WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
POCKET KINGS LIMITED v. BroadwayDomains.com
Case No. D2011-1060
1. The Parties
The Complainant is POCKET KINGS LIMITED of Dublin, Ireland, represented by SafeNames Ltd., United States of America.
The Respondent is BroadwayDomains.com of Howell, New Jersey, United States of America.
2. The Domain Names and Registrar
The disputed domain names <freefulltiltpoker.com>, <freefulltiltpoker.net> and <fulltiltfpoker.com> are registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2011. On June 23, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain names. On June 24, 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 July 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 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
The disputed domain names were registered, respectively, on July 16, 2005, July 16, 2005 and June 11, 2006.
The Complainant is an operator of an online poker room. It claims to be the fastest growing and second largest online poker room and operates under the trademark FULL TILT POKER. The Complainant was founded in September 2003 under the name Tiltware LLC and commenced licensing its FULL TILT POKER brand in 2004. In 2006 it relocated to Ireland and changed its name to its present name. It hosts world poker championships under the trademark FULL TILT POKER and claims that its main official site “www.fulltiltpoker.com” has, on average, over 16,000 players per hour and over 80,000 players at peak times. It promotes the trademark FULL TILT POKER through television commercials, social media and sponsorships including sponsorship of World Series Poker and Formula 1 and Formula D Motor Racing.
The Complainant is the registered owner of several trademarks for the word FULL TILT POKER including United Kingdom of Great Britain and Northern Ireland trademarks dating from August 2007 and Community trademarks dating from October 2007. It holds domain name registrations of <fulltiltpoker.com> and <fulltiltpoker.net> dating from August 2002 and <fulltiltpoker.org> dating from June 2003.
Nothing is known about the Respondent save that it operates a pay-per-click portal site under the <freefulltiltpoker.com>, <freefulltiltpoker.net> domain names and previously operated such a site under the <fulltiltfpoker.com> domain. (That domain name does not currently resolve to a webpage). The site at the disputed domain names provides links to poker and other gambling sites and states that "This domain is for sale".
5. Parties’ Contentions
The Complainant has made extensive documented submissions supported by appropriate references to many prior decisions under the Policy, including decisions in which it was the successful Complainant. For the purpose of this decision it is necessary only to briefly summarize Complainant's contentions. Briefly stated the Complainant's contentions are as follows:
In addition to its rights acquired by registration the Complainant claims common law rights in the trademark FULL TILT POKER by virtue of its extensive online international reputation dating back to at least 2004.
Each of the disputed domain names is confusingly similar to the Complainant's FULL TILT POKER trademark. In relation to the <freefulltiltpoker.com>, <freefulltiltpoker.net> domain names the Complainant contends that the addition of the generic word "free" does not serve to distinguish the disputed domain names from the Complainant's trademark. As to the <fulltiltfpoker.com> domain name, the Complainant contends that it is an example of typo-squatting and that the intentional misspelling constitutes deliberately confusing similarity.
The Respondent has no rights or legitimate interests in respect of the domain names and cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. Specifically:
The Respondent registered the disputed domain names in full knowledge of the Complainant's rights, stating:
"There is no conceivable way that Respondent was not aware of the Complainant's rights when Respondent registered the domain names. Respondent registered 2 domain names at the same date incorporating Complainant's mark during 2005 alone. Respondent did not simply create the term "FULL TILT POKER" and then decide to create a site which offers PPC links related to poker without first having knowledge of Complainant and intending to disregard and abuse Complainant's rights and trade on the goodwill associated with Complainant's mark. The term "FULL TILT POKER" has no meaning other than that which is applied to it by Complainant".
The Respondent has made no use or demonstrable preparations for the use of the disputed domain names in connection with the bona fide offering of goods or services. It contends, citing several well-known prior decisions under the Policy, that the Respondent's past and present use of the domain names to direct to pay-per-click parking pages which provide links to the Complainant's competitors as well as to other goods and services does not constitute a "bona fide" offering of goods or services.
The Respondent has not been commonly known by the disputed domain names and has not been licensed or authorized by the Complainant to use any of its trademarks.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names but is using it solely as a conduit to third party goods and services and receiving click-through revenues relating to such third party offers.
The initial intention of the Respondent in registering the disputed domain names was to exploit the reputation of the Complainant's mark.
The Respondent has registered the disputed domain names for the purpose of selling, renting or otherwise transferring them to the Complainant or to a competitor of the Complainant. The Complainant produces evidence of the fact that the <freefulltiltpoker.com> and <freefulltiltpoker.net> domain names are offered for sale at prices substantially in excess of the Respondent's out-of-pocket expenses.
The use of the disputed domain names to provide pay-per-click links to other sites, including the sites of competitors to the Complainant, is not only disruptive of the Complainant's business but also constitutes use of the disputed domain names to misleadingly divert Internet traffic for financial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated both registered and common law rights in the trademark FULL TILT POKER and, in the case of the common law rights, those rights are shown to pre-date the registration of the disputed domain names.
The disputed domain names comprise, in the case of the <freefulltiltpoker.com>, <freefulltiltpoker.net> domain names, the trademark preceded by the word "free", and in the case of the <fulltiltfpoker.com> domain name, a misspelling of the trademark. The disputed domain names each take the whole of the Complainant's trademark and the respective additions do not serve to distinguish the disputed domain names from the Complainant's trademark.
The Panel therefore finds that the disputed domain names are each confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has raised a strong prima facie case that the Respondent knew of the Complainant's rights and reputation in the trademark FULL TILT POKER when it registered the disputed domain names and it did so with the deliberate intent to profit from the registrations either by selling them to the Complainant or to a competitor of the Complainant, or by misleadingly attracting Internet users to the website at the disputed domain names in order to profit from pay-per-click royalties from links to the websites of the Complainant's competitors. Such use cannot constitute use in connection with the bona fide offering of goods or services – see, for example, Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537. The Respondent had the opportunity to rebut the prima facie case presented by the Complainant but failed to do so and there is no other apparent basis upon which the Respondent could claim rights or legitimate interests in the disputed domain names.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
As stated above, the Complainant has produced a substantial showing that the Respondent registered the disputed domain names knowing of the Complainant's rights in the trademark FULL TILT POKER and with the intent to profit from confusion with Complainant's reputation in the trademark. It has proceeded to do so by directing the disputed domain names, each of which is confusingly similar to the Complainant's trademark, to a pay-per-click site from which, it must be presumed, it derives revenue. Such use is well recognized as use in bad faith – see, for example, Fifth Third Bancorp v. Texas International Property Associates, supra, and Movoto LLC v. Domain Name Proxy, LLC and Navigation Catalyst Systems, Inc., WIPO Case No. D2010-1383. As to the <fulltiltfpoker.com> domain name the fact that it does not currently point to an active website does not lead to a different conclusion, see, for example, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. Further, that use combined with the present "passive holding" of the disputed domain name satisfies the requirement of use in bad faith under the principles established in the oft-cited Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel therefore finds that the disputed domain names and each of them has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <freefulltiltpoker.com>, <freefulltiltpoker.net> and <fulltiltfpoker.com> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: August 19, 2011