WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anachusa Ltd. v. Ashantiplc Limited / Ashantiplc Ltd
Case No. D2011-0005
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 Ashantiplc Limited / Ashantiplc Ltd of Hong Kong, SAR of China, represented by John Berryhill, Ph.d., United States of America.
2. The Domain Names and Registrars
The disputed domain names <pokersrategy.com>; <pokerstategy.com>; <pokerstratgy.com>; <pokerstrtegy.com> and <pokrstrategy.com> are registered with Backslap Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2011. On January 4, 2011, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the disputed domain names. On January 4, 2011, Backslap Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 10, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 11, 2011. 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 January 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2011. The Response was filed with the Center on February 3, 2011.
The Center appointed Adam Taylor, Alistair Payne and Tony Willoughby as panelists in this matter on February 25, 2011. The Panel finds that it was properly constituted. Each member of 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.
The Panel notes that, while the due date for the Response was February 2, 2011, it was received by the Center on February 3, 2011 (i.e. according to the Central European Time). The Respondent’s attorney states that the Response was in fact transmitted from California at 10.49pm on February 2, 2011 in the US Pacific Time Zone. In those circumstances, and given the lack of any objection by the Complainant, the Panel is prepared to treat the Response as having been filed by the due date.
The Complainant made an unsolicited supplemental filing on February 17, 2011. On February 18, 2011, the Respondent submitted a response to the supplemental filing, asking that it be considered if the Panel saw fit to admit the Complainant’s filing. On February 28, 2011, the Complainant responded to the Respondent’s submission. The Respondent filed a brief rebuttal on the same day.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Complainant did not attempt to establish any exceptional circumstances justifying its first supplemental filing. It was simply a reply to the Response, in particular the Respondent’s exposure of the Complainant’s apparent lack of prior rights. In its submission, the Complainant ambitiously argued for a form of predictive bad faith involving the alleged targeting of a future owner of the relevant rights. If this contention had to be made at all, it should have been put forward in the Complaint. The Panel is satisfied that, at the time of filing the Complaint, the Complainant was aware of the relevant facts - namely that the disputed domain names predated the Complainant’s use of name - although the Complainant chose to present matters rather differently in its Complaint. (See further below.)
Accordingly, the Panel declines to admit either the Complainant’s first supplemental filing or any of the three subsequent filings (which all flowed from the first one) except for the pre-action correspondence exhibited to the Respondent’s first supplemental filing. This is part of the factual backdrop and should have been included with the Complaint.
The Panel can say with confidence, however, that even had they been admitted the Complainant’s supplemental submissions would have made no difference to the outcome of this case.
In the view of the Panel it is unhelpful for parties to simply fire off supplemental submissions without any attempt to justify them – as the Complainant has done here. This practice can result in the addition of unnecessary complication and cost to what is intended to be a relatively quick and inexpensive procedure.
4. Factual Background
The Complainant and its subsidiaries operate a business at the website “www.pokerstrategy.com” whereby users can learn to play poker at no charge. The Complainant generates revenue by means of advertising partnerships with poker-playing websites.
The Complainant owns the following registered trade marks:
German trade mark 30608484 for POKERSTRATEGY with a filing date of February 9, 2006, in classes 9, 28, 35, 36, 41 and 42.
German trade mark 30608485 POKERSTRATEGY.DE (figurative) with a filing date of February 9, 2006, in classes 9, 28, 35, 38, 41 and 42
United States trade mark 3297648 for POKERSTRATEGY (figurative) in classes 38 and 41 with a filing date of April 26, 2006, claiming a first use in commerce on January 5, 2006 and carrying a disclaimer that no claim is made to the exclusive right to use poker strategy apart from the mark as shown.
Community Trade Mark 8659864 for POKERSTRATEGY.COM THE PROFESSIONAL POKER SCHOOL (figurative) with a filing date of November 3, 2009, in classes 9, 28, 35, 36, 38, 41 and 42.
International Registration No. 1043363 for POKERSTRATEGY.COM THE PROFESSIONAL POKER SCHOOL (figurative) in classes 9, 28, 35, 36, 38, 41 and 42, claiming the priority of Community Trade Mark 8659864 and designating Australia, Belarus, Switzerland, China, Croatia, Iceland, Japan, Republic of Korea, Morocco, Republic of Moldova, Macedonia, Norway, Serbia, Russian Federation, Singapore, Turkey, Ukraine, United States of America.
