WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pocket Kings Limited v. Smokey’s Entertainment
Case No. D2011-0074
1. The Parties
The Complainant is Pocket Kings Limited of Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Smokey’s Entertainment, Los Angeles, California, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <fulltiltodds.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2011. On January 14, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 15, 2011, GoDaddy.com, Inc. 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 January 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2011. No formal Response was received however, emails were received on January 18-22, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on February 22, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On January 26, 2011 the Complainant filed a supplemental filing which was acknowledged by the Center on January 27, 2011.
4. Factual Background
The disputed domain name was registered by the Respondent on January 10, 2011.
The Complainant is the owner of trademarks registered in the United Kingdom and the European Community in 2008 for FULL TILT POKER. The Complainant also owns a number of domain names that include its mark, e.g. <fulltiltpoker.com>, <fulltiltpoker.com>, <fulltiltpoker.com>, <fulltilt.com>, and <fulltilt.org>. These domain names were variously registered in 1995, 2000, 2002, and 2003.
At the date of this decision, and as evidenced in the Complaint, the disputed domain name reverts to a website entitled “Full Tilt Odds.com”, overlaying a red triangle on a black background. That mark is similar in appearance to the Complainant’s registered “Full Tilt Poker” mark, which also features a red triangle against a black background. The Respondent’s website largely relates to poker, and includes links to other matters, under the leading “Lines and Odds”, such as baseball and basketball.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant, Pocket Kings Ltd which was previously known as Tiltware LLC was founded in September 2003 and provides marketing and online consulting services to the online poker industry. The company relocated to Ireland in 2006 and changed its name to Pocket Kings Ltd. ‘Full Tilt Poker’ is a brand developed by the Complainant, which facilitated and licensed its use in 2004. Full Tilt Poker is the second largest online poker room and is a respected name amongst the online poker community.
The Complainant hosts world poker championships such as the Full Tilt online poker tournament series known as “Team Full Tilt” which occurs every 3 months and is highly publicized. The notoriety and success of the Complainant’s brand has warranted its own Wikipedia article.
The Complainant’s main official site “www.fulltillpoker.net” has, on average, over 16,000 players per hour. Full Tilt Poker is known for hosting the highest stakes in online poker. There are a lot of press articles in the gaming industry that surrounds Full Tilt Poker. The Complainant has commissioned many television commercials and so far, publicity has been generated through at least 10 different television commercials. The brand is not only recognised on the Internet but also amongst the world of sport. The Full Tilt brand is a major sponsor for the Formula One racing team Virgin Racing, Taylor Barton Racing. They are also a senior sponsor of the Sydney Roosters of the National Rugby League and Full Tilt Poker is also a sponsor of the Formula D Racing event.
The Complainant asserts that the disputed domain name is confusingly similar to and fully incorporates the Complainant’s trademarks and brand. An aural pronunciation and visual comparison of the disputed domain name is confusingly similar to the Complainant’s brand and trademark.
The Complainant asserts that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that there is no evidence that the Respondent can demonstrate any of circumstances in paragraph 4(c) of the Policy. The Respondent has registered the disputed domain name with the intention to misleadingly divert consumers to their web page.
The Complainant provides evidence that the Respondent’s website provides a link which allows internet users to download poker software. The website allows for internet users to click on the “private agent” link whereby they are able to download an application which is from the website “www.jqkp.com” this download leads onto an online poker room for “www.wager123.com.” The Complainant says that the “wager123.com” website also allows for the download of the same software “www.wager123.com poker” when the link “poker agent” is accessed. The Complainant says that this website has the same set up as the Respondent’s website.
The Complainant says that the Respondent has registered and used the disputed domain name in bad faith. The Complainant asserts that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. The Complainant says that the disputed domain name is so obviously connected with the Complainant that its use by the Respondent suggests opportunistic bad faith. The Complainant also says that there are other circumstances indicating bad faith, including that the Respondent has used a privacy service to withhold their details.
On January 26, 2011, the Complainant made a supplemental filing. In it, the Complainant provides evidence that “[a]fter notification of the complaint, the Respondent has added a poker advertisement to the web page to which the disputed domain name resolves to. This poker advert offers Internet users the chance to play
poker with the pros live.”
The Respondent sent a number of email communications in connection with this case. As those emails appear to address the Complainant’s case, the Panel has taken those emails to collectively comprise a ‘Response’ for the purpose of these proceedings.
The Respondent says that the Complainant’s marks registered in Europe have nothing to do with United States trademarks. The Respondent says that he checked to determine that the Complainant had no marks registered in the United States. The Respondent also denies that he offers any poker room activities on his website and offers to provide log in details for other parties to confirm that statement.
In relation to the Complainant’s claims of the Respondent’s affiliations with “www.wager123.com”, the Respondent says that he has no such affiliation. The Respondent says that “water 123 is a pay-per-head since we switch our website to there [sic] server name and number then all the rules and regulations have to go according to there [sic] rules that your customers have to obied [sic] by.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(ii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
The Panel notes that it has also taken into consideration the supplemental filing made by the Complainant. Neither the Policy nor the Rules provides for supplemental submissions. A panel may request further statements or documents from a party under paragraphs 10 and 12 of the Rules. The Panel did not make such a request in this case. Nevertheless, in appropriate circumstances, panels have accepted unsolicited filings. See e.g. NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984. As the panel stated in that case, whether it is appropriate to admit such a filing may depend “on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not.” In this case, the Complainant sought to provide information about changes to the Respondent’s website since the filing of the Complaint. The content of the Respondent’s website is clearly a matter that may be relevant to a dispute. That change was not a matter that the Complainant could reasonably have anticipated before the Complaint was filed. The Panel therefore admitted the supplemental filing which provided evidence of that change.
