The Complainant is Groupe Partouche of Paris, France, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Eric Gaucher of Paris, France.
The disputed domain name <casinopartouche.org> is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2010. On April 21, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On April 23, 2010, Name.com LLC 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 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2010. Although the Center did receive an email communication on April 23 from the Respondent regarding this matter, no official response was received in this case as required by the Rules. Accordingly, the Center notified the Respondent's default on May 14, 2010.
The Center appointed Alexandre Nappey as the sole panelist in this matter on May 21, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is an international provider of gaming, online gaming and entertainment services registered under the laws of France.
Casino gaming is the main activity of the Complainant, which operates nowadays 55 casinos, among which 47 in France. The Complainant also holds 19 hotels and 130 restaurants and it promotes Partouche Poker Tour, one of the largest poker events in the world.
The Complainant has numerous registered trademarks including its business name PARTOUCHE, notably:
A French figurative trademark GROUPE PARTOUCHE filed in June 16, 1993 and registered for services in classes 35, 36, 41 and 43 under No. 93 472 479 (dead – not renewed);
A French figurative trademark GROUPE PARTOUCHE filed in December 18, 2003 and registered for services in classes 35, 36, 41 and 43 under No. 03 3 263 728 (existing);
An international figurative trademark GROUPE PARTOUCHE filed in July 22, 2008 and registered for services in classes 35, 36, 41 and 43 under No. 982 668 (existing);
The Complainant has an extensive online presence through various websites like “www.partouche.com”, or “www.casinopartouche.com”.
The disputed domain name was registered on September 3, 2003, and it has been used to redirect to “www.casino770.com” a Complainant's competitor since a long time.
On October 26, 2009, the Complainant sent a cease and desist letter to the Respondent informing him of the Complainant's intellectual property rights in the trademarks PARTOUCHE and requesting that the domain name be transferred. It appears that the Respondent has ignored this formal notice.
Therefore, the Complainant filed the Complaint before the Center in accordance with the UDRP.
The Complainant submits that it is a leading actor in the field of entertainment and casino services in Europe, and particularly in France.
It holds trademark rights including the word “partouche” and the disputed domain name is confusingly similar to its trademark rights.
The Complainant claims that the domain name incorporates the trademark in its entirety, and that it is solely separated by the addition of the descriptive term “casino” which is highly descriptive to the goods and services provided by the Complainant.
The Complainant then asserts that “partouche” is not a common word but is related to the Complainant's founder's family name which has been turned into a distinctive identifier associated with the Complainant's products and services.
The Complainant further contends that the Respondent has no rights or legitimate interests in the word “partouche”: on the one hand, all gaming related trademarks including the word “partouche” belong to the Complainant; on the other hand the Respondent is not licensed by the Complainant nor authorized in any way to use its trademark, particularly in the domain name <casinopartouche.org>.
According to the Complainant, the Respondent's purpose in registering the disputed domain name was to trade on the reputation of the Partouche name and to make financial gain as well as tarnish the Complainant's mark.
At last, the Complainant claims that the Respondent has registered and is using the domain name in bad faith: the domain name points to “www.casino770.com” which is a competitor of the Complainant, operating in French, as the Complainant.
The Complainant asserts that the Respondent could not ignore the reputation of the Complainant and its name at the time he registered the disputed domain name, and that he prevented the Complainant from registering a domain name which would naturally reflect its trademark.
The Complainant therefore requests that the domain name <casinopartouche.org> be transferred.
The Respondent did not formally reply to the Complainant's contentions.
However, upon receipt of the Complaint, the Respondent sent a communication to the Center, in French, stating that he had registered the disputed domain name since years, and had used it without any problem.
The disputed domain name is being redirected to “www.casino770.com” which used to have a partnership with the Complainant.
The Respondent states that he is ready to change the use but would like to keep his domain name.
The informal Response made by the Respondent is administratively deficient in several aspects. Therefore, the Center fairly notified the default of the Respondent by e-mail to the parties on May 14, 2010.
However the statements made by Respondent are worth noting and therefore the Panel decides to consider these assertions.
It is also reminded that the Complainant has to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
“(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith”.
Having considered the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above cited elements are the following.
The Complainant has submitted substantial evidence of its rights and wide use of the marks GROUPE PARTOUCHE in France, where the Respondent is located, and in Europe.
However, the Panel notes that the oldest French figurative trademark GROUPE PARTOUCHE No. 93472479 in which the Complainant claims rights, was not registered by the Complainant nor licensed to it, and most of all, had expired at the time the domain name was registered.
