WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rational Entertainment Enterprises Limited v. Luis Wu
Case No. D2011-1521
1. The Parties
The Complainant is Rational Entertainment Enterprises Limited of Douglas, Isle of Man, Overseas Territory of United Kingdom of Great Britain and Northern Ireland, represented by PokerStars Legal Team, Isle of Man, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Luis Wu, of Concepcion, Chile.
2. The Domain Names and Registrar
The disputed domain names <pokerstar.mobi> and <pokerstars.mobi> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On September 9, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On September 9, 2011, GoDaddy.com, 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 September 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2011.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 17, 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 and its group of companies operate an online poker business using the POKERSTARS trademark. The Complainant commenced the use of the POKERSTARS trademark in 2001, when it launched its online gambling website at “www.pokerstars.com”. The Complainant subsequently launched a second website at “www.pokerstars.net” in 2004. The Complainant also sponsors live poker tournaments and produces television programs around the globe via its website “www.pokerstars.tv”, including a Latin American Poker Tour launched in 2008 at “www.lapt.com”. As a result, the Complainant's enjoys a worldwide reputation as a market leader in the field of online poker.
The Complainant owns a number of registrations for the POKERSTARS trademark throughout the world, for instance, in European Union, Australia, Benelux, Bulgaria, Chile, Republic of Korea, Mexico, Norway, Russian Federation and Ukraine, in classes 9, 35, 41 and 42. In addition, the Complainant has registered the word POKERSTAR as a trademark in Benelux and Australia.
The Respondent is an individual residing in Chile. The disputed domain names were acquired by Respondent on April 18, 2011, as specified by the Registrar.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
- The disputed domain names were acquired by Respondent between January 21, 2011 and May 27, 2011.
- The disputed domain names are identical to the Complainant’s registered POKERSTARS trademark. The only difference with one of the domain names is the omission of the letter “s” at the end of the disputed domain name;
- The Policy does not oblige the Complainant to have a trademark registered in Chile, jurisdiction of the Respondent and the Benelux trademarks should suffice;
- The Respondent has no legitimate interests in the disputed domain names. The Respondent is not affiliated with the Complainant and has never been licensed or otherwise authorized to use the Complainant’s POKERSTARS trademark;
- To the best of the Complainant's knowledge, the Respondent has never used the disputed domain names;
- The Respondent has not made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The use of sponsored links is not a bona fide offering of goods and services, rather the Respondent have chosen the disputed domain names in order to take advantage of the reputation of and goodwill in the Complainant´s trademarks;
- The sponsored links bear no relevance to the disputed domain names;
- In June 2011 the Complainant wrote a letter to the Respondent where it proved its rights over POKERSTARS and POKERSTAR trademark;
- Respondent has never been commonly known by the disputed domain names;
- The disputed domain names were registered and are being used in bad faith;
- At the time that the Respondent registered the disputed domain names, the Complainant owned a Benelux registration for the POKERSTARS trademark. In addition, two trademarks were registered in Chile for POKERSTARS on November 20, 2009 and June 8, 2010.
- Complainant argues that POKERSTARS was and still is a famous trademark that has been in existence for ten years and has considerable reputation in Chile: the season four leg of the Pokerstar.net Latin American Poker Tour was held in Chile between March 17 and March 20, 2011, around the time the Respondent appears to have acquired the disputed domain names;
- In addition, Complainant held a poker event in Chile to raise money for victims of the earthquake there in 2010;
- Complainant submits that because the POKERSTARS mark is famous, the Respondent either knew or should have known about those trademarks when it acquired the disputed domain names;
- Complainant submits also that Respondent, being aware of the reputation and goodwill in the Complainant´s trademarks, acquired the disputed domain names for the purposes of selling them to Complainant;
- Complainant argues that the Respondent made an offer to counter sale the disputed domain names for the sum of EUR 10,000;
- Complainant submits that Respondent, by using the disputed domain names, has attempted to attract, for commercial gain, Internet users to their landing pages, by creating a likelihood of confusion with the Complainant´s POKERSTAR and POKERSTARS trademarks as a source, sponsorship, affiliation and endorsement of those pages;
- Complainant request as a remedy the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in POKERSTARS and POKERSTARas evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the domain names <pokerstar.mobi> and <pokerstars.mobi> are confusingly similar to the Complainant`s trademarks POKERSTARS and POKERSTAR. The addition of the generic top-level domain suffix “.mobi” does not change this finding. Because of its technical nature, this element is insufficient to distinguish the disputed domain names as referring to an entity other than the Complainant.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trademarks which are identical, similar or related to the disputed domain names. Therefore, the Panel will assess the Respondent's rights in the disputed domain names (or lack thereof) based on the Respondent's use of the disputed domain names provided by the available record.
