WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pocket Kings Limited, Carlos Mortensen, Erica Schoenberg , ‘Miami’ John Cernuto, Pascal Perrault v. Nicolas Pasquier
Case No. D2010-1029
1. The Parties
The Complainants are Pocket Kings Limited of Loughlinstown, Dublin, Ireland; Carlos Mortensen of Henderson, Nevada, United States of America (“USA”); Erica Schoenberg of Playa Del Rey, California, USA; ‘Miami’ John Cernuto of Las Vegas, Nevada, USA; and Pascal Perrault of Paris, France, all represented by Safenames Ltd., United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Nicolas Pasquier of Roubaix, France.
2. The Domain Names and Registrar
The disputed domain names <teamfulltilt.net>, <teamfulltiltpoker.net>, <carlosmortensen.net>, <ericaschoenberg.com>, <erica-schoenberg.com>, <miamijohncernuto.com> and
<pascalperrault.com> (the “Domain Names”) are all registered with OVH (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2010.
The Center transmitted its request for registrar verification to the Registrar on June 23, 2010. The Registrar replied (following two reminders from the Center) on July 7, 2010. In relation to <teamfulltilt.net>, <teamfulltiltpoker.net>, <erica-schoenberg.com> and <miamijohncernuto.com> the Registrar stated that the Domain Names had not been renewed by its customer, the Respondent, and were now on “pending delete status”. In relation to <carlosmortensen.net>, <ericaschoenberg.com> and <pascalperrault.com> the Registrar confirmed that the Domain Names were registered with it by the Respondent as registrant and that they had been placed on Registrar Lock and would remain so during this proceeding. In relation to all of the Domain Names, the Registrar provided the full contact details held on its WhoIs database, confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, and stated that the language of the registration agreement was French. The Registrar also stated that it had not received a copy of the Complaint.
The Center asked the Registrar by email of July 9, 2010, to confirm that, in accordance with paragraph 18.104.22.168 of ICANN’s Expired Domain Deletion Policy, the expired Domain Names would be placed on Registrar LOCK status until this proceeding was concluded and to advise whether any action was required by the parties to keep these Domain Names under this status. The Registrar replied on July 12, 2010, stating that the expired Domain Names were currently in the redemption period and could be restored by one of the parties on payment of EUR 150 per Domain Name; and that if a party wished to restore the Domain Names, it should contact the Registrar. The Center copied this correspondence to the parties on July 12, 2010, inviting them to contact the Registrar if they wished the Domain Names to remain active. The Respondent replied the same day, stating that he had not been informed that there was a dispute relating to these Domain Names, that they had been dropped and there was nothing he could do to resolve the situation. The Complainants’ representative asked the Registrar to restore these Domain Names by emails of July 15 and July 16, 2010. The Registrar confirmed that these Domain Names had been restored and placed on Registrar LOCK status by email of July 16, 2010.
By email transmitted to all parties on July 21, 2010, the Center drew the Complainants’ attention to the fact that the Registration Agreement was in French and requested the Complainant to provide satisfactory evidence of an agreement between the parties that the proceedings should be in English and/or to submit the Complaint in French and/or to submit a request that the proceeding be conducted in English accompanied by supporting arguments and material. The Center’s email also made provision for comments by the Respondent on this issue and indicated that if the Complainants requested that the proceeding was in English and the Respondent did not object, the Center would proceed on the basis that the Respondent had no objection to the Complainants’ request.
The Complainants requested by email of July 22, 2010, that the proceedings should be conducted in English. The subject-line of this email referred to the Center’s case number and the Domain Name, <teamfulltilt.net>, this being the lead Domain Name in the Complaint as filed. The Complainants pointed out that pre-Complaint correspondence between the parties and correspondence between the Respondent and the Center in English showed that the Respondent could understand and effectively communicate in English. The Complainants also drew attention to the Respondent’s registration of a large number of Anglophone domain names, including some of the Domain Names in this Complaint. The Respondent confirmed by email of the same day that for practical reasons he agreed to English being the language of the proceedings for the Domain Name <teamfulltilt.net>.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2010. Email notifications using the contact details provided by the Registrar were apparently delivered, but the courier delivering the hard copy reported difficulty locating the Respondent’s street address and eventually reported successful delivery on August 23, 2010.
In accordance with paragraph 5(a) of the Rules, the due date for Response was August 16, 2010. The Respondent did not submit any response by that date. Accordingly, the Center notified the Respondent’s default by email on August 19, 2010.
