emphasizes that its registration of the Domain Name dates from 29 April 2004. This registration was made in good faith, with the rationale that the Domain Name provided a generic and descriptive explanation of the Respondent's business: "Check odds" is exactly what Internet users could expect to do on the Respondent's site.

(iii) While the Complainant registered its company in the UK under the name Checkodds Ltd. on 13 December 2005, and shortly thereafter filed for the trade mark CHECKODDS on 28 January 2006, the Respondent was the legal registrant of the Domain Name more than 18 months in advance of these dates.

(iv) The Complainant has spent only a small sum of money advertising his business (allegedly using the name Checkodds) since 1 September 2006, while the Respondent registered the Domain Name more than 24 months in advance of this date.

(v) The Respondent asserts that, based on the Complainant's Companies House registration details confirming that the company was formed on 13 December 2005, the development of this website as a business concern must have occurred since that date, while the Respondent again emphasizes that it became the legal registrant of the Domain Name over 18 months in advance of that date.

(vi) The Respondent acknowledges that it operates in the field of betting information and odds comparison from a website using the primary domain name, . The registration date for the domain name was 26 May 2000, in advance of the incorporation of the Respondent's company, Oddschecker (Jersey) Ltd., in the British Virgin Islands on 11 August 2000. The Respondent emphasizes therefore that it has traded since 2000, over 5 years longer than the Complainant.

(vii) The Respondent also acknowledges that the screenshot of the Respondent's site presented by the Complainant "is a true representation of the site available at that [Domain Name]". Respondent indicates that it has been using the Domain Name to resolve to its site since its registration on 29 April 2004, again over 18 months in advance of the formation of the Complainant's company.

(viii) The Respondent admits that the Complainant and Respondent "operate similar business models", but contends that "we have a significantly longer trading record and enjoy a considerable market share". The Respondent has submitted documentary evidence from independent research company Hitwise (as published in industry magazine EGaming Review) to show that it had a 3.32% market share by page impressions in August 2006 – not just the odds comparison and betting information sector - but of the entire betting and gaming market. In contrast, Respondent asserts that the Complainant is a new competitor to a market in which the Respondent has had a long-established presence.

(ix) The Respondent objects to the claim that the redirection of its to is intentionally confusing and misleading. In particular, the Respondent has used the Domain Name as a generic term pointing it to the Respondent's site as a logical description to Internet users of services available on , and has been doing this well in advance of the registration of the formation of the Complainant's company, Checkodds Ltd.

(x) Last, the Respondent indicates that, before receiving this DRS complaint, it had not received any formal or informal communications from the Complainant regarding the potential for negotiations to transfer the Domain Name – "nor were we aware of the Complainant or his business". The Respondent states that "[w]e always prefer to conclude such matters without recourse to formal procedures such as this and prior to this situation would have been open to discuss the matter amicably".

Complainant's Reply

The Complainant submitted a reply, in which it seeks to rebut the Respondent's contentions. The Reply is summarized as follows:

(i) With respect to Respondent's allegation that the Complainant claims rights in a name or mark due to activity that occurred subsequent to the Respondent's registration of the Domain Name on 29 April 2004, the Complainant contends this is untrue because the Complainant's business existed (although it was not yet incorporated nor had the trade mark yet been registered), was at a development stage, and had been available at the web address of before the date of the Domain Name registration. The domain name was purchased by the Complainant on or about 16 September 2003, and the associated website began operating shortly thereafter. The website at stated that it was under construction and would soon offer odds comparison services: "CheckOdds.com is under construction. You will be able to check and compare odds from various bookies very soon with CheckOdds.com, please visit again." The Complainant provides as documentary evidence a screen shot of the website as of 14 April 2004, a date prior to the Respondent's registration of the Domain Name, obtained from The Internet Archive, a non-profit organization. Complainant contends that this demonstrated that the Complainant was developing its service and that it was an emerging competitor in the business area in which the Respondent operates.

