WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pocket Kings Limited v. fernando nunez
Case No. D2011-0750
1. The Parties
The Complainant is Pocket Kings Limited, Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is fernando nunez, San Jose, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <mobilefulltiltpoker.com> (the “Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2011. On April 29, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Name. On May 4, 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.
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 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 Karen Fong as the sole panelist in this matter on June 9, 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
FULL TILT POKER is an online poker card room launched in 2004 with the following websites “www.fulltiltpoker.com” and “www.fulltiltpoker.net”. The Complainant is the registered proprietor of a number of registered trade marks for Full Tilt Poker (“the Trade Mark”) in the United Kingdom and European Union. These include logo marks and word marks filed in a number of classes, the particulars of which are as follows:
- UK TM Registration No. 2465018 for FULL TILT POKER filed on August, 22, 2007
- UK TM Registration No. 2465022 for FULLTILTPOKER filed on August, 22, 2007
- UK TM Registration No. 2554342 for FULL TILT POKER LOGO filed on July 28, 2010
- CTM Registration No. 006322127 for FULL TILT POKER LOGO filed on October, 1, 2007
- CTM Registration No. 006335327 for FULL TILT POKER filed on October 4, 2007
- CTM Registration No. 009295015 for FULL TILT POKER filed on August 4, 2010
- CTM Registration No 009295312 for FULL TILT POKER LOGO filed on August 4, 2010
Evidence of the trade mark registrations was submitted with the Complaint.
The Full Tilt Poker name has a big presence on the Internet in relation to the poker and gaming industry.
The Domain Name was registered on February 17, 2010. It is connected to an active website at “www.mobilefulltiltpoker.com” which resolves to a pay per click landing page which provides links to other on-line poker websites (“the Website”).
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark in respect of which it has registered and unregistered rights, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
The Complainant has to do this “on balance” – often expressed as the “balance of probabilities” or “the preponderance of evidence” standard. The Consensus View on this issue as stated in paragraph 4.7 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) says this:
“Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(a), (b), (c) of the UDRP would typically be insufficient.”
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights in the Trade Mark.
There has been a lot of evidence submitted to demonstrate that the mark FULL TILT POKER is well known and has achieved considerable reputation amongst the relevant public. The Complainant contends that it owns and operates the on-line gambling websites bearing the Trade Mark connected to the domain names <fulltiltpoker.com> and <fulltiltpoker.net>. The Complainant however did not submit any evidence of ownership of these two domain names nor did it submit evidence that it is connected to the websites “www.fulltiltpoker.com” and “www.fulltiltpoker.net”. The Panel did her own WhoIs searches (as is permitted under paragraph 4.5 of the Consensus View in the WIPO Overview) and notes that as at the time of writing this decision both domain names are registered to a privacy registration service, Your Whois Privacy Ltd.
The screenshots of the website pages connected to these two domain names submitted in evidence do not appear to connect the Complainant to the websites. The Panel reviewed both these websites and was unable to find any evidence connecting the websites to the Complainant.
In instances where a complainant is asserting ownership of domain names which are registered to a registration privacy service, it needs to provide evidence that it is the underlying registrant of such domain names in order for a Panel to accept the assertion. Again, if a complainant is asserting that it is operating websites through which it is generating reputation and goodwill in relation to a trade mark, it needs to provide evidence showing that it is behind the websites.
In this case, because the Complainant has registered rights in the Trade Mark, despite the lack of evidence supporting its assertions in relation to its unregistered rights in the Trade Mark, on balance the Panel accepts that the Complainant owns the unregistered rights in the Full Tilt Poker name. Had the Complainant not owned the registered rights, from the evidence submitted, the Panel would have been unable to find that it is the Complainant behind the use of the Trade Mark. The Panel has taken into consideration the fact that prior WIPO Panels have considered the Complainant’s marks to be well known in coming to her decision in relation to this issue. Notwithstanding that, it is still incumbent on the Complainant to support its contentions with evidence as provided by the Policy and the Rules.
The Domain Name consists of the descriptive word “mobile” and the Trade Mark in its entirety with the Trade Mark as the dominant portion of the Domain Name. As stated above, the Panel accepts that the combination of the common place words Full Tilt Poker are distinctive of the Complainant. The addition of the descriptive word “mobile” as a prefix to Full Tilt Poker does nothing to minimize the risk of confusing similarity. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “com”.
The Panel therefore finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant alleges that prior to being given any notice of the current dispute, the Respondent has not used or made demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Website connected to the Domain Name resolves to a pay-per click landing page which provides links to other on-line poker websites including the Complainant’s direct competitors as well as a link to the Complainant’s websites. The Complainant alleges that such use is not bona fide as the dominant portion of the Domain Name consists of a name which has no other meaning other than to function as an identifier of the Complainant’s goods and services. Such use of the Trade Mark in the Domain Name creates the impression of association with the Complainant and trades off the Complainant’s reputation in the Trade Mark. Given that the Respondent is not authorized or licensed by the Complainant to use the Trade Mark, such use cannot be considered to constitute a bona fide offering of goods or services.
The Complainant also alleges that to the best of its knowledge, it is unaware that the Respondent is commonly known by the Domain Name or Fill Tilt Poker. Further, the fact that the Domain Name resolves to a parking page containing pay per click links demonstrates the Respondent’s intent for commercial gain. Such use also tarnishes the Trade Mark.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Since the Trade Mark has been used extensively and registered prior to the registration of the Domain Name, the Respondent either knew or ought to have known of the Complainant’s use and rights in the Trade Mark. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. As established above, the Trade Mark is a well known trade mark in the field of poker and gaming. The Website which is a pay per click landing page only contains sponsored advertising links that expressly refer to casino, gaming and poker services which is the industry in which the Trade Mark is used and has acquired substantial reputation in relation to such use. The use of a well known trade mark within a domain name by a party with no connection to the owner of the trade mark suggests that such use is in bad faith. The Respondent is using the Domain Name to divert traffic intended for the Complainant to the Website for commercial gain. This is bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mobilefulltiltpoker.com>, be transferred to the Complainant.
Dated: 24 June 2011