Israel national trademarks Nos. 229299 (class 9), 229300 (class 28), 229302 (class 35), 229303 (class 36), 229304 (class 38), 229305 (class 41), 229306 (class 42), all for POKERSTRATEGY.COM (figurative) claiming the priority of Community Trade Mark dated November 3, 2009.
Israel national trademarks Nos. 229523 (class 42), 229524 (class 41), 229525 (class 38), 229526 (class 36), 229527 (class 35), 229528 (class 28), 229529 (class 9), all for POKERSTRATEGY claiming the priority of Community Trade Mark dated November 3, 2009.
Taiwanese trade marks No. 99035147 for POKERSTRATEGY and No. 99035152 for POKERSTRATEGY.COM THE PROFESSIONAL POKER SCHOOL (figurative) both with a filing date of July 21, 2010, in classes 9, 28, 35, 36, 38, 41 and 42.
The Complainant also owns the following pending trade mark applications (or at least they appear from the documents supplied by the Complainant to be still pending applications):
Community Trade Mark application No. 8659781 for POKERSTRATEGY with a filing date of November 3, 2009, in classes 9, 28, 35, 36, 38, 41 and 42.
Canadian trade mark application No. 1,478,669 for POKERSTRATEGY claiming the priority of Community Trade Mark application No. 8659781 dated November 3, 2009 and asserting first use in Canada since May 2007.
Canadian trade mark application No. 1,477,438 for POKERSTRATEGY.COM THE PROFESSIONAL POKER SCHOOL (figurative), claiming the priority of Community Trade Mark No. 8659864 dated November 3, 2009.
Hong Kong, SAR of China, applications No. 301667539 for POKERSTRATEGY and No. 301667548 for POKERSTRATEGY.COM THE PROFESSIONAL POKER SCHOOL (figurative) both with a filing date of July 19, 2010.
The Respondent registered the disputed domain names on the following dates:
<pokrstrategy.com>: November 28, 2003
<pokersrategy.com>: January 21, 2004
<pokerstategy.com>: June 6, 2005
<pokerstrtegy.com>: February 24, 2004
<pokerstratgy.com>: January 6, 2004
On January 18, 2010, and February 13, 2010, the Complainant’s representatives emailed the Respondent claiming that it lacked rights in <pokrstrategy.com> and requiring transfer. On August 3, 2010, a domain name agent wrote to the Respondent enquiring about purchase of the disputed domain names. The Respondent’s attorney replied August 3, 2010, referring to the previous communications from the Complainant and warning it to not to “play games with a generic phrase”. Amongst other things, the attorney referred to the Complainant’s “post-dated German trademark registration and other ineffective pieces of paper”.
As at November 29, 2010, each of the domain names was being used for a parking page with sponsored links to poker playing websites.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant’s marks have been and are being intensively used by the Complainant and its subsidiaries, including Swerford Holdings Ltd, a Gibraltar company. The latter company owns the domain name <pokerstrategy.com> under which it has been operating a website for many years.
This site is a tool whereby users can learn to play poker. It includes articles, videos, coaching sessions and discussions. The teaching material is available in 18 different languages and is endorsed by a team of over 500 experienced coaches, authors, moderators and customer representatives.
The Complainant offers its services for free because it has advertising partnerships with many "poker rooms" where users can play poker online.
The domain name <pokerstrategy.com> was created on September 9, 2002 and has been used since.
The disputed domain names are visually and phonetically similar to the Complainant's trademark POKERSTRATEGY. It is irrelevant that in each case one letter is missing as such slight deviations can be disregarded. The public does not pay attention to slight omissions in the middle of a word. The slight differences in spelling do not stop the disputed domain names being confusingly similar to the Complainant's trade marks and domain name <pokerstrategy.com> .
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain names. According to research by the Complainant, there is no evidence that the Respondent possesses any rights in the terms "pokrstrategy", " pokersrategy", "pokerstategy", "pokerstrtegy" and "pokerstratgy" or that it has ever used the
disputed domain names in connection with a bona fide offering of goods or services.
Registered and Used in Bad Faith
The domain names have been registered and used in bad faith by the Respondent.
