WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pocket Kings Limited v. Blue Giant Holdings Inc.

Case No. D2010-2059

1. The Parties

Complainant is Pocket Kings Limited of Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

Respondent is Blue Giant Holdings Inc. of Vernon, British Columbia, Canada.

2. The Domain Names and Registrar

The disputed domain names <fullgiltpoker.com>, <fullgiltpoker.net>, and <fulltiltloker.net> are registered with GoDaddy.com, Inc. The disputed domain name <fulltilgpoker.com> is registered with Fabulous.com. The disputed domain names <fulltiltpokdr.com>, <fulltiltpokefr.com>, <fulltiltpoke3r.com>, <fulltiltpoke4.com>, <fulltiltpoke4.net>, <fulltiltpoke5.com>, <fulltiltpoke5.net>, <fulltiltpok4r.com>, <fulltiltp9ker.com>, <fulltiltp9ker.net>, <fulltilt0oker.com>, <f7lltiltpoker.net> and <f8lltiltpoker.net> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2010. On November 29, 2010, the Center transmitted by email to GoDaddy.com, Inc., Fabulous.com, and Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On November 29, 2010, GoDaddy.com, Inc. and Wild West Domains, Inc. and on November 30, 2010, Fabulous.com transmitted by email to the Center their verification responses, confirming that 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, Complainant filed an amendment to the Complaint on December 3, 2010.

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 December 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 28, 2010.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on January 20, 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

Complainant, Pocket Kings Limited, provides technology and marketing consulting services to the online poker industry. Launched in 2004, the Full Tilt Poker online poker room is distinctive because of its incorporation and sponsorship of Poker professionals who conceived and designed the poker room and who give customers the opportunity to learn and interact with them.

Complainant owns the following registered trademarks: (1) The design mark FULL TILT POKER, a Community Trademark with registration No. 6322127, filed on October 1, 2007; and (2) the word mark FULL TILT POKER, a Community Trademark with registration No. 6335327, filed on October 4, 2007 (collectively, the “FULL TILT POKER Mark” or “Complainant’s Mark”).

Complainant uses its FULL TILT POKER Mark, among other places, in conjunction with the following domain names that it owns: <fulltiltpoker.com> (registered on August 20, 2002); <fulltiltpoker.net> (registered on August 20, 2002) and <fulltiltpoker.org> (registered on June 14, 2003).

The disputed domain names <fulltiltpokdr.com>, <fulltiltpokefr.com>, <fulltiltpoke3r.com>, <fulltiltpoke4.com>, <fulltiltpoke5.com>, <fulltiltpok4r.com>, <fulltiltp9ker.com>, and <fulltilt0oker.com> were registered on May 2, 2006, the dispute domain names <fulltiltpoke4.net>, <fulltiltpoke5.net>, <fulltiltp9ker.net>, <f7lltiltpoker.net>, and <f8lltiltpoker.net> on May 7, 2006, the disputed domain name <fulltilgpoker.com> on February 20, 2007, the disputed domain name <fulltiltloker.net> on June 19, 2008, and the disputed domain names <fullgiltpoker.com> and <fullgiltpoker.net> on April 27, 2009.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain names are confusingly similar to Complainant’s FULL TILT POKER Mark as they are all typo-variants of it. Each domain name differs from the Complainant’s Mark by only a single character (i.e., the addition or deletion of a letter or number) making them confusingly similar to the Complainant’s Mark in appearance. The disputed domain names seemingly comprise a recognizable part of Complainant’s Mark and the intentional misspellings increase the risk of confusion as the overall appearance of the domain names serves the purpose of reinforcing the connection between them and Complainant’s business.

Complainant contends that Respondent has no rights or legitimate interests with regard to the disputed domain names. Respondent is not an authorized licensee of Complainant and has no authorization to use Complainant’s Mark or any marks incorporating “Full Tilt Poker.” Respondent is not affiliated with Complainant in any way.

Before any notice of the current dispute, Respondent has not made use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to them in connection with a bona fide offering of goods or services. Searches performed on Archive.org indicate that the websites associated with the disputed domain names have never had any content. Rights and legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with Complainant. Although Complainant’s trademark is not reproduced in its entirety in all the disputed domain names, the fact that they are obvious misspellings of Complainant’s Mark suggest that Respondent intended to create an association with Complainant’s Mark.

To Complainant’s knowledge, Respondent has never been commonly known by any of the disputed domain names or by the term “Full Tilt Poker”. Searches conducted within the Canadian, International, and European Community trademark databases for the terms “Full Tilt Poker” return no results that relate to Respondent in any manner.

Additionally, Complainant alleges Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. With the exception of <f7lltiltpoker.net>, which currently resolves to a parking page containing pay-per-click links, all the other disputed domain names currently appear to redirect to Complainant’s official website. Actually, they first redirect users to “www.pokersiteonline.com/fulltiltpoker”, a site owned and operated by Respondent. The re-direction is very quick and users are unlikely to notice that they made a typing error when entering the domain name into a web browser.

Evidence of typosquatting is sufficient to establish bad faith use and registration under paragraph 4(a)(iii) of the Policy. Complainant asserts that its business has been disrupted because Respondent has prevented it from registering the disputed domain names as defensive registrations. Complainant further alleges as bad faith that during the length of time Respondent has owned the disputed domain names, Respondent has made no demonstrable preparations to use them in a bona fide manner. With regard to <f7lltiltpoker.net> in particular, it currently resolves to a parking page which provides links to competitors of Complainant. Parking page use linking to competitors is prima facie bad faith use of a domain name. The remaining disputed domain names redirect to Complainant’s official website via Respondent’s website at “www.pokersiteonline.com/fulltiltpoker”. Respondent’s actions lead to an inference that by redirecting the disputed domain names to Complainant’s website, Respondent is trying to pass itself off as Complainant and trade on Complainant’s goodwill.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the respondent 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 the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has provided uncontroverted evidence of its rights in the FULL TILT POKER Mark by means of Community trademark registrations.

