UDRP Thinks 32x.com Is “Identical or Confusingly Similar” to TM For 32Red & Gives Away The Domain

Well another day another horrible decision

A three member UDRP panel just gave away the domain name 32x.com to the Trademark holder of 32Red.

I have no idea of how 32x.com is “Identical or Confusingly Similar”  to a trademark for 32Red but that is what the panel found.  The panel also disregarded the fact that the complaints waited some six years before bringing the complaint.

John Berryhill represented the domain holder.

The complaint was brought by two Complainants.

The first complainant was 32Red Plc of Gibraltar, Overseas Territory of the United Kingdom and the Second Complainant is Trafalgar Media Limited of Gibraltar (together ‘the Complainant).

The Respondent was Baysound LLC of San Pablo, California

Here are the relevant facts and findings:

The Complainant carries on business as a provider of online gambling services and has done so since 2002 under the trade mark 32RED.

The Second Complainant is a wholly owned subsidiary of the First Complainant.

The Complainant advertises and promotes its “32 Red” brand extensively.

The Complainant contends that it is commonly known by its customers and the industry as “32”.

The Complainant owns the following registered trade marks:

32RED (word) under European Community trade mark number 2814424, registered on August 16, 2002;

32RED (figurative) under European Community trade mark number 2907426, registered on October 18, 2002;

32 (word) under United Kingdom trade mark number 2509861, registered on June 5, 2009

32 (word) under European Community trade mark number and 8398695, filed on July 1, 2009 and registered on January 21, 2010.

The Complainant has operated its main website at “www.32red.com” since 2002.

The Domain Name was first registered on June 4, 1996 by the company 32X Corporation in relation to web development services.

The Domain Name was acquired by Fred Hill on or about July 16, 2006. It was then transferred to the Respondent on or about August 1, 2006. Mr. Hill appears to own and manage the Respondent.

In 2006, the website connected to the Domain Name (‘the Website’) was an online gaming site branded “The Online Casino”. As of October 2007, the Website included links to the Complainant’s competitors such as 888.com and Party Poker.

“The Panel is satisfied that the Complainant has clearly established registered rights in the trade marks 32RED and 32.”

“The Panel is also satisfied that it has established unregistered rights in the trade mark 32 RED, however, the evidence submitted to establish unregistered rights in the mark 32, i.e. that it was commonly known by customers and the industry as “32” was rather thin.”

“The trade marks are not identical to the Domain Name. ”

“The question is whether the mark is confusingly similar to the Domain Name. ”

“The test for confusing similarity under the UDRP as stated in paragraph 1.2 of the WIPO Overview 2.0 is as follows:

“The threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy the test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusingly similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trade mark with the alphanumeric string in the domain name. Whilst each case must be judged on its own merits, circumstances in which a trade mark may not be recognizable as such within a domain name may include where the relied upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name.”

“The WIPO Overview 2.0 also makes it clear that the applicable top-level suffix in the Domain Name, in this case “.com”, is generally to be disregarded under the confusingly similarity test. The content of the website should also be disregarded in the threshold assessment of risk of confusingly similarity under the first element of the UDRP.”

“The Panel considers that the addition of the letter “x” does not negate the confusing similarity encouraged by the Respondent’s complete appropriation of the 32 trademark in the Domain Name.” (although the only trademark the panel said it considered valid was 32Red above)

“”Applying the test under the UDRP, the Panel has to consider the likelihood of Internet user confusion when comparing 32 and 32RED with <32x.com> or 32 with “32x” and 32RED with “32x” as the .com suffix may be disregarded in the case.”

“The common elements in the two marks are “32”. “32” is the first and dominant feature of both the Complainant’s trade marks as well as the Domain Name.”

“The additional elements “red” in one of the trade marks and “x” in the Domain Name are common descriptive words and therefore insufficient to prevent threshold Internet user confusion.”

“The Panel finds that the Domain Name is confusingly similar to both the 32 and 32RED trade marks in which the Complainant has rights.”