(ii) Regarding the Respondent's contention that it registered the Domain Name in good faith because the Domain Name represents a generic and descriptive explanation of its business, the Complainant contends that it is reasonable to expect that the Respondent, which operates internationally using a .com domain, would also have checked to see whether was available for registration, and would thereby have found a competing website to be under development at that address. The Complainant states "While registering a similar Domain to a competitor's is not untoward, especially when the competitor's name is fairly generic, it is reasonable to assume that by redirecting internet users visiting the Domain to ODDSCHECKER.COM, the Respondent was confusing internet users accidentally visiting the Domain whilst looking for CHECKODDS.COM, into believing that ODDSCHECKER.COM was the website that they had been looking for."

(iii) As to the small sum of money Complainant spent on advertising since September 2006, the Complainant emphasizes that it has deliberately chosen to use advertising channels which are economical and offer good value. The campaign programme offered by Miva (UK) Ltd requires that an initial sum be deposited with Miva, which may be supplemented should the campaign prove successful (success being measured by the number of times that Internet users view banner advertisements posted on Miva affiliated websites compared to the number of times that internet users click on them). Before committing to advertorial and promotional campaigns with a larger scope, the Complainant felt the need to trial its advertisement strategy by exposing Internet users to a certain amount of advertising and judging the response.

(iv) With respect to Respondent's contention that it has traded since 2000, over five years longer than the Complainant, the Complainant questions the relevance of this point, since the complaint in this dispute is limited to the Respondent's use of the Domain Name. Similarly, if the Respondent enjoys a considerable market share, the Complainant questions relevance of this fact to this dispute.

(v) The Complainant admits that it did not contact the Respondent prior to filing the complaint in this case, but also replies that "the Respondent did not contact CheckOdds at the time of registering the Domain".

(vi) Finally, the Complainant challenges the Respondent's statement that it was unaware of the Complainant and its business. "It is very unlikely that the Respondent was unaware of CheckOdds, as it is likely that the Respondent would have visited CHECKODDS.COM and come across the business at the time of registering the Domain [Name]". The Complainant alleges that most of its business partners (bookmakers and other betting operators) are also business partners of the Respondent. Further, although the Complainant does not have a significant market share yet, "we do not believe that it is entirely unheard of in the industry".

7. Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present::

i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

The Complainant has established that it has Rights in its name and mark CHECKODDS. These rights arise from the company and trade mark registrations noted above, dating from late 2005 or early 2006. The Respondent has not sought to challenge or object to these rights. In these circumstances, and without any challenge by the Respondent, the Complainant's submissions are sufficient to establish a claim to Rights in its name or mark.

The Domain Name is found to be similar or identical to a name in which the Complainant has Rights. The Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS 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."

The Complainant complaint will succeed if it prove – on the balance of the probabilities – that one of these two conditions is met. The Expert will analyze each one in turn.

A. Registered Or Acquired in a Manner Which, at the Time When Registration Took Place, Took Unfair Advantage of or was Unfairly Detrimental To Complainant's Rights

Both the Complainant and the Respondent have submitted documentary evidence in support of their various contentions, which is quite helpful in this case. The evidence establishes that the Domain Name was registered by the Respondent on 29 April 2004, at a time before the Complainant had acquired any cognizable rights in its name or mark. The Complainant registered its company as Checkodds Ltd. in the UK in December 2005, and shortly thereafter filed for the trade mark CHECKODDS in January 2006, which registration issued in December 2006. On the record in this case, the Complainant secured rights in its name or mark at some point after the company registration.

At the time of the Domain Name registration, however, the Complainant had only registered the domain name – this is corroborated by the screen shot from The Internet Archive dated 14 April 2004, which stated that "CheckOdds.com is under construction. You will be able to check and compare odds from various bookies very soon with CheckOdds.com, please visit again." This notice on a website, however, is not sufficient to establish that the Complainant had already acquired any rights (e.g., goodwill and reputation) in its name or mark.

The Complainant has challenged the statement by the Respondent that it was unaware of the Complainant or his business, asserting that it is likely the Respondent would have visited and come across the business at the time of registering the Domain Name. The Respondent, on the other hand, has asserted the registration was made in good faith, with the rationale that the Domain Name provided a generic and descriptive explanation of the Respondent's business. There is no evidence to prove, on the balance of the probabilities, that the Respondent's statements made in its response (which is certified as true and complete) are false on these points. The Expert's strong impression is that both parties have been candid and accurate in their submissions in this case, supporting many of them with documentary evidence. Furthermore, even if we assume the Respondent had viewed the website (which indicated it was under construction) prior to registering the Domain Name, given the circumstances here, this would nevertheless fail to establish that the Domain Name was registered in a manner which, at the time of registration, took unfair advantage of or was unfairly detrimental to any rights which the Complainant had yet to develop and acquire.

