Complainant is Stanworth Development Limited of Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
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 September 8, 2011. On September 9, 2011, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On September 12, 2011, F transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 11, 2011.
The Center appointed Dietrich Beier as the sole panelist in this matter on October 26, 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
Complainant is a company duly incorporated under the laws of the British Virgin Islands and seated on the Isle of Man and owns several trademarks for COOL HAND, inter alia CTM 6987382 in classes 9 and 41 (inter alia instructions for gambling) as well as COOL HAND POKER (logo), inter alia the Canadian registration TMA 772423. Furthermore, Complainant is the proprietor of a number of domain names consisting of or incorporating the COOL HAND and COOL HAND POKER (logo) designations including , , and .
Complainant was active since 2001 until at least 2006 publishing a magazine “coolhand” which covered gambling, live style and recordation issues. Complainant has also licensed its trademarks to an operator of online gaming and poker sites being active under “www.” until 2008 and under “www.” since 2008.
Respondent registered the disputed domain name on March 23, 2009, i.e. over 7 years after the Complainant’s first COOL HAND trademark registrations from 2001 in the United Kingdom and one year after the COOL HAND POKER (logo) registration from 2008 in Canada.
On October 4, 2010 Complainant sent a cease and desist letter to Respondent and follow up letters on October 27, 2010 to both of which no answer of Respondent was received.
The website of the disputed domain name provides links to goods and services competing to those of Complainant, i.e. poker goods and services.
Respondent is neither an agent nor or license of Complainant. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to Complainant’s COOL HAND and COOL HAND POKER trademarks.
Complainant contends that Respondent does not have any rights or legitimate interests in respect of the disputed domain name since there is no license or other permission available. There is no evidence that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith due to the long standing operation of Complainant’s domain names and Complainant’s trademarks registered before the disputed domain name. The current use for a website with links to competing offers and services is an indication of bad faith directing Internet users to a site providing competing offers. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, 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 Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to 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
Complainant has established that it has valid rights in the COOL HAND and COOL HAND POKER (logo) trademarks.
The domain name is confusingly similar to Complainant’s marks since the addition of one letter, “c”, does not alter the similarity to the otherwise similar word element of the COOL HAND POKER (logo) trademark. It is established case law that the word elements of a word/device mark usually carries the weight of such a combination mark. In addition, Complainant can also successfully argue that even the COOL HAND trademarks being not generic as such are similar to the domain name since the element poker is a generic term of only small influence to the character of the entire designation “coolhandpocker” whereas the addition of the letter “c” is taking advantage of the phenomenon of mistyping Internet addresses by Internet users (“typosquatting”).
The Panel therefore considers the disputed domain name to be confusingly similar to Complainant’s marks in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Respondent has no rights in the disputed domain name. Respondent is not a licensee of Complainant. Also Complainant has not granted any permission or consent to Respondent to use its trademarks. Furthermore, Respondent has no legitimate interests in the domain name since there is no indication that Respondent is commonly known by the name “coolhandpocker” nor that Respondent is using the domain name in connection with a bona fide offering of goods or services.
In fact, the website the disputed domain name is directed to is a parking website providing links to selected offerings for goods and services related to poker gambling. For the latter, as the panel in Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe,WIPO Case No. D2007-1695 stated correctly, it must be noted that the use of a domain name confusingly similar to a complainant’s trademarks for the purpose of offering sponsored links does not of itself qualify as a bona fide use. Also a noncommercial or fair use is not noticeable.
The Panel therefore finds that Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Due to the at least 8 years of use of Complainant’s marks, Respondent must have been well aware of Complainant and its trademarks when registering the disputed domain name. Complainant has not authorized Respondent to make use of its mark.
Furthermore, by using the disputed domain name for a parking website that provides links to third party websites where inter alia products and/or services of competitors of Complainant are advertised, it is obvious for this Panel that Respondent registered the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location.
The Panel therefore finds that 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 disputed domain name be transferred to Complainant.
Dietrich Beier
Sole Panelist
Dated: November 9, 2011
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