WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Coral Group Trading Limited .v. Seven Oaks Motoring Centre Limited

Case No: D2002-0012

The Complainant is Coral Group Trading Ltd of Glebe House, Vicarage Drive, Barking, Essex IG11 7NS, United Kingdom.

The Respondent is Seven Oaks Motoring Centre Ltd of First Floor Office Suite, London Road, Hildenborough TN11 9ND, Kent, United Kingdom.

The domain names at issue are <coralcasino.com>; <coralscasinos.com>.

The Registrar is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on January 7, 2002, (electronic version) and on January 11, 2002 (hard copy). The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), 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"). The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is January 14, 2002.

On January 9, 2002, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case and on January 11, 2002, Network Solutions, Inc. transmitted by email to the Center Network Solutions' verification response confirming that the registrant is Seven Oaks Motoring Centre Ltd, that the contact for administrative purposes is Alan Wheatley of Seven Oaks Motoring Centre Ltd and that the contact for billing purposes is ValueWeb of 3250 West Commercial Blvd., Fort Lauderdale, Florida, FL 33309, United States of America.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on January 14, 2002, to the addresses provided by Network Solutions, Inc. the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by February 3, 2002. On the same day the Center transmitted by mail copies of the foregoing documents.

No Response was received from the Respondent by the due date of February 3, 2002. On February 4, 2002, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondent to the Notification of the Respondents' Default was received.

Having received, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date on March 4, 2002, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was March 18, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having verified the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.

4.1 The Complainant is a subsidiary of Coral Eurobet plc. (together referred to as Coral). Coral's origins date back to 1926. It is one of the four largest bookmakers in the United Kingdom. Its annual turnover is in excess of £1 billion per annum. It has over 860 United Kingdom based licensed betting shops.

4.2 Coral's bookmaking services are delivered through three principal channels. Through its licensed betting shops, by telephone and Internet. Coral's corporate website is at <coraleurobet.com> and its Internet betting facilities can be accessed at <coral.co.uk>.

The Complainant is proprietor of the following registered trademarks for the word CORAL.

4.4 The CORAL domain names

Coral also own a number of registered domain names containing the words coral, bet and casino as listed below.

4.5 In the light of the foregoing, the Complainant asserts that it is extremely well-known in the United Kingdom under the CORAL mark.

4.6 No Response has been filed by the Respondent and so nothing is known about its business. The Complainant has, however, exhibited to the Complaint a WHOIS Search which shows the Respondent as the registrant of a number of other domain names.

4.7 The Complaint also exhibits the Decision in WIPO Case No. D2000-0824 where William Hill Organisation Limited succeeded in obtaining transfer from the Respondent of the domain names <williamhill.org>, <williamhill.net> and <williamhillcasino.com>.

The Complainant asserts that the domain names in issue are confusing similar to its CORAL mark, addition of the word casino indicating betting and gaming and leading to inevitable confusion with the CORAL trademark and damage to the reputation of that mark.

The Complainant's case is as follows:

5.2.1 Other than each domain name resolving to a free website holding page, no use has been made of either domain name.

5.2.2 In any event, any attempt by the Respondent to use either of the domain names would be an actionable tort - for example, trademark infringement and/or passing off - so that such use could not be bona fide.

5.2.3 The Complainant has not licensed or otherwise authorised the Respondent to use the CORAL mark for the purpose of the domain names in issue.

5.2.4 The Respondent has no registered trademarks for "Coral" or "Coralcasino" nor is there any evidence that the Respondent has been commonly known by either of the domain names.

5.2.5 In the light of the foregoing the Complainant's case is that the Respondent cannot establish any of the circumstances in paragraph 4c of the Policy which demonstrate rights or legitimate interests to the domain names.

The Complainant asserts that the evidence demonstrates circumstances within paragraph 4b of the Policy, which establish registration and use in bad faith.

5.3.1 There is a pattern of conduct by the Respondent of registering as domain names well-known third party trademarks. In that respect, the Complainant points to the use of the Ladbrokes and Stanley Leisure names in other domain name registrations by the Respondent (see paragraph 4.6 above). The Complainant also points to the Decision in WIPO Case No. D2000-0824(William Hill) (see paragraph 4.7 above).

5.3.2 The Respondent registered the domain names in question primarily for the purpose of selling them to the Complainant for consideration in excess of the documented out of pocket costs relating to those registrations. In that respect, the Complainant again refers to WIPO Case No. D2000-0824 where William Hill's solicitors produced a file note of a telephone conversation with Mr. Steve Reed of the Respondent in which he rejected an offer of £500.00 for the 3 domain names in issue in that case and threatened to sell those names to other parties. Here, the Complainant exhibits a cease and desist letter to the Respondent dated September 20, 2001, and a reply from the Respondent dated November 15, 2001, stating:

The Complainant's solicitors answered

but nothing further was heard from the Respondent. This the Complainant suggests was because by that date the Decision in the William Hill case (Decision dated September 4, 2000), had issued and the Respondent was, therefore, aware that a direct attempt to sell the domain names could amount to an indication of bad faith.

5.3.3 Inactive or passive holding of a domain name of the type which applies in this case amounts to registration and use in bad faith (the Telstra case : WIPO Case No. D2000-0003). By registering the domain names, the Complainant is clearly prevented from reflecting its CORAL trademark in corresponding domain names, Those names are being held by the Respondent for no other reason than in the hope that money will be offered for them. The Respondent's past conduct is relied upon as similar fact evidence.

5.3.4 By registering and keeping the domain names, the Respondent is both eroding the goodwill in the Complainant's CORAL trademark and misrepresenting some form of connection with the Complainant.

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following;

- That the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name has been registered and is being used in bad faith.

6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii).

6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Policy states that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.

Obviously, the domain names in issue are virtually identical to the Complainant's CORAL trademark. Addition of the suffixes casino(s) only serve to increase likelihood of confusion given the bookmaking businesses of the Complainant. The Complaint succeeds in establishing the requirement paragraph 4(a)(i) of the Policy.

No Response has been filed and there is no evidence of any rights or legitimate interests in respect of either of the domain names in issue. Specifically, it is clear that the Respondent could not in any event bring itself within any of the circumstances set out in paragraph 4(c) of the Policy. The Complaint, therefore, succeeds in establishing the requirement of paragraph 4(a)(ii) of the Policy.

The previous conduct of the Respondent (see paragraphs 4.6 sand 4.7 above), coupled with failure to submit a Response are powerful evidence indicating registration and use in bad faith of the type prescribed in paragraphs 4(b)(i) and (ii) of the Policy. As to passive holding of the domain names amounting to use in bad faith, the Panel points to its conclusion that the Respondent has no rights or legitimate interests in the domain names, the well-known status of the Complainant's CORAL name and mark in, at least, the United Kingdom, the total absence of evidence of any actual or contemplated good faith use of the domain names by the Respondent, and the difficulty of conceiving of any use of those names by the Respondent that would not be illegitimate. The Complaint, therefore, succeeds in satisfying the third limb of paragraph 4(a) of the Policy.

In the light of all the foregoing circumstances, the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. Accordingly, the panel require that the domain names <coralcasino.com> and <coralscasinos.com> be transferred to the Complainant.