The Respondent is using a privacy service to conceal its identity. Although the use of such a privacy service does not in itself constitute bad faith, the lack of a cogent justification for it can strengthen the overall impression of bad faith.
The Respondent has registered the disputed domain names for the purpose of disrupting the business of a competitor in accordance with paragraph 4(b)(iii) of the Policy. This is an example of the practice of "typo-piracy" whereby bad faith operators deliberately misspell a domain name trade mark in the hope of luring search engines to their site in conjunction with searches for the trade mark owner's website. The omission of one letter in each of the disputed domains deliberately seeks to disrupt the Complainant's business.
The Respondent 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 a product on its website in accordance with paragraph 4(b)(iv) of the Policy. The Respondent’s sites contain links to important poker rooms (such as FullTiltPoker, 888Poker, PartyPoker) , as does the Complainant’s website. Also, the Respondent offers bonuses to attract users, thereby imitating the business model of the Complainant, which offers starting capital of $ 50.
Consequently, the Respondent's activities interfere with the Complainant's business: Internet users are likely to be confused and deceived into mistakenly believing that Respondent's services are offered, authorized, licensed, or sponsored by Complainant or are otherwise connected or affiliated with Complainant. This also clearly constitutes bad faith.
The Complainant assumes that the Respondent has acquired the disputed domain names well after the Complainant's trade marks have been applied for.
Irrespective of the foregoing, it must be acknowledged that the Respondent registered the disputed domain names fully conscious of the business it could generate from being mistakenly affiliated with the Complainant as the Complainant's domain name <pokerstrategy.com> had already been registered in 2002 so that the Respondent had or could have had full knowledge of the fact that the Complainant possesses, would apply for or acquire trade marks in the term "pokerstrategy" and use the term in the course of trade.
This dispute concerns several domain names acquired by Respondent well before any trade or service mark right of the Complainant. The Complaint fails to address when it commenced operations, and in failing to address the obvious fact that the domain names were all registered in a period between 2003 and 2005. The Respondent is the senior party here with respect to use of the descriptive term “Poker Strategy”, and spelling variants thereof in the form of any domain name whatsoever.
The term “poker strategy” at issue is not exclusive to the Complainant and has been associated by the Respondent with subject matter suggested by its constituent terms since well prior to the Complainant’s claimed rights.
These facts are glaringly obvious and determinative of the outcome.
Identical or Confusingly Similar
The Complainant begins its narrative with several documents filed in Germany in February 2006. The earliest hint of any mere allegation of use by the Complainant, let alone possession of an issued registration, is in its United States trade mark No. 3297648. The first observation, apart from the fact that it was filed years after registration of the disputed domain names, and does not even claim to have been used as a mark by the Complainant until long after registration and use of the disputed domain names by the Respondent, is that it consists of a compound mark and bears the prominent disclaimer that no claim is made as to the exclusive right to use “poker strategy” except as shown.
It may well be that in non-English speaking jurisdictions the relevant authorities were unaware that the term “Poker Strategy” was an unregistrable descriptive term referring, flatly, to poker strategy, but the United States Trademark Office had no such language difficulty.
The non-US registrations also post-date, by an even longer stretch of time, the Respondent’s registration and use of the disputed domain names.
This Complainant has not conducted any other activity prior to January 2006. The Complainant did not own the domain name <pokerstrategy.com> until January 2006, having purchased it from another client of the Respondent’s attorney at that time. A DomainTools WHOIS history for <pokerstrategy.com> as of December 2005 shows that, at that time, it was owned by Netgears LLC, which is in the business of monetization of generic and descriptive domain names. That was, in fact, prior to the Complainant’s purchase of the <pokerstrategy.com> domain name, precisely the use to which the domain name was being put.
The Complainant now wants to turn back time to 2003 in order to collect what have been registered and used for seven to eight years now as advertising directory sites relating to poker. That use is the same purpose to which the Complainant’s domain name <pokerstrategy.com> was being put during the time the disputed domain names were registered and used by the Respondent. The Respondent thus submits that the Complainant has not demonstrated ownership of a chronologically relevant trade or service mark right.
Rights or Legitimate Interests
Legitimate rights or interests in the domain name are not limited to trade or service mark rights, but also extend to use of the domain name for legitimate purposes, such as the descriptive use of ordinary terms. Here, the two words “poker strategy” are commonly used by a variety of entities, of which the Respondent is a senior one to the Complainant, in connection with playing the game of poker.
