WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PartyGaming Plc v. TPCR Development
Case No. DTV2006-0004
1. The Parties
The Complainant is PartyGaming Plc, Europort, Gibraltar, United Kingdom of Great Britain and Northern Ireland, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is TPCR Development, Escazu, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <partypoker.tv> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2006. On April 24, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 27, 2006, the Registrar 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 May 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2006.
The Center appointed Warwick Smith as the sole panelist in this matter on June 2, 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.
Because the Respondent has not filed any Response, the Panel has checked whether the Center has discharged its responsibility to notify the Complaint in accordance with the Rules, paragraph 2. The Panel is satisfied that the Complaint has been properly notified. The Complaint appears to have been delivered to the Respondent at the correct address shown in the Whois information provided by the Registrar, and it was successfully transmitted by email to the Respondent’s email address shown in the Whois record.
4. Factual Background
The Complainant and its related companies and their predecessors, comprise one of the world’s leading online gaming groups, having been engaged in providing online gaming services since 1997. According to the website at “www.partygaming.com”, the Complainant owns and operates the world’s largest online poker room at “www.partypoker.com”. The Complainant’s Group also owns a substantial online casino, and online bingo games, at a variety of websites, including “www.partycasino.com”, “www.starluckcasino.com”, and “www.partybingo.com”.
According to the website, the Complainant is listed on the London Stock Exchange, with a market capitalization of over $8 billion and revenues in the year to December 31, 2005 of $ 977 million.
The website explains that the Complainant Group is regulated and licensed by the government of Gibraltar, and has over 1,200 employees in its head office and operations center in Gibraltar, a business process outsourcing operation in India, and a marketing services subsidiary in London. The website states that the group has customers in over 190 countries.
On the “Mission and Strategy” page of the website, one of the Complainant’s key strategies is said to be: “to enhance the business through the integration of the Group’s existing brands under a single brand with unified customer accounts and introduce new games under the “Party” brand”.
In August 1999, a member of the Complainant’s Group registered the domain name <partypoker.com>, and the website at that address has since become the number one online poker site in the world, with annual revenues in excess of $123 million. As of March 31, 2005, the website at “www.partypoker.com” had more than 6 million registered players.
The partypoker website has been the subject of extensive advertising and promotion, including both television and print media advertising. As a result, the Complainant says that the mark PARTYPOKER (“the Complainant’s mark”) has become famous and well known worldwide.
The Complainant’s Group Trademarks
In July 2001, a member of the Complainant’s Group applied to register the Complainant’s mark with the United States Patent and Trademark Office, and with the Canadian Trademarks Office.
The Canadian application led to the registration of the Complainant’s mark in Canada for various services, including “providing online interactive casino facilities, conducting online interactive games of skill, contests, sweepstakes, lotteries and wagering, that may all be accessed over means of local and global computer and communication networks”.
The Complainant has produced copies of trademark certificates issued by the United States Patent and Trademark Office, for two separate “PARTYPOKER” marks. One is the Complainant’s mark, with the letter “o” in “Poker” stylized (it has a $ sign in the middle of the “o”). That registration is in International Classes 9, 41 and 42, and has effect from December 10, 2003. The Class 41 registration is for “arranging, organizing and conducting entertainment services in the form of online contests and games of chance, in Class 41”.
Members of the Complainant’s Group have also registered the Complainant’s mark in a number of other jurisdictions, including Australia (with effect from April 12, 2005), the Benelux countries (with effect from September 2, 2005), and Japan (with effect from February 18, 2005).
The Complainant has also produced an OHIM certificate for the mark PARTYPOKER.COM MILLION. This registration covers various goods or services in International Classes 9, 41 and 42, and was registered in 2004.
The Complainant’s Group has also sought to register numerous trademarks containing the word “party”. In the United States alone, the applications include applications to register PARTYBACCARAT, PARTYBACKGAMMON, PARTYBASEBALL, PARTYBASKETBALL, PARTYBET, PARTYBETS, PARTYBINGO, and so on. As the Complainant puts it, the Complainant’s group now owns “a PARTY-based family of marks”.
The Complainant does not appear to be the registered proprietor of the Complainant’s mark or of any of the other registered trademarks. Some are registered in the name of a Gibraltar-based corporation called WPC Productions Limited, while some of the Canadian registrations are in the name of “WPC Productions”, of the British Virgin Islands. The registered proprietor named in the OHIM registration, is yet another corporation, iGlobalMedia Marketing (UK) Limited. The different ownership of the various marks is explained in the Complaint as follows:
“The relevant registrations and applications appear in the names of subsidiaries that are directly or indirectly wholly-owned and controlled by [the Complainant]: WPC Productions Limited, WPC Productions Inc …iGlobalMediaMarketing (UK) Limited…”
The Respondent and the Domain Name
The Domain Name was registered on February 9, 2003. When this Complaint was filed, the Domain Name resolved to a website at “www.truepoker.com” (the “Respondent’s website”). The Complainant says that the Respondent is a competitor of the Complainant and operates the Respondent’s website.
