WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pocket Kings Limited v. Privacy.Domain
Case No. DCO2011-0021
1. The Parties
The Complainant is Pocket Kings Limited of Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”).
The Respondent is Privacy.Domain of Indianapolis, Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fulltiltpoker.co> is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2011. On April 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2011, the Registrar 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 April 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2011.
The Center appointed John Swinson as the sole panelist in this matter on May 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 is Pocket Kings Limited, a company that provides technology and marketing consulting services to the online poker industry.
The Respondent is Privacy.Domain. The Respondent did not file a Response and consequently, little information is known about the Respondent.
The disputed domain name was registered on August 31, 2010.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following submissions:
Identical or Confusingly Similar
The Complainant was founded with the goal of creating the best online poker experience anywhere. The Complainant provides technology and marketing consulting services to the online poker industry and operates one of the fastest growing poker sites. The Complainant’s Full Tilt Poker brand is extremely well-known.
Full Tilt Poker was conceived in 2003 and officially launched in 2004. It is well-known for, and recognizable by, its incorporation and sponsorship of poker professionals who play an integral part in the company’s marketing strategy.
The Complainant is the sole proprietor of various United Kingdom and European Union registered trademarks incorporating FULL TILT POKER.
The Complainant actively uses FULL TILT POKER trademarks on websites at the following domain names:
<fulltiltpoker.com>;
<fulltiltpoker.net> ;
<fulltiltpoker.org>.
Further, the Complainant contends that FULL TILT POKER has become a well-known mark which has acquired a secondary meaning. The Complainant has become well-known for hosting the highest stakes games in online poker and has over 118 domain registrations that consist of the term “fulltiltpoker” in its entirety.
Specifically, the Complainant has been hosting regular poker championships online since 2006. These are available to consumers on a global scale. There is a highly publicized Full Tilt online poker tournament series which runs every 3 months and allows consumers to play with the Complainant’s sponsored professionals. The winnings at each tournament are very large.
Also, the Complainant is distinctive and renowned within its field of business for its use of multimedia to generate publicity. The Complainant has commissioned at least 14 commercials which are accessible online and which are shown on television. The Full Tilt Poker brand is a sponsor of major sporting events and teams and as such, the Complainant’s brand and trademarks are well-known online and in the sporting and media arenas.
The TLD suffix is irrelevant when assessing whether a trademark and disputed domain name are identical or confusingly similar (see Missoni S.p.A v. CoAustio, WIPO Case No. DCO2010-0047).
Therefore, the disputed domain is confusingly similar to the Complainant’s trademarks as it is virtually identical to the Complainant’s registered trademarks. The lack of spaces in the disputed domain name is inconsequential as spaces cannot currently be included in domain names.
The disputed domain name incorporates the Complainant’s mark in its entirety and the “.co” suffix does nothing to lessen any similarity. Therefore, a substantial part of the disputed domain name is confusingly similar, if not identical, to the Complainant’s trademarks.
Furthermore, where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is considered to be confusingly similar to the mark (see Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615).
The disputed domain name only differs slightly from the Complainant’s trademarks which are distinctive and therefore more likely to cause confusion. The Complainant therefore submits that the Respondent has intentionally set out to confuse Internet users.
Further, the Complainant notes that people looking for the Complainant’s website, ”www.fulltiltpoker.com”, may omit the “m” accidentally and in doing so happen upon the Respondent’s website because of this unintentional typing error. Therefore, the Complainant contends that the disputed domain name is a typo-variant of the Complainant’s official website and only varies by one letter, “m”. This should be given consideration (see Banco radesco S/A v. Paulo Araujo, WIPO Case No. DCO2010-0049).
Finally, members of the public will think that the disputed domain name was registered by the Respondent despite the inclusion of the “.co” suffix.
Therefore, given the nature and intent of the disputed domain name to confuse, it is clearly confusingly similar.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name. Prior to notice of the current dispute, the Respondent had not made any use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
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 the complainant (see, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050).
Also, the term “Full Tilt Poker” did not have any meaning prior to the Complainant’s launch in 2004. Therefore, the only meaning attributable to this term is one associated with the Complainant’s goods and services as distinguished from those of others. Given that the Respondent has not been licensed by the Complainant or authorized in any way to use the Complainant’s marks and that the Respondent is not affiliated with the Complainant, the Respondent cannot make any legitimate use of the disputed domain name.
Relevantly, the disputed domain name is currently redirecting unsuspecting users to the site of the Complainant’s direct competitor via an affiliate link. The Respondent is earning a fee from this activity.
Also, it is clear that the Respondent was aware of the Complainant and its trademarks as the trademarks were registered several years prior to the disputed domain name and the disputed domain name is being used to redirect Internet users to a site that offers products and services that are in competition with those offered by the Complainant.
