WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pocket Kings Limited v. Miguel Ramirez / Whois Privacy Services Pty Ltd
Case No. D2011-0646
1. The Parties
The Complainant is Pocket Kings Limited of Dublin, Ireland, represented by SafeNames Ltd., in the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Miguel Ramirez of Lucban, Quezon, Philippines / Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia.
2. The Domain Names and Registrar
The disputed domain names <fltiltpoker.com>, <fulltilts.net>, and <loginfulltiltpoker.com> (Disputed Domain Names) are registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2011. On April 13, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain names. On April 14, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 20, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 21, 2011.
The Center verified that the Complaint together with the amended 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 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2011.
The Center appointed Andrew Brown as the sole panelist in this matter on May 25, 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.
4. Factual Background
The Complainant is in the business of providing technology and marketing consulting services to the online poker industry and operates the well-known poker sites “www.fulltiltpoker.com” and “www.fulltiltpoker.net”. Fulltiltpoker was conceived in 2003 and launched in June 2004.
The Complainant asserts that it distinguishes itself from others in the online poker market by its involvement of nine highly recognized poker professionals (and now many others). These poker professionals have played an integral part in the marketing strategy of the Complainant’s websites and the websites give customers the opportunity to play with, learn from and interact with the poker professionals. The Complainant also sponsors professional poker players at tournaments and began doing so from June 2004.
The Disputed Domain Names were registered on April 10, and June 22, 2006.
The Complainant asserts that by 2006 it had acquired unregistered or common law rights in the mark FULLTILTPOKER and that by 2006 its services had become commonly referred to and well-known by that term. The Complainant has presented evidence showing online promotion and publicity for FULLTILTPOKER and its website “www.fulltiltpoker.net” as at 2005 including extracts from third party websites in 2005. There is also evidence from 2005 of its sponsorship of a “www.fulltiltpoker.net” Championship.
The Complainant is the sole proprietor of a number of registered trademarks for FULLTILTPOKER in the UK and European Union dating from 2007 and 2010 – all after registration of the Disputed Domain Names.
As on June 7, 2011 the Disputed Domain Names all resolved to identical parking pages containing links to the websites of competitors of the Complainant.
5. Parties’ Contentions
The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the Disputed Domain Names be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the Disputed Domain Names in order to succeed in this proceeding:
(i) that the Disputed Domain Names are 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 Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied from the evidence that the Complainant had established substantial common law or unregistered rights in the mark FULLTILTPOKER as a result of operation of its websites “www.fulltiltpoker.com” and “www.fulltiltpoker.net” and associated promotion and publicity which it had generated. The evidence from third party websites from 2005 shows a number of examples of this and the reputation which the Complainant had created before registration of the Disputed Domain Names.
The Panel considers that the FULLTILTPOKER mark is clearly recognizable within the Disputed Domain Name <loginfulltiltpoker.com>, and that the Disputed Domain Names <fltiltpoker.com> and <fulltilts.net> are typo-variants of the Complainant’s registered trademarks.
The Panel therefore finds that the Disputed Domain Names are confusingly similar to trademarks in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Disputed Domain Names, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names lies with the Complainant.
However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the Domain Names.
The Complainant states that the Respondent has not been licensed or authorized in any way to use its common law (and subsequently registered) trademarks. It states further that the Respondent is not affiliated with the Complainant in any way whatsoever and produces evidence of searches conducted with international and European Community trademark databases for the mark FULLTILTPOKER which return no results connected to the Respondent in any manner.
In the present circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that Policy, paragraph 4(a)(ii) is satisfied in favour in the Complainant.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the Disputed Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Names 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that the Respondent has registered the Disputed Domain Names 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) that the Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Disputed Domain Names, 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.
The Complainant concedes that its trademarks do not predate the registration dates of the Disputed Domain Names, but asserts that it is inconceivable that the Respondent was not aware of the FULLTILTPOKER marks and the Complainant’s established unregistered rights in such at the time of registration of the Disputed Domain Names. The Complainant notes that prior to registration of the Disputed Domain Names a simple search for the term “fulltiltpoker” would have produced a significant number of results alluding to the existence of a Fulltiltpoker brand relating directly to products and services of the Complainant.
The Complainant further states that the Respondent:
(a) Disrupted the Complainant’s business by preventing the Complainant from protecting its trademarks as the Complainant cannot register the Disputed Domain Names as defensive registrations;
(b) Is using the Disputed Domain Names in a manner which takes advantage of the goodwill associated with the Complainant’s trademark in that Internet users searching for the Complainant’s website may come across the Respondent’s parking pages and potentially be diverted to the Complainant’s competitors;
(c) Intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s site by creating a likelihood of confusion with the Complainant’s mark;
(d) Has made no demonstrable preparations to use the domain names in a bona fide manner;
(e) Has engaged in typo squatting and appropriation of the complainant’s trademarks which evidences bad faith.
The Panel considers that the Complainant has satisfied this third requirement. The FULLTILT element of the Complainant’s mark is distinctive and memorable. The first two registrations on April 10, 2006 comprised <fulltilts.net> and <loginfulltiltpoker.com>. The fact that the Respondent registered both of these at the same time and that the second included the word “poker” shows that the Respondent had the Complainant’s mark in mind when registering both.
The Panel is satisfied that the Respondent registered both of these Disputed Domain Names with bad faith intent, in particular for attracting Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark. Internet users searching for the Complainant’s websites are likely to come across the Respondent’s parking pages and could then be diverted to links to websites of the Complainant’s competitors. Links on the parking pages operate as a pay-per-click so there is an intent for commercial gain.
The registration of the third Disputed Domain Name <fltiltpoker.com> occurred on June 22, 2006, just over two months after the registration of the first two Disputed Domain Names. This is a typo variant of <fulltiltpoker.com> and is considered against the background of the two prior registrations of variants of the Complainant’s trade mark. It is well established in panel decisions that “typo squatting” is inherently parasitic and of itself evidence of bad faith (Thomson Broadcast and Media Solution Inc., Thomson v Alvaro Collazo WIPO Case No. D2004-0746). This Disputed domain names is used in exactly the same way as the earlier two i.e. generating pay-per-click revenue from the parking page.
The Panel is accordingly satisfied that the Disputed Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b) 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 Disputed Domain Names, <fltiltpoker.com>, <fulltilts.net>, and <loginfulltiltpoker.com> be transferred to the Complainant.
Andrew Brown QC
Dated: June 7, 2011