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.
