The Complainant is Pocket Kings Limited of Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Owen Webster of Beirut, Lebanon. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2011. On April 6, 2011, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On April 7, 2011, F transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2011.
The Center appointed John Swinson as the sole panelist in this matter on May 17, 2011. 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. 4. Factual Background
The Complainant is Pocket Kings Limited, a company that provides technology and marketing consulting services to the online poker industry.
The Respondent is Owen Webster. Little information is known about the Respondent.
The disputed domain name was first registered on March 28, 2005. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions:
Identical or Confusingly Similar
The Complainant was founded with the goal of creating the best online poker experience anywhere. The Complainant provides technology and marketing consulting services to the online poker industry and one of the fastest growing poker sites, and . The Complainant’s “Full Tilt Poker” brand is extremely well-known.
“Full Tilt Poker” was conceived in 2003 and officially launched in 2004. It is well-known for its incorporation and sponsorship of poker professionals who play an integral part in the company’s marketing strategy.
The Complainant is the sole proprietor of various United Kingdom and European Union registered trademarks incorporating Full Tilt Poker.
The Complainant actively uses these trademarks on websites at the following domain names:
;
;
.
The above three domain names were registered in 2002 and 2003.
Although registration of the disputed domain name predates the complainant’s trademark registrations, this is not relevant to a consideration of this element (see Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827).
The Complainant therefore submits that it has trademark rights in Full Tilt Poker and that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademarks as it is essentially a typo-variant of the Complainant’s registered trademarks.
First, the TLD denominator is irrelevant and should be ignored when assessing confusing similarity (see Turkcell Iletisim Hizmetleri A.S. v. kara tara, WIPO Case No. D2010-1184).
Further, the Complainant submits that any differences between the Complainant’s trademarks and the disputed domain name are nominal. The disputed domain name differs from the Complainant’s trademarks given there are no spaces between the words, the second “l” from the term “Full” is deleted and the prefix “www” has been added.
Given spaces are not permitted in domain names, the absence of spaces in the disputed domain name does not render the disputed domain name distinct from the Complainant’s trademarks in anyway.
Further, the disputed domain name is confusingly similar to the Complainant’s trademarks as only one letter from the Complainant’s trademarks has been deleted in the disputed domain name. The key feature of the disputed domain name is “fultiltpoker”. Therefore, the inclusion of the altered trademark in its entirety aggravates the finding of confusing similarity as the visual and aural elements of this part of the disputed domain name remain the same.
The deletion of one letter is insignificant and does not change the overall impression created. The Complainant contends that by registering mistypes of the Complainant’s trademarks, the Respondent intentionally set out to confuse Internet users.
It is highly likely that upon viewing the disputed domain name, members of the public and Internet users will assume the domain name is registered by, or affiliated with, the Complainant. This clearly indicates that the disputed domain name is confusingly similar to the disputed domain name.
Further, the addition of “www” does not distinguish the disputed domain name from the Complainant’s trademarks (see e.g., Rockstar Games v. Juan Carlos Azurdia, WIPO Case No. D2007-1557).
The addition of the acronym “www” is indicative of the practice of typosquatting, whereby domain names are designed to purposefully exploit users’ typographical mistakes when seeking the Complainant’s official website. In this case it would be targeting users who erroneously omit the period between “www” and the misspelt version of the Complainant’s trademarks. This indicates the Respondent intended to create a domain name confusingly similar to the Complainant’s trademarks.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademarks as the overall impression and connotations of the disputed domain name appear to relate to the Complainant’s brand, trademarks and official websites.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name. Prior to notice of the current dispute, the Respondent had not made any use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Rights and legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant (see e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050).
Although the Complainant’s trademark is not reproduced exactly, the similarity is such that it demonstrates an intention on the part of the Respondent to create an association with the Complainant’s brand. These minor changes do not create a new mark in which the Respondent has rights (see American Online Inc. v. John Zuccarini, WIPO Case No. D2000-1495).
Further, typosquatting does not constitute a legitimate use of a trademark (see e.g., E, Inc v. Yingkun Guo, dba this domain name is 4 sale, WIPO Case No. D2006-0694).
The disputed domain name has always been used as a pay-per-click (“PPC”) parking page, providing links to services within the same field as the Complainant. The links are primarily to websites of direct competitors of the Complainant. However, there is also a link to the Complainant.
