Armoured Vehicle Business Dispute Involving Competing Trademark Registrations
You will note that the Panel stated that “the Respondent in this case did not request a finding of RDNH, but such a finding seems appropriate in the circumstances”. This approach fulfils the Panel’s obligation to consider whether a Complaint is abusive in every case that warrants such consideration, regardless of whether a Respondent expressly requests RDNH and even regardless of whether a Respondent responds to the Complainant. Continue reading the commentary here.
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We hope you will enjoy this edition of the Digest (vol. 4.39), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ Armoured Vehicle Business Dispute Involving Competing Trademark Registrations (inkasarmor .com and inkas-group .com *with commentary)
‣ Complainant Neglects Pre-Filing Due Diligence, Leading to RDNH (sichem .com *with commentary)
‣ Panel: can only Refer to the Complainant’s Technology Business and its Well-known Mark (sap .ai *with commentary)
‣ Insufficient Evidence of Trademark Use Before 2010 Saves the Domain Name from Transfer in a No Response Matter (certifer .com)
‣ Panel: The Complainant Did Not Submit Adequate Documentary Evidence (sportingbet-casino .top)
Armoured Vehicle Business Dispute Involving Competing Trademark Registrations
<inkasarmor .com> and <inkas-group .com>
Panelist: Mr. W. Scott Blackmer (Presiding), Mr. Jon Lang, and Mr. Gerald M. Levine
Brief Facts: The Toronto-based Complainant, incorporated in August 1995, designs and sells armored vehicles for international markets, subcontracting their manufacture and service. It operates a website at <inkas .ca>. Mr. David Khazanski incorporated the Complainant and several affiliated companies and serves as CEO of the “INKAS Group of Companies”. The members of the INKAS Group use an INKAS word mark and various figurative marks featuring the word INKAS and a drawing of a griffon holding a sword. The Complainant states that INKAS Group companies have used the word mark and versions of the griffon logo since 1995. The Complainant owns relevant trademark registrations for INKAS including the Canadian word mark (July 19, 2000) and the US word mark (August 1, 2006).
The disputed Domain Name <inkas-group .com> was created on May 18, 2015, and resolves to a website headed with a griffon-and-sword logo over the words “INKAS GROUP” describing a company based in Dubai, UAE that provides engineering solutions for oil and gas field equipment and spare parts, armored vehicles and more. The disputed Domain Name <inkasarmor .com> was created on April 19, 2022 and redirects to the website at <inkas .ae> headed with a logo of a griffon holding a sword over the words “INKAS ARMORED VEHICLES”, all within a shield and describes Inkas Armored Vehicles L.L.C. as a company based in Dubai, UAE that has been manufacturing armored vehicles since 2012. The Respondent formerly worked with the Complainant’s brother, Dimitri Khazanski, at Streit Group, an armored vehicle manufacturer based in the UAE.
In 2011, the Respondent left Streit Group to form Gulf Auto Trading LLC, through which he began selling armored vehicles in the UAE and had discussions with the Khazanski brothers about selling vehicles in the Middle East. By 2015, the Respondent and the Khazanski brothers had fallen out, evidently still without a written agreement and with a complex history of dissatisfaction over investments, contributions, and debts. The parties have been engaged in trademark litigation in the United Kingdom, the European Union, and the UAE. Meanwhile, the Respondent’s business has grown in the UAE, with over US $150 million in sales of vehicles since 2013. The Respondent has continued to participate in trade shows and has garnered industry and media recognition under the INKAS mark in the Middle East and internationally.
Held: The Panel finds that, before notice to the Respondent of the dispute, the Respondent used both of the disputed Domain Names in connection with a bona fide offering of goods or services, the businesses of Inkas Armored Vehicles, Inkas Vehicles LLC, and other enterprises operated by the Respondent, in some cases for more than a decade, see WIPO Overview 3.0, section 2.2. The Respondent is associated with companies with names corresponding to the disputed Domain Names and a company associated with the Respondent has obtained two UAE trademark registrations in which the name “Inkas” is a dominant word element. Therefore, the Panel finds that the Respondent is commonly known by a name corresponding to the disputed Domain Names for purposes of the Policy, see WIPO Overview 3.0, section 2.3.
