WIPO Arbitration and Mediation Center
PartyGaming Plc., WPC Productions Limited, Electra Works Limited,
iGlobalMedia Marketing (UK) Limited v. APS Web Developers S.A.
Case No. D2006-0993
1. The Parties
The Complainants are PartyGaming Plc., Gibraltar, United Kingdom of Great Britain and Northern Ireland; WPC Productions Limited, Gibraltar, United Kingdom of Great Britain and Northern Ireland; Electra Works Limited, Gibraltar, United Kingdom of Great Britain and Northern Ireland and iGlobalMedia Marketing (UK) Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is APS Web Developers S.A., San Jose, Costa Rica, represented by Steven C. Sereboff, United States of America.
2. The Domain Names and Registrars
The disputed domain names <adultpartycasino.com>, <adultpartycasino.net>, <adultpartycasino.org>, <adultpartygaming.com>, <adultpartygaming.net>, <adultpartypoker.com>, <adultpartypoker.net>, <adultpartysportsbook.com>, <adultpartysportsbook.net> and <adultpartysportsbook.org> are registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2006. On August 5, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On August 9, 2006, Tucows 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on August 31, 2006. 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”), 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 August 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2006. The Response was filed with the Center on September 21, 2006. A Reply was filed by the Complainant with the Center on October 4, 2006.
The Center appointed Mary Padbury as the sole panelist in this matter on November 30, 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.The Panel issued Administrative Panel Order No. 1 on January 29,2007 requesting the Complainants to provide evidence of any trademark rights they may have to PARTYSPORTSBOOK by February 12, 2007. On February 13, 2007, the Complainants replied to the Administrative Panel Order No. 1.
4. Factual Background
PartyGaming Plc (“PartyGaming”) was incorporated in April 2004 and re-registered as a public limited company in February 2005. On June 30, 2005 PartyGaming listed its shares on the London Stock Exchange. It has a current market capitalization in excess of USD8 billion. PartyGaming is the ultimate parent company of a group of companies which includes WPC Productions Limited (“WPC”), Electra Works Limited (“Electra”) and iGlobalMedia Marketing (UK) Limited (“iGlobal”). The Complainants are one of the world’s leading on-line gaming groups and have been engaged in online gaming since 1997.
The Complainants registered the domain name <partypoker.com> on August 19, 1999. WPC is the proprietor of the trademark PARTYPOKER in Australia, Canada, Japan, and Switzerland. Electra is the proprietor of this mark in Benelux. WPC is the proprietor of a mark featuring the words PARTYPOKER and design in Canada and the United States. iGlobal is the proprietor of this mark in the European Union. WPC is the proprietor of the trademark PARTYCASINO in Australia, Japan, Mexico and Switzerland. Electra is the proprietor of this mark in Benelux. WPC is the proprietor of the trademark PARTYGAMING in Japan and Switzerland. Electra is the proprietor of this mark in Benelux. These marks (save for those in Benelux) were applied for before the date of registration of the domain names in issue. There is no registration for the word PARTY on its own.
The Complainants are also the proprietors or applicants for other marks incorporating the word PARTY in various jurisdictions worldwide. WPC filed an application to register PARTYSPORTSBOOK in the United States of America on September 10, 2004. The Complainants’ submission pursuant to the Panel Order indicates that this application was abandoned following enactment of the Unlawful Internet Gambling Enforcement Act in the United States. The Complainants own the domain name <partysportsbook.com> which was registered on February 12, 2003, and is currently used to redirect consumers to their “partypoker.com” website. There is no evidence of use of this website prior to the date of registration by the Respondent of websites featuring the mark PARTYSPORTSBOOK.
The Respondent is incorporated in Costa Rica. The Respondent registered the domain names in issue on the dates in parenthesis:
<adultpartypoker.net> (June 13, 2005)
<adultpartygaming.com> (October 5, 2005)
<adultpartygaming.net> (October 5, 2005)
<adultpartycasino.com> (July 15, 2005)
<adultpartycasino.net> (July 15, 2005)
<adultpartysportsbook.com> (September 27, 2005)
<adultpartysportsbook.net> (December 30, 2005)
<adultpartycasino.org> (December 30, 2005)
<adultpartysportsbook.org> (December 30, 2005)
<adultpartypoker.com> (June 14, 2005).