“”The Respondent’s case is that it has “expectation interests in the use of the Domain Name for a bona fide purpose” prior to the notice of the dispute. From what the Panel understands, the “32x” name being one associated with the Sega gaming console has particular significance in the computer technology field and hence the reason for the Respondent’s acquisition of the name to use it for casino gaming services. The Panel finds the argument difficult to follow. Had the “32x” name been acquired and used for computer gaming use, then perhaps the argument has some persuasive force. However, casino gaming and computer games services are very different services. Further in the area of casino gaming services, there is a major player that also uses the mark 32. It seems too much of a coincidence. Such use would not be considered a bona fide offering of goods or services since the services offered are competitive with someone who has rights to a trade mark which is confusingly similar to the Domain Name.”

“The Respondent alleges that the Complainant has delayed bringing a complaint for some six years since the registration and use of the Domain Name by the Respondent. ”

As stated in paragraph 4.2 of the WIPO Overview 2.0, prior UDRP Panels have recognized that that the doctrine of the defence of laches does not generally apply under the UDRP and delay in bringing a complaint does not of itself prevent a complainant from being able to succeed under the UDRP.”

“It is not clear why the Complainant did not file the Complaint earlier.”

“In this particular case, the Panel does not think that the fact that the Respondent has been using the Domain Name for six years gives the Respondent rights or legitimate interests in the Domain Name since the use of the Domain Name was not used in connection with a bona fide offering of goods or services”

“The question of rights or legitimate interests therefore turns upon the Panel’s assessment of whether or not there has been registration and use in bad faith.”

“The date to consider for assessing whether registration was in bad faith under this requirement is the date on which the Domain Name registration was acquired by the Respondent. Paragraph 3.7 of the WIPO Overview 2.0 makes it clear that the transfer of a domain name to a third party does generally amount to a new registration under the Policy.”

The Consensus View in Paragraph 3.1 of the WIPO Overview 2.0 states that:

“…when a domain name is registered by the respondent before the complainant’s relied upon trade mark right is shown to have been first registered (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”

“The Panel is therefore limited to the consideration of the Complainant’s 32RED trade mark under this limb of the test as the trade mark registrations for the 32 trade mark post dates the Domain Name and the Complainant has not here established that it has unregistered trade mark rights in 32 prior to the registration of the Domain Name.”

“The Panel accepts the Complainant’s contention that the Domain Name was registered in bad faith.”

“The Complainant’s evidence at Exhibit 12 shows that from 2003 to 2008 the Complaint’s website had a high profile in the industry and a strong reputation based on numerous awards. Accordingly, it is unlikely that the Respondent, being involved in the online gaming industry and with casino gaming affiliates, was not aware of “www.32red.com” as an online gaming website in 2006 and that the choice of “ 32x”’ was merely coincidental. ”

“The Panel’s view is that the Respondent intentionally acquired the Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark as to the source of the Respondent’s website and the gaming services provided therein. That being the case, the Panel does not need to decide whether the registration of the Domain Name was in bad faith under any other grounds.”

“The Panel also concludes that the actual use of the Domain Name was in bad faith as the website has links to the competitors of the Complainant.”

 

Comments

  1. says

    UDRP was designed at a time when domains did not have the value they do today.

    As domains go up in value, and bad decisions keep being made, there is a total incentive for companies to just try to steal your domain on the cheap.

    Brad

  2. says

    The last line is key: “The Panel also concludes that the actual use of the Domain Name was in bad faith as the website has links to the competitors of the Complainant.”

    Simply point your brandable domains to a landing page (example: SignatureVegas.com) with no ads and you will be less likely to lose a future UDRP ruling.

  3. Michael H. Berkens says

    Buzz

    Don’t try to figure it out

    Its a bad decision

    The UDRP was put into place to quickly adjudicate bang on TM disputes

    There is no TM for 32X in play here.

