Alexander Hall v. Harry Macadam / AutoKey Squad Ltd
Claim Number: FA1608001687505
Complainant is Alexander Hall (“Complainant”), represented by Terrence McDermott of Mogers Drewett LLP, United Kingdom. Respondent is Harry Macadam / AutoKey Squad Ltd (“Respondent”), represented by James Love of James Love Legal LTD, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <elitebet.com> and <elitebet.net>, registered with Tucows Domains Inc. (sometimes referred to herein as the “Disputed Domain Names”).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kendall Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2016; the Forum received payment on August 11, 2016.
On August 9, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <elitebet.com> and <elitebet.net> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@elitebet.com, postmaster@elitebet.net. Also on August 12, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 30, 2016.
On September 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall Reed as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Respondent does not have rights or legitimate interests in respect of the Disputed Domain Names.
Complainant and Respondent are former business partners who worked together in the establishment of Elitebet Bookmarkers Limited, a company incorporated in Uganda on 26 September 2011. With the approval of both Complainant and Respondent, EBL traded at all times under the name of “Elitebet”, providing online gambling services in Uganda and Kenya. It continues to do so today.
Respondent resigned from his position within EBL and transferred his shares back to the company in or around 2012.
Since resigning his position with EBL, Respondent has purported to trade as an intermediary in online betting through a company known as Elitebet Trading Limited (“ETL”). This company was dissolved on 17 May 2016.
Furthermore, when registering the Disputed Domain Names, Respondent gave as the registrant’s organization “Autokey Squad Limited”, which is a UK company incorporated on 28 July 2009 and voluntarily dissolved on 15 March 2016. This entity has never had any involvement in the business of online gambling nor any connection to Elitebet, save for Respondent himself. This entity never had any legitimate interest in the Disputed Domain Names. The very fact that Respondent provided this entity as the name of his organization when registering the Domain Names indicates that such registration was not for any legitimate purpose pursuant to the Policy.
Respondent has acted in bad faith pursuant to the Policy.
Respondent was at all times aware of Complainant’s business and of Complainant’s use of the mark “Elitebet”. Respondent acted in concert with Complainant in establishing EBL in the first place. Furthermore, following Respondent’s resignation from his position within EBL and selling his shareholdings in EBL back to the company, Respondent was aware that EBL continued to trade under the mark “Elitebet”.
Additionally, Respondent’s bad faith is demonstrated by his registration of the Disputed Domain Names in the name of his organization, Autokey Squad Limited. This company is not and has never been engaged in the business of online gambling, nor any related business. Nor has this company ever traded under the name “Elitebet” or any name similar.
Additionally, during the time that ETL operated, it purported to trade through the Disputed Domain Names under the identical name of “Elitebet”, and further, sought to use the Disputed Domain Names and the mark “Elitebet” in bad faith and in an attempt to damage the business of Complainant. In particular, Respondent has done so by:
1) Causing the domain name “elitebet.net” to automatically redirect to the domain name “elitebet.com”;
2) Displaying warnings within “elitebet.com” designed to convey the impression that Complainant’s business is untrustworthy or otherwise dubious;
3) Utilizing the “Elitebet” name in order to divert email traffic, and consequently prospective business, away from Complainant; and
4) By advertising so called “International Partners” operating in Uganda and Kenya, which are precisely the countries in which the Complainant operates.
B. Respondent
At all relevant times, Respondent has had rights and legitimate interests in respect of the Disputed Domain Names.
Respondent has used the ELITEBET name since at least 2006 when he took ownership thereof. Thereafter, and before Complainant first made contact with Respondent on 16 May 2011, Respondent has used the Disputed Domain Names for legitimate business purposes.
These legitimate business purposes have related to gambling services and similar ventures. In 2006, ELITEBET, under the control of Respondent, became licensed as a UK bookmaker by the Haringey Magistrates. When the Gambling Commission was set up in 2007, ELITEBET was among the established UK betting brands automatically issued a license to operate in the UK under the grandfather rights system for existing established betting operators.