The Complainant suggests that the Respondent’s use of INKAS marks should be considered “illegal” and its operation of businesses in the UAE under corresponding names is not “bona fide” because it falsely implies an association with the Complainant. In fact, they were formerly associated, and they have clearly not resolved their resulting business issues, including trademark disputes. Nevertheless, the Complainant has not proven in this proceeding that the Respondent’s long-running “Inkas” business operations in the UAE are “illegal” or that the Respondent does not, in fact, have an interest in valid UAE trademark rights antedating this domain name dispute. The Complainant may conceivably continue to challenge the Respondent’s rights to use the INKAS mark in the UAE, and to use “Inkas” in licensed company names in the UAE, but those disputes are better resolved in a different forum.
RDNH: The Complainant is represented by counsel. It should have been obvious that the Complaint would face obstacles in establishing the second and third elements where the Respondent was formerly in business with the Complainant, had been doing business under “Inkas” names for more than 20 years, and one of the Respondent’s companies had registered INKAS trademarks in the UAE. The Complaint nevertheless omitted or failed to address such material facts and instead made only conclusory allegations of fraud, counterfeiting, and misuse of proprietary information, without offering supporting evidence. The Panel finds attempted reverse domain name hijacking in these circumstances.
Complaint Denied (RDNH)
Complainant’s Counsel: David Khazanski, Canada
Respondent’s Counsel: Muscovitch Law P.C., Canada
[Editor’s Note: The Respondent in this dispute was represented by Zak Muscovitch through his law firm, not in his role as ICA General Counsel.]
Case Comment by Newsletter Editor, Ankur Raheja:
You will note that the Panel stated that “the Respondent in this case did not request a finding of RDNH, but such a finding seems appropriate in the circumstances”. This approach fulfils the Panel’s obligation to consider whether a Complaint is abusive in every case that warrants such consideration, regardless of whether a Respondent expressly requests RDNH and even regardless of whether a Respondent responds to the Complainant.
Rule 15(e) states as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” [emphasis added]
As noted in UDRP Perspectives at 4.2, “it is important to remember that Rule 15(e) provides very broad parameters for a finding of a bad faith by a Complaint. Indeed, RDNH per se, is considered by the Rules to be merely a single example of the type of Complaint that can be brought in bad faith. The Rules define “Reverse Domain Name Hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Accordingly, aside from attempting to unjustly deprive a Respondent of a domain name (RDNH), harassment is enumerated as well, but a Panel can find that a Complaint was brought in bad faith for any number of appropriate reasons.
This case is also noteworthy for how clearly outside the scope of the Policy the Complaint was. As noted in UDRP Perspectives at 0.1, the Policy should not be applied inter alia to “good faith disputes between competing right holders or other competing legitimate interests…” (see par. 172 of the WIPO Final Report, 1999).
Complainant Neglects Pre-Filing Due Diligence, Leading to RDNH
Sipchem Europe S.A. v. Sichem AG, vanBaerle Management AG, WIPO Case No. D2024-2888
<sichem .com>
Panelist: Mr. Tobias Zuberbühler
Brief Facts: The Complainant and its parent company (founded in 1999), the Saudi International Petrochemical Company (Sipchem), are active in the production and marketing of petrochemical products. The Complainant owns the International Trademark SIPCHEM (registered on April 18, 2019). The Respondent acquired the disputed Domain Name in March 2024 and resolves to a website of a company – Sichem AG, marketing the business of Organo Mineral Binder (“OMB”), a binder system for biocide-free industrial paints. The Complainant alleges that it had been subject to a series of attempted cyber scams and, on or around June 5, 2024, its cybersecurity team were alerted of the disputed Domain Name. The Complainant further alleges that the disputed Domain Name is confusingly similar to the Complainant’s domain name <sipchem .com> and that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s business.