The Complainant has produced some pages from the Respondent’s website printed on April 21, 2006. These pages confirm that the Respondent’s website provides on-line poker games. The internet user is invited to “down load our free software to play for real money, “play” money, or just sit in on a free on-line poker game!”.
The Respondent’s website confirms that the Respondent is the owner of the Respondent’s website, and advises that the Respondent’s holding company is a corporation called TrueCashier Ltd, based in County Cork, Republic of Ireland. The pages from the Respondent’s website also refer to a corporation called TruePoker, Inc.
Other matters noted by the Panel are that the Respondent’s website is in the English language, and that relevant monetary sums mentioned therein are quoted in dollars. Also, there appears to be some connection with Canada – under the heading “Partnerships and Associations” on the Respondent’s website, there are listed a number of brands including (at the top of the list), the “Kahnawake Gaming Commission”. The Complainant’s website at “www.partygaming.com” advises that the [Complainant] “group’s real money poker gaming servers are currently located in Kahnawake, Canada”.
5. Parties’ Contentions
(1) Domain Name identical or confusingly similar to mark in which Complainant has rights
(i) Members of the Complainant’s group are registered proprietors of the Complainant’s mark in various jurisdictions. Also, the Complainant owns the Complainant’s mark by virtue of long and extensive world wide use.
(ii) The subsidiary companies which are the registered proprietors of the Complainant’s mark are directly or indirectly wholly-owned and controlled by the Complainant. It is therefore appropriate to recognise the Complainant as the owner of the marks for the purposes of this proceeding, (citing Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003 -0796).
(iii) The Domain Name is identical with and/or confusingly similar to the Complainant’s mark, because it incorporates the entirety of the Complainant’s mark (citing Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; and BellSouth Intellectual Property Corp v. Melos aka Thomas Stergios, (WIPO Case No. DTV 2001-0013).
(2) Respondent has no rights or legitimate interests in the Domain Name
(i) The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s mark (citing Telstra Corporation Ltd. v Nuclear Marshmallows, WIPO Case No. D2000-0003, and Alta Vista Company v. Jean-Daniel Gamanche, NAF Case No. FA 95249).
(ii) The Respondent is not generally known by the Complainant’s mark, and has not acquired any trademark or service mark rights in the Complainant’s mark. In fact, it appears that the Respondent is commonly known by the name True Poker.
(iii) The Respondent uses the Domain Name to resolve to the Respondent’s website, which provides online gaming services in competition with the Complainant’s services. The Respondent has registered and has been using the Domain Name to unlawfully divert and siphon off visitors seeking the Complainant’s website at “www.partypoker.com”. That is not a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the Domain Name (citing National Association of Professional Baseball Leagues v. John Zuccarini, WIPO Case No. D2002-1011).
(3) Respondent has registered and is using the Domain Name in Bad Faith
(i) The Respondent has deliberately used the Domain Name for commercial gain to divert internet users based on a likelihood of confusion with the Complainant’s mark. In particular, the Respondent has deliberately used the Domain Name for commercial gain, by attracting internet users to the Respondent’s website.
(ii) The Respondent registered and began its unauthorized use of the Domain Name for commercial benefit, long after the Complainant’s adoption and use of the Complainant’s mark and the Complainant’s website at “www.partypoker.com”. That website is the largest and one of the most widely known poker rooms on the internet. The Respondent is a direct competitor of the Complainant, and it is inconceivable that the Respondent registered the Domain Name without knowing of the Complainant’s rights in the Complainant’s mark.
(iii) The widespread use and fame of the Complainant’s mark in the gaming industry, the inherent distinctiveness of the mark and the Complainant’s prior domain name registrations and trade mark applications, lead to the necessary conclusion that the Respondent registered and has been using the Domain Name with actual knowledge of the Complainant’s rights.
(iv) There is no plausible reason for the Respondent’s selection of the Domain Name, other than as a deliberate attempt to profit unfairly from confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented 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 a corresponding domain name, provided that [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 [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.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial 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.
Paragraph 5(e) of the Rules provides that if the Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute based upon the Complaint.
Paragraph 14(b) of the Rules provides that:
“(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under these Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
B. Identical or Confusingly Similar
The various registered proprietors of the Complainant’s mark are wholly-owned and controlled subsidiaries of the Complainant. The Complainant submits that, in those circumstances, the Complainant itself has “rights” in the Complainant’s mark for the purposes of paragraph 4(a)(i) of the Policy.
In Party Gaming Plc v. Kriss Vance, WIPO Case No. D2006-0456, a decision of my own in which the Complainant was the same complainant as in this case, I considered the question of whether a parent company must necessarily have “rights” in a trademark or service mark owned by its subsidiary. After considering a number of cases referred to by the Complainant in that case, I said:
“In the end, this Panel prefers the view that the parent company must have some right to use or otherwise deal with the mark itself, whether under an express or implied licence from its subsidiary, or perhaps because the subsidiary holds the mark in trust for the parent company and/or others within the group.”