The Respondent subsequently informed the Center by email of August 25, 2010, that he had only received the notification of the Complaint by courier two days after the notification of Respondent’s default and asked within what time he was required to respond. The Center replied by email of August 26, 2010, informing the Respondent that notification of the commencement of the proceeding had been duly sent to him on July 27, 2010, using all contact details made known to the Center by the Complainant and the Registrar in accordance with the Rules; that the due date for filing the Response had been August 16, 2010; and that if the Respondent wished to make a late Response, the Center would bring it to the attention of the Panel which would have sole discretion to consider it.
The Respondent sent a further email to the Center on August 26, 2010, suggesting that it was not his fault that delivery of the Complaint by the courier had been delayed and asking to be allowed time to examine the Notification and to reply to it. The Center wrote back the same day, reiterating that the Complaint had been duly notified by email and that the Panel had a discretion to decide on any appropriate procedural steps to ensure that each party is given a fair opportunity to present its case. No further communications were received by the Center from the Respondent.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 8, 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 paragraph 7 of the Rules.
4. Procedural Rulings
A. Consolidation of Multiple Complainants
The UDRP and the Rules do not explicitly provide for a single Complaint to be made by multiple Complainants against a single Respondent in respect of multiple domain names. However, in Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331, the panel endorsed under the UDRP the conclusions previously reached in National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021, under the .au Dispute Resolution Policy, which it summarized in the following terms:
“[…] the consolidation of multiple complaints in a single complaint should be permitted if the complainants:
(i) have a common grievance against the respondent; and
(ii) it would be equitable and procedurally efficient to permit the consolidation of complaints.
With regard to the first limb of the test, to establish a common grievance against the respondent the panel in the National Dial A Word case held that multiple complainants must;
(i) have a common legal interest in the trade mark rights on which the complaint is based; or
(ii) be the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion.
Instances where multiple complainants may establish a common legal interest would include where:
(i) the multiple complainants have a shared interest in a trade mark, such as may exist between a licensor and a licensee; or
(ii) the multiple complainants form part of a single entity such as where individual companies are part of a larger corporate group or joint venture; or
(iii) the multiple complainants are members of an established association or league (such as a sporting association) in which individual members have rights authorized to be enforced by the association, both the association and the members should have standing to appear as multiple complainants in a consolidated complaint against a single respondent.
If multiple complainants cannot establish a common legal interest sufficient to justify their consolidation in a single complaint, to satisfy the “common grievance” limb of the test the complainants must establish that the respondent has engaged in common conduct that has affected their individual rights in a similar fashion. Such common conduct may be found to exist:
(i) where the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or
(ii) where there is a clear pattern of registration and use of all the disputed domain names in question.
If the multiple complainants establish that a common grievance exists against the respondent then the panelist considered that the second limb of the test should be addressed: would it be equitable and procedurally efficient to permit consolidation of the complainants?
In determining if the second limb of the test is satisfied the panel in the National Dial A Word case took into account the following factors:
(i) whether there is any apparent reason why it would not be equitable to permit consolidation of the complainants;
(ii) the extent to which the complainants' substantive arguments made under each of the three elements of the Policy appear to be common to the disputed domain names;
(iii) whether all complainants are represented by a single authorized representative for the purpose of the proceedings;
(iv) whether the complainants clearly stipulate each disputed domain name, the individual complainant making a claim thereto, the right or rights relied upon by that complainant, the remedy sought in respect of the disputed domain name, and the registrar with whom the disputed domain name is registered;
(v) whether the case involves a relatively small number of domain names;
(vi) that relevant filings, including any annexes, would not appear to be unreasonably voluminous;
(vii) whether there is an applicable fee schedule covering the complaint as filed.”
The Panel in Fulham Football Club, supra, added the following qualification:
In broad terms this Panel considers that the test outlined above is appropriate and balanced and is consistent with the aim of the UDRP to combat cybersquatting in as efficient and cost effective a manner as is fairly possible. However the test must be applied judiciously and depending upon the circumstances of particular cases may require the exercise of a panel's discretion in adapting it as appropriate.”
It may be noted that the Panel in National Dial A Word, supra, had itself observed “that the issue of consolidation is relatively uncharted territory in this context, that there may well be further development of the considerations as presently expressed in this Decision, and that such further development would obviously need to take account of, and do justice to, changing realities within the broader domain name system, and the intent behind the Policy (and indeed other policies similar to the UDRP) which is to provide an effective means of addressing abusive domain name registration.”
In Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., WIPO Case No. D2009-1243, the Panel approved the general approach identified in National Dial A Word (i.e. the first sentence of the main quotation above), while remaining skeptical of the universal applicability of several of the “specific principles” set out in that decision.
In the interest of consistency and certainty, the present Panel considers that it is appropriate to follow the decisions in National Dial A Word, supra, and Fulham Football Club, supra, on this issue, while bearing in mind that the specific criteria identified in these cases are not exhaustive.
In this case, the Second to Fifth Complainants are all professional poker players affiliated to the First Complainant. The latter operates an online poker room offering members of the public an opportunity to play with its affiliated professionals. The Domain Names are identical or similar either to the name used by the First Complainant for its poker room together with the word “team” (which is likely to be taken to refer to its affiliated players) or to the individual names of the Second to Fifth Complainants. The Domain Names resolve to similar web pages containing sponsored links, most of which connect to competing online poker websites. These web pages also state that the Domain Names are for sale and the Respondent has offered all of the Domain Names for sale at a price exceeding the costs of registration.
In these circumstances the Panel finds that the Complainants have a common grievance against the Respondent in that they have been the target of common conduct by the Respondent which has affected their legal interests in a similar fashion. The second limb of the first branch of the test laid down in the cases cited above is therefore satisfied and it is necessary next to consider whether it would be equitable and procedurally efficient to permit the consolidation in the Complaint.
With reference to the specific criteria identified in National Dial A Word, supra, and Fulham Football Club,, supra, the Panel observes that in this case there is no apparent reason why it would not be equitable to consolidate; that the Complainants’ substantive arguments are largely common to all of the Domain Names in dispute; that the Complainants have a single authorized representative; that the Complaint specifies each Domain Name, the common Registrar, and the respective rights of the Complainants relied upon; that the case involves a relatively small number of Domain Names; that the Complaint and Annexes are not unreasonably voluminous; and that there is an applicable fee schedule covering the Complaint as filed.
On the other hand, the Complaint is not explicit as to which Complainant is making a claim in relation to which Domain Name or as to whether the Complainants seek transfer of all of the Domain Names to them jointly or transfer of individual Domain Names to individual Complainants (and, if so, which to which). .
Other factors which the Panel considers relevant are that there is a single registrar, a point of some significance as regards procedural efficiency; that the Complainants are engaged in a joint venture; that the Respondent proposed selling all of the Domain Names together; and that the Respondent has not objected to the consolidation.
In all the circumstances, the Panel is satisfied that it is equitable and procedurally efficient to permit the consolidation. The Panel therefore allows the Complaint to proceed with multiple Complainants.
B. Language of Proceeding
In accordance with paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
As pointed out by the Center in its email communication of July 21, 2010, the language of the Registration Agreement in this case was French. The Respondent has agreed to English being the language of the proceedings for the Domain Name <teamfulltilt.net>, but has not explicitly agreed to English being the language of the proceedings for any of the other Domain Names. However, the Panel notes from the correspondence between the Respondent and the Center that the Respondent has no difficulty communicating in English and that there is no reason to differentiate between <teamfulltilt.net> and the other Domain Names as regards the language of the proceeding. In the circumstances, the Panel determines that the language of the proceeding shall be English.
C. Notification of Commencement and Time for Response
As noted by the Center in its email communication of August 26, 2010 to the parties, in accordance with paragraph 10(b) of the Rules, the Panel shall ensure that each party is given a fair opportunity to present its case. On the other hand, under paragraph 10(c) of the Rules, the panel shall ensure that the proceeding takes place with due expedition but may in exceptional cases extend any period of time fixed by the Rules. Furthermore, under paragraph 14(a) of the Rules, in the event that a party does not comply with any of the time periods established by the Rules, and in the absence of exceptional circumstances, the panel shall proceed to a decision on the complaint. The Panel has therefore considered whether it ought to grant an extension of time for a Response before proceeding to a decision in this case, albeit that the Respondent has not even now submitted a Response.
The Panel notes that the Complaint was transmitted by the Center to the Respondent by email on July 27, 2010; that no notification of transmission failure was returned to the Center; that it is clear from the Respondent’s replies that email transmissions by the Center to him were received by him both before and after the transmission of the Complaint itself; and that the Respondent did not dispute the Center’s statement that the Complaint had been notified to him by email. In these circumstances, the Panel finds that the Complaint was successfully transmitted to the Respondent by email on July 27, 2010, and received by him shortly thereafter. The Panel further finds that the Complaint was delivered in hard copy to the Respondent on or about August 23, 2010.
