Betting firm falls at second hurdle in domain name challenge

A Sportingbet subsidiary, Internet Opportunity Entertainment, took a Canadian company, Zubee.com Networks, to the World Intellectual Property Organisation's Arbitration and Mediation Centre claiming that the company had no legitimate interest in the domain and that it was acting in bad faith in registering and holding on to it.

During the course of the case Zubee claimed that it and Sportingbet had attempted to agree a sale of the domain names, but that they could not come to terms and that this was why Sportingbet was taking the current action.

The two parties had previously fought over the domain names at another domain dispute forum, the Asian Domain Name Dispute Resolution Centre (ADNDRC), which found in Zubee's favour because it said that Sportingbet had not proven its rights to the name.

The WIPO panel offered an almost identical judgment, and Zubee will keep the name. In order to gain control of a domain name from someone else, a company has to prove that it is identical or confusingly similar to one of its trade marks, that it has rights or legitimate interests in the name and that the other party does not, and that the other party acted in bad faith in regard to the domain.

The panel found that Sportingbet had relevant trade marks and that they were identical or confusingly similar to Zubee's domain names. Though the trade marks were registered after the domain names, the panellist, Peter Nitter, said that this was not relevant.

"As stated in Digital Vision, Ltd v. Advanced Chemill Systems, and other cases, the Policy does not require that the trademark was registered prior to the domain name," he said in his ruling. "The fact that the disputed domain name predates the Complainant’s trademark registration may only be relevant to the assessment of bad faith."

In the case of rights or legitimate interests, there is a complicated procedure relating to proof. Sportingbet had to prove to a small degree that Zubee had no rights or legitimate interests in the domains. A heavier burden of proof then transfers to Zubee who must rebut those claims and prove it has a legitimate interest in the domains.

"In the present case, the Panel finds that the Complainant [Sportingbet] has not made a prima facie showing that Respondent [Zubee] does not have rights or legitimate interests in the domain names," said Nitter. "The Panel notes that Complainant has not presented any evidence of its rights in the trademarks Sportingbet at the time of the registration of the contested domain names sportingbet.net and sportingbets.biz."

"As a result the Panel finds that the Complainant, who has the burden of proof, has failed to show that the Respondent lacks rights or legitimate interests in the contested domain names, and accordingly the Panel finds that Complainant has not met the requirement of the Policy," he said.

Because Sportingbet had failed one of the three tests it was not necessary to then rule on the issue of bad faith, since Zubee was by then permitted to keep the domains, Nitter said. The panel said that the failure to establish rights was also the reason that Sportingbet had lost its previous ADNDRC case.