WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pocket Kings Limited v. Rocky Miranda
Case No. D2011-0730
1. The Parties
The Complainant is Pocket Kings Limited of Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Rocky Miranda of Quezon City, Philippines.
2. The Domain Names and Registrar
The disputed domain names <fulltiltepoker.com>, <fulltiltpokar.net> and <fultiltpocker.net> (the “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 27, 2011. On April 27, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Disputed Domain Names. On April 28, 2011, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 5, 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 May 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2011.
The Center appointed Andrew Brown QC as the sole panelist in this matter on June 1, 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 hosted at the domain names <fulltiltpoker.com>, <fulltiltpoker.net> and <fulltiltpoker.org> (registered on August 2002 and June 2003). Full Tilt Poker was conceived in 2002 and launched in June 2004.
The Complainant asserts that it distinguishes itself from others in the online poker market by its involvement of highly recognized poker professionals. 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’s poker room Full Tilt Poker is one of the largest on the Internet, and hosts on average 16,000 players per hour. The Complainant has since at least 2005 undertaken a variety of marketing initiatives both online and otherwise, including sponsorship of various poker and non-poker related sportspeople, sporting teams and events.
The Disputed Domain Names were registered on March 18 and June 11, 2005 and June 24, 2006.
The Complainant is the sole proprietor of a number of registered trademarks for FULLTILTPOKER in the United Kingdom and the European Union dating from 2007 - all after registration of the Disputed Domain Names.
The Complainant asserts that it had acquired unregistered or common law rights in the mark FULLTILTPOKER “a year before” the Respondent registered the first of the Disputed Domain Names. The Complainant has presented evidence showing that it had commenced commercial and promotional activity in relation to the Full Tilt Poker online poker room and its website “www.fulltiltpoker.net” prior to registration of the Disputed Domain Names. In particular:
(a) Fulltiltpoker software was released publicly in 2002.
(b) The domains <fulltiltpoker.com>, <fulltiltpoker.net> and <fulltiltpoker.org> were registered in August 2002 and June 2003.
(c) The Full Tilt Poker online poker room was launched in June 2004 and that this achieved the “title” as one of the top online poker rooms almost instantly. A review on the third party website “www.pokerroom.com” records that the website for Full Tilt Poker started with a budget of USD 5 million, and that “From the outset, Full Tilt Poker enjoyed a rapid climb in player traffic and explosive growth in the industry”.
(d) Discussion about Full Tilt Poker was being posted on Internet forums as early as April 2005.
(e) As at June 2005 Full Tilt Poker had already sponsored a significant number of well-known professional poker players, generating publicity.
As on June 14, 2011 the Disputed Domain Names all resolved to parking pages containing links to the websites of competitors of the Complainant, and in one case, containing a link to the Complainant’s “www.fulltiltpoker.com” website. (It appears that at the time the Complaint was written the domain name <fulltiltepoker.com> redirected to an inactive page – this was no longer the case at the time of writing of this decision).
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 distinctive mark FULLTILTPOKER prior to registration of the Disputed Domain Names on March 18 and June 11, 2005 and June 24, 2006. These rights and reputation arose as a result of launch of its websites “www.fulltiltpoker.com”, “www.fulltiltpoker.net” and “www.fulltiltpoker.org” in June 2004, and the associated promotion and publicity which the Complainant undertook – as well as the earlier launch of Fulltiltpoker software in 2002. The evidence from a third party website shows that the Complainant had created a substantial reputation from the outset of its operations in June 2004.
The Panel considers that the Disputed Domain Names <fulltiltepoker.com>, <fulltiltpokar.net> and <fultiltpocker.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 Disputed Domain Names.
The Complainant states that:
(a) The Respondent’s use of the Disputed Domain Names as pay-per-click parking pages is not in connection with a bona fide offering of goods or services;
(b) The Respondent has never been commonly known by either of the Disputed Domain Names (in this regard the Complainant 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).
(c) The Respondent has never been licensed or authorized in any way to use the Complainant’s common law (and subsequently registered) trademarks and is not affiliated with the Complainant in any way whatsoever.
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 domain name.
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 registrations 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 Disputed Domain Names; 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 asserts that:
(a) The Respondent has engaged in conduct which satisfies each of paragraphs 4(b)(ii) to (iv) of the Policy;
(b) The Respondent is typo-squatting;
(c) It is not possible to conceive of any plausible actual or contemplative use of the Disputed Domain Names that would not be illegitimate;
(d) The Respondent had actual or constructive knowledge of the Complainant’s rights in the Disputed Domain Names at the time of registration (and therefore intentionally registered in bad faith);
(e) The Disputed Domain Names are so obviously connected with the Complainant’s well-known product that their very use suggests opportunistic bad faith;
(f) The adoption of a confusingly similar domain name and the use of it to provide pay-per-click links is inherently misleading and prima facie evidence of bad faith.
The Panel considers that the Complainant has satisfied this third requirement of paragraph 4(a) of the Policy, and finds that the Respondent registered and is using the Disputed Domain Names with bad faith intent, in particular by attracting Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark.
The Disputed Domain Names are plainly misspellings or typo-variants of the Complainant’s trademark. Such misspellings plainly evidence the fact that the Respondent must have known of the Complainant’s trademark FULL TILT POKER - otherwise why misspell the mark? The fact that the Respondent should register typo-variants not just once but on three separate occasions is telling evidence of bad faith registration. It is well established in Panel decisions that “typo squatting” is inherently parasitic and evidence of bad faith (Thomson Broadcast and Media Solution Inc., Thomson v Alvaro Collazo, WIPO Case No. D2004-0746).
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 and use for commercial gain.
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, <fulltiltepoker.com>, <fulltiltpokar.net> and <fultiltpocker.net> be transferred to the Complainant.
Andrew Brown QC
Dated: June 15, 2011