WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PartyGaming Plc v. OX5 Consulting L.L.C.
Case No. D2006-0470
1. The Parties
The Complainant is PartyGaming Plc, Gibraltar, United Kingdom of Great Britain and Northern Ireland, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is OX5 Consulting L.L.C., Dover, Delaware, United States of America, represented by Fr�d�ric Dechamps, Belgium.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006. On April 13, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 13, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May�11,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2006.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on May�23,�2006. 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.
After the Center’s notification of Respondent’s default the representative of the Respondent requested an extension of time for submitting a Response. Since the Complainant refused to accept such request and that the Respondent failed to raise any exceptional circumstances, the Center refused to grant the extension while informing the Parties that the Panel would hold the authority to extend the Response period. In order to ensure the Respondent a fair opportunity to present its case, the Panel issued on June 2, 2006, a Procedural Panel Order, pursuant to the Rules, paragraph 10(b),(c) and 12, granting a supplemental delay of 10 days for a Response to be prepared and filed. The Respondent failed to submit a Response within the time period granted.
4. Factual Background
A. Complainant
The Complainant is the parent of a group of companies which is one of the world’s leading online gaming companies, having been engaged in that business since 1997. In 1999 the Complainant registered the domain name and in July 2001 it launched the PARTYPOKER website.
The group is the owner of a number of trademark registrations for the word mark PARTYPOKER and for a device mark, in which the vocal “o” in the word Poker is designed as a circle with the “$” sign inside and decorative elements in the circle. The device mark is used on the Complainant’s website.
In particular, the group holds the following registrations for services in the field of on-line games and related services:
a) word mark PARTYPOKER
- registration no. TMA598288, dated December 22, 2003, in Canada;
- registration no. TMA619641, dated September 15, 2004, in Canada.
b) device mark PARTYPOKER with special device of the letter “O”
- Community Trade Mark registration no. 3605771 dated September�7�2005, with priority date of June 9, 2004;
- US registration no. 2986410 dated August 16, 2005, with priority date of December 10, 2003.
The group also holds registrations of the word mark PARTYPOKER in Australia, the Benelux countries, Japan and Switzerland, which were effected after January 2005.
B. Respondent
The Respondent registered on January 8, 2005, the domain name which it uses for a website with commercial links to various businesses, including online gaming businesses in competition with the Complainant (as evidenced by the Complainant with a copy of the respective website).
5. Parties’ Contentions
A. Complainant
The Complainant submits that its website has become the number one online poker site with annual revenue in excess of US $ 123 million. As of March�2005, the website had more than 6 million registered players. The website has been the subject of extensive advertising and promotion, including television and print- media advertising and has received substantial media coverage. As a result of the Complainant’s long and extensive use, advertising, promotion and public recognition, the trademark PARTYPOKER – inherently distinctive – has become an internationally well-known trademark.
The Complainant submits that (A) the domain name is identical or confusingly similar to its trademark PARTYPOKER in which it has rights; it points out in this connection that the domain name of the Respondent incorporates its trademark in its entirety and that the addition of the word “play” does not sufficiently distinguish the domain name from its mark which is well-known; (B) the Respondent has no rights ore legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent has failed to submit a Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (Rules, paragraph 14(b)).
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name consists of a combination of the trademark PARTYPOKER, which can be considered to be well-known in the field of online gaming, with the descriptive term “play” (the gtld “.com” cannot be taken into consideration when judging confusing similarity between a domain name and a trademark). Users may understand this addition in the sense that on the respective website they may play the Complainant’s poker game. Such or similar assumptions are always linked to the PARTYPOKER game and trademark, which clearly shows that the addition of the word “play” cannot exclude confusing similarity between the domain name and the trademark.
The Panel refers to the UDRP decisions PartyGaming Plc v. Kriss Vance, WIPO Case No. D2006-0456, and PartyGaming Plc v. Lewis Clipper, WIPO Case No. D2006-0457, with regard to the discussion on the Complainant’s “rights” to the trademark the complaint is based upon.