Therefore, as the Respondent is attempting to trade off the Complainant’s reputation and goodwill, the Respondent does not have any rights or legitimate interests in the disputed domain name.
Further, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. Its use is tarnishing the Complainant’s trademarks and reputation and there is nothing to indicate the Respondent is known by the disputed domain name or a part thereof. The Respondent also does not possess any trademark applications or registrations for the relevant term.
Registered and Used in Bad Faith
The Respondent registered and used the disputed domain name in bad faith.
The Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. The Complainant submits that the Respondent is a competitor within the meaning of the Policy (see Estee Lauder Inc. v. Estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869).
The Respondent’s affiliation and redirection of the website to a direct competitor of the Complainant demonstrates that the Respondent is in direct competition with the Complainant’s business. Disruption is caused by the diversion of consumers from the Complainant to its competitor and this is done for commercial gain as the Respondent profits from successful referrals.
Further, the Respondent’s behavior demonstrates that it has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on the its website or location. Therefore, the Respondent is using the disputed domain name in bad faith.
It is also clear that the Respondent registered the disputed domain name in bad faith because:
the Complainant’s trademarks are well-known and were widely used prior to the disputed domain name being registered,
the term “Full Tilt Poker” does not have a common meaning and is not a generic term. The words are solely related to the Complainant;
the Respondent was aware or should have been aware of the Complainant’s rights in the mark at the time of registration.
Finally, other factors that indicate bad faith on the part of the Respondent include:
the WhoIs database details for the Respondent are partially incorrect;
there is no connection or relationship between the disputed domain name and the Respondent;
there is no Spanish content on the website even though this is the official language of Columbia and the “.co” suffix is the ccTLD denominator for Columbia;
there is no legitimate or logical explanation for registering the disputed domain name other than to trade off the Complainant’s trademarks and goodwill. Relevantly, the Respondent is not based in Columbia;
the Respondent is typosquatting on a domain name that is the official domain name of the Complainant and this is bad faith in and of itself. Here, the Respondent is intentionally attempting to confuse Internet users and is preventing the Complainant from protecting its trademarks.
The Complainant requests that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Procedural Issues
The Respondent did not file a Response. This does not automatically result in a decision in favor of the Complainant (see e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from a respondent’s default. Nonetheless, a complainant must establish all three elements of paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar
The Complainant owns numerous trademark registrations in the United Kingdom and the European Union in FULL TILT POKER.
Further, the Complainant has put forward extensive evidence to suggest that it has unregistered trademark rights in FULL TILT POKER. In order to establish unregistered trademark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. The decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123, is instructive when considering whether “secondary meaning” has been established and sets out the factors to consider such as, inter alia, length and amount of sales under the trademark, nature and extent of advertising and media recognition.
The Panel finds that the Complainant does have trademark rights in FULL TILT POKER.
For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.
As stated above, the Complainant has trademark rights in FULL TILT POKER. The disputed domain name is <fulltiltpoker.co>. As such, the Panel finds that the disputed domain name is clearly confusingly similar to the Complainant’s trademark. The “.co” suffix does not render the disputed domain name sufficiently different from the Complainant’s mark.
Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
Paragraph 4(b) of the Policy provides that a complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. The Respondent must then rebut this presumption. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
Here, the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name (refer to Section 5.A, above). As the Respondent did not file a Response, the Complainant must necessarily succeed on this point.
Importantly, the disputed domain name currently redirects to the website of a direct competitor of the Complainant. Further, the term “Full Tilt Poker” has no common or generic meaning. Thus, it is clear that the Respondent is trading off the Complainant’s trademark rights for its own benefit. As such, it cannot be said that the Respondent has made use of, or demonstrable preparations to use, the disputed domain name, or name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Further, it appears that the Respondent is not commonly known by the disputed domain name and has no trademark or service mark rights in the disputed domain name. The Complainant has not authorized the Respondent to use its trademarks in the disputed domain name.
Therefore, the Complainant has successfully established that the Respondent has no rights or legitimate interests in the disputed domain name and given the Respondent has not filed a Response to rebut the prima facie case, the Panel makes a finding on this element in favor of the Complainant.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.
The Panel does find that the Complainant’s trademarks are sufficiently well-known that the Respondent, most likely, purposefully registered the disputed domain name for the purposes of attracting customers by creating a likelihood of confusion in their minds with the Complainant’s trademarks. That is, “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant and its […] Trademarks” (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).
In light of this, and the fact that the disputed domain name redirects to a website of the Complainant’s direct competitor, there is no doubt that the disputed domain name was registered and subsequently used in bad faith. In the context of the Policy, it is clear that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website or product or service on the website.
It is also likely that this conduct indicates that the Respondent registered the disputed domain name in order to disrupt the business of the Complainant.
Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith and therefore paragraph 4(a)(iii) of the Policy is satisfied.
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 disputed domain name <fulltiltpoker.co> be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: May 31, 2011