The Respondent contends that it was previously owned by a privately held group with over 130 years of history. Following the sale of a business unit in January 2024, a new operating company was established for the OMB business unit. Since a family member owned Sichem Holding AG since 1995, the existing vanBaerle Silicates Holding AG was renamed Sichem AG. The Respondent purchased the disputed Domain Name in March 2024 for a substantial sum. The Respondent further contends that while the parties’ products are both based in the chemical industry, the Complainant’s petrochemical products are different from the Respondent’s (biocide-free industrial paints) and that the word “chem” contained in the Complainant’s SIPCHEM trademark can hardly be considered particularly distinctive for the goods covered by that trademark. Finally, since the Complaint was brought primarily to harass the Respondent as the domain name holder, the Panel is requested to declare a finding of RDNH.
Held: The Panel finds that, before notice to the Respondent of the dispute, the Respondent used the disputed Domain Name in connection with a bona fide offering of goods. WIPO Overview 3.0, section 2.2. The Respondent has proven that a company operated by one of the Respondent’s owners had registered the company name “Sichem Holding AG” in 1995 (more than 20 years before the Complainant’s SIPCHEM trademark was registered in 2019) and that the Respondent had purchased the disputed Domain Name in March 2024 for one of its business units. Moreover, the evidence in the case file as presented does not indicate that the Respondent’s aim in registering the disputed Domain Name was to profit from or exploit the Complainant’s trademark. It appears plausible that the Respondent did not know about the Complainant or its trademark when it purchased the disputed Domain Name in March 2024 (a domain name that had already been registered in 2005, 14 years before the Complainant registered its trademark in 2019). The Panel thus finds the second and third elements of the Policy have also not been established.
RDNH: In the present case, a look at the website connected with the disputed Domain Name could have indicated that the Respondent was running a legitimate business (in a distinct and separate field of the chemical industry) without targeting the Complainant. A check of the Commercial Registry at the Respondent’s domicile would have revealed that the company “Sichem Holding AG” had been registered since 1995, four years before the Complainant was established in 1999 and long before the SIPCHEM trademark was registered in 2016. Against this background, the Panel finds that the Complainant has engaged in an attempt of RDNH.
Complaint Denied (RDNH)
Complainant’s Counsel: Watson Farley & Williams (Middle East) LLP, United Arab Emirates
Respondent’s Counsel: BOHEST AG, Switzerland
Case Comment by ICA General Counsel, Zak Muscovitch: It is encouraging to see the Panel not tolerate half-cocked and misguided Complaints. Here, the Panel noted in particular, that a simple “look at the website connected to the disputed domain name could have indicated that the Respondent was running a legitimate business”. Moreover, the Panel noted that had the Complainant simply conducted a business registry search, it would have located the Respondent which had been in business since 1995 – four years before the Complainant was even established and long before the Complainant’s trademark was registered. Panels need not encourage such baseless and lazy Complaints by merely dismissing them. Rather, where appropriate, Panels should actively discourage such Complaints with strong language and with an RDNH sanction, as the Panel admirably did here.
For further reading on RNDH, see UDRP Perspectives, Section 4.2.
Panel: <sap .ai> can only Refer to the Complainant’s Technology Business and its Well-known Mark
SAP SE v. Nathaniel Hunt, WIPO Case No. DAI2024-0053
<sap .ai>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The German Complainant, founded in 1972, develops end-to-end enterprise software applications, analytics, intelligent technologies, experience management, and related training. It reported total revenue of EUR 8.04 billion in its 2023 financial year, of which 41 per cent derives from the Americas, including the United States, where the Respondent is located. Also in 2023, the same year in which the Respondent acquired the disputed Domain Name, the Complainant released multiple generative artificial intelligence (“AI”) features in its software and continues to develop AI partnerships and additional scenarios for its software. The Complainant owns a family of hundreds of SAP registered trademarks with effect in various territories worldwide including the United States trademark for the word mark SAP, registered on February 19, 2002.