The fact that the disputed domain name resolves to a PPC parking page indicates the Respondent’s intent for commercial gain. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Instead the Complainant is misleadingly diverting consumers to its website. As such, the Respondent’s actions tarnish the Complainant’s valuable trademarks.
Further, parking pages cannot give rise to rights and legitimate interests where the links are related to the trademark value of the domain name (see Asian World of Martial Arts Inc v. Texas International Property Associates, WIPO Case No. D2007-1415). The Respondent is not operating a generic parking page as the current website focuses exclusively on the entertainment industry in which the Complainant operates and trades on the goodwill of the Complainant’s trademarks.
The Respondent has not been licensed by the Complainant or authorized in any way to use the Complainant’s trademarks. Moreover, the Respondent is not affiliated with the Complainant in any way and as such, could not make any legitimate use of the disputed domain name given the fame, reputation and goodwill associated with the Complainant’s brand and trademarks.
The Respondent also appears to have never been known by the disputed domain name and it does not appear the Respondent owns any trademarks in the disputed domain name.
Registered and Used in Bad Faith
The disputed domain name was registered and is being used in bad faith.
The Complainant has accrued widespread and valuable goodwill and reputation in the FULL TILT POKER brand since 2004. Although the Complainant’s trademarks may have been registered after the registration of the disputed domain name, the Complainant submits that it is inconceivable that the Respondent was not aware of the FULL TILT POKER mark and the Complainant’s rights in such a mark at the time of registration.
In any event, it may be the case that the Respondent did not hold the legal title to ownership and control over the disputed domain name at the time of registration in 2005 because the WhoIs record shows that another entity, Gotiao Inc, was listed as the registrant of the disputed domain name. The Respondent was not listed as the owner until sometime between June and August in 2009. The Complainant therefore submits that the Respondent and initial owner are two separate entities.
This is relevant because the Complainant’s trademarks were registered by 2009 and in addition, the Complainant had strong common law rights in the FULL TILT POKER mark by this time.
The Complainant has been hosting regular poker championships online since 2006. These are available to consumers on a global scale. There is a highly publicized Full Tilt online poker tournament series which runs every 3 months and allows consumers to play with Complainant’s sponsored professionals. The winnings at each tournament are very large. Further, through sponsorship of, and affiliation with, many renowned poker players, the Complainant has become widely recognized in the online gaming services industry, by members of the public and also the media prior to 2009.
The term “Full Tilt Poker” did not have any meaning prior to the Complainant’s launch in 2004. Therefore, the only meaning attributable to this term is one associated with the Complainant’s goods and services as distinguished from those of others. The Complainant’s business is based entirely on its online entertainment services and is an Internet focused business. The Respondent has therefore recognized the value of the Internet to the Complainant and proceeded to register the disputed domain name in bad faith.
The Complainant relies on EMI Group Limited v. John Smith, Whois Protection Service LLC, WIPO Case No. D2007-798 which has a similar factual background to this case and submits that the Respondent’s intention in registering the disputed domain name was to cause disruption to the Complainant.
The Respondent has disrupted the Complainant’s business by preventing the Complainant from protecting its trademarks as the Complainant cannot register the disputed domain name as a defensive registration. This has the potential to cause great harm to the Complainant as its business is entirely Internet-based.
Further, the Respondent can be said to be a competitor of the Complainant as a result of his actions as “[a] ‘competitor’ is one who acts in opposition to another and the context does not imply or demand any restriction meaning such as commercial or business competitor” (see Mission Kwa Sizabantu v Benjamin Rost,WIPO Case No. D2000-0279).
The Respondent is using the disputed domain name in a manner which trades upon the goodwill associated with the Complainant’s trademark. Relevantly, Internet-users searching for the Complainant may come across the Respondent’s website and could potentially be diverted to the Complainant’s competitors.
The Complainant also notes that the Respondent has been involved in numerous domain name disputes and has been unsuccessful in all but one. Specifically, the Complainant submits that the Respondent is a prolific cybersquatter who has tried to use different addresses to avoid being identified as the same person.
Further, the use of the disputed domain name for a PPC parking page is evidence of the Respondent’s intent for commercial gain.