    They gave away the domain 32x.com based off a TM for 32RED

  4. says

    I agree with Buzz. I just recently pointed all of my domains to a landing page with zero ads. PPC pays next to nothing nowadays, so no use giving them another tool to take your domain.

  5. says

    I also think the decision stinks. But keeping PPC links off the landing pages takes away the “usage in bad faith” in most cases. They exploit the system for their benefit. So for me at least I took that benefit away.

  6. says

    UDRP at the vary least needs some appeal process.

    The fact that one person, can make some horrible decision, with limited actual authority, and turn over someone’s property is ridiculous.

    The system can easily be rigged when so much power rests on one person, and no way to be hold them accountable.

    Brad

  7. Michael H. Berkens says

    Windy

    From my observation it looks like the number of complaints on generic UDRP’s as well as decisions going against the domain holder of generic domains is accelerating

  8. Joseph says

    Being both domainer and gambling affiliate myself, I should say that the Respondent in this case definately _used_ the domain name in bad faith. 32+(anything) has strong association with the Complainant in online gambling niche. The Repondent used 32x.com for a gambling portal. Point…
    So it seems that this Panel simply decided that it would be somewhat more honest to transfer the domain, and that is why a questionable finding of (confusing) similarity between 32x and 32red was made.

    In todays list of WIPO decisions, there are 2 good decisions though. Johnson & Johnson lost the case for tucks.com. And, not so well-known “Dextra Asia Co., Ltd. ” was found guilty of reverse domain name hijacking trying to secure dextra.com which was simply parked: “… it appears to the Panel that the Complainant has simply embarked on a course to obtain the Disputed Domain Name, if not by negotiation, then by launching this Complaint, but knowing that there was no real prospect of being able to demonstrate registration and use in bad faith…The Panel is in this instance prepared to make a finding of reverse domain name hijacking.”

    Kudos to panelists Jeffrey D. Steinhardt, William R. Towns, Diane Cabell, Alistair Payne, Francine Tan and Tony Willoughby for these 2 todays decisions

  9. BrianWick says

    Joseph,
    So anything in the gambling industry that incorporates “32” is an infringement on 32RED ?

    That means GAMBLE32 and 32JOSEPH infringe on 32RED ?

  10. Domainer Extraordinaire says

    Hell go for 32.com and really score. Games and gambling not too far apart.
    Too bad 32X.com is not worth suing to stop the transfer.

  11. Trico says

    The fact that one person, can make some horrible decision, with limited actual authority, and turn over someone’s property is ridiculous.

    The system can easily be rigged when so much power rests on one person…”

    Brad,

    Actually it was a 3 member panel which I think makes this decision even worse.

    The second line Mike wrote above says:

    “A three member UDRP panel just gave away the domain name 32x.com to the Trademark holder of 32Red.”

  12. Joseph says

    BrianWick – yes, indeed… 32RED happens to be extremely well-known in online gambling niche (not offline gambling, not gaming) with its “32” brand, they even managed to secure a trademark for “32” alone in the appropriate class. Therefore, one should better not start online gambling sites like gamble32.com or 32joseph.com. Similarly, one should better not start offline pizza business incorporating “hut” word or image – due to PizzaHut TM.

  13. says

    All hell is breaking loose now in this industry.

    Who says Domaining is not dangerous and full of BS?

    Remember the 1st domain you registered “BullS” which is always BS …and now it is getting big, so there you go, the fun is just beginning.

    Domaining is not for faint hearted !!

  14. BrianWick says

    “Domaining is not for faint hearted !!”

    BullS is correct – although “Domaining” is not a word I and many others do not associate with ourselves – Domain Investing (as I prefer) is no where close for the “faint hearted” – something Panelist Richard W Page may be coiming away of – repeating myself.

    Joseph – what term do I search on the PTO for the relevanmt 32 Mark for gaming services ?

  15. readthedecision says

    “respondent was also in the online gaming business.” (paraphrase)

    can you see where this is going?