The Respondent acquired the disputed Domain Name via an expired domain name auction in June 2023. A historic WhoIs report produced by the Respondent shows that the disputed Domain Name was originally registered by a third party, and was later acquired by the Complainant on or about August 18, 2017. It was held by the Complainant until about February 22, 2023, after which it reverted to the “.ai” Registry and was then auctioned. Currently, the disputed Domain Name is offered for sale in the sum of US $49,000. The Complainant alleges that non-use or “passive holding” of the disputed Domain Name does not prevent a finding of bad faith. It is highly implausible that the Respondent could put the disputed Domain Name to any good faith use because the Complainant’s well-known mark has been used internationally for many decades.
The Respondent contends that it has rights and legitimate interests in the disputed Domain Name because it makes a living buying and selling generic domain names, owns approximately 10,000 domain names purchased over the last decade, has never had a UDRP complaint filed against it, and does not target trademark owners. The Respondent further contends that there is precedent in a previous case under the Policy that where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, ordinarily, the trademark holder should be denied relief, whether the mark is a common law or registered mark, and whether the mark is “strong” or “weak”.
Held: The Domain Name comprises a three-letter mark that in the technology world denotes the Complainant almost exclusively (similar to the IBM mark). This distinguishes the present case from the typical situation in which panels under the Policy have held that three-letter domain names may legitimately be acquired for their inherent value and that in most such cases the acquisition will usually be for bona fide purposes. The fact that the Complainant is prominent in the technology field is of considerable significance in the present case because the Respondent chose to acquire a domain name featuring an exact representation of the Complainant’s mark in the “.ai” ccTLD. Even if the Panel had found that the Respondent had been unaware of the Complainant’s prominence in the technology field before it participated in the auction of the disputed Domain Name. The Respondent, as a domain name investor, had an affirmative obligation to avoid the registration of a trademark-abusive Domain Name in terms of the Policy.
On the balance of probabilities, the Panel finds that the Respondent registered the disputed Domain Name in the knowledge of the Complainant and its rights and/or was willfully blind to the same. The Respondent has not credibly claimed that it was unaware of the mark, which is well-known in the technology field. In particular, the ccTLD “.ai” signals AI technology, an area where the Complainant has been active since at least 2023. The Respondent acknowledges that high values for “.ai” domains come from their association with AI. In all of the circumstances of the present case, it is evident to the Panel that when it acquired the disputed Domain Name the Respondent was targeting this technological meaning of “.ai”. In that particular context, the selection of the three letters “sap” can only realistically mean the Complainant. The disputed Domain Name was not therefore registered due to its dictionary or acronym meaning but in order to trade off third-party trademark rights. Consequently, in this particular case, the Respondent cannot rely upon the dictionary or acronym meaning in the context of rights and legitimate interests under the Policy.
Transfer
Complainant’s Counsel: K & G Law LLC, United States of America
Respondent’s Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch, with contributions from ICA Director, Nat Cohen:
Although the Panel decided to transfer the Disputed Domain Name in this case, the fact that three-letter .com domain names are usually safe from attacks under the UDRP did not escape the Panel’s attention. In the Panel’s view, the notoriety of the Complainant together with the .ai extension being suggestive of technology, justified a transfer. The Panel noted that the fact that “the Complainant’s mark is extremely well known, and arguably famous” is what “this distinguishes the present case from the typical situation in which panels under the Policy have held that three-letter domain names may legitimately be acquired for their inherent value and that in most such cases the acquisition will usually be for bona fide purposes.”
However, this matter involved a well-known trademark ‘SAP’ that according to the Panel, “is a three-letter mark that in the technology world denotes the Complainant almost exclusively (similar in that sense to the third party mark IBM)”. The decision further reads: “The fact that the Complainant is prominent in the technology field is of considerable significance in the present case because the Respondent chose to acquire a domain name featuring an exact representation of the Complainant’s mark in the ‘.ai’ ccTLD.”