A. Identical or Confusingly Similar
The Complainant has rights in the trademark FULL TILT POKER. The Panel finds that the disputed domain name is confusingly similar to that mark.
The disputed domain name incorporates the first two words of the Complainant’s mark in the same order. While the disputed domain name then uses the word “odds” instead of “poker”, those terms clearly both relate to gambling. Gambling and poker is clearly both a focus of the Complainant’s mark and the Respondent’s website. The Panel considers that both the objective similarity between the Complainant’s mark and the disputed domain name, and the close meaning of those terms, would be likely to create confusion between the Complainant’s mark and the disputed domain name.
The Respondent’s objection – that the Complainant does not have a mark registered in the United States – is not relevant to the first element which the Complainant must establish. The Policy does not require a Complainant to have a mark registered in the same jurisdiction as the Respondent. The Internet is an international medium and there are numerous decisions which confirm that a complainant can rely on trade mark rights in countries other than those of the respondent: See Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749. The territorial nature of a mark may be relevant, in certain circumstances, to the question of bad faith and the Respondent’s awareness of the mark (see further below). But it is not a consideration in determining whether a disputed domain name is objectively similar to a disputed domain name. The relevant “confusion” is, after all, confusion in the minds of Internet users who may access the disputed domain name. Those users might access the disputed domain name from any jurisdiction. The Respondent’s place of residence is not relevant to potential confusion by others.
For these reasons, the Panel finds that the Complainant has demonstrated that the disputed domain name is confusingly similar to its registered mark.
B. Rights or Legitimate Interests
The Respondent has registered a confusingly similar domain name to the Complainant’s mark. The Respondent’s website is directly targeted at the same field of business as the Complainant, namely poker and gambling. The Respondent also uses a device mark on its website which is closely similar to the Complainant’s. The Complainant has also presented a strong prima facie case against the Respondent.
In these circumstances, the Respondent would need to provide substantial evidence of rights or legitimate interests to rebut the case against it. The Respondent provides little such evidence. The Respondent is also internally inconsistent in his pleadings. For example, the Respondent disclaims an association with a competitor of the Complainant (“wager123.com”) but then also suggests that it deliberately switched its server name and number to that competitor.
The Panel finds that there is not sufficient evidence to support the Respondent’s case in relation to this element. Accordingly, the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trade mark rights and reputation. See e.g. SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.
The Complainant claims that the Respondent has engaged in bad faith for the purpose of paragraph 4(b)(iii) of the Policy. That paragraph provides that a panel may find bad faith in circumstances where a respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. The Complainant says that the Respondent is a competitor as its actions in registering and using the disputed domain name are in opposition to the Complainant’s business. The Complainant also claims that the relevant disruption may arise from the potential for confusion of Internet users as to the association of the disputed domain name. For support, the Complainant refers to e.g. The Cheap Escape Company v. Auto Accents and Amid Yousef, WIPO Case No. D2000-0514.
The Respondent provides no coherent or convincing explanation as to why it registered the disputed domain name. In the circumstances of this case, the Panel finds that the Respondent registered and has used the disputed domain name in bad faith. The facts however provide more support for a finding of bad faith of a kind described in paragraph 4(b)(iv). That paragraph provides that bad faith may be found where the Respondent intentionally has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. As noted above, the Respondent has registered and used a domain name that is confusingly similar to the Complainant’s mark. The nature of the Respondent’s website makes it clear that the creation of this confusion was deliberate. The Respondent has chosen to prominently display a logo on its website that is closely similar to the Complainant’s mark. The Respondent has done so in the same field of business as the Complainant (on-line poker and gambling). The Respondent provided no evidence that it had any independently subsisting rights in such a mark. Even if, as the Respondent appears to suggest (albeit not clearly to the Panel), its website was set up by a third party (“wager123.com”), this input can only have happened with the agreement of the Respondent.
The only inference the Panel can draw from this is that the Respondent has acted to establish, and benefit from, a domain name that is confusingly similar to the Complainant’s mark. In the Panel’s view, the Respondent’s conduct was intentional. The adoption of a logo that is very similar to the Complainant’s, and in the same field of business, can hardly have been accidental. The Respondent’s website, as it operates in the field of on-line gambling, was clearly established for commercial gain. As such, the Panel is satisfied that the facts support each element of bad faith described in 4(b)(iv) of the Policy.
Having made such a finding of bad faith, it is not strictly necessary for the Panel to go further. However, for completeness, the Panel does not consider there is sufficient evidence to support a finding of bad faith under paragraph 4(b)(iii) of the Policy, on which the Complainant relies. It is true that conduct of a kind described in paragraph 4(b)(iv) will also be conduct which is disruptive to the Complainant’s business. However, paragraph 4(b)(iv) and 4(b)(iii) are described separately under the Policy. For a finding under paragraph 4(b)(iii) disruption must be the Respondent’s “primary” motivation. In this case, there is little evidence that disruption itself was the Respondent’s primary motivation. Rather, the facts suggest that the Respondent acted for commercial gain from creating confusion with the Complainant’s mark.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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, <fulltiltodds.com>, be transferred to the Complainant.
James A. Barker
Dated: March 8, 2011