U.K.-based online operator Sportingbet last week lost a long-standing domain name dispute with a Canadian company seeking to register Sportingbet.net and Sportingbets.biz, reported IT and e-commerce legal news source Out-law.com.
Sportingbet subsidiary Internet Opportunity Entertainment took Zubee.com Networks to the World Intellectual Property Organization's (WIPO) Arbitration and Mediation Center on grounds that Zubee had no legitimate interest in the domains, moreover, that Zubee's desire to secure interest in the domains was in bad faith.
In its defense, Zubee alleged that Sportingbet initiated proceedings only after the two companies were unable to settle on a price for the domain names.
The domain tussle settled before the WIPO was not the companies' first.
In an earlier case before a different domain dispute forum, the Asian Domain Name Dispute Resolution Center (ADNDRC) ruled in favor of Zubee, after finding that Sportingbet had not proven its rights to the name.
The WIPO panel offered an almost identical judgment, and Zubee will retain the name.
Without citing sources, Out-law reported that in order to gain control of a domain name from someone else, a company must 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 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 trademarks and that they were identical or confusingly similar to Zubee's domain names. Although the trademarks were registered after the domain names, the panelist, Peter Nitter, said this was not relevant.
With regard to establishing rights and/or legitimate interests, Out-law reports 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. The news source also said that the heavier burden of proof would lay with Zubee, who must rebut those claims and subsequently 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 trademark 'Sportinbet' at the time of the registration of the contested domain names Sportingbet.net and Sportingbets.biz.
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 case before the ADNDRC.
Click here to view the WIPO ruling.