    “the choice to acquire the 32x.com domain, and use it to promote online gambling, was not arbitrary.” (paraphrase)

    need we say more?

    the smart domainer in this story is the one who was using it to market web development services and sold her rights to the respondent.

  16. Michael H. Berkens says

    Its interesting that a while back when Facebook was on the move to get domains starting in “face” or ending in “book, the internet world went crazy talking about overreaching, and how this company could possibly try to own the word Face or Book.

    Now there are a bunch of you that want to give anything in the world of gambling to this company that doesn’t have a TM on 32 but on 32Red and by the way a site I never heard of, its not Wynn or the Sands after all.

    Now I’m not an unreasonable guy.

    If the domain at question was 32black.com or 32casino.com or 32blackjack.com or 32craps.com, we might have a different discussion.

    If the domain name was even 32R.com or 32rd.com we might have another discussion

    But 32black takes down 32x.com?

    How about 32xxx.com or 3xxx.com

    Oh crap, 3xxx.com that my name and I never heard of these guys.

    You get the idea

  17. Ben Elza says

    1. x is a letter, it is the letter X
    2. Red is a word and it is a name of a color red and it has three letter in it.
    The above two points conclude that x is NOT similar NOR close to RED

  18. Back in the real World says

    MHB –

    This is blatant, just because you havent heard of 32Red doesnt make it less so. If I put up a website on 711x.com with links to Walmart Id expect to lose the domain.

    There are plenty of UDRPs that are wrong, this is not one of them.

    On another note, you say that more companies are trying to get domains through this process, are they being encouraged by lawyers who are finding possible cases then approaching plantifs who inform them of the domain they did not know existed up until then, like ambulance chasers. I havent looked at who is representing who however it may be interesting to do so.

  19. pissed says

    out of hand.
    I believe that a more unbias response needs to come from a focus sort of survey and ask them if they are confused. 100 people majority rule.
    “Mam… what color do you think of when I say the letter….x?”
    answer: red of course
    “and the letter k?”
    answer:burnt amber
    huh?

    Perhaps we need a new panel? I realize no one wants to call it what it appears because we need tiptoe but Im passionately upset and much dumber having read this. The only thing I see is a new business I may as well go into and that is creating TM’s for obvious intent.

    P.S. better lock up any of your 3 character .coms – Im gunnin for ya! Whoever owns q8z I was always confused with a posterpedic bed. Wha? Doesnt everbody?

  20. Ben Elza says

    @Back in the real World

    “clueless is your father failing to put on a rubber”
    Is your statement above confusingly similar to ,” cluless is your father failing to put on a rubber when he was with me ” !

  21. says

    The worst part of all of this is that they, now, will be able to take 32.com, as it is a gaming site. Under their trademark for “32”, general gaming is one of the main categories. 32.com also has casino games on their site, so WIPO will probably just hand it over as this has now created a precedent.

    I would take them to court, but I just don’t have the money. I hope that the owner of 32.com has a lot of money.

  22. says

    By the way,

    “Back in the real World”, you do not know about that which you are talking.

    Type 32x on Google or Yahoo. I am first page. I based my site on 32x traffic, which is large. 32x existed decades before their company.

  23. John Berryhill says

    “1. x is a letter, it is the letter X
    2. Red is a word and it is a name of a color red and it has three letter in it.
    The above two points conclude that x is NOT similar NOR close to RED”

    That’s pretty much what I thought.

    32 is red on a roulette wheel. I guess these guys want a cut every time it comes up.

  24. Back in the real World says

    32x robbed by Wipo –

    I would agree with you 100% if the original use of the domain, which predates 32red, was that of a casino however it wasnt.

    So back to my original example – if 711x.com is used as a site for training courses then in 2002 7-11 the store opens up on 711.com which is followed in 2007 by a change of usage by 711x.com to a landing page with links to Walmart I would have to agree that the usage is in bad faith.

    Please tell me if the above scenario is not how 32x.com panned out and I am wrong, because that what I see.

    Ben Elza –

    LOL, yeah something like that.

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