WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bwin.party digital entertainment plc, Peerless Media Limited v. smw events international, Serge Mazza

Case No. DCO2012-0021

1. The Parties

Complainants are bwin.party digital entertainment plc and Peerless Media Limited of Gibraltar, Overseas Territory of United Kingdom of Great Britain and Northern Ireland, represented internally.

Respondent is smw events international, Serge Mazza of Clear Island Waters, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <wppt.co> (the “Domain Name”) is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2012. On June 28, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On June 29, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent the Complaint Deficiency Notification to Complainants on July 3, 2012. Complainants filed an amended Complaint on July 3, 2012.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2012. On July 18, 2012, the Center received an email communication from Respondent in which it made several brief statements concerning the Domain Name (the text of which is reproduced under Section 5.B., below). On the same date, the Center acknowledged receipt of Respondent’s email communication. No further communication or formal Response has been filed by Respondent and therefore, on July 25, 2012, the Center notified the parties about the commencement of the panel appointment process.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 30, 2012. 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

Complainants are part of the bwin.party Group of companies. bwin.party digital entertainment plc, the ultimate parent of the bwin.party Group, is the world’s largest listed online gaming company, quoted on the London Stock Exchange and a member of the FTSE 250 Index. It is the product of the merger between the world’s two previous largest gaming operators, PartyGaming plc and bwin Interactive Entertainment AG. Complainant Peerless Media Limited is a 100% indirectly owned subsidiary of bwin.party digital entertainment plc and is the owner of Complainants’ trademarks.

Complainants have trademark rights in the terms “WPT” and “PPT” in the United States of America dating from May 14, 2004 and October 6, 2004, respectively. Complainants have subsequently applied for and obtained a large number of WPT and PPT trademark registrations in various territories worldwide (including Colombia). These registrations are all for goods and/or services in Classes 9, 21, 25, 28, 38, 41 and/or 42 and mainly concern the provision of “entertainment services, including organising, conducting, producing and exhibiting poker events rendered live and through the media of television and the internet”. They are currently all owned by Complainant Peerless Media Limited.

As of December 31, 2010 and 2011 respectively, the bwin.party Group's total revenue was EUR 814 million and EUR 816 million, with customers across the world. bwin.party Group is regulated and licensed in multiple territories including Gibraltar and Alderney, Overseas Territories of the United Kingdom of Great Britain and Northern Ireland, France, Denmark, Spain and Italy. The Group has approximately 3,100 employees located in offices worldwide.

Complainants acquired the domain names <wpt.com> on November 30, 2009 and <worldpokertour.com> on February 26, 2002.

The Domain Name was registered on August 26, 2011. The Domain Name was set to expire on August 25, 2012 but the Registrar has confirmed that the Domain Name will remain locked during this proceeding.

The Domain Name has resolved to a website displaying content comparable to that available at Complainants’ website relating to the promotion of poker game tournaments and other poker related services including offline poker tournaments in Australia and internationally under the trade names World Professional Poker Tour and the acronym “WPPT”.

On January 30, 2012 and April 19, 2012, cease and desist letters requesting that the Domain Name be transferred to Complainants were sent by Complainants to Respondent. Complainants have not received a response from Respondent with regard to the contents of these communications.

5. Parties’ Contentions

The Panel has summarized the Parties’ contentions below.

A. Complainant

Complainants state that the World Poker Tour (“WPT”) has become one of the strongest brands for broadcast poker tournaments and one of the world’s largest poker tours. It is one of the most recognized names in internationally televised gaming and entertainment with brand presence in land-based tournaments, television, online and mobile. Complainant contends that it has led innovation in the sport of poker since 2002, with WPT contributing to the global poker boom with the creation of a unique television show based on a series of high stakes poker tournaments. WPT has been broadcasted globally in over 150 countries and territories and is currently airing the tenth season on Fox Sports Network in the United States.

Complainants state that the WPT brand extends across numerous digital platforms including real money online gaming available at “www.wptpoker.com”, “www.wptcasino.com”, “www.wpt.fr” and “www.worldpokertour.com”, a Facebook poker application and a mobile poker product that has been downloaded nearly 20 million times. From 2005 to 2011, Complainants and their predecessors have spent in excess of USD 100,000,000 in connection with the advertisement and promotion of the WPT brand, including a television series and offline and online poker tournaments and events.