5. Parties’ Contentions
The Complainants contend that they have invested many millions of dollars in advertising and promoting their goods and services under the PARTY marks. This includes online gaming services. The Complainants promote their goods and services under the marks through both online and offline media including traditional advertising, celebrity endorsements, sponsorship with gaming tournaments and an affiliate program. In 2004, the Complainants state that they spent more that USD80 million in advertising their goods and services under the PARTY marks. In 2005 the Complainants received revenue for their on-line sites in excess of USD977 million.
The Complainants note that the domain names in issue were registered between June 13, 2005 and December 30, 2005, these dates being after the Complainants’ adoption and use of the PARTYPOKER mark and creation of the family of PARTY marks.
The domain names in issue are used to direct to the Respondent’s website entitled “Adultpokerparty.com” located at “www.adultpartysportsbook.co.cr”. The site offers players the chance to compete in multi-player online poker tournaments, as well as other on-line games. These services compete directly with the services offered by the Complainants at “www.partypoker.com” and “www.partycasino.com”. The Complainants contend that the Respondent’s website makes it clear that the Respondent is attempting to trade off the goodwill that the Complainants have created in their PARTY marks. They contend that the common PARTY element has acquired distinctiveness and that consumers who see the term PARTY followed by a gambling or gambling related term are likely to associate the mark and the goods or services offered with the Complainants. They assert that the term PARTY has no direct meaning relating to the nature, qualities of characteristics of their gambling services save for suggesting a user will be able to play games with multiple online players and that by reason of long use, sales, advertising and promotion of its PARTY family of marks the common PARTY element has attained a secondary meaning. They –conclude that the Respondent’s domain names are confusingly similar to their PARTY marks. They also note that the Respondent’s logos also imitate some of the distinctive elements of its logos. For example, the Respondent places the “.com” element of its logos vertically at the end of the domain name. This mirrors the way in which the Complainants display the “.com” element in their logos. Moreover, the Respondent’s logo for its <adultpokerparty.com> site includes the phrase “World’s Sexiest Poker Room”. This is asserted to be an imitation of the Complainants’ PARTYPOKER logo which includes the statement “The World’s Largest Poker Room”.
In particular, the Complainants assert that the domain names in issue are confusingly similar to their PARTYPOKER, PARTYGAMING, PARTYCASINO and PARTYSPORTSBOOK marks because they incorporate the marks in their entirety and add a common generic or descriptive word, namely, “adult”.
The Complainants contend that the Respondent does not have rights or legitimate interests in the domain names in issue. The Complainants contend that the Respondent is not generally known by the Complainants’ marks and has not acquired any trademark rights. The Complainants have not licensed or otherwise permitted use of their marks by the Respondent in connection with the Respondent’s websites. The Complainants contend that the Respondent has registered and used the domain names in issue to unlawfully divert and siphon off visitors seeking the Complainants’ websites. The Respondent’s use of the infringing domain names for such purposes is not a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain names. The Complainants refer to the decisions in National Association of Professional Baseball Leagues v Zuccarini, WIPO Case No. D2002-1011 (Jan. 21, 2003) and Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 (April 17, 2002) to the effect that “use, which at its heart relies on exploiting user confusion, cannot and does not constitute bona fide commercial use”; Option One Mortgage Corp v Option One Lending,, WIPO Case No. D2004-1052 (Feb. 27, 2005) to the effect that “the Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use” and Party Gaming Plc v OX5 Consulting L.L.C., WIPO Case No. D2006-0470 (June 17, 2006) which found that the Respondent’s use of the domain name <partypokerplay.com> to resolve to a website providing links to websites competitive with PartyGaming to be commercial and stating that such use “cannot be considered to be a bona fide offering of goods or services”.
Lastly, the Complainants contend that the Respondent registered and is using the disputed domain names in bad faith. The Complainants rely upon paragraph 4(b)(iv) of the Policy which provides that bad faith can be shown by circumstances indicating that Respondent deliberately used the domain name for commercial gain to divert Internet users based on the likelihood of confusion with the Complainants’ marks. The Complainants assert that the domain names in issue are deliberately used for commercial gain to attract Internet uses to the Respondent’s website based on a likelihood of confusion with the Complainant’s PARTYPOKER, PARTYGAMING, PARTYCASINO and PARTYSPORTSBOOK marks.