This Panel follows the findings in the above-mentioned decisions involving the same Complainant as in the present proceeding, see PartyGaming Plc v. Lewis Clipper, WIPO Case No. D2006-0457, in which the panel stated as follows�:
“Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrates that it has “rights” to the trademark the Complaint is based upon. The Panel notes that the trademark registrations annexed to the Complaint are not held by the Complainant itself but rather its subsidiaries or related companies. The Complainant claims, in addition to having registered trademark rights through its subsidiaries, that it has established valuable goodwill to the term “partypoker” through “long and extensive use, advertising, promotion and public recognition”.
The Panel refers to a recent decision involving the Complainant, PartyGaming Plc v. Kriss Vance, WIPO Case No. D2006-0456, in which the panel discussed the issue and found as follows�:
“In this particular case, the Panel notes from the Complainant Group’s website, that one of the Group’s key strategies is to “enhance the business through the integration of the Group’s existing brands under a single brand …”. Particularly in the absence of any challenge from the Respondent, the Panel is prepared to infer that existing registered trademarks held by subsidiary corporations within the Complainant’s group are probably held for the benefit of all companies within the Group, including the Complainant (whether as licensee or on the basis that the registered marks, including the Complainant’s mark, are held on trust for all members of the Group, including the Complainant).”
In conclusion the domain name is confusingly similar to the trademark PARTYPOKER of the Complainant.
B. Rights or Legitimate Interests
PARTYPOKER cannot be considered to be a descriptive word, in which the Respondent might have a legitimate user-interest. It is known as the trademark of the Complainant’s poker game services offered at its website, of which the registration in Canada clearly predates the registration date of the Respondent’s domain name registration. That the trademark PARTYPOKER is inherently distinctive has been proven by the Complainant with copies of registration certificates for the word mark PARTY POKER in Australia, the Benelux countries, Canada, Japan and Switzerland (the latter being a country where the registrar of trademarks applies strict standards with respect to terms that may be considered to be descriptive).
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent’s use of the domain name.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain name for its own legitimate commercial or non-commercial activities, if any, and it has not demonstrated any preparations for such use. On the contrary, the domain name leads to a search website with sponsored links and pop-ups to other websites, including websites of competitors of the Complainant. Even if the Respondent does not use its domain name to promote commercial activities of its own, the Panel is satisfied that providing a link to such websites cannot be considered to be non-commercial. It would make no sense for the Respondent to provide a link to a search site, if it where not to attract a fee, the more as such arrangements are common. Therefore the Respondent’s use of the domain name is commercial, but cannot be considered to be a bona fide offering of goods or services. Finally, for the same reason that the Respondent apparently does not promote its own commercial activities with the help of this domain name, the Respondent has not been able to become known under the name.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no right or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain names in bad faith.
Paragraph�4(b)(iv) of the Policy lists as one of the typical situations of evidence of registration and use in bad faith that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
The Complainant has submitted evidence showing that the conditions set out in paragraph�4(b)(iv) are present in this case. Taking into account the widespread use of the Complainant’s trademark PARTYPOKER, and the fact that the Complainant’s device mark registration PARTYPOKER in the United States, where the Respondent is domiciled, clearly predates the Respondent’s registration of its domain name , there can be no doubt that the Respondent knew the gaming services, offered under the Complainant’s well-known trademark PARTYPOKER, when it registered the domain name. Otherwise it would not have chosen a combination of the Complainant’s trademark with the term “play” that will be understood by Internet users in the sense that on the respective website one may play the poker game offered by the Complainant.
In view of this meaning of the domain name, Internet users, when typing the domain name, will expect, to arrive at a website of the Complainant or at least a website somehow related to the Complainant. Therefore, by using the domain name for a search engine website that provides sponsored links to other websites, in particular websites of competitors of the Complainant, the Respondent attempts to attract Internet users to these websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Even where Internet users, when they view the Respondent’s web page, realize that it is not connected with the Complainant, the Respondent may still profit from their initial confusion, since they may be tempted to click on the sponsored links.
Such exploitation of trademarks to obtain click-through commissions from the diversion of internet users has been considered in many decisions to be a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy (See L’Oreal, Biotherm, Lanc�me Parfums et Beaut� & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 with references).
In conclusion the Respondent is pursuing an activity, which must be considered to be bad faith under the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Gerd F. Kunze
Sole Panelist
Dated: June 17, 2006
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