B. Used in a Manner Which Took Unfair Advantage of or was Unfairly Detrimental to the Complainant's Rights

The more difficult question in this case is whether the Domain Name has been used by the Respondent in a manner which has taken unfair advantage of or been unfairly detrimental to the Complainant's rights. On the record in this case, the Complainant's rights were established recently. As noted above, the Complainant registered its company name in December 2005, and shortly thereafter filed for its trade mark in January 2006, with the mark registration issuing in December 2006. The Complainant also spent a small sum on advertising for its business in September 2006.

Meanwhile, the Respondent states that after registering the Domain Name in April 2004, it has been used since that time to resolve to its website at . The Complainant has not challenged this statement. Instead, the Complainant has contended that by redirecting Internet users to the site, the Respondent is intentionally confusing and misleading them. However, this allegation fails to recognize and respond adequately to several points which the Expert finds persuasive:

(i) at the time of registration and first use of the Domain Name by the Respondent, there could be no abusive and intentional efforts to re-direct or confuse Internet users because the Complainant had not yet established any rights;

(ii) for a significant period between April 2004 and until the Complainant eventually acquired some rights in its name or mark, there was no, and could be no, abusive use;

(iii) given the Respondent's name (Oddschecker) and the timing of the Domain Name's registration, the Respondent's statement is credible that it selected and has used the Domain Name () – which approximately reverses the terms "odds" and "checker" in the Respondent's own name – as a generic and descriptive term pointing to the Respondent's site and the services available therein.

This analysis, therefore, leaves only the more narrow issue of whether or not the Respondent's continuing use of the Domain Name today, after the Respondent has acquired some rights in a name or mark, should be considered abusive under the Nominet DRS Policy. On the facts in this case, the Expert cannot conclude that the Respondent's use of the Domain Name today takes unfair advantage of or is unfairly detrimental to the Complainant's rights. To the contrary, the DRS Policy, paragraphs 4(i)(A) and 4(ii), recognize a non-exhaustive list of factors which may be evidence that a Domain Name is not an Abusive Registration, including:

"i. Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has

A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

* * * *

ii.  The Domain Name is generic or descriptive and the Respondent is making fair use of it."

In this case, there is an obvious similarity between the names of the Complainant and the Respondent, and between the Respondent's primary domain name and the Domain Name in dispute . apart from the suffixes (i.e., .com or .co.uk), the terms "odds" and "check" are reversed in their respective names (and domain names), with the Respondent's name merely adding the ending "er" to the word "check". Neither party's name is highly distinctive in relation to the services offered through their Internet websites. Instead, the Domain Name, much like the names of both the Complainant and Respondent, is generic and descriptive of the services offered by both parties. Recently, the Complainant has acquired rights in a name or mark corresponding to the Domain Name, but on the facts of this case, these recently acquired rights cannot serve to invalidate a legitimate, pre-existing and longer-term use of the Domain Name by the Respondent. The Expert finds that the Respondent has clearly "used … the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services" before being aware of the Complainant's cause for complaint.

Finally, the Expert advises that this case, rather than being appropriate for resolution under the Nominet DRS Policy (which focuses on abusive registrations), would be better resolved between the parties themselves, or with the assistance of a mediator. The parties acknowledge that they are competitors, offering similar services. Moreover, they have chosen similar names for their companies, yet the Respondent registered the Domain Name as a practical, descriptive and generic variant of its own name, before the Complainant had established itself and any rights in its name. While the Expert cannot conclude that the Domain Name is an abusive registration, there is nonetheless an ongoing potential for confusion as between these two parties. In view of this concern, there should be a mutual interest between them to avoid such confusion. The parties themselves are in the best position to consider these interests and to seek a reasonable solution.

8. Decision

The Expert finds, on the balance of the balance of probabilities, that the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name, but that the disputed Domain Name, in the hands of the Respondent, is not an Abusive Registration.

The Expert therefore directs that the Complainant's relief is denied.

Christopher Gibson

5 April 2007