The Complainants also contend that the Respondent registered and began unauthorized use of the domain names for commercial benefit after the adoption, use and registration by the Complainants of its PARTYPOKER mark and the adoption of the family of PARTY marks. Their website “www.partypoker.com” is the largest and one of the most widely-known poker rooms on the Internet. The Respondent is a direct competitor of the Complainants. As such, the Complainants contend that it is inconceivable that the Respondent registered the domain names in issue without knowing of the Complainants’ rights. The Complainants rely upon the decision in Ticketmaster Corp v Spider Web Design, Inc., WIPO Case No. D2000-1551 (February 4, 2001) finding “active or constructive knowledge of Complainants’ rights in trademarks is a factor supporting bad faith”. The Complainants contend that actual knowledge is further demonstrated by similarities between the logos of the Respondent’s websites and the Complainants’ PARTYPOKER logo. The Complainants contend that there is no plausible reason for the Respondent’s selection of the domain names other than a deliberate attempt to profit unfairly from confusion with the Complainants’ marks.
The Respondent asserts that the Complainants are “rich and powerful” and “make lots and lots of money from people playing poker on their website”. The Respondent asserts that it has worked diligently to respect the Complainants’ trademark rights. It also notes that it has made further changes to its site and use of the domain names in issue to eliminate the Complainants’ concerns. In particular, the Respondent asserts that it is a business partner of the Complainant and that the Complainant has expressly accepted and profited from the Respondent’s use of the domain names in issue. The Respondent asserts that it is a member of the Complainants’ “affiliate program” and in this regard, the Respondent uses the domain names in issue to draw players to the Complainants’ services.
The Respondent states that it operates online gaming services which were launched in early 2006, and that it is a small company in start up mode. The Respondent states that it recognized that the market was maturing and nearing saturation. The Respondent claims that it believed that the online gaming market was ripe for subdivision and developed a plan to uniquely theme its online gaming business using an adult entertainment theme. It asserts that it recognized the potential if adult entertainment could be added to on-line gaming. The Respondent claims that it planned an online service that would use adult entertainment stars to promote the services but in a way that would be acceptable to mainstream gaming patrons.
The Respondent developed names for its services and registered related domain names. The primary name of the service is ADULT POKER PARTY and the service’s primary domain name is <adultpokerparty.com>. The Respondent asserts that it intentionally chose a domain name descriptive of the services to be rendered. The Respondent states that it “recognized that ADULT POKER PARTY is somewhat similar to Complainants’ PARTYPOKER mark. Yet, Respondent recognized that the field is crowded, and there are lots and lots of trademarks and names that include these words or are similar in other ways. Furthermore, since Respondent’s marketing would be entirely different from the Complainants’, there was little likelihood of confusion”. The Respondent notes that the Complainants’ do not contest the Respondent’s right to <pokerparty.com> and treat this as a concession that they have the right to use the domain name <adultpokerparty.com>. They assert this is evidence that the Complainants concede that the words ADULT is a descriptive term just as the words POKER and PARTY are alone or together generic or descriptive of the Respondent’s service.
The Respondent asserts that it registered the domain names in issue for defensive reasons. In particular: “Respondent recognized that people sometimes make errors when typing domain names. It is easy to imagine that the ordinary user typing in <adultpartypoker.com> when they meant to type <adultpokerparty.com>. To ensure that the Respondent’s actual and prospective customers would find the Respondent’s services, the Respondent registered an assortment of domain names which it thought people might likely enter when seeking the Respondent’s services. This step would also prevent others from capitalizing on the user errors. The Disputed Domain Names are all in the list of the Respondent’s defensive domain names”.