The other trademark rights claimed by the Complainant postdate the disputed domain name, for a few months.
Practically speaking, the disputed domain name was registered in a six months period during which the Complainant did not have registered trademark rights including the word “partouche” or any combination thereof.
The question is whether the Complainant is able to show up trademark rights in the sense of the UDRP paragraph 4(a)(i).
The Panel notes that for purposes of paragraph 4(a)(i) of the Policy, previous panels have considered that it suffices that a complainant has demonstrated trademark rights at the time of filing the complaint as the UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However, as also indicated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions 1.4., it may be difficult to prove that the domain name was registered in bad faith where a trademark was not registered at the time of registration of the domain name.
Noting that the issue of unregistered rights is relevant in this case, the Panel will consider the issue under this heading. In other words, the question is whether the Complainant is able to demonstrate sufficient reputation and goodwill on the mark PARTOUCHE to support a claim based on unregistered trademark rights during the period of reference?
As stated in (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726: “the issue is as to whether or not the Complainant has unregistered or so-called ‘common law' rights in the name ‘Galatasaray'. The test is straightforward. If a third party set up in business under the name ‘Galatasaray', could the Complainant succeed in a legal action to restrain the third party trading under that name? If the answer is ‘yes', then ‘Galatasaray' is a common law trademark or service mark of the Complainant.”
In the present case, taking into account the long and wide use of the mark PARTOUCHE and combination of this mark, exclusively by the Complainant, to promote products and services in the field of gaming and casinos, in Europe, the Panel is of the opinion that the Complainant has acquired reputation and fame on that name prior to the registration of the disputed domain name.
As to the second part of the test under 4(i) of the Policy, the Panel notes that the trademark is however not strictly identical to the disputed domain name <casinopartouche.org>. The suffix “.org” is to be disregarded for comparison purposes so the Panel has to determine whether the disputed domain name is confusingly similar to the trademarks PARTOUCHE and GROUPE PARTOUCHE without regards to the gTLD extension.
The domain name incorporates the Complainant's trademark or at least the distinctive part of the trademark and adds the word “casino”, which refers directly to the main business of the Complainant.
The addition of generic words to trademarks has been considered in numerous UDRP decisions not to avoid confusing similarity between a domain name and a trademark.
In the present case the Panel is of the opinion that there is a strong likelihood that an Internet user may believe that the disputed domain name is operated by the Complainant. Furthermore, the Complainant itself is promoting its activities, and especially its online gaming services on a website available at “www.casinopartouche.com”.
Therefore the Panel is satisfied that the Complainant owns rights in the PARTOUCHE and GROUPE PARTOUCHE trademarks, and finds that the domain name is confusingly similar to the Complainant's trademarks in the terms of paragraph 4(a)(i) of the Policy.
The Complainant further claims that it has no connection or affiliation with the Respondent, who was not licensed or otherwise authorized to use or apply for any domain name incorporating the Complainant's trademark.
Taking into account both parties contentions, the Panel observes that the Respondent does not appear to have any right on the mark PARTOUCHE, nor is he commonly known under that name.
Moreover the domain name is obviously redirecting to a website operated by one of the Complainant's competitors. Such use cannot be considered as a bona fide offering of goods and services. On the contrary.
The Panel finds therefore that the Respondent does not have any right or legitimate interest in the domain name at issue.
Consequently, the Panel finds for the Complainant in terms of paragraph 4(a)(ii) of the Policy.
The Complainant has to demonstrate that the disputed domain name has been both registered and is being used in bad faith.
As stated above, the Complainant has shown that the domain name <casinopartouhce.org> points to the website “www.casino770.com” which is a competitor of the Complainant.
This is a clear indication that the Respondent was aware of the trademarks PARTOUCHE and GROUPE PARTOUCHE when registering the domain name.
Even though there is no direct proof of the Respondent's relationship to Casino770, the fact that the domain name resolves to the website “www.casino770.com” would tend to show that the Respondent has registered the domain name for the purpose of disrupting the business of a competitor which is evidence of bad faith according to paragraph 4(b)(iii) of the Policy.
Be that as it may, the Panel finds that the Respondent is using the domain name intentionally to attract, for commercial gain, Internet users to the website located at “www.casino770.com” by creating a likelihood of confusion with the Complainant's trademark.
This is evidence that the domain name at issue was registered and is being used in bad faith according to paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the domain name was registered and is being used in bad faith.
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 <casinopartouche.org> be transferred to the Complainant.
Dated: June 7, 2010