Numerous poker and Hollywood celebrities have participated in Complainants’ televised poker tournaments. The poker tournaments featured under the WPT trademarks are hosted in various casinos throughout the world including locations such as Las Vegas, Nevada; Los Angeles, California; Atlantic City, New Jersey; Paris, France; Venice, Italy; Marbella and Barcelona in Spain; Dublin, Ireland; Prague, Czech Republic; and Mazagan, Morocco, among others. In addition, the brand can be found on everything from clothing to magazines to training courses to lottery tickets and more.

Currently, Complainants operate the World Poker Tour, and in conjunction with the Tour, also distribute the spin off Professional Poker Tour, a televised poker tournament series known under the brand PPT, dating back to 2004. The “www.wpt.com” website has been the subject of extensive advertising and promotion in all forms of media (including online and offline media such as the Internet, print, television and on public transport), celebrity endorsements and sponsorship of gaming tournaments and in many territories. As a result of this, together with the substantial media coverage it has received, WPT (an inherently distinctive mark) has become famous and well-known worldwide. Complainants urge that the WPT brand has accumulated considerable goodwill.

Complainants have taken, and continue to take, successful legal action against domain name registrants and others who allegedly infringe its trademark rights. Complainants have already brought 30 other successful complaints under the UDRP.

Identical or confusingly similar:

Complainants submit that the Domain Name is confusingly similar to their trademarks, WPT and PPT. The Domain Name is composed of two elements: “wppt” and “.co”. It has been held in numerous UDRP decisions that the addition of the TLD suffix does not affect the likelihood of confusion merely because it is necessary for the registration of the domain name itself. In the circumstances, a comparison shall be made between “wpt” and “wppt”. Complainants submit that the Domain Name is extremely similar to their WPT and PPT marks, with only a single letter difference. Respondent has fully integrated the Complainants’ WPT trademark into its Domain Name string, save for the addition of the letter “p” between the letters “wp” and “t”. An Internet user could easily type a double “p” and be diverted to a different website. In addition, Respondent has fully integrated Complainants PPT trademark at the end of the Domain Name, with the insertion of the letter “w” at the beginning of the Domain Name string. Complainants’ World Professional Poker Tour (“WPPT”) is merely a combination of Complainants’ WORLD POKER TOUR (WPT) and PROFESSIONAL POKER TOUR (PPT) existing trademarks. Internet users who type the Domain Name into their browser by mistake instead of inserting the address for Complainants’ “www.wpt.com” or “www.wpt.co” websites will be taken to a competing website. Internet users making this simple error are likely to assume that the website accessed via the Domain Name is registered to, operated or authorized by Complainants when that is not the case. A number of UDRP cases recognize that where a disputed domain name is a slight alphabetical variation from a well-known trademark, an Internet user will be confused as a result of making a simple typing error.

Complainants contend that Respondent has applied the practice of typosquatting, where the disputed Domain Name is a slight misspelling of a registered trademark to divert Internet traffic. The practice of typosquatting has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to relevant trademarks.

Therefore, Complainants submit, that the Domain Name is highly similar (and confusingly so), aurally, visually and conceptually to Complainants’ trademarks, WPT and PPT. There exists a risk that Internet users may actually believe there to be a real connection between the Domain Name and Complainants’ goods and services, taking into consideration the overall impression created by the Domain Name.

Rights or legitimate interests:

Complainants state that Respondent is based in Australia but is the registrant of a Colombian domain name, given that the gTLD suffix “.co” corresponds to Colombia. There is no evidence that Respondent has any interest in the Colombian market as the content displayed on the website to which the Domain Name resolves is in English and is targeted at English speaking people.

Complainants argue that Respondent is using the Domain Name and other features to intentionally trade on Complainants’ fame and reputation. Such use is not a bona fide offering of goods or services and does not create a legitimate interest in the Domain Name. Complainants submit that use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. The Domain Name imitates Complainant’s official domain name <wpt.com> and it appears that Respondent registered the Domain Name to take advantage of Internet users mistyping Complainants main website, “www.wpt.com”.

Complainants have not licensed or otherwise authorized Respondent to use its trademarks for domain name registration or any other purpose.

The Domain Name currently displays content which relates to the promotion of poker game tournaments and other poker related services, including offline poker tournaments in Australia and internationally under the trade names “World Professional Poker Tour” and the acronym “WPPT”. To the best of Complainants’ knowledge, information and belief, it has done so at all times since registration.

Complainants are aware that Respondent has filed Australian trade mark application number 1,476,143 for WPPT (& device) in class 41 in the name of W. Mazza. Complainants intend to oppose this trademark application if it proceeds to acceptance.

