World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

POCKET KINGS LIMITED v. Nenita Mercado

Case No. D2011-1037

1. The Parties

The Complainant is POCKET KINGS LIMITED, of Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Nenita Mercado, of Philippines.

2. The Domain Names and Registrar

The disputed domain names, <fulltiltpokerer.com> and <fulltiltpokwe.com>, are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2011. On June 17, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On June 19, 2011, Wild West Domains, 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 June 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on July 13, 2011.

The Center appointed Dennis A. Foster as the sole panelist in this matter on July 21, 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 an Irish company that operates well-established online poker services. Such services have been in operation since at least 2004 and have gained considerable notoriety. In connection with its business, the Complainant has registered its FULL TILT POKER mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Registration No. 2465018; issued October 31, 2008) and the Office of Harmonization for the Internal Market (“OHIM”) (e.g., Registration No. E6335327; issued July 2, 2008).

The disputed domain names, <fulltiltpokerer.com> and <fulltiltpokwe.com>, were registered by the Respondent and the date of creation is January 29, 2006. The disputed domain names are attached to websites that provide links to third party websites, including those of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

- The Complainant was founded in September 2003 and provides marketing and online consulting services to the online poker industry. The Complainant relocated to Ireland in 2006, while still promoting its “Full Tilt Poker” brand that was first developed in 2002. The online service hosted under that brand name is the second largest online poker room in operation.

- The Complainant has registered its FULL TILT POKER mark with the UKIPO and OHIM. The Complainant’s main official site, “www.fulltiltpoker.net”, hosts on average 16,000 players per hour. Through television commercials and other promotional avenues, the Complainant has generated considerable press coverage for its service mark and business. The Complainant’s mark is recognized on a worldwide basis, and the Complainant has many thousands of followers on its Twitter and MySpace web pages.

- As the Complainant’s mark had been in continuous use since 2004 and the <fulltiltpoker.com> domain name was registered in 2002, the Complainant had established common law rights in its mark years before the disputed domain names were registered in 2006.

- The disputed domain names, <fulltiltpokerer.com> and <fulltiltpokwe.com>, are confusingly similar to the Complainant’s FULL TILT POKER mark. The names differ from the mark only in the substitution or addition of a few letters; intentional misspellings that constitute classic examples of illegitimate typo-squatting behavior. Moreover, the addition of the generic top-level domain, <.com>, is not relevant in determining difference.

- The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent can demonstrate the existence of no circumstances in its favor pursuant to paragraph 4(c) of the Policy. The disputed domain names direct Internet users to parking pages that furnish links to the websites of the Complainant’s competitors. As such, this use fails to constitute “a bona fide offering of goods and services”. Furthermore, said use fails to comport with legitimate noncommercial or fair use of the disputed domain names as the Respondent is receiving click-through revenue by providing the third party links referred to above.

- There is no evidence that the Respondent, listed as Nenita Mercado, has ever been commonly known as either of the disputed domain names. Moreover, the Respondent has not acquired any trademark or service mark rights in any mark corresponding to the names. Finally, the Complainant has never licensed or granted permission to the Respondent to use the Complainant’s mark, or to incorporate it into a domain name.

- The Respondent registered and is using the disputed domain names in bad faith. The Respondent had actual or constructive knowledge of the Complainant’s mark at the date of registration. The fact that the two disputed domain names were registered on the same date is prima facie evidence of such knowledge and bad faith. Those names are linked to poker playing sites by someone, the Respondent, who otherwise has no connection with poker – more evidence of bad faith registration and use.

- The Respondent’ s primary purpose in registering the disputed domain names was to disrupt the Complainant’s business. Also, the Respondent is deriving an economic benefit from the use of the disputed domain names, either by attracting Internet users to the web site or to another online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or a product or service on the website or location. Finally, the Respondent’s typo-squatting behavior is of itself evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with Policy paragraphs 4(a)(i) – (iii), the Panel may find that the Complainant has prevailed in these proceedings and should be granted a transfer of the disputed domain names, <fulltiltpokerer.com> and <fulltiltpokwe.com>, provided that the Complainant can demonstrate that:

- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

- The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

In the Panel’s view, the Complainant has presented evidence (Annex 10) of its valid trademark registrations with the UKIPO and OHIM sufficient to satisfy the requirements of Policy paragraph 4(a)(i) as to the Complainant’s rights in the FULL TILT POKER mark. See, Titanium Metals Corporation v. Atak Teknoloji Ltd. Sti., WIPO Case No. D2010-1482 (“The Complainant registered its trademark TIMET with the [UK]IPO, OHIM and UPTSO. The Panel therefore accepts that the Complainant is the owner of and has exclusive rights in the trademark TIMET”); and Green Flag Limited v. Domain Admin c/o Dynadot Privacy, NAF Claim No. FA1249915 (“The Panel finds Complainant’s trademark registrations for the GREEN FLAG mark with the UKIPO and OHIM each confer upon Complainant sufficient rights in the mark under Policy [paragraph] 4(a)(i).”).

