World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Anachusa Ltd. v. Prasad Jason, advertoglobe

Case No. DCO2010-0041

1. The Parties

The Complainant is Anachusa Ltd. of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Uexküll & Stolberg, Germany.

The Respondent is Prasad Jason, advertoglobe of Richmond, British Columbia, Canada, represented by Raj Abhyanker, P.C., United States of America.

2. The Domain Name and Registrar

The disputed domain name <pokerstrategy.co> (the “Disputed Domain Name”) is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 19, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On November 19, 2010, Tucows Inc. 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 sent an email to amend the Complaint on November 22, 2010.

The Center verified that the Complaint together with the amendment to 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 November 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2010. The Response was filed with the Center on December 13, 2010.

The Complainant submitted an unsolicited Supplemental Filing on December 14, 2010, which the Center duly brought to the Panel’s attention. On December 18, 2010, the Respondent submitted an unsolicited Supplemental Filing in reply to the Complainant’s Supplemental Filing, which the Center also duly brought to the Panel’s attention.

The Center appointed Alistair Payne as the sole panelist in this matter on December 22, 2010. 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 or its subsidiary, Swerford Holdings Ltd, has operated a website from the domain name <pokerstrategy.com> for many years and according to the Complainant since its registration in September 2002. The website teaches people how to play poker and features advertisements and links to well-known poker playing sites. The Complainant owns a range of trademark registrations and application which incorporate the word mark POKERSTRATEGY but in particular German word mark registration 30608484 for POKERSTRATEGY which was filed in February 2006.

The Respondent who describes himself as having been in the gaming industry since 2003 and as owning various highly targeted keyword domain names concerned with the game of poker together with 30 poker portals, including the website at “www.winner.com”. He registered the Disputed Domain Name on July 20, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant says that the Disputed Domain Name is identical or confusingly similar to the trademark registrations that it owns which contain its POKERSTRATEGY word mark.

The Complainant submits that the Respondent possesses no rights or legitimate interests in the term or mark POKER STRATEGY and as far as it is aware has never used the term in connection with a bona fide offering of goods or services.

As far as bad faith is concerned the Complainant alleges that the Respondent registered the Disputed Domain Name for the purpose of selling it to the Complainant or to a competitor of the Complainant for excessive consideration under paragraph 4(b)(i) of the Policy and that evidence of this is contained within the Respondent’s reply to the Complainant’s request for voluntary transfer and its request for a transfer price of USD 20,000 - 25,000.

In addition the Complainant says that the Respondent has intentionally sought to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or endorsement of its website in terms of paragraph 4(b)(iv) of the Policy. By using the Disputed Domain Name to ultimately re-direct Internet users to the website at “www.winner.com” the Complainant says that the Respondent is confusing Internet users as to the source, sponsorship or endorsement of this website and including by the use of signing bonuses, has attempted to replicate the Complainant’s business model which only reinforces the level of confusion.

B. Respondent

The Respondent says that the phrase or term “poker strategy” is generic and therefore the Disputed Domain Name is not confusingly similar to a mark in which the Complainant has rights. The Respondent notes that the term “poker strategy” was expressly disclaimed in the Complainant’s United States trademark registration.

The Respondent says that it has rights or legitimate interests in the Disputed Domain Name as it is a generic term or phrase which is relevant to the Respondent’s business to the extent that it provides tips or advice on playing poker at its website and should not be monopolized by one industry player. The Respondent says that he has been involved with the on-line poker industry since 2003 and that the use of the Disputed Domain Name is only an extension of his involvement and is relevant to the services that he provides.

The Respondent submits that he did not approach the Complainant first and merely responded to the Complainant’s request to purchase the Disputed Domain Name with an offer based on the value of a well-known generic phrase which used as a domain name has an obvious value in relation to the game of poker. The Respondent says that the value of the “pokerstrategy” phrase does not come from any association with the Complainant but rather from the fact that poker players associate poker tips with the term “poker strategy”. The Respondent says that his purpose in registering the Disputed Domain Name was to use it to tie into his poker strategy services rather than to sell or rent it to the Complainant.

The Respondent further says that it has no intention of attracting Internet users to its website based on creating a likelihood of confusion with the Complainant. The Respondent says that the term “poker strategy” in the Disputed Domain Name has no source identifying significance and suggests that this case is similar to that concerning <cityutilities.com> in which the panel held that the term “city utilities” was a generic phrase to describe a municipal utilities provider and denied the complaint (City Utilities of Springfield, Missouri, aka City Utilities v. Ed Davidson, WIPO Case No. D2000-0407). The Respondent further says that it has made no attempt to replicate the Complainant’s business model whether in relation to signing bonuses or otherwise.

