WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pocket Kings Limited v. M Morgan

Case No. D2010-2090

1. The Parties

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

Respondent is M Morgan of Newfoundland, Canada.

2. The Domain Names and Registrar

The disputed domain names <filltiltpoker.net>, <flltiltpoker.net>, <fullitltpoker.com> and <fullyiltpoker.com> (the “Disputed Domain Names”) are registered with eNom, Inc. (“eNom”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010, regarding the Disputed Domain Names as well as the additional domain name <fulltiltpojer.net>. On December 6, 2010, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the Disputed Domain Names. On December 4, 2010, eNom transmitted by e-mail to the Center its verification response identifying “M Morgan” as the registrant of the Disputed Domain Names and providing the contact for the Disputed Domain Names. On the same date, eNom also informed the Center that the registrant of the domain name <fulltiltpojer.net> was URL Venture, Inc of Henderson, Oregon (although eNom noted that the registrant of this domain name had used a privacy service as of the date the Complaint was filed, which at that time identified the registrant as “WhoIsGuard”). The Center sent an e-mail communication to Complainant on December 9, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center also informed Complainant that the Complaint did not properly identify the registrar with which the disputed domain names were registered. Complainant filed an amended Complaint on December 9, 2010, correcting the identity of the Registrar and removing the domain name <fulltiltpojer.net> from the Complaint.

The Center verified that the Complaint and 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 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2011.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 13, 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 states that it “who was previously known as Tiltware LLC was founded in September 2003 and provides marketing and online consulting services to the online poker industry. The company relocated to Ireland in 2006 and changed their name to Pocket Kings Ltd. Full Tilt Poker is a brand developed by the Complainant, who facilitated and licensed its use in 2004.” Complainant further states that the “Full Tilt Poker brand” is “the second largest online poker room and is a respected name amongst the online poker community.” Complainant further states that its main official site “has, on average, over 16,000 players per hour.”

Complainant states that it is the owner of several trademark registrations that contain the words “Full Tilt Poker,” namely United Kingdom (“U.K.”) Reg. Nos. 2465018, 2465022, and E6322127; and Community Trade Mark (“CTM”) Reg. No. E6335327. Complainant has provided annexes providing details of and evidencing its ownership of these trademarks. These trademarks are hereafter referred to as the FULL TILT POKER TRADEMARKS.

Complainant states that it registered the domain names <fulltiltpoker.com> and <fulltiltpoker.net> on August 20, 2002; and the domain name <fulltiltpoker.org> on June 14, 2003.

Complainant states that the Disputed Domain Names were registered on the following dates:

<filltiltpoker.net>, <flltiltpoker.net> and <fullyiltpoker.com>: March 14, 2005

<fullitltpoker.com>: January 13, 2005

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

Each of the Disputed Domain Names is confusingly similar to the FULL TILT POKER Trademarks because three of the Disputed Domain Names (<filltiltpoker.net>, <flltiltpoker.net> and <fullitltpoker.com>) have an “aural pronunciation… confusingly similar to the Complainant’s brand”; all four of the Disputed Domain Names are visually similar to the FULL TILT POKER Trademarks; and the Disputed Domain Names are merely “intentional misspellings of” the FULL TILT POKER Trademarks.

Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “Respondent registered the domain names in 2005[], a year after the Complainant facilitated and licensed the use of their brand name ‘Full Tilt Poker’. The Respondent has no registered trademarks in the term ‘Full Tilt Poker’ and as far as the Complainant is aware, the Complainant is the sole proprietor of trademarks registered with the term ‘Full Tilt Poker’”; “Respondent has not been licensed or given permission by the Complainant to use any of its trademarks, or to incorporate any of those trademarks in a corresponding domain name”; “Respondent is not commonly known by the term ‘Full Tilt Poker’”; “Respondent is using the domain names and the Complainant’s mark to direct internet users to pay-per-click (PPC) web pages that provides links to its competitors as well as to the goods and services of unrelated entities”; and “Respondent is trying to create an affiliation with their brand and is using their trademarks to misleadingly attract internet users to its website.”