The ELITEBET name became a leading UK betting brand and has been used continuously by Respondent since 2006, initially offering traditional betting shop services to UK customers. In 2007, ELITEBET broke new ground for VIP high rolling betting customers by offering London’s first in-running betting exchange trading center aimed at full time professional gamblers. Other services offered under the ELITEBET brand have included bet brokerage. Today, under control of Respondent, ELITEBETE offers a VIP introduction and premium betting concierge and affiliate service for its exclusive global client base from the UK and abroad. This is made clear on Respondent’s website available through both the Disputed Domain Names. As a result of these activities, Respondent has become known as “Mr. ELITEBET”, both in the UK and internationally.
In conducting these business activities, Respondent has operated under several business entities, some as noted by Complainant and sometimes on his own behalf as a sole trader. All goodwill in the name ELITEBET is his, and these businesses have operated under this name with his permission.
Respondent continues to use the Disputed Domain Names today through his online presence.
Respondent has not acted in bad faith under the Policy.
Complainant cannot establish that the Disputed Domain Names were registered in bad faith because they were registered about 5 years before any interaction with Complainant, during which time Respondent used the Disputed Domain Names for legitimate business purposes.
Respondent and Complainant did engage in discussions about joining forces to engage in a sports betting business. On 16 May 2011, Complainant first approached Respondent and began a dialogue about the subject. At that time, Complainant was a computer programmer writing software for a business operating betting shops in Cyprus. Complainant undertook some computer programming for Respondent on an automotive business Respondent was running. In these discussions, Complainant explained to Respondent that Complainant wished to set up a gambling business in Uganda and Kenya, and wanted to cooperate so as to benefit from the experience and reputation built up by Respondent. Respondent agreed to cooperate with Complainant to some extent and that a new company, EBL, could have Respondent’s permission use the name ELITEBET in Uganda and Kenya for limited and local purposes. Prior to this 2011 venture, Complainant had never made any use of the name ELITEBET.
Complainant created a business plan for this possible business venture, but Respondent did not give his permission for the use of the Disputed Domain Names, and he retained them for use with his own existing business.
The noted business plan drafted by Complainant contained two significant admissions concerning Respondent’s ownership of the name ELITEBET. On the first page of the business plan, the following statement appeared:
“Mr. Macadam brings to the company his incomparable knowledge of the world of sports bookmaking, he is the owner of Elitebet in the UK, an established family bookmaking firm based in North London.”
And on its last page:
“Harry Macadam’s history includes owning Elitebet in the UK, being involved in a number of operations across the Eastern Mediterranean.”
On or around 26 November 2011, Respondent withdrew his cooperation with this proposed business venture with respect to Uganda and Kenya and no longer gave EBL permission to promote an online/ electronic/ internet betting business under the ELITEBET brand. Respondent was therefore astonished to discover some months later that Complainant had revived his plans to launch a betting business promoted under the ELITEBET brand—a brand to which Complainant no longer had any authority from Respondent to rely on—without making any further contact with Respondent.
Complainant is the owner of a UK trademark registration for the mark ELITEBET. The trademark application for this mark was filed on or about 22 January 2015, and the trademark registration issued on or about 26 June 2015.
Respondent is the owner of the domain names <elitebet.com> and <elitebet.net>. These domain names were initially registered in 2006 by a third party and were acquired by Respondent, also in 2006. Since that time, Respondent has used these domain names (the Disputed Domain Names) in connection with on-line gambling and related services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names have been registered and are being used in bad faith.
Preliminary Issue – The Panel’s Authority with Respect to the Asserted Disputes
The Complainant has raised a number of issues that are beyond the scope of the Uniform Domain Dispute Resolution Policy, including trademark, contract, and competition issues. The Panel has no authority with respect to these issues, and the Panel does not address these issues in this decision. See, e.g., Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
However, Complainant has also raised issues that do fall within the scope of the Policy. The Panel finds that these issues can be addressed directly and independently, and the Panel does so herein below. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Telebrands Corp. v. Khalid, FA 467079 (Forum May 31, 2005) (decided to proceed with the dispute over the <telebrandspakistan.com> even though both the complainant and the respondent had registered marks in TELEBRANDS and TELE BRANDS PAKISTAN, respectively, because the panel thought it would be unfair and costly to treat the case as a trademark dispute when the “gravamen” of the proceeding was the alleged misuse of the domain name in dispute).