Complainants submit that Respondent does not have (and never had) any rights or legitimate interests in the Domain Name for the following reasons:-

- As previous UDRP panels have recognized, the mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP. Complainants submit that the trademark application has not been sought for a legitimate or bona fide purpose, but merely in order to bolster their domain name registration, and accordingly the trademark application should be disregarded.

- Respondent’s trademark application was made on February 22, 2012, which was subsequent to the first cease and desist letter sent to Respondent on January 30, 2012. Complainants assert that this chronology of events is an important factor to be considered when determining if this trademark application is bona fide.

- Complainants submit that as Respondent and the pending trade mark application are located in Australia, it is clear that Respondent has no legitimate connection with the territory of Colombia.

- Complainants have prior rights in the WPT and PPT trademarks for the same class of goods and services for which the Domain Name is currently being used, which precede Respondent’s registration of the Domain Name and trademark application by more than five years.

Registration and use in bad faith:

Complainants submit that Respondent (i) registered the Domain Name in bad faith because they did so on August 26, 2011, when they were fully aware of Complainants’ trademarks, which have been in use since at least 2004; and (ii) is using the Domain Name in bad faith by misleading potential and/or actual customers and other marketing partners of Complainants by using the Domain Name in relation to similar services covered by Complainants’ trademarks and available through Complainants’ main website at “www.wpt.com”. Complainants submit that this is the very reason why the Domain Name was selected by Respondent in the first place.

Respondent registered the Domain Name on August 26, 2011. At that time, they would have been fully aware of Complainants’ WPT, WORLD POKER TOUR and PROFESSIONAL POKER TOUR trademarks, for which Peerless Media Limited and its predecessors had by that time filed and registered several trademarks, including in the territory of Respondent’s residence, Australia. Furthermore, Complainant’s World Poker Tour television show has been broadcast on a major network in Australia continuously since 2004. Season 9 of the World Poker Tour is currently being aired on the Fox 8 network in Australia.

The current content of the website operating from the Domain Name promotes goods and services within Complainants’ field of business and within the classification of goods and services covered by its international, including its Colombian, trademark rights in the trademark WPT.

Further, Complainants hereby submit that Respondent’s purpose when registering the Domain Name was to disrupt the business of a competitor by intentionally attempting to divert Internet users searching for Complainants’ websites, “www.wpt.com” and “www.wpt.co” by using a misspelling of the domain name strings. Respondent is using the Domain Name to promote similar services to those available at Complainants’ website. Since Respondent works in the same industry and given the reputation and fame of the WPT trademark, it is inconceivable that Respondent did not have actual knowledge of Complainants’ rights at the date of registration of the Domain Name. Complainants’ submit that active or constructive knowledge of Complainants’ rights in trademarks is a factor supporting bad faith.

Complainants assert that the current website is likely to mislead Internet users into believing that the website to which the Domain Name resolves is sponsored, endorsed or authorized by, or in association with Complainants’ business. Respondent is using the Domain Name for an online gaming site that is similar in nature to Complainant’s websites. Furthermore, Respondent has copied the look and feel of Complainants’ “www.wpt.com” website through use of a similar color scheme of a navy, black, and white background in relation to the promotion of an offline poker tour. The confusing similarity of the Domain Name, coupled with the likeness of Respondent’s website accessed via the Domain Name, will lead traffic to be diverted away from Complainant’s websites to that operated by Respondent, for Respondent’s commercial gain. In addition, there is a genuine risk that Complainants’ trademarks and reputation will be damaged by attracting Internet users to a webpage that does not correspond to what they are looking for.

Respondent obtained and registered the Domain Name to run an online gaming website in direct competition with Complainants’ websites. Respondent’s registration and use of the Domain Name was and is with full knowledge of Complainant’s rights in its WPT and WORLD POKER TOUR marks, and was done for the purpose of disrupting a competitor’s business.

Complainants submit that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website accessed via the Domain Name by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of its website.