The Disputed Domain Names were registered and are being used in bad faith because Respondent registered the domain names in order to prevent the owner of the trademark from reflecting the mark and brand name in corresponding domain names, and that Respondent has engaged in a pattern of such conduct pursuant to paragraph 4 (b)(ii). In addition to the Disputed Domain Names, Complainant contends that Respondent is the registrant of the following domain names that are confusingly similar to well-known brands: <walmrat.com>, <commercebank.com>, <sonyy.com>, <cartoonnetworcla.com>, <experen.com>, and <amazoncharters.com>. Further, Complainant contends that Respondent has lost 20 previous proceedings under the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the FULL TILT POKER Trademarks, and Respondent does not dispute the validity of the FULL TILT POKER Trademarks.

As to whether the Disputed Domain Names are identical or confusingly similar to the FULL TILT POKER Trademarks trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “filltiltpoker”, “flltiltpoker”, “fullitltpoker” and “fullyiltpoker”), as it is well-established that the top-level domain names (i.e., “.net” and “.com”) should be disregarded for this purpose.

This Panel agrees with Complainant’s arguments that each of the Disputed Domain Names is an obvious typographic variation of the FULL TILT POKER Trademarks and that they are visually and/or phonetically similar to the FULL TILT POKER Trademarks. Such “obvious typos” do nothing to eliminate confusing similarity under the Policy. Schering-Plough Corporation, Schering Corporation, Schering Plough Ltd. v. Stementali Quemistas, WIPO Case No. D2009-0841.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that “Respondent registered the domain names in 2005[], a year after the Complainant facilitated and licensed the use of their brand name ‘Full Tilt Poker’. The Respondent has no registered trademarks in the term ‘Full Tilt Poker’ and as far as the Complainant is aware, the Complainant is the sole proprietor of trademarks registered with the term ‘Full Tilt Poker’”; “Respondent has not been licensed or given permission by the Complainant to use any of its trademarks, or to incorporate any of those trademarks in a corresponding domain name”; “Respondent is not commonly known by the term ‘Full Tilt Poker’”; “Respondent is using the domain names and the Complainant’s mark to direct internet users to pay-per-click (PPC) web pages that provides links to its competitors as well as to the goods and services of unrelated entities”; and “Respondent is trying to create an affiliation with their brand and is using their trademarks to misleadingly attract internet users to its website.”

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.

Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant argues that bad faith exists pursuant to paragraphs 4(b)(ii), 4(b)(iii) and 4(b)(iv) of the Policy. The Panel agrees and finds most egregious the pattern of conduct in which Respondent has engaged.¹ Unlike other domain name dispute policies, the UDRP does not require a Panel to find a violation based solely on such a pattern. For example, Nominet’s Dispute Resolution Service (“DRS”) for the “.uk” ccTLD provides: “There shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more DRS cases in the two (2) years before the Complaint was filed.” Nevertheless, the pattern here is clear and Respondent’s actions have been found by previous panels to constitute a pattern of conduct that amounts to bad faith. See, e.g., Charlotte Russe Merchandising, Inc. v. Mike Morgan, NAF Case No. 1301250 (“Because of Respondent’s pattern of registering domain names containing third-party marks, as shown by the prior UDRP proceedings, we conclude that this pattern of use evidences bad faith registration and use of the contested domain name under Policy ¶ 4(b)(ii).”).

Accordingly, the Panel is satisfied that Complainant has proven 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 names <filltiltpoker.net>, <flltiltpoker.net>, <fullitltpoker.com> and <fullyiltpoker.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Dated: January 27, 2011

¹ Although it is not entirely clear whether respondent in all of the 20 decisions under the Policy cited by Complainant are indeed cases in which the Respondent in the instant proceeding was respondent, it is apparent that Respondent has engaged in a pattern of conduct addressed by the Policy.