6. Discussion and Findings

The Panel has read the parties’ respective supplemental filings and will admit them in this case.

A. Identical or Confusingly Similar

The first element of the Policy requires the Complainant to demonstrate that it has trademark rights in a relevant mark whether the mark is comprised of a combination of two common English words (as in this case) or otherwise. The Complainant has demonstrated that, in particular, it owns a German word mark registration for POKER STRATEGY as noted above which fulfils this requirement. As the substantive part of the Disputed Domain Name is identical to the Complainant’s registered trademark the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

Previous UDRP panels have found that where a domain name is purely descriptive, even where it is part of a registered trademark, then a respondent will have a right or legitimate interest, unless there is evidence that the respondent is targeting the complainant. This approach was taken by the panel in Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769 in relation to a geographic name and was followed more recently by the panel in Corsica Ferries- Sardinia Ferries, Forship SPA - Tourship Italia SPA v. Prenotazioni 24 s.a.s., WIPO Case No. D2010-1416 in relation to a domain name containing a geographic and a purely descriptive term.

In this case the term “poker strategy” is comprised of two common English words and the combined term is purely descriptive and based on the evidence before the Panel is commonly used in the industry. Without more this would be enough to find that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the Disputed Domain Name and to deny the Complaint. However as discussed below, there are supervening circumstances in this case which lead the Panel to infer, on the balance of probabilities, that the Respondent has in this case sought to target the Complainant and that therefore the Respondent has not acted in good faith.

Accordingly, the Panel finds that for the reasons set out below, the Complainant has made out its case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complaint succeeds under the second element of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered by the Respondent quite recently on July 20, 2010, by which time the Complainant had been operating its website at “www.pokerstrategy.com” for a number of years and owned numerous trademark registrations or applications incorporating the “pokerstrategy” phrase or mark.

The Respondent says that he has been in the gaming industry since 2003 and owns various highly targeted keyword domain names concerned with the game of poker together with 30 poker portals. The Respondent admits being well aware of the Complainant’s site and acknowledged this in his email of September 15, 2010 when he said to the Complainant that he was familiar with the <pokerstrategy.com> website and thought that it was a great site and offered a good product. In spite of his knowledge of the Complainant’s website and domain name, the Respondent proceeded not only to register the Disputed Domain Name but to use it to defer to his poker gaming website at “www.winner.com”.

The Respondent says that he did not intend to attract Internet users to his website and that the term “poker strategy” in the Disputed Domain Name has no source identifying significance. He further suggests that this case is similar to that concerning <cityutilities.com> in which the panel held that the term “city utilities” was a generic phrase to describe a municipal utilities provider and denied the complaint (City Utilities of Springfield, Missouri, aka City Utilities, supra). The Panel notes however that the <cityutilities.com> case turned on the panel’s findings in relation to the first element of the Policy and on that basis is not relevant to the differing circumstances in this case in which the Panel has found that the Complainant owns trademark rights for the purposes of the Policy.

Based on the Respondent’s own acknowledgement of the success of the Complainant’s website at “www.pokerstrategy.com” and that the site had been in operation for a number of years prior to the Respondent’s registration of the Disputed Domain Name, the Panel infers that the Complainant’s domain name has most likely developed some degree of source identifying significance, at least amongst the Internet based poker playing community. In these circumstances the Panel infers that it is most likely that the Respondent took the opportunity to register the Disputed Domain Name with a view to using it to attract Internet users to the website at “www.winner.com”. On the balance of probabilities, the Panel finds that the Respondent in so acting has intentionally sought to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of its website in terms of paragraph 4(b)(iv) of the Policy.

The Panel notes that although the Respondent did not approach the Complainant independently with an offer to sell the Disputed Domain Name, his counter offer and the circumstances in which he made that offer (in particular his refusal to deal until what he considered to be a real offer was made and his attempt to talk up the value) while not on their own determinative, only serve to reinforce the Panel’s view of the matter.

As a result the Panel finds that the Respondent has registered and used the Disputed Domain Name in bad faith and the Complaint succeeds under the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pokerstrategy.co> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Dated: January 5, 2011

 

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