Therefore, the disputed domain was registered and is used in bad faith as the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s site, by creating a likelihood of confusion with the Complainant’s marks.
Specifically, a parking page is used in bad faith if it improperly profits off the value of the Complainant’s trademarks with PPC revenue (see Hayward Industries, Inc. v. WebQ, Inc., WIPO Case No. D2009-1493).
It has long been held that parking pages that use links to competitors is taken as prima facie evidence of bad faith use of a domain name (see e.g., Asian World of Martial Arts Inc v. Texas International Property Associates, WIPO Case No. D2007-1415).
Moreover, the Respondent has made no demonstrable preparations to use the disputed domain name in a bona fide manner. UDRP precedents establish that this can constitute bad faith (see e.g., Chernow Communications, Inc v. Jonathan D. Kimball, WIPO Case No. D2000-0119).
Finally, typosquatting is evidence of bad faith in and of itself (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor Leagure Baseball v. John Zuccarini,WIPO Case No. D2002-1011). Here, the Respondent has deliberately registered a domain name with common typographical errors to the Complainant’s well-known trademarks and official website. The Complainant contends that the Respondent’s actions in this regard demonstrate that the Respondent must have known of the Complainant’s mark prior to registering the disputed domain name.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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.
The onus of proving these elements is on the Complainant. A. Procedural Issues
The Respondent did not file a response. This does not automatically result in a decision in favor of the Complainant (see e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from a respondent’s default. Nonetheless, a complainant must establish all three elements of paragraph 4(a) of the Policy. Where a complaint is based wholly on unsupported assertions, the requested remedy will be denied despite no response having been filed.
Further, the Complainant has delayed in bringing these proceedings. Although, delay in filing proceedings under the UDRP does not of itself prevent a complainant from succeeding, delay does make a case on the merits more difficult to establish in relation to the second and third elements (see Board of Trustees of the University of Arkansas v. FanM,WIPO Case No. D2009-1139). The Panel notes that the Complainant does not explain why it took so long to bring these proceedings, however, here, the Panel does not find that delay is a determinative factor. B. Identical or Confusingly Similar
The Complainant owns numerous trademark registrations in the United Kingdom and the European Union in FULL TILT POKER.
Further, the Complainant has put forward extensive evidence in support of its unregistered trademark rights in FULL TILT POKER. In order to establish unregistered trademark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. The decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj,WIPO Case No. D2007-0123, is instructive when considering whether “secondary meaning” has been established and sets out the factors to consider such as, inter alia, length and amount of sales under the trademark, nature and extent of advertising and media recognition.
The Panel finds that the Complainant does have trademark rights in Full Till Poker.
The Panel also finds, given its extensive and comprehensive use of the term over a lengthy period of time, its strong reputation and public recognition and its rigorous advertising and media campaigns, that the Complainant had unregistered trademark rights. However, the evidence does not establish the date that such unregistered rights may have arisen.
For the Complainant to succeed on this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
The disputed domain name contains the term “Ful Tilt Poker”. There is one letter difference between the term incorporated into the disputed domain name and the Complainant’s trademarks. That is, the second “l” from the word “Full” is missing. This difference does nothing to alleviate the similarity between the Complainant’s trademarks and the disputed domain name. The term is phonetically identical to the Complainant’s trademarks and visually, this omission is almost imperceptible.
Further, the disputed domain name also includes “www” before the term “fultiltpoker”. There is no period between each of these terms. The Panel finds that this does not alleviate any similarity or confusion likely to be caused to the Public. The dominant term of the disputed domain name is the term “fultiltpoker” and this is the term that causes the confusion with the Complainant’s marks. The inclusion of “www”, even without a period between the two terms does not alter how the term “fultiltpoker” will be read by an Internet user. The “www” prefix, as it is normally used, with a period, is an irrelevant consideration when considering whether a domain name is similar to a trademark (see cases referred to by the Complainant such as Rockstar Games v. Juan Carlos Azurdia, WIPO Case No. D2007-1557) and in this instance, even without the period, is an irrelevant consideration.
All differences between the disputed domain name and the Complainant’s trademarks are immaterial and therefore, the disputed domain name is confusingly similar to the Complainant’s trademarks.