The Respondent has used the disputed domain names, since well prior to this dispute, to provide paid advertising links to subject matter relating to poker. That is the logical use of the disputed domain names. It has been established in many cases that it is appropriate to use typographical variants of a descriptive term – and commencing and continuing long before the Complainant’s use – for such a purpose. See e.g. Dial-A-Mattress Operating Corp. v Ultimate Search, WIPO Case No. D2001-0764 (matress.com) and Tokheim Sofitam Applications S.A. v. Name Administration Inc. (BVI), WIPO Case No. D2007-1530 (satam.com).
The Respondent has been using these domain names for the purpose stated since as early as 2003. Until the Complainant purchased <pokerstrategy.com> in 2006, the domain name <pokerstrategy.com> was itself being used for the same purpose. The Complainant’s junior activities relative to those of the Respondent do not change the legitimacy of what the Respondent has been doing since prior to the Complainant’s acquisition of its domain name, and which the Respondent has simply continued to do.
UDRP Panels have repeatedly found that the use of common words and phrases utilized as domain names to advertise relevant subject matter is legitimate.
The Respondent freely admits that the target term here “poker strategy” is misspelled. The reason is that, at the time all of the domain names were registered, another “domainer” was monetizing <pokerstrategy.com>.
Registered and Used in Bad Faith
The “bad faith” criterion is an element of specific intent directed toward the Complainant, and arising from rights known by Respondent to belong to the Complainant at the time the domain name was registered. Here, willful intent to exploit a known mark is chronologically impossible.
The Complainant admits that the disputed domain names were registered and acquired by the Respondent prior to the first demonstrated trade or service mark right owned by the Respondent. The chronological defect here is so common, that the Center includes this issue among its frequently-asked questions.
The Complaint itself is entirely misconceived. While the Policy refers to registration and use in bad faith, the Complaint is constructed to ignore the entire issue of all of the disputed domain names having been registered and used since long prior to any of the Complainant’s trademark claims, and indeed long prior to Complainant’s purchase of the domain name <pokerstrategy.com> from Netgears LLC in early 2006.
The point of this species of proceeding can only be the advice of counsel that, although there is no substantive merit to the claim, the speed with which the Policy operates and the variable degree of attention that a panelist may apply to the facts, renders it possible to catch a Respondent unawares and to essentially “sneak one by” with a definite probability of obtaining a domain name in circumstances where it is not warranted.
Here, the Complainant has taken the unusual approach of simply “wishing the facts away” by stating that it “assumes that Respondent has acquired the disputed domains well after the Complainant’s trademarks have been applied for.” This statement is false and is readily and demonstrably false, and was explained to the Complainant’s agents prior to this dispute, upon their attempt to acquire the disputed domain names on behalf of the Complainant. A printout of the WHOIS data for <pokerstategy.com> as of the stated “Cache Date” of November 6, 2005 clearly demonstrates that the Respondent had been the identified registrant thereof well prior to the Complainant’s later purchase of the domain name <pokerstrategy.com>.
The Respondent has registered and used the disputed domain names since well prior to the Complainant’s purchase of <pokerstrategy.com> and of course long prior to any use or registration of any mark in any jurisdiction by the Complainant. The Complainant’s later activities cannot render the Respondent’s longstanding and senior registration and use of the disputed domain names to be bad faith registration and use. The Respondent would not have believed that any party offering information about poker strategy would be able to later claim a trade or service mark right in the phrase “poker strategy” but this still cannot change the fact that the Respondent was using the disputed domain names for the indicated purpose well prior to the Complainant’s alleged use of <pokerstrategy.com>, and the Complainant cannot claim “retroactive trademark rights”.
Bad faith involves a consideration of the actor’s intent and purpose, and cannot be determined, as here, by reference to acts committed entirely by others, while the Respondent’s activities have remained unchanged since original registration of the disputed domain names.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established trade mark rights in the name “pokerstrategy” arising from its German trade mark No. 30608484 for that term.
The disputed domain names are confusingly similar to the Complainant’s mark. Aside from the domain suffix, they differ only by omitting a single letter from the term “pokerstrategy”. The disputed domain names remain virtually identical to the mark.
The Complainant has therefore established the first element of the Policy.