Where there is some disagreement with the Panel’s analysis, however, is in respect to the Panel’s conclusion that as a domain name investor, the Respondent had an “affirmative obligation to avoid the registration of a trademark-abusive Domain Name in terms of the Policy.” Although this obligation does not appear in the Policy itself, the closest that the Policy comes to this is under section (b) of Paragraph 2. As the reader will recall, the three-part test under the UDRP appears in Paragraph 4, whereas Paragraph 2 contains representation of the Registrant to the Registrar. It states in part as follows:
2. Your Representations.By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that
…
(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;
As I noted as part of a case comment in Digest Vol. 4.30, “this representation is not included in the parameters of “Applicable Disputes” under Paragraph 4 (Mandatory Administrative Proceedings) and as such although arguably “part of the Policy” per se, it does not form the part of the policy that is actionable by registrants as an “applicable dispute” as it is merely a representation made by the registrant to its own registrar”. In any event however, there does not appear to have been any evidence that the Respondent breached its representation to its registrar in this case since the Domain Name was not used for any infringement nor did the registration alone, necessarily violate the rights of any third parties. The point I think is, rather than invoke Paragraph 2, the Panel could have more easily found that the Domain Name was inferentially registered and used in bad faith, solely on the basis of the Complainant’s notoriety in the field of technology in combination with the particular connotation and meaning of the .ai suffix in the domain name.
In other words, it wasn’t necessary or even appropriate to invoke Paragraph 2(b) since absent evidence of a plausible use of the Domain Name (corresponding to a very well-known mark in the technology field) by any party beyond the Complainant, a Panel could make a finding that it was more likely than not that the Domain Name was registered because of the Complainant’s mark. If it was not and was instead registered because it was simply a three-letter, dictionary-word domain name susceptible to many uses, and indeed put to many non-infringing third-party commercial uses like the Respondent contended, then it was incumbent upon the Respondent to furnish evidence of third-party uses of SAP, particularly in the technology field to demonstrate the plausibility of registering it as a generic acronym capable of coexistence with the Complainant. This is where having good counsel represent you may come into play. Having looked at the WIPO Global Brand Database, however, such evidence may have been difficult to furnish in any event, with the Complainant clearly being the overwhelming registrant of SAP marks worldwide, particularly in the technology field. In that sense, although SAP may not be as famous as IBM or BMW, it would be farfetched to believe that anyone other than the Complainant could use SAP for a technology related service without infringing the Complainant’s trademark rights, and as such a Panel could plausibly find that the registration and offer for sale was made with the Complainant in mind.
While this dispute involved a three-letter .AI domain name, complaints against three-letter .com domain names have generally failed because a three-letter domain is often capable of a multitude of uses by disparate parties and therefore no one company can claim a monopoly on all commercial uses of it. For further reading on this topic, see “When it Comes to 3-Letter .Coms, Complainants Usually Fail” in Digest Vol. 3.42, where I stated; “Three-letter .com domain names are generally amongst the most sought after because they often correspond to common abbreviations or are otherwise broadly used by many parties. As such, rarely is their value primarily or exclusively attributable to a single trademark holder, with notable exceptions being such brands as IBM, BMW, and KFC. It is for this reason that Complainants should think long and hard about whether they have the necessary proof of targeting to succeed in a UDRP, as unless the Complainant is particularly renown or has specific evidence of targeting, they will likely lose.” Also see Nat Cohen’s article, “Smells Like Cybersquatting? How the UDRP Smell Test Can Go Awry” (CircleID, October 26, 2022), wherein he stated in part:
“Of the 80 disputes on three-letter dot-com domain names in the past decade (since January 1, 2012) where cybersquatting was alleged,13 77 were denied. Reverse Domain Name Hijacking (RDNH) was found 20 times. Of the three decisions where the complaint was accepted, two (ado.com and imi.com) were challenged in court and overturned at the cost of hundreds of thousands of dollars and one (ehf.com) is still pending in court and I believe was wrongly decided.”
