The Complainant, Sportingbet Plc held Community Trade Mark (CTM) registrations for figurative marks SPORTINGBETCASINO and SPORTINGBETCASINO.COM. The disputed domain name, sportingbetcasino.com, was registered on 5 October 2001. From 20 May 2010, the domain name resolved to a webpage consisting of a photograph of a turkey together with: “05.02.2010: zzzzzz…” On 2 August 2010, the Complainant’s solicitors sent a cease and desist letter to the Respondent, Rough Media, referring to the turkey picture and stating that their client considered this to be disparaging and damaging to its goodwill and reputation. The Respondent replied, stating “there is no case to answer”. From 5 January 2011, the disputed domain name resolved to a webpage entitled “Sporting Bet Casino A blog about random thoughts and observations”. The page included criticism of an Indian web developer and Microsoft.
An objection was lodged on 16 February 2011 seeking the transfer of the domain name. The Respondent retaliated, inter alia, that (i) the Complainant’s marks were generic, lacking distinctiveness; (ii) the Respondent had legitimate interest in the domain name; and (iii) the defence of laches applied, as there were four years between the Complainant registering its trade mark and filing the action.
The defence of laches did not apply under the Uniform Domain Name Dispute Resolution Policy and Rules (UDRP), unless a compelling argument was put forward. However, a delay in bringing a complaint would make it difficult to establish its case, particularly in relation to rights, legitimate interests and bad faith.
The UDRP Panel held Sportingbet’s marks did not lack distinctiveness. The Respondent provided no evidence showing that “sporting bet casino” was a commonly-used combination of words. As “SPORTINGBETCASINO” and “SPORTINGBETCASINO.COM” were the dominant element of the Complainant’s trade marks, the Panel concluded that the disputed domain name was confusingly similar to Sportingbet’s trade marks.
There was no evidence that the Respondent had used the domain name in connection with a bona fide offering of goods or services, or legitimate non-commercial purposes. The Panel held the use of the domain name as a blog was designed purely to attempt to justify the Respondent’s registration. Regarding bad faith, the Respondent’s awareness of Sportingbet on acquisition of the disputed domain name was critical. The fact that Sportingbet’s marks were registered in 2007 and postdated the domain name was irrelevant if there was evidence that the Respondent registered the domain name in contemplation of Sportingbet’s prior unregistered rights.
The Panel was satisfied that the Respondent had registered the domain name in contemplation of Sportingbet’s rights to take unfair advantage or cause unfair detriment to Sportingbet in some indeterminate manner. The Panel noted: (i) the absence of plausible explanations for the Respondent’s selection/use of the domain name, (ii) the implausibility of the connection between the disputed domain name and the blog which attempted to justify registration, (iii) the failure to explain the disparaging “turkey” page, (iv) the lack of information as to how the Respondent used the domain name since the date of acquisition in 2001, and (v) the Respondent’s reluctance to provide justification for its registration/use of the domain name. As for bad faith, the Panel concluded that in the absence of a credible alternative explanation, the Respondent had used the domain name to disparage Sportingbet by means of the “turkey” page.
“Sportingbetcasino” was held to be an unusual combination of generic terms. However, Sportingbet provided no evidence demonstrating use of “Sporting Bet” prior to registration of the disputed domain name in 2001. On two previous occasions, in relation to the domain names sportingbet.net and sportingbets.biz, Sportingbet’s complaints were rejected, mainly for want of evidence of prior goodwill. Sportingbet’s success this time testifies to the distinctiveness of the SPORTINGBETCASINO marks such that negative inferences could be drawn about the Respondent’s choice of domain name and subsequent behaviour.