WIPO Domain Name Decision D2010-0589 for partouche-poker.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Groupe Partouche v. Domains Discreet / Madarin Data Ltd Pousaz Raymond Case No. D2010-0589 1. The Parties

The Complainant is Groupe Partouche of Paris, France, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Domains Discreet of Portugal / Madarin Data Ltd Pousaz Raymond of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar

The disputed domain name is registered with R. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2010. On April 16, 2010, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain name. On April 19, 2010, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2010 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 April 23, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 18, 2010.

The Center appointed Edoardo Fano as the sole panelist in this matter on May 25, 2010. 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.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that, in a scenario like the present one in which a privacy service is used, the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”, by sending communications to both the original and subsequent addresses and contacts made available through the Registrar.

The Center has rightly put before the Panel for consideration at its own discretion under the Rules the Complainant's unsolicited supplemental material filed together with the amendment to the Complaint.

In The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447, the panel described the position regarding supplemental filings in proceedings under the Policy as follows:

“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion.

The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules; see e.g. the decisions of WIPO Panels inWIPO Case No. D2000-0166 ,WIPO Case No. D2000-1151 ,WIPO Case No. D2000-1571 et al.,WIPO Case No. D2000-0270 and, recently,WIPO Case No. D2003-0229 et al. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”

In the present case, the Complainant's supplemental filings consist of further evidence of the Respondent's bad faith that the Complainant was able to find out when the Respondent identity was no longer “hidden” by the privacy service.

Although the existence of this material could not be known by the Complainant at the time of submitting the Complaint, the Panel finds this further material of minor importance when compared to the other evidence produced in the Complaint.

Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent's response.

The language of the proceeding is English, being the language of the Registration Agreement. 4. Factual Background

The Complainant is Groupe Partouche, an international leader especially in the field of casinos, but also restaurants, hotels and entertainement services as on-line gaming: it was created in France in 1973.

The Complainant is the owner of several trademark registrations containing the word PARTOUCHE in France and other countries, the oldest of which being:

- French Trademark Registration for GROUPE PARTOUCHE, No. 3263728, applied for in 2003.

The Complainant is also the owner of several domain name registrations containing the word PARTOUCHE, the two oldest being (registered in 1998) and (registered in 1999).

The Complainant provided evidence in support of its trademark and domain name registrations.

The Respondent's domain name was registered on March 16, 2005. At the time of the filing of the present Complaint, it pointed to a webpage making reference to the Complainant's on-line gaming activity with links to another website providing similar services. 5. Parties' Contentions A. Complainant

The Complainant states that the disputed domain name is confusingly similar to its trademark PARTOUCHE, with the mere addition of the word “poker”, which is generic or descriptive and does not change the fact that the Complainant's trademark is incorporated in full in the disputed domain name.

Moreover, 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 and use the disputed domain name and is not making a legitimate non-commercial or fair use of the disputed domain name.

The Complainant submits that the Respondent has registered, used, and continues to use the disputed domain name in bad faith.

In fact, the Complainant's trademark PARTOUCHE enjoys international reputation, in particular in the poker industry, and the Respondent could not have registered the disputed domain name without knowledge of the Complainant's trademark rights.

Moreover, the Complainant is a French Group and the Respondent is using the disputed domain name in a website in the French language for diverting Internet traffic to the Respondent's website for commercial gain.

By doing so, the Respondent is trying to use the reputation of the Complainant's trademark to advertise its own business and website, by claiming an affiliation with the Complainant and therefore causing confusion between the Complainant's trademark and the disputed domain name. B. Respondent

The Respondent did not reply to the Complainant's contentions.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, facts asserted by a complainant may be taken as true, and reasonable inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also 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 PARTOUCHE both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark PARTOUCHE.

Regarding the addition of the generic word “poker”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the word “poker” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant's trademark.

It is also well accepted that a top-level domain, in this case “.com”, may be ignored when assessing identity of a mark and domain name (see, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).

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). B. Rights or Legitimate Interests

The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of proof to the Respondent to demonstrate that it has a right or legitimate interest 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 the Policy, paragraph 4(a)(ii), has been satisfied. 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 that 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 had intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line 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.

As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant's trademark is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain name was confusingly similar to a trademark of a third party.

Moreover, the addition of the generic word “poker” further suggests the Respondent's registration of the disputed domain name was in bad faith, since the organization of poker tournaments is the Complainant's core business.

The disputed domain name pointed to a website with information in the French language regarding the activities of the Complainant and clearly suggesting some kind of connection between the Complainant and the Respondent.

The content of the website to which the disputed domain name was pointing further confirms the bad faith of the relevant registration and is a clear evidence of the disputed domain name being used in bad faith.

The disputed domain name was in fact used by the Respondent in order to divert Internet users to another website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.

The Complainant's trademark PARTOUCHE is widely known, especially in the poker field, and the Respondent was clearly aware thereof, since the website at the disputed domain name is full of references to the poker field and the Complainant's activity.

The Respondent is therefore intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark (See, e.g., Pfizer, Inc. v. Seocho and Vladimir Snezko,WIPO Case No. D2001-1199; Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784; AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA,WIPO Case No. D2002-0290).

Considering the above, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied. 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 disputed domain name be transferred to the Complainant.

Edoardo Fano
Sole Panelist

Dated: June 8, 2010

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