With the recent surge of interest in AI, and a corresponding surge of interest in .ai extension domain names, we are seeing a return to circumstances that existed in the early days on the Internet where well-known brands are registered as domain names by third-parties before the brands themselves have awakened to the importance of registering those domain names themselves.
There have been approximately 100 UDRP complaints brought against .AI domain names in the past twelve-months, in contrast to a few years ago where only a small handful of UDRP complaints were filed each year on .AI domain names. The recent disputes include many against terms with widespread third-party use that were registered with the .ai extension, including yelp.ai, watson.ai, headout.ai and acrobat.ai, which were all ordered transferred. Yet the circumstances where the presumption can be made that such a registration was targeting a brand holder in the absence of any specific evidence of targeting are quite fact specific and are subject to different inferences by different Panels. Other complaints including those against sonata.ai, sage.ai, abnormal.ai and motherhood.ai, despite all corresponding to brands of varying degrees of renown, were denied.
As I suggest above, the correct approach to resolving such disputes is to determine the likelihood of the Respondent having primarily targeted the Complainant based upon the evidence, rather than invoke a non-existent requirement that prospective registrants conduct searches and avoid registering terms that correspond to marks that could be used for infringement. This should be sufficient to resolve such disputes.
Insufficient Evidence of Trademark Use Before 2010 Saves the Domain Name from Transfer in a No Response Matter
Certifer SA v. Domain Admin, WIPO Case No. D2024-3180
<certifer .com>
Panelist: Mr. John Swinson
Brief Facts: The French Complainant, founded in 1997, specializes in technical analysis, testing and inspection. The Complainant has rail specialists in 24 offices in 21 countries. The Complainant owns the EU Trademark for CERTIFER, registered on May 11, 2018. The Complainant’s website is located at <certifer .eu> and currently includes pages with headings such as “Expert in Mobility and Railway Safety” and “Inspection of Hosting, Piling & Lifting”. The disputed Domain Name was registered on February 1, 2010, and the Complainant included a listing from HugeDomains on May 8, 2024, listing the disputed Domain Name (listed as “CertifEr .com”) for sale for US $15,895 or US $1,324.58 a month for 12 months. At present, the disputed Domain Name does not resolve to an active website.
The Complainant alleges that the Complainant owns a registered trademark for CERTIFER, and the disputed Domain Name, which has not been used since registration, has been listed for sale on several occasions, including in 2017 and 2018 for EUR 1,500 and more recently for US $15,895. The Complainant further alleges that the disputed Domain Name was registered primarily to sell it to the Complainant or a competitor of the Complainant and to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Respondent did not submit a Response.
Held: The disputed Domain Name was registered in 2010, which is seven years before the Complainant filed for trademark protection for its CERTIFER trademark. The Complainant does not provide evidence of its use of CERTIFER as a trademark in or before 2010 but relies on the corporate name Railway Certification Agency “Certifer”, an association created on February 12, 1997; the domain name <certifer .fr> of the Railway Certification Agency “Certifer” created on December 24, 2007; and the disputed Domain Name <certifer .eu>, created on July 4, 2006, that currently redirects to <certifer .fr>. These three circumstances relied upon by the Complainant potentially show use prior to 2010 but they do not prove such use or the extent.
It does not demonstrate that the US-based Respondent would have been aware of the Complainant or the use of “CERTIFER” in 2010 or that the Respondent registered the disputed Domain Name because of the Complainant. This is particularly so because the Complainant is operating in a specialist field, primarily railway safety. The Complainant and its CERTIFER trademark may be well-known today in the railway and safety industries, but there is no evidence that the Complainant and its trademark were known in 2010 or likely to be known to the Respondent in 2010. The Complainant does not show any unregistered rights that it owned in CERTIFER trademark in 2010.
The Complainant further relies on paragraph 4(b)(i) of the Policy. However, there is no evidence that the Respondent likely knew of the Complainant in 2010 and thus the Panel cannot conclude that the Respondent registered the disputed Domain Name to sell to the Complainant or to a competitor of the Complainant. There is no evidence that the Respondent has ever contacted the Complainant to sell the disputed Domain Name to the Complainant. Panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor), see WIPO Overview 3.0, section 3.1.1.