Complainant is the owner of the UK trademark registration ELITEBET (hereinafter sometimes referred to as “Complainant’s Mark”), and thereby meets this necessary threshold requirement. See Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum July 11, 2015) (holding, “Complainant’s ownership of UKIPO trademark registrations for the CITI trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Disputed Domain Names are identical or confusingly similar to Complainant’s mark. The expression “elitebet” within both Disputed Domain Names is identical to the mark ELITEBET, and the appended gTLDs of <.com> and <.net> are insufficient to create a meaningful distinction. See NAED Education and Research Foundation, Inc. v. Domain Administrator / Marketing Express, FA 1602497 (Forum Mar. 23, 2015) (“The Panel agrees that the disputed domain name is identical to the NAED mark, and that the addition of a gTLD to the mark is not sufficient to rebut a finding of confusing similarity under Policy ¶ 4(a)(i).”).
For purposes of the first prong of the Policy, the date on which Complainant first acquired its rights to the Trademark is not relevant, only that it did so at some point.
As such, Complainant has established the first prong of the policy.
Complainant demonstrates that Respondent is not known by the Disputed Domain Name; Respondent’s name is Harry Macadam. And, when Respondent registered the Disputed Domain Names he did so under the name “Autokey Squad Limited”, which is also not the same or similar to either of the Disputed Domain Names.
Further, Complainant alleges, and provides some factual support for the proposition, that Respondent has used the Disputed Domain Names to present “warnings” on its website designed to convey the impression that Complainant’s business is untrustworthy or otherwise dubious, which, if found by the Panel to be true, could lead to the conclusion that the Disputed Domain Names are being used by Respondent in bad faith under the third element of the Policy, Policy paragraph 4(b)(iii).
As such, Complainant has carried it burden under this second prong of the Policy. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent responds that at all relevant times it has used the Disputed Domain Names in connection with on-line gambling and related services. This is a legitimate and bona fide offering of services, and such a use would satisfy the requirement of Policy paragraph 4(c)(i), provided however that Respondent’s registration and use of the Disputed Domain Names is not otherwise in bad faith under the third prong of the Policy. See Electric Mirror, LLC v. Eric Reao. FA 643238 (Forum Nov. 24, 2015) (“Whereas the sale of mirrors on the internet is a legitimate commercial activity and, in the vernacular sense, is a bona fides activity, Panels have routinely held that for purposes of the Policy[,] a use of a disputed domain name that is in bad faith under policy paragraph 4(b) precludes a finding in favor of a respondent with respect to rights or legitimate interest in a disputed domain name under Policy paragraph 4(c)(i)).”
Whether this particular issue is analyzed under the second or third prongs of the Policy is somewhat a matter of preference for a panel. This Panel believes it is better addressed under the third prong of the Policy because the question is one of bad faith. As can be seen immediately below, the Panel finds that Respondent did not register the Disputed Domain Names in bad faith, and as such, Respondent has a right and legitimate interest in respect of the Disputed Domain Names.
As such, Respondent has carried its burden, and Complainant has failed to establish the second prong of the Policy.
The Panel finds that Respondent did not register the Disputed Domain Names in bad faith because the Disputed Domain Names were initially registered by a third party, and thereafter almost immediately acquired by him, some 5 years before the Complainant acquired trademark rights in the Complainant’s Mark. It is logically impossible for Respondent to have acted in bad faith with respect to rights that did not exist at the time. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered of used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Aptus Tech L.L.C. v. Name Administration Inc. (BVI), FA 503000 (Forum July 17, 2013) (“Complainant asserts that it first used the KLPZ mark at least as early as April 30, 30, 2011. Its registration of the mark issued on March 30, 2010. The disputed domain name was registered on September 24, 2004. Under these facts, it is inconceivable that Respondent may be found to have registered the domain me in bad faith.”).
The foregoing analysis is not altered by Complainant’s allegations that Respondent recently used the Disputed Domain Names to commit trade libel on Complainant, and that Respondent has recently used the Disputed Domain Names to compete with Complainant, even if the Panel found these allegations to be true, which the Panel refrains from doing.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <elitebet.com> and <elitebet.net> domain names REMAIN with Respondent.
Kendall C. Reed, Panelist
Dated: September 27, 2016
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