B. Rights or Legitimate Interests
In view of its finding on bad faith, it is not necessary for the Panel to consider the issue of rights or legitimate interests.
C. Registered and Used in Bad Faith
The critical issue in this case is to determine whether the earliest date of any registration or use of the mark relied upon by the Complainant occurred after registration of the disputed domain names (between November 28, 2003, and June 6, 2005).
The earliest application date for the Complainant’s various trade marks is February 9, 2006. The earliest “first use” date shown in the Complainant’s trade mark documents is January 5, 2006.
The Complainant states that it “assumes” that the Respondent has acquired the disputed domain names well after the Complainant's trade marks have been applied for. It appears that, by this, the Complainant is implying that the Respondent was not the original registrant but that it acquired the disputed domain names at some later point. But the Complainant provides no evidence to support this assertion. The Panel has no reason to doubt the Respondent’s statement that it is the original registrant of the disputed domain names.
In any case, the Respondent has submitted an archive WhoIs printout showing that one of the disputed domain names <pokerstategy.com> was owned by the Respondent as of November 6, 2005, i.e. on a date before the first trade mark application by the Complainant.
The only reference in the Complaint to any potentially relevant activity by the Complainant predating the disputed domain names is the claim that the Respondent registered the disputed domain names fully conscious of the business it could generate from being mistakenly affiliated with the Complainant, because the Complainant's own domain name <pokerstrategy.com> had already been registered in 2002. Therefore, argues the Complainant, the Respondent had or could have had full knowledge of the fact that the Complainant possesses or would apply for or acquire trade marks in the term "pokerstrategy" and use the term in the course of trade.
However, the Respondent has produced an archive WhoIs printout showing that, as of December 17, 2005, the domain name <pokerstrategy.com> was owned by NetGears LLC and not by the Complainant. Not only that, but the Respondent’s attorney has stated that he himself acted for NetGears LLC in the sale of <pokerstrategy.com> to the Complainant in January 2006 i.e. after registration of the disputed domain names.
The Complainant has therefore failed to establish any registration or use of its mark before the Respondent acquired the disputed domain names.
Paragraph 3.1 of the WIPO Overview on WIPO’s website states the consensus view as follows: “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.” This approach has been taken in countless UDRP cases.
While there is a caveat in paragraph 3.1, covering situations where a respondent registers a domain name to take advantage of potential complainant rights, this cannot apply here as the proviso still requires at least some sort of knowledge by the Respondent of the Complainant’s name, whereas all the evidence in this case points towards the Complainant having started to use the name only after the Respondent acquired all of the disputed domain names.
The Complainant has therefore failed to establish registration and use in bad faith.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that “if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking …. the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. ”Reverse Domain Name Hijacking (“RDNH”) is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
A number of UDRP cases have considered the principles of RDNH. For example, the panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that, whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.
In Prime Pictures LLC v. DigiMedia.com L.P., WIPO Case No. D2010-1877, the panel made a finding of RDNH in circumstances where, as here, the complaint failed because the relevant rights post-dated the domain name in issue. The panel considered it unlikely that the deficiency was overlooked by the complainant’s counsel and, more probably, that it was deliberately ignored in framing the Complaint.
In this case, the Panel is satisfied that the Complainant’s representatives were well aware of the importance of the chronological issue - the Respondent’s attorney had alluded to it in pre-action correspondence and indeed the Complaint specifically referred to the question of whether the disputed domain names predated the trade marks.
Further, the Panel considers that the Complainant attempted to mislead the Panel on this point. The Complaint claims that the Respondent registered the disputed domain names “fully conscious” of the business it could generate from confusion with the Complainant as its own domain name <pokerstrategy.com> had “already” been registered in 2002. And, in the section “Identical or Confusingly Similar”, the Complainant states that the domain name was created in 2002 “and has been used since”. These statements were clearly designed to convey the impression that the Complainant itself had been using <pokerstrategy.com> for a website from 2002, before registration of the disputed domain names. Whereas the Complainant could hardly have been unaware of the fact that it had only acquired <pokerstrategy.com> in 2006.
The Panel therefore finds that there has been RDNH in this case.
For all the foregoing reasons, the Complaint is denied and the Panel declares that it was brought in bad faith and constitutes an abuse of this proceeding.
Dated: March 8, 2011