The Respondent also asserts that it is using the disputed domain names in good faith and has taken adequate steps to prevent confusion. The Respondent claims that it considered how to use the defensive domain names and that the natural option would have been to have these redirect to the Respondent’s primary domain names but that the Respondent knew of the Complainants’ on-line gaming services and recognized that it was better to be “good citizen”. The “Respondent recognized, for example, that some people might go to “www.adultpartypoker.com” and expect the same or related services which the Complainants provide at “www.partypoker.com”. Thus, the Respondent engineered a solution in which both the Respondent and the Complainants could co-exist, and even both benefit from users’ mistakes”. The solution involved “User Choice Pages”. This entails asking users if they intended to go to the Complainants’ services or those of the Respondent. The Respondent further claims that in order to ensure that the redirects to the Complainants’ services would operate properly, the Respondent enrolled as an affiliate in the Complainants’ “PartyPartners program”. This provides a reward to affiliates for redirecting traffic (especially new users) to services such as the Complainants’. The Respondent enrolled in the Complainants’ PartyPartner’s affiliate program in January 2006. Under the program, the Complainants agreed to compensate the Respondent for every new user that signed up for the Complainants’ services using assigned traffic codes. The Respondent then built webpages as recommended by the Complainant. The Respondent thus asserts that by doing so the Complainants were awarding and paying the Respondent for the Respondent’s use of the disputed domain names. The Respondent also contends that this entailed the Complainants’ express acceptance of the Respondent’s use of the domain names in issue. The Respondent notes the while it intended to make User Choice Pages the homepage for all of the Disputed Domain Names “through some dearth of resources, not all were loaded or consistently available prior to the filing of the Complaint”.
The Respondent states that the Complainants never expressed any concerns about the Respondent’s websites or domain names.
The Respondent asserts that the Complainants’ marks are inherently weak because they are descriptive and that the Complainants have not demonstrated a nexus between their marks and their wealth. They note that the Complainants have failed to obtain any US trademark registrations of the word marks. They also note that a number of registrations outside the US are for the words with a design, or a stylized version or a combination of words forming a distinctly different consumer impression than the words in the domain names in issue. In relation to the central allegation that the disputed domain names incorporate the entirety of the Complainants’ marks, in each case, the same words adopted by the Complainants are preceded in the domain names by the word ”adult”. The Respondent contends that the addition of “adult” transforms the consumer’s primary focus to the adult industry. The Respondent asserts that this is not a case where the Respondent has added a “noise” word to a strong mark such as Party Gaming Plc v. Kriss Vance, WIPO Case No. D2006-0456 (June 2, 2006) where “bot” was added to the end of one of the Complainants’ marks.
To the extent that the Complainants have asserted other grounds for confusion, the Respondent contends that these were transitory or have since been replaced. This relates to the domain name <vertical.com>. The Respondent also asserts that the arguments about slogans lack merit since these kinds of slogans are common in on-line gaming and the trademark rights in the slogans are weak.
The Respondent contends that PARTY is a common term and used commonly with respect to games and gaming. It contends that there is no family of trademarks featuring the word PARTY and assert that the Complainants have only one significant brand being PARTYPOKER. The Respondent contends that the Complainants’ marks PARTYCASINO and PARTYGAMING trade off the PARTYPOKER brand and do not themselves carry any goodwill. The Respondent recognizes that the Complainants have goodwill associated with the PARTYPOKER mark but not with the PARTYSPORTSBOOK term. The Respondent asserts that the Complainants do not use this term and that the domain name <partysportsbook.com> resolves to <partypoker.com>.
The Respondent contends that it has made bona fide use of the domain names in issue and that the Complainants have legitimized their use through their affiliate program.
C. Complainants’ reply
In reply, the Complainants note the Respondent’s admissions that it knew of the Complainants’ online gaming services, that it recognized that some people might go to the Respondent’s website and expect the same or related services to those provided by the Complainants at its websites and that the Complainants have goodwill associated with its PARTYPOKER mark.