It is common practice under the Policy to disregard generic Top Level Domains (gTLDs) such as the “.com”, “.net” and “.org” portion of domain names for the purposes of determining confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Turkcell Iletisim Hizmetleri A.S. v. kara tara, WIPO Case No. D2010-1184.

This leaves as the remaining element of each of the domain names: Group 1: fullgiltpoker, fulltiltloker, fulltilgpoker, fulltiltpokdr, fulltiltpoke4, fulltiltpok4r, fulltiltpoke5, fulltiltp9ker, fulltilt0oker, f7lltiltpoker and f8lltiltpoker; and Group 2: fulltiltpoke3r, fulltiltpokefr. The disputed domain names of Groups 1 and 2 incorporate the FULL TILT POKER Mark in its entirety with one distinction. In Group 1, Respondent registered a series of domain names that are misspellings of Complainant’s Mark by switching one letter in each domain name with another letter or a number. In some cases the switched letter is the same and the gTLD is different (i.e., “.com” or “.net.”). Also, in each case the substituted letter or number are letters or numbers that are very close by the correct letter on a conventional keyboard and, thus, manifest common typographical errors. In Group 2, the disputed domain names are identical to Complainant’s Mark with the mere addition of a letter or number at the end of the Mark.

Insofar as the disputed domain names wholly incorporate the FULL TILT POKER Mark, the Panel finds that they should be regarded as at least confusingly similar to Complainant’s Mark. Furthermore, other panels have consistently held that “a mere addition of a minor misspelling or typographical error of a mark, does not create a new or different mark in which [r]espondent has legitimate rights.” See Hobsons, Inc. v. Peter Carrington a/k/a Party Night Inc, WIPO Case No. D2003-0317. Such insignificant modifications to trademarks is commonly referred to as “typosquatting” or “typo-piracy,” as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161. “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive.” See Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; see also American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455 (<addvil.com> held confusingly similar to ADVIL).

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

It is uncontested that Respondent has no rights or legitimate interests in the FULL TILT POKER Mark. Respondent has no relationship or agreements with Complainant authorizing it to use Complainant’s Mark. Furthermore, there is no evidence that Respondent has been personally identified, or commonly known, by the disputed domain names or any names comprised, in whole or in part, of the FULL TILT POKER Mark. There is no evidence that Respondent has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

Where, as here, Complainant has raised a prime facie presumption of Respondent’s lack of any rights or legitimate interests in the FULL TILT POKER Mark, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or

(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel has already determined that all seventeen (17) disputed domain names are confusingly similar to Complainant’s FULL TILT POKER Mark. The Panel finds that by engaging in a pattern of typosquatting – registering slightly modified versions of Complainant’s Mark 17 times over a period of three years (May 2, 2006, May 7, 2006, February 20, 2007, June 19, 2008, and April 27, 2009) -- Respondent’s bad faith registration is manifest. Respondent’s actions were deliberate and intentionally designed to confuse Internet users. Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971.

The Panel also concludes that Respondent has been using the disputed domain names in bad faith. The Panel deems Respondent’s pattern of registering the 17 disputed domain names over a period of 3 years a violation of 4(b)(ii) of the Policy insofar as Respondent has registered the domain names thereby preventing Complainant from reflecting the FULL TILT POKER Mark in a corresponding domain name.

Multiple visits by the Panel to the websites to which the disputed domain names redirect Internet users indicate that Respondent is using the disputed domain names in 11 cases (fullgiltpoker.com>, <fullgiltpoker.net>, <fulltiltloker.net>, <fulltilgpoker.com>, <fulltiltpoke3r.com>, fulltiltpoke4.net>, <fulltiltpoke5.com>, fulltiltp9ker.com>, <fulltiltp9ker.net>, <fulltilt0oker.com>, <f8lltiltpoker.net>) to hijack Internet users to a site that promotes competing poker playing and learning services. In one case (<f7lltiltpoker.net>), Respondent is diverting Internet users to a webpage with sponsored sites. The Panel concludes that with these 12 uses of the domain names Respondent has violated 4(b)(iv) of the Policy by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement.

Using the remaining 5 domain names (<fulltiltpokdr.com>, <fulltiltpokefr.com>, <fulltiltpoke4.com>, <fulltiltpoke5.net>, <fulltiltpok4r.com>) Internet users are diverted to a simple webpage that is not an active website but it has advertising about Complainant’s on-line poker business using various links to Complainant’s webpage and generous usages of Complainant’s Mark and logos. With this set-up Internet users may be confused or frustrated that the page is not Complainant’s site and they may or may not click on the active links that would take them to Complainant’s website – their intended destination. Thus the Panel finds that Respondent’s activities also constitute a violation of 4(b)(iii) - registering the domain names primarily for the purpose of disrupting the business of a competitor.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 names <fullgiltpoker.com>, <fullgiltpoker.net>, <fulltiltloker.net>, <fulltilgpoker.com>, <fulltiltpokdr.com>, <fulltiltpokefr.com>, <fulltiltpoke3r.com>, <fulltiltpoke4.com>, <fulltiltpoke4.net>, <fulltiltpoke5.com>, <fulltiltpoke5.net>, <fulltiltpok4r.com>, <fulltiltp9ker.com>, <fulltiltp9ker.net>, <fulltilt0oker.com>, <f7lltiltpoker.net>, and <f8lltiltpoker.net> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Dated: January 26, 2011