B. Respondent

Respondent sent an email to the Center on July 18, 2012. That email is included below exactly as it appears in the record, with spelling and punctuation errors:

“Following my call today with you i send you our TM of WPPT 1476143 also i would like to says i really don’t understand the complain from WPT against WPPT my lawyer already send a letter to WPT to explain why and also i would like to says we buy the domain in 2011 at godaddy a was free to buy if a was not free to buy we will not be able to buy is so logical our website and logo are not at all similar of WPT so is no confusion possible our costumer are from India and Australia nothing to do with America Regards

Serge Mazza”

The Center replied to Respondent on July 18, 2012, stating that the due date to submit a Response was July 24, 2012, pursuant to paragraph 5 of the UDRP Rules. The Center also requested confirmation from Respondent about whether he wanted his email communication to be regarded as his complete Response. The Center stated that if it did not receive any further communication from Respondent by the due date for the Response, the Center would regard the above-referenced email as Respondent’s Response and proceed to appoint the Panel. On July 25, 2012, having heard nothing further from Respondent, the Center notified the Parties that pursuant to Paragraph 6 of the Rules, the Center would proceed to appoint the Panel.

6. Discussion and Findings

As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These are that:

(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;

(2) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(3) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainants have rights in its WPT, PPT, WORLD POKER TOUR and PROFESSIONAL POKER TOUR trademarks. The Panel further finds that the Domain Name is confusingly similar to Complainants’ WPT and PPT trademarks. The Panel observes that the Domain Name incorporates Complainants’ trademark in its entirely, with the addition of a “p” to the WPT trademark. The result is that the Domain Name is highly suggestive of a connection to Complainants, their brand and operations, particularly as Respondent is in the same business. It would be reasonable to assume that Complainant and the Domain Name are somehow connected or associated. Additionally, the Panel finds the addition of the letter “p” to be an obvious misspelling of Complainants’ WPT trademark, which would normally lead to a finding of confusing similarity.

Because the Domain Name is confusingly similar to Complainants’ trademarks, the Panel considers that Complainants have satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

The Panel finds that Complainants have made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Complainants have prior rights in the WPT and PPT trademarks for the same class of goods and services for which the Domain Name is currently being used, which precede Respondent’s registration of the Domain Name and trademark application by more than five years. Complainants have achieved widespread exposure of these marks within the gaming industry and allege that, at the time of registration of the Domain Name, Respondent would have been fully aware of Complainants’ trademarks, which had been registered in a number of countries including both Australia and Columbia. Complainants have not licensed or otherwise authorized Respondent to use the WPT or PPT trademarks for domain name registration or any other purpose. Respondent’s trademark application was made on February 22, 2012, which was subsequent to the first cease and desist letter sent by Complainant to Respondent on January 30, 2012. In light of the circumstances, the Panel finds that the Respondent’s trademark application is not sufficient to establish rights or legitimate interests in the Domain Name (See paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”).

The Panel also finds that Complainant has made a case that the Domain Name and other features of Respondent’s website are designed to intentionally to trade on Complainants’ reputation. Respondent is using the Domain Name for an online gaming website that is similar in nature to Complainants’ websites. The Domain Name currently displays content which relates to the promotion of poker game tournaments and other poker related services in Australia and internationally. Moreover, Complainant has submitted evidence that Respondent has copied the look and feel of Complainants’ main website through use of a similar color scheme.

In the face of these charges, Respondent has made little effort in these proceedings to respond or to demonstrate any right or legitimate interests, and the Panel finds that Respondent has failed to rebut Complainants’ prima facie case.

For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

With Respondent’s lack of any right or legitimate interests in any of the Domain Name, the Panel finds that Respondent has exhibited conduct that fits into bad faith registration and use by (i) the opportunistic and intentional registration of the Domain Name to capitalize on Complainants’ goodwill and reputation as the Domain Name contains Complainants’ WPT and PPT trademarks in their entirety, plus the addition of the letter “p”; and (ii) using the Domain Name in connection with a website that competes with Complainant and that has adopted a similar look and feel.

As noted above, the Panel believes that Respondent registered the Domain Name while improperly targeting Complainants’ trademarks. Complainant and Respondent are in the same business and Complainants have achieved goodwill and reputation, while obtaining registered trademark protection in Australia and Colombia. The current content of the website linked to the Domain Name promotes goods and services within Complainants’ field of business and within the classification of goods and services covered by Complainants’ trademark WPT. Respondent’s website has a similar look and feel. Hence, the Panel finds that Respondent’s purpose when registering the Domain Name was to divert Internet users to Respondent’s website by using a misspelling of Complainants’ trademarks within the meaning of paragraph 4(b)(iv) of the Policy. Again, in the face of these charges, Respondent has made no effort to respond.

For all of the above reasons, the Panel finds that all the Domain Names have been registered and are being used in bad faith pursuant to the Policy.

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 Domain Name <wppt.co> be transferred to the Complainant.

Christopher S. Gibson
Sole Panelist
Dated: September 4, 2012