It is worth noting that the Panel agrees with the Complainant’s submission that timing of trademark registration is not relevant to a consideration of this element (see e.g., Reckitt Benckiser Plc v. Eunsook Wi, WIPO Case No. D2009-0239). C. Rights or Legitimate Interests
Paragraph 4(b) of the Policy provides that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
Here, the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name (refer to Section 5.A, above). Given the Respondent did not file a Response, the prima facie case established by the Complainant has not been rebutted. As such, the Complainant must necessarily succeed on this point.
Specifically, the Respondent has not demonstrated a bona fide use or, intention to use, the disputed domain name or name corresponding to the disputed domain name in connection with an offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. This is evidenced by the fact that the disputed domain name is currently being used as a PPC parking page that is trading off the Complainant’s business, reputation and trademarks.
The term “Full Tilt Poker” has no meaning other than that created by the Complainant’s use of it. That is, the term is solely associated with the Complainant’s business. Therefore, even though operation of a PPC website does not necessarily deny a respondent rights or legitimate interests in a domain name, in circumstances such as this, where it appears the disputed domain name was selected for the sole purpose of profiting from the Complainant’s trademarks, no rights or legitimate interests can be found (see e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415).
The circumstances indicate that the only reason the disputed domain name was registered was to trade-off of the Complainant’s trademark value, goodwill and reputation. Therefore, the necessary conclusion is that the Respondent does not have any rights or legitimate interests in the disputed domain name.
Further, it appears that the Respondent is not commonly known by the disputed domain name and has no trade mark or service mark rights in the disputed domain name. The Complainant has not authorized the Respondent to use its trade mark in the disputed domain name.
Therefore, the Complainant has successfully established that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Generally, when a domain name is transferred to a respondent before a complainant’s trade mark right is established, the transfer would not have been in bad faith because the respondent necessarily could not have contemplated the complainant’s rights given they did not exist at the time (see e.g., meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH,WIPO Case No. D2009-0943).
However, it appears the Respondent became the registered owner of the disputed domain name in 2009 when the disputed domain name was transferred to him. There is nothing to indicate that the Respondent (the current registered owner of the disputed domain name) is the same person or entity as the initial owner of the disputed domain name. In the absence of any evidence to the contrary, the Panel proceeds on this basis. That is, that the disputed domain name was transferred to the Respondent in 2009 and this is the relevant date to consider for the purposes of bad faith. As such, by this time, the Complainant’s marks were registered and it is likely that the Complainant had acquired unregistered trademark rights given the length of time the Complainant had been operating.
Therefore, the Panel must consider whether the Respondent acquired the disputed domain name in 2009 in bad faith and subsequently used it in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.
Relevantly, paragraph 4(b)(iv) of the Policy provides that bad faith registration and use will be made out where the respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the respondent’s website or product or service on the website.
The Panel does find that the Complainant’s trade marks are sufficiently well-known that the Respondent, most likely, purposefully registered the disputed domain name for the purposes of attracting customers by creating a likelihood of confusion in their minds with the Complainant’s trade marks. The Panel refers to Asian World of Martial Arts Inc. v. Texas International Property Associates, supra and finds here, as there, that “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant and its […] Trademarks”. (See also, F. Hoffmann-La Roche AG v. MFS Holdings,WIPO Case No. D2010-0307.)
The Panel finds that there is no evidence that the Respondent intended to use the disputed domain name for any purpose other than for establishing a PPC website to generate revenue. While a PPC website is not use in bad faith in and of itself, here, given the strong reputation of the FULL TILT POKER brand and trademarks, it appears that the Respondent intentionally selected the disputed domain name in order to create confusion in the mind of Internet users as to the association between the disputed domain name and the Complainant’s trade marks and thereby generate PPC revenue. The Panel finds that the Respondent is attempting to divert Internet traffic to its website in order to generate “pay-per-click revenue” (see e.g., BAB, Inc. v. Eighty Business Names,WIPO Case No. D2010-0478; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Hayward Industries, Inc. v. WebQ, Inc.,WIPO Case No. D2009-1493).
It is unnecessary for the Panel to record a finding as to whether it has been established that the Respondent registered the disputed domain name in order to disrupt the business of the Complainant and prevent the Complainant from registering the disputed domain name.
In conclusion, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. 7. Decision
For 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.
John Swinson
Sole Panelist
Dated: May 31, 2011
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