The Panel accepts that the Complainant has not authorized the Respondent to use the POKERSTARS mark in the disputed domain names. The Panel further accepts that the Respondent has not become commonly known by the disputed domain names.
Accordingly, the only way for the Respondent to acquire rights or legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy would be through the use of it for legitimate noncommercial purposes or in connection with a bona fide offering of goods or services.
According to the Complainant, the disputed domain names have never been used by the Respondent, a fact that the Respondent has not denied. The Respondent did not provide any evidence of demonstrable preparations to use the disputed domain names for such purposes.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the domain names were registered in bad faith and that they are being used in bad faith.
The Complainant's allegations with regard to the Respondent's registration and use of the disputed domain names in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Panel accepts that the POKERSTARS trademark enjoys a significant degree of recognition throughout the world (see Rational Entertainment Enterprises Limited v. Sorin Cristea, WIPO Case No. DRO2011-0005).
The Complainant owned registrations for the trademark in several jurisdictions including Chile, the jurisdiction of the Respondent. These trademark registrations preceded the acquisition of the disputed domain names by the Respondent. There has also been some commercial activity in Chile by the Complainant one month before the acquisition of the disputed domain names by the Respondent, a fact that Respondent has not denied. This in itself is an indicator of the type of opportunistic bad faith that the Policy is designed to prevent. In these circumstances, the Panel finds that there is no basis on which to infer that the Respondent registered the disputed domain names in any manner or for any purpose other than in bad faith.
Furthermore, the Complainant further argued that the Respondent registered the disputed domain names with a view to profiting from their sale. In support of this contention, the Complainant provided evidence of the Respondent offering to sell the disputed domain names at “sedo.com” and contains a sign stating (depending of the viewer location) “…Buy this domain – The domain <pokerstars.mobi> may be for sale by its owner”. Furthermore, the Complainant provided evidence at Annex 14 to the Complaint that the Respondent answered an offer to buy with a counter-sale offer of the disputed domain names for an amount (EUR 10,000) that exceeded the reasonable out-of-pocket expenses associated with such a transfers.
In view of the Panel, these are circumstances indicating that the disputed domain names were acquired primarily for the purpose of selling them to the Complainant who is the owner of the trademark for valuable consideration, according to paragraph 4(b)(i) of the Policy.
The Complainant had also submitted that it is entitled to succeed under paragraph 4(b)(iv) of the Policy on the ground that the purpose of domain parking is to earn money from the domain's pay-per-click advertising. There is certainly sufficient evidence to infer that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant's mark.
In this Panel`s view, there is a clear likelihood of confusion between the disputed domain names and the Complainant's trademark, and the Respondent is likely profiting from that. Whether or not on arrival at the pay-per-click page an Internet user were to be disabused of their initial confusion is irrelevant, as the Respondent's objective has been met (see e.g., PNY Technologies Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0544 and Wagamama Limited v. Transure Enterprise Ltd., WIPO Case No. D2008-1200).
Therefore, the Panel concludes that the Respondent has registered and is using the domain names 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 disputed domain names <pokerstar.mobi> and <pokerstars.mobi> be transferred to the Complainant.
Pablo A. Palazzi
Dated: October 31, 2011