Complaint Denied
Complainant’s Counsel: APAVE International, France
Respondent’s Counsel: No Response
Panel: The Complainant Did Not Submit Adequate Documentary Evidence
Entain plc v. 顾桂山, CAC Case No. CAC-UDRP-106766
<sportingbet-casino .top>
Panelist: Mr. Udo Pfleghar
Brief Facts: The Complainant is a sports betting and gaming group, operating both online and in the retail sector globally. The Complainant was incorporated in Luxembourg in 2004 as Gaming VC Holdings S.A. The Complainant re-domiciled to the Isle of Man on 5 January 2010 and underwent a name change from GVC Holdings plc to Entain plc on 9 December 2020. Entain Operations Limited, the Complainant’s subsidiary owns extensive rights in the figurative and word marks associated with SPORTINGBET. The Complainant has a comprehensive portfolio of established brands; its “Sports Brands” include BWIN, CORAL, CRYSTALBET, EUROBET, LADBROKES, NEDS INTERNATIONAL and SPORTINGBET. The Complainant’s “Games Brands” include CASINO CLUB, FOXY BINGO, GALA, GIOCO GITITALE, PARTYPOKER and PARTYCASINO. The Complainant has traded on the Alternative Investment Market (AIM) of the London Stock Exchange (LSE) since 24 May 2010 and as of 20 October 2021, has a market capitalisation value of £12.7 billion.
Preliminary Issue: The Panel was able to establish the existence of some of the earlier registered trademark rights on which the Complaint relied. It should, however, be noted that the Panel considers it to be highly unusual that all the documentary evidence provided by the Complainant was uploaded in one single file of 148 pages instead of either defining the different annexes and the types of evidence involved and uploading each separately or at least indexing the contents in order to facilitate access to the 14 annexes contained in that one file.
However, it is even more unusual to not provide any documentary evidence at all of the registered trademark rights on which the Complaint is based, but instead to include a number of links to trademark registers in the document describe above, of which the majority was unresponsive. While the current Panel has proceeded to issue a decision on the basis of the information available to it, it is all but certain that future Panels will accept documentation of this type as adequate or sufficient. For the reasons set out below, it is not necessary to set out any of the trademark registrations in the name of Entain Operations Limited at this point.
Held: The evidence provided by the Complainant is highly unusual and may not satisfy the minimum standards required by most Panels. The Complainant, Entain plc, relies entirely on various trademark registrations in the name of Entain Operations Limited. However, the examination of the evidence filed with the Complaint shows that it does not provide evidence for the assertions made by the Complainant. The Complainant further contends that Entain Operations Limited, the Complainant’s subsidiary, owns extensive rights in the figurative and word marks associated with SPORTINGBET including, but not limited to, the trade mark registrations attached to the Complaint. Again, it fails to provide sufficient evidence of the existence of a link between the proprietor of the earlier rights which may exist and the Complainant.
Additionally, it is noted that the Financial Statements provided commence on page 152 of the document with no indication of validity, transactional history, etc., or strategic plans of the group or particular group companies, which may have been laid out in the preceding 151 pages. Overall, the documents uploaded by the Complainant in support of the Complaint do not include sufficient evidence to prove either the incorporation of the Complainant, the Complainant’s rights in the claimed earlier trademarks or the relationship to the registered proprietor as claimed by the Complainant. For that reason alone, the Complaint must be dismissed without prejudice to the material issues to be addressed under Article 4(a) of the Policy under a possible further complaint filed in this matter.
Complaint Denied
Complainant’s Counsel: Stobbs IP (Stobbs IP)
Respondent’s Counsel: No Response
About the Editor:
Ankur Raheja is the Editor-in-Chief of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for over ten years, representing clients from all over the world in UDRP proceedings.
He is an accredited panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. In a advisory capacity, he has worked with NIXI/.IN Registry and Net4 India’s resolution professional.