In relation to the Respondent’s reliance on participation in the Complainants’ affiliate program, the Complainants note that the agreement governing the program in which the Respondent has enrolled specifically provides that “[t]here is no relation of exclusivity, partnership, joint venture, employment, agency or franchise between you or us under this Agreement”. The Complainants note that enrolment in the program is handled by an automated process. Further, they note that the agreement governing the program provides, inter alia, “you may not register or use any of Our Marks in any part of any domain name”. Because of this explicit prohibition, the Complainants assert that the Respondent could not have concluded in good faith that the Complainants had consented to registration and use of the domain names in issue. They refer to World Wrestling Federation Entertainment, Inc v Rift, WIPO Case No. D2000-1499 (December 29, 2000) where the affiliate program contained a prohibition on use of the Complainants’ trademarks and it was found that “it would not have been reasonable” for the Respondent to conclude that the Complainants had consented to use of the Complainants’ trademark. Similarly in Ross Simmons of Warwick, Inc. v. Admin Billing,WIPO Case No. D2004-0696 (October 21, 2004) the Respondent was found to have “abused the affiliate relationship by registering names that infringed the Complainants’ trademarks”. The Complainants contend that by accepting the agreement, the Respondent demonstrated its awareness of the Complainants, their business and their trademarks. They assert that breach of this agreement is a bad faith abuse of the affiliate relationship. As such, the Complainants contend that the Respondent’s participation in the affiliate program does not legitimize its conduct but rather confirms its bad faith. The Complainants also note that they have not profited from the Respondent’s use of the domain names in issue and that, to date, the Complainants have received no revenue from the Respondent.
The Complainants note that the Respondent provides no evidence to support its claim that the PARTYCASINO and PARTYGAMING marks do not themselves carry any goodwill. The Complainants contend that this overlooks the fact that PARTYGAMING is the corporate name of the publicly-traded parent of the Complainants and that the websites for PARTYPOKER and PARTYCASINO describe their sites as being “powered by PartyGaming” and the trademark on each site as a “PartyGaming Brand”. The Complainants contend that the marks PARTYPOKER, PARTYCASINO and PARTYGAMING (as well as its PartyGammon and PartyBingo marks) form a “family of marks” consisting of PARTY followed by a term referring to gaming, betting or other activities. The Complainants contend that the term PARTYSPORTSBOOK falls within this family because it shares the same pattern and is the subject of a -lapsed US trademark application. The Complainants note that the Respondent does not purport to have rights in the PARTYSPORTSBOOK term that predate those of the Complainants. The Complainants contend that the Respondent’s admission that it was aware that use of the domain names in issue might cause confusion makes debate about the relative strength of the Complainants’ marks academic.
The Complainants note that the Respondent’s revised websites were not active until after the filing of the Complaint. The Complainants assert that the Respondent’s “solution” (by defensively registering the domain names in issue) does nothing to dispel the potential for confusion. The Complainants contend that a visitor to the site “www.adultpartypoker.com” (see Exhibit U) is likely to view the page as offering a choice between two sites under common ownership – one with ordinary gaming content and one with adult content. There is nothing about the site that would dispel this mistaken belief. The Complainants also note that the Respondent’s revised site defaults to “www.adultpartypoker.com” if the user fails to make a choice after approximately 20-25 seconds.
The Complainants contend that the Respondent confirmed its bad faith by enrolling in the affiliate program. The Respondent ensured that it would make money no matter which site a visitor selected, either by profiting from its own site or earning money under the affiliate program. The Complainants assert that the Respondent created a situation in which it knew that confusion was likely to arise and positioned itself to make a profit from such confusion.
The Complainants do not accept that the Respondent registered the domain names in issue defensively. Even if true, the Complainants contend that the Respondent should not be permitted to register domain names that are confusingly similar to the Complainants’ PARTY marks. The Complainants note, for example, that the domain name <adultpokerparty.com> was registered one month after registration by the Respondent of <adultpartypoker.com>. The domain names <adultcasinoparty.net> and <adultsportsbookparty.com> were also registered well after the domain names <adultpartycasino.com> and <adultpartysportsbook.com> and on the same day that the Respondent filed the Response. Lastly, the Respondent did not register any domain name that would correspond to its allegedly “defensive” registration for <adultpartygaming.com>.
The Complainants assert that the Respondent’s argument that it has at all times acted in good faith is further defeated by its use of the terms “party poker” and “partypoker” as meta tags on its “adultpokerparty.com” website. The Complainants assert that use of another party’s trademark in the meta tags of a website constitutes trademark infringement as it fosters initial interest confusion (see Brookfield Communications, Inc. v. West Coast Entertainment Enterprises, Inc. 174 F. 3d 1036 (9th Cir. 1999)). The Complainants do not use the terms “poker party” or “pokerparty” as meta tags. The Complainants contend that this demonstrates that the Respondent is using these terms as part of its bad faith attempt to capitalize on the Complainants’ goodwill in the PARTYPOKER mark.
