William Hill Organization Limited v Boom Astive

WIPO Case No. D2023-0138

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

William Hill Organization Limited v. Boom Astive

Case No. D2023-0138

1. The Parties

The Complainant is William Hill Organization Limited, United Kingdom, represented by Freeths LLP,

United Kingdom.

The Respondent is Boom Astive, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <williarnhill.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2023.

On January 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 13, 2023.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal

requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the paragraph 5, the due date for Response was February 6, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on February 7, 2023.

The Center appointed Edoardo Fano as the sole panelist in this matter on February 9, 2023. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.

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The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the

Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision

based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a
response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is William Hill Organization Limited, a United Kingdom company operating in the field of gaming and betting, owning several trademark registrations for WILLIAM HILL, among which the following ones:

- United Kingdom Trademark Registration No. UK00001383971 for WILLIAM HILL, registered on January

24, 1992;

- European Union Trademark Registration No. 003631471 for WILLIAM HILL, registered on June 27, 2005;

- United States Trademark Registration No. 4051639 for WILLIAM HILL, registered on November 8, 2011.

The Complainant also operates on the Internet at several websites, being “ its main

website.

The Complainant provided evidence in support of the above.

The disputed domain name was registered on July 22, 2022, according to the WhoIs records, and when the evidence that the disputed domain name was used to conduct a fraudulent phishing activity. The

Respondent sent an email to a Complainant’s supplier impersonating a Complainant’s employee.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to its trademark
WILLIAM HILL.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name, and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name was used by the

Respondent to conduct a fraudulent phishing activity, for sending an email to a Complainant’s supplier

impersonating a Complainant’s employee.

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The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since

the Complainant’s trademark WILLIAM HILL is distinctive and internationally known. Therefore, the

Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name

and the Complainant contends that the disputed domain name was used to conduct a fraudulent phishing

activity in which the Respondent sent an email to a Complainant’s supplier impersonating a Complainant’s

employee.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to

paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put

forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable
facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with
paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case
No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International
PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et.
al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit

Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark WILLIAM HILL both by registration and acquired reputation and that the disputed domain name is confusingly similar to the WILLIAM HILL trademark.

Regarding the use of the term “williarnhill” to replace the term “williamhill” of the Complainant’s trademark,

the Panel notes that this is a typical case of a deliberate misspelling of a mark (so-called “typosquatting”), by

adding, deleting, substituting or reversing the order of letters in a mark, where numerous UDRP panels in the

past have found confusing similarity to be present. See WIPO Overview of WIPO Panel Views on Selected

UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, is typically

ignored when assessing the confusing similarity between a trademark and a domain name.

See WIPO Overview 3.0, section 1.11.1.

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name

is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

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B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the

domain name or a name corresponding to the domain name in connection with a bona fide offering of

goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain
name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at

issue.”

According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of

the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests

in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

difficult, since proving a negative circumstance is generally more complicated than establishing a positive
one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the
prima facie

The Complainant in its Complaint, and as set out above, has established a case that the Respondent, who is not currently associated with the Complainant in any way, is not commonly known by the disputed domain name, and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name: the disputed domain name was used by the

Respondent to send an email to a Complainant’s supplier impersonating a Complainant’s employee, in

connection with a phishing scheme.

According to the WIPO Overview 3.0, section 2.13.1:

“2.13.1 Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale

of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account

access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or

legitimate interests on a respondent […].”

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

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C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following

circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of
the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable

consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business

of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial

gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of

confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of

[the respondent’s] website or location or of a product or service on [the respondent’s] website or location”.

Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s

trademark WILLIAM HILL in the gaming and betting field is clearly established and the Panel finds that the domain name in bad faith.

The Panel further notes that the disputed domain name was also used in bad faith since the Respondent was trying to impersonate the Complainant, in connection to a phishing scheme, with the purpose of

intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the

disputed domain name’s source, sponsorship, affiliation or endorsement. See, WIPO Overview 3.0,

sections 3.1.4 and 3.4. the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <williarnhill.com> be transferred to the Complainant.

/Edoardo Fano/

Edoardo Fano

Sole Panelist
Date: February 14, 2023