In all the circumstances, the Panel considers that the Respondent has had a fair opportunity to present its case, that it is not appropriate to grant any further extension of time to submit a Response, that there are no exceptional circumstances justifying a delay, and that the Panel should therefore proceed to a decision.
5. Factual Background
As stated above, the First Complainant operates an online poker room offering members of the public the opportunity to play with its “team” of professional poker players. The Complainant’s poker room is located by the urls “www.fulltiltpoker.com”, “www.fulltiltpoker.net” and “www.fulltiltpoker.org”, and its website uses the name “Full Tilt Poker” in its banner and generally throughout the website as its name. The Complainant has registered FULL TILT POKER and its logo comprising the words FULL TILT POKER as Community Trade Marks in the European Union.
The Second to Fifth Complainants are professional poker players affiliated to the First Complainant as members of its “team”. They have all achieved high places in leading poker tournaments with winnings in live tournaments ranging from over USD 725,000 in the case of the Third Complainant, Erica Schoenberg, to USD 9.6 million in the case of the Second Complainant, Carlos Mortensen. The professional players affiliated to the First Complainant, including the Second to Fifth Complainants, are identified as “our team” on the First Complainant’s website.
The Domain Names resolve to web pages containing sponsored links, most of which connect to competing online poker websites. These web pages also state that the Domain Names are for sale. By an email of March 8, 2010, the Respondent thanked Jack Stevens for his interest in the Domain Name <carlosmortensen.net> and stated that it was for sale. The Respondent added that he owned over 300 poker domain names, including the Domain Names <miamijohncernuto.com> and <ericaschoenberg.com>. In a subsequent email the same day, the Respondent thanked Jack Stevens for his offer but suggested that he look at the average sale price for a domain and that USD 250 “was nowhere near reality”. The Respondent also said that they were premium domain names with players’ names, that it was “as good as it gets” and that he was about to park all his domains so he was very open, but not to USD 250 a piece. In a subsequent email on March 31, 2010, the Respondent informed Jack Stevens that he could offer <ppthebandit.com>, Pascal Perrault’s poker nickname, to go along with the Domain Name <pascalperrault.com>.
6. Parties’ Contentions
The Complainants contend that the First Complainant has registered rights in the mark FULL TILT POKER and that the other Complainants have unregistered rights in their respective names, “Carlos Mortensen”, “Erica Schoenberg”, “Miami John Cernuto” and “Pascal Perrault” on the ground that they are widely known as professional poker players under these names. The Complainants submit that the respective Domain Names are identical or confusingly similar to these marks.
The Complainants deny that the Respondent has any right or legitimate interest in respect of the Domain Names. They point out that the Domain Names are directed to web pages displaying pay-per-click links to websites of third party competitors and submit that this use does not fall within the ambit of paragraph 4(c)(iii) of the UDRP. The Complainants also allege that the Respondent intentionally recruited the assistance of a domain name parking company to generate revenue from misleading members of the public and diverting customers contrary to that provision. The Complainants add that use of a domain name which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. The Complainants further note that the Respondent is an individual called “Nicolas Pasquier” who has never been known by the Domain Names, and that the Complainants have never had any relationship with him which would give him any right to register the Domain Names.
The Complainants allege that the Domain Names were registered and are being used in bad faith. They say that the Respondent has made no use of the Domain Names other than to offer them for sale at prices substantially exceeding his out of pocket costs of registering them. The Complainants also argue that the Respondent’s direction of the Domain Names to web pages displaying pay per click links constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the UDRP. Finally, the Complainants allege that the Respondent registered the Domain Names in order to block the Complainants from using domain names corresponding to their marks and that there has been a pattern of such conduct on the part of the Respondent in accordance with paragraph 4(b)(ii) of the UDRP.
The Complainants request a decision that the Domain Names be transferred to them.
As stated above, the Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding in relation to each of the Domain Names, the Complainants must prove (i) that the Domain Name is identical or confusingly similar to a mark in which one or more of them has rights; (ii) that the Respondent has no rights or legitimate interests in respect of that Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
It is clear from the terms of the UDRP and numerous decisions under it that these are cumulative requirements which must all be satisfied for a complaint to succeed in relation to a domain name. They will therefore be considered in turn in relation to each of the Domain Names.
A. Identical or Confusingly Similar
The Panel finds on the undisputed evidence that the First Complainant has registered rights in the mark FULL TILT POKER.