6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules. Under paragraph 4(a) of the Policy, the Complainants have the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain names <adultpartycasino.com>, <adultpartycasino.net>, <adultpartycasino.org>, <adultpartygaming.com>, <adultpartygaming.net>, <adultpartypoker.com>-and <adultpartypoker.net> are confusing similar to the Complainants’ trademarks PARTYPOKER, PARTYGAMING and PARTYCASINO-. The domain names incorporate the Complainants’ trademarks in their entirety with the addition of the descriptive word “adult”. The Panel finds that the marks enjoy substantial goodwill. On balance, the addition of the word “adult” does not preclude confusion.
As the purported mark PARTYSPORTSBOOK is unregistered, the Complainants must show either that the mark has become distinctive and acquired a secondary meaning or that the mark enjoys goodwill as a member of a family of marks incorporating the word PARTY. The Panel is not persuaded that the Complainants have established the requisite distinctiveness in the term itself or the word PARTY on its own. The circumstances here can be distinguished from a case where the Complainant has goodwill in the common element of a family of marks (see for example FleetBoston Corporation v. Jung Y Lee, WIPO Case No D2000-1771) and the decision in PartyGaming Plc, WPC Productions Limited, Electra Works Limited, iGlobalMedia Marketing (UK) Limited, WBC Productions (Gibraltar) Limited v Samira Bilate, WIPO Case No. D2006-1005 where the Complainants relied on registered trademarks to which the disputed domain names were confusingly similar. While the registration of a domain name before the Complainants acquire rights in a name does not prevent a finding of identity or confusing similarity, the extent of the rights, if any, acquired by the Complainants in the term PARTYSPORTSBOOK are still unclear.
B. Rights or Legitimate Interests
The Panel must decide whether the Respondent has any rights or legitimate interests in respect of the domain names. In doing so, under paragraph 4(c) of the Policy, regard may be had to circumstances which might demonstrate rights or legitimate interests to the domain names as follows:
(i) before notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the Respondent, making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In relation to paragraph 4(c)(i) of the Policy, the domain names have been used in connection with an offering of goods or services. The Panel accepts the contention of the Complainants that the Respondent’s use of confusingly similar domain names registered after the Complainants for websites offering for sale overlapping services is not bona fide. In light of the facts set out by both the Complainants and the Respondent, the Panel finds that it is also apparent that the Respondent registered the names in issue with knowledge of the Complainants’ marks. The Complainants have not licensed or otherwise permitted the Respondent to use their trademarks. Registration by the Respondent in the Complainants’ affiliate program does not, in the Panel’s view, entail acceptance by the Complainants of the Respondent’s use of the disputed domain names. It is apparent that enrolment offends against the agreement requiring no registration or use of the Complainants’ marks. It is also apparent that the program is automated.
C. Registered and Used in Bad Faith
According to paragraph 4(b)(iv) of the Policy, the following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:
(i) circumstances indicating that the respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainants who is the owner of the trademark or service mark or to a competitor for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in domain name in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product of service on your website or location.
The Panel is satisfied on the material before it, that the domain names were registered and are being used in bad faith. In accordance with paragraph 4(b) (iv) of the Policy the Panel finds that it is apparent that the Respondent was aware of the existence of the Complainants and their marks and that it recognized that the registration of the domain names in issue would give rise to confusion. The registrations whether defensive or not did create confusion, the Respondent’s solution (see Exhibit U to the Complaint) appears to offer consumers a choice between two sites and creates the impression that the sites are under common ownership with one offering ordinary gaming content and the other offering adult content. The intention, or at least the apparent effect, is to create confusion in the mind of customers regarding the Complainants’ association or affiliation with these sites. Moreover, in these circumstances, the Panel is persuaded that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or the product or service on its website or location.
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 names, <adultpartycasino.com>, <adultpartycasino.net>, <adultpartycasino.org>, <adultpartygaming.com>, <adultpartygaming.net>, <adultpartypoker.com> and <adultpartypoker.net> be transferred to the Complainants. The Complaint in relation to <adultpartysportsbook.com>, <adultpartysportsbook.net> and <adultpartysportsbook.org> is denied on the basis that the Complainants did not establish the requisite trademark rights in PARTYSPORTSBOOK.
Dated: March 1, 2007