In the Panel’s opinion, the disputed domain names, <fulltiltpokerer.com> and <fulltiltpokwe.com>, while not identical to the FULL TILT POKER mark, are confusingly similar to the same. As has been noted in prior UDRP decisions upon the examination of similar circumstances, the absence of spaces between the terms and the addition of the gTLD, <.com>, in both disputed domain names are not pertinent distinctions. Furthermore, the addition of the letters “er”’ in one disputed domain name, and the substitution of the letters “we” for the letters “er” in the other, fail to distinguish those disputed domain names from the mark to any relevant degree. Such minor misspellings in the disputed domain names amount to incidents of typo-squatting, a dishonorable practice that has compelled innumerable previous Policy panels in like cases – and compels the Panel in this case – to issue a finding of confusing similarity. For example, see, Pocket Kings Limited v. Al Cabug, WIPO Case No. D2010-1821 (finding that, among other domain names, <fulltiltpker.org> and <fulltiltpokert.com> were confusingly similar to the FULL TILT POKER mark); and Pocket Kings Limited v. Blue Giant Holdings Inc., WIPO Case No. D2010-2059 (holding that, among other domain names, <fulltiltpokdr.com> and <fulltiltpokefr.com> were confusingly similar to the FULL TILT POKER mark.).

The Panel rules that the Complainant has satisfied the requirements of Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

In paragraph 4(c), the Policy sets forth three ways through which a respondent may demonstrate its rights or legitimate interests in a domain name as follows:

(i) before any notice to you of the dispute, your use of, or 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In this case, the Respondent has presented no evidence on its own to comply with any of the above criteria, so the Panel must look elsewhere in the record to assess the possible applicability of paragraph 4(c). In doing so, the Panel will accept the truth of the Complainant’s reasonable contentions that do not conflict with the Panel’s independent knowledge. See, Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (“The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.”); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Panel accepts the Complainant’s contention that the Respondent is utilizing the disputed domain names to host links that redirect Internet users, on a click-through fee basis, to the websites of the Complainant’s competitors. In line with the overwhelming consensus of prior Policy rulings, the Panel concludes that this activity constitutes neither “a bona fide offering of goods or services” nor “legitimate noncommercial or fair use” of the disputed domain names. See, Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; and VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925 (“The use of distinctive trademark terms to direct Internet users to a pay-per-click link farm parking page that offers goods or services competing with the trademark owner is well established under the Policy not to constitute a bona fide offering of goods or services or to constitute fair use”). Moreover, the Panel finds no evidence in the record to support the notion that the Respondent, Nenita Mercado, has ever been commonly known as either <fulltiltpokerer.com> or <fulltiltpokwe.com>.

Since the Panel has determined that Policy paragraph 4(c) is inapplicable to this case, and believes the Complainant’s contention that the Complainant has never authorized or licensed the Respondent to use the Complainant’s trademark – to which the disputed domain names have been found by the Panel to be confusingly similar – the Panel finds that the Complainant has segued from a prima facie case to a conclusive case that the Respondent has no rights or legitimate interests in those disputed domain names.

The Panel rules that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant obtained its UKIPO and OHIM trademark registrations in 2008, more than two years after the Respondent registered the disputed domain names in 2006. However, registration of the disputed domain names prior to trademark registration does not bar a finding of bad faith registration and use of those disputed domain names, if the Panel determines that the Complainant had established common law trademark rights in its mark before registration of the disputed domain names. In this case, the Panel accepts the Complainant’s non-contradicted assertions that it has been engaged in continuous usage of its FULL TILT POKER mark since at least 2004 in connection with its domain name, <fulltiltpoker.com>. The Panel finds this usage sufficient for the Complainant to have established common law rights prior to the disputed domain names’ registration in 2006, particularly in view of the almost immediate widespread global awareness and media recognition of the Complainant’s mark resulting from its online services. See, for example, Community Nations, LLC v. Sitac Labs, NAF Claim No. FA1112119 (“The Panel finds Complainant’s evidence establishes common law rights in the INKED NATION mark sufficient to grant standing under the UDRP. The INKED NATION mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s popular social networking website over the past two years”); and Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575 (finding that common law rights obtained where the complainant established trade under its mark in conjunction with an online presence in 1996 and the disputed domain name was registered in 1998).

Paragraph 4(b)(iv) of the Policy sets forth a circumstance that, if found to apply by the Panel, would give rise to a determination that the disputed domain names were registered and are being used in bad faith, as follows:

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

In this case, the Panel accepts the Complainant’s reasonable and uncontested contention that the Respondent is using the disputed domain names to set up links to the websites of third parties (including direct competitors of the Complainant) for the purpose of receiving commercial gain in the form of click-through fees generated when Internet users click on those links. It is obvious to the Panel that the Respondent hopes to draw Internet traffic to the Respondent’s website found at the disputed domain names due to the users’ confused belief that the disputed domain names are affiliated with the Complainant’s confusingly similar trademark. Therefore, the Panel believes that paragraph 4(b)(iv) does apply, and that the disputed domain names were registered and are being used in bad faith. See Symark International, Inc. v. Gary McCurty, WIPO Case No. D2005-0235; and Caesars Entertainment, Inc. v. Infomax, Ltd., WIPO Case No. D2005-0032 (“The Panel is satisfied that the Respondent is intentionally using the Domain Name to attract internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known mark, and that the Respondent gains commercially from such confusion by receiving ‘click-through’ commissions. This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.”).

The Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(iii).

7. Decision

For 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, <fulltiltpokerer.com> and <fulltiltpokwe.com>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Dated: August 4, 2011

 

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