The Panel further considers that the Domain Names <teamfulltilt.net> and <teamfulltiltpoker.net> are confusingly similar to this mark. “Full Tilt” is the distinctive element of the mark; “poker” is descriptive. The word “team” is widely used as a descriptive prefix or suffix to a distinctive name donating a group of players of sports and games, even where they compete individually, and the First Complainant has itself used the term “team” to refer to its stable of professional players. The Panel is satisfied that many Internet users interested in poker would assume that these Domain Names locate a website of the Complainant.
It has been confirmed in numerous decisions under the UDRP that the name of a professional sportsperson can constitute an unregistered mark in which the player has rights within the meaning of its paragraph 4(a)(i), provided that the reputation of the player is sufficient for the name in question distinctively to identify that player to a significant number of members of the interested public. The Panel considers that a similar principle must apply to the names of professional players of games such as poker.
The Panel finds on the evidence that the names “Carlos Mortensen”, “Erica Schoenberg”, “Miami John Cernuto” and “Pascal Perrault” distinctively identify the Second to Fifth Complainants respectively to many members of the public interested in the game of poker. Accordingly, the Panel is satisfied that each of these names constitutes a mark in which the Complainant thereby identified has rights.
It is well established that the generic top level domain suffix should be discounted when comparing a domain name with a mark for the purpose of this requirement of the UDRP. The Domain Name <carlosmortensen.net> is therefore effectively identical to the mark CARLOS MORTENSEN; the Domain Names <ericaschoenberg.com> and <erica-schoenberg.com> are effectively identical to the mark ERICA SCHOENBERg; the Domain Name <miamijohncernuto.com> is effectively identical to the mark MIAMI JOHN CERNUTO; and the Domain Name <pascalperrault.com> is effectively identical to the mark PASCAL PERRAULT.
The first requirement of the UDRP is therefore satisfied in relation to each of the Domain Names.
B. Rights or Legitimate Interests
On the evidence, the only uses made by the Respondent of the Domain Names have been to direct them to web pages displaying sponsored links primarily to websites of competitors of the Complainants and to offer them for sale at prices in excess of his out of pocket costs. Neither of these uses constitutes a use in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP.
It is evident that the Respondent is not commonly known by the Domain Names. Nor has the Respondent made legitimate noncommercial or fair use of the Domain Names. On the contrary, by directing them to web pages which display sponsored links to websites of competitors of the Complainants, the Respondent has made illegitimate and unfair commercial use of them with intent to divert consumers for commercial gain by misleading them. The Panel is satisfied that paragraphs 4(c)(ii) and (iii) of the UDRP do not apply.
On the evidence the Panel finds no other basis on which the Respondent could claim any rights or legitimate interests in respect of any of the Domain Names. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that by directing the Domain Names to web pages containing sponsored links, the Respondent has intentionally used them to attempt to attract Internet users to those web pages for commercial gain by creating a likelihood of confusion with the corresponding marks of the Complainants as to the source, sponsorship, affiliation or endorsement of those web pages. In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of bad faith registration and use of the Domain Names.
The Panel further finds on the evidence, in particular the email correspondence annexed to the Complaint, that the Respondent registered the Domain Names primarily for the purpose of selling them to the Complainants or competitors of the Complainants or third parties for valuable consideration in excess of his out of pocket costs of registration. While this may not fall within paragraph 4(b)(i) of the UDRP (because the Respondent may well have contemplated sale to parties other than the Complainants and their competitors), the specific instances identified in paragraph 4(b) of the UDRP are not exhaustive, and the Panel regards this as further evidence of bad faith.
There is no evidence contradicting the above evidence of bad faith. The Panel accordingly concludes that each of the Domain Names was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
As noted above, the Complaint is unclear as to whether the Complainants seek transfer of all of the Domain Names to them jointly or transfer of individual Domain Names to individual Complainants (and, if so, which to which). The Panel is not satisfied on the evidence that the Complainants together have joint rights to any of the marks relied upon. In these circumstances, the Panel considers that each of the respective Domain Names should be transferred to the particular Complainant who owns the mark to which it corresponds.
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 <teamfulltilt.net> and <teamfulltiltpoker.net> be transferred to the Complainant Pocket Kings Limited; the Domain Name <carlosmortensen.net> be transferred to the Complainant Carlos Mortensen; the Domain Names <ericaschoenberg.com> and <erica-schoenberg.com> be transferred to the Complainant Erica Schoenberg; the Domain Name <miamijohncernuto.com> be transferred to the Complainant ‘Miami’ John Cernuto; and the Domain Name <pascalperrault.com> be transferred to the Complainant Pascal Perrault.
Dated: September 22, 2010