There was no response filed in the Kriss Vance case, and the point was therefore not fully argued. But in the end that did not matter, as I took the view that the evidence produced was sufficient in any event to satisfy the test I had proposed. The Complainant had produced a copy of the website at “www.partypoker.com”, including the statement on that website that one of the Group’s key strategies was to “enhance the business through the integration of the Group’s existing brands under a single brand …” I took the view that that statement was sufficient to support an inference that existing registered trademarks held by subsidiary corporations within the Complainant’s group were probably held for the benefit of all companies within the Group, including the Complainant, and that the Complainant therefore had rights in those registered marks.
The same evidence has been produced by the Complainant in this Complaint, and, in the absence of a response, the same inference is appropriate here.
The Complainant has therefore produced sufficient to show that it has a right in the trademark for the purposes of paragraph 4(a)(i) of the Policy.
The Panel accepts that the Domain Name is identical to the Complainant’s mark. The “.tv” is generic, and is not to be taken into account when comparing a complainant’s mark with the relevant domain name for the purposes of paragraph 4(a)(i) of the Policy.
For those reasons, the Panel finds that the Domain Name is identical to the Complainant’s mark.
C. Rights or Legitimate Interests
In Cassava Enterprises Ltd., Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited ,WIPO Case No. D2004-0753, the Panel said:
“Although the Policy requires that the complainants must prove each of the elements in paragraph 4(a), it is often observed that difficulties are posed for a complainant in proving a negative, namely that the Respondent does not enjoy some right or legitimate interest in the domain at issue. The wording of paragraph 4(c) of the Policy appears to envisage the Respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, a finding of “no legitimate right or interest” should normally follow if the respondent does not advance any plausible “right or legitimate interest” case. If the respondent does put forward such a case, the Panel decides the issue on the basis of all of the evidence, with the complainant carrying the ultimate burden of proof.”
In this case, the Domain Name is identical to the Complainant’s mark, and the Complainant has not authorized the Respondent to use the Domain Name. In the absence of any Response, those facts, coupled with the Panel’s findings on the question of bad faith (see section 6D of this decision, below), are sufficient proof of the matters required to be proved under paragraph 4(a)(ii) of the Policy. The Panel finds that the Respondent has no right or legitimate interest in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Panel also finds that the Domain Name was registered and is being used in bad faith. The Panel’s reasons for coming to that view are as follows:
(i) The Domain Name is identical to the Complainant’s mark.
(ii) The Complainant has not authorised the Respondent to use the Complainant’s mark or to register the Domain Name. The Respondent is not commonly known by the Domain Name, and has not shown that it has a right or legitimate interest in the Domain Name on any other basis.
(iii) The evidence is that the Complainant was founded in 1997, and that it has since become the world’s leading online gaming group, operating the world’s largest on-line poker room. Its subsidiaries’ first applications to register the Complainant’s mark appear to have been made in Canada and the United States in July 2001, and the United States registration refers to a “first use in commerce” date of July 1, 2001. The Canadian registration refers to first use in that country in February of that year. In those circumstances, it seems more likely than not that the Complainant group was reasonably well-established in the international market for online gaming services, by February 2003 (when the Domain Name was registered).
(iv) While the Respondent itself is based in Costa Rica, its holding company is in the Republic of Ireland. The text on the Respondent’s website is in the English language, and monetary sums referred to are expressed in dollars. Those facts suggest that the Respondent is part of an international group, which carries on business in the field of online gaming.
(v) The Respondent is therefore a competitor of the Complainant in the worldwide market for online gaming. The Panel finds it inconceivable that the Respondent would have been unaware of the identity of its major competitors, including the Complainant.
(vi) The Respondent’s website refers to “partnerships” or “associations” with a number of corporations or bodies, including the Kahnawake Gaming Commission. Kahnawake is the place in Canada where the Complainant group’s gaming servers are located. Both parties therefore appear to have commercial connections of some kind with Canada, where the Complainant’s mark appears to have been used since early 2001.
(vii) The Respondent has filed no response and has offered no explanation for its choice of the Domain Name. In particular, it has not explained why it chose a domain name incorporating the word “party”.
(viii) Having regard to the matters referred to in subparagraphs (iii) to (vii) above, the Panel concludes that the Respondent was aware of the Complainant and its business activities conducted under the Complainant’s mark, before the Respondent registered the Domain Name in February 2003.
(ix) In the absence of any response, the Panel infers that the Respondent registered the Domain Name for the purpose of pointing it to the Respondent’s website, and that it did that soon after it registered the Domain Name.
(x) It must have been obvious to the Respondent when it registered the Domain Name, and pointed it to the Respondent’s website, that a significant number of internet users looking for websites associated with the Complainant would assume that the Domain Name was owned by or otherwise associated with the Complainant. Again, in the absence of any response, the Panel concludes that the Respondent intended that that assumption should be made.
(xi) In the circumstances listed above, the Panel concludes, without difficulty, that the Respondent has intentionally attempted to attract for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, or endorsement of the Respondent’s website. The circumstances fall squarely within paragraph 4(b)(iv) of the Policy, and the Complainant has accordingly established bad faith registration and use on the part of the Respondent.
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, <partypoker.tv>, be transferred to the Complainant.
Dated: June 13, 2006