WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bwin.party digital entertainment plc, Peerless Media Limited v. Raffi Nahabedian
Case No. D2013-1576
1. The Parties
Complainant is bwin.party digital entertainment plc, Peerless Media Limited of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Raffi Nahabedian of Quebec, Canada.
2. The Domain Names and Registrar
The disputed domain names <worldpokertourmontreal.com>, <wptmontreal.com>, <wptmontreal.net> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2013. On September 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 4, 2013.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 10, 2013. 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 consists of a parent company and an indirectly wholly-owned subsidiary that owns the subject trademarks in this matter. These two entities are referred to herein collectively as Complainant.
Complainant has submitted an internally generated list of trademark registrations that include registration numbers.1 Because copies of certificates of registration or printouts from trademark office databases have not been provided, the Panel undertook to confirm that two of such registrations subsist on the Principal Register of the United States Patent and Trademark Office (USPTO). The Panel considers only these two registrations further herein.2
Complainant is the owner of registration on the Principal Register of the USPTO of the word service mark WPT, registration number 3146384, registration dated September 19, 2006, in International Class (IC) 41, covering “Entertainment services, namely, organizing, conducting, producing and exhibiting poker events rendered live and through the media of television and the Internet, and providing poker news and information via a global computer network”. Complainant is the owner of registration on the Principal Register of the USPTO of the word service mark WORLD POKER TOUR, registration number 3047106, registration dated January 17, 2006, in IC 9, covering “Electrical and scientific apparatus, namely, video discs; digital versatile discs featuring televisions shows featuring poker games, information regarding the game of poker and instructional information regarding card games and the game of poker; and decorative refrigerator magnets.”
Complainant has asserted that it is the owner of various other registrations for WPT and WORLD POKER TOUR, as well as related word and design/device combination marks, in other countries.
Complainant describes itself as “the world’s largest listed online gaming company”, with its securities listed on the London Stock Exchange under the ticker BPTY. Complainant’s total revenue for the years 2011 and 2012 respectively was €816 million and €801.6 million. Complainant asserts that it is licensed to operate in multiple territories, including several countries in Europe, and has 3,100 employees located in offices in various countries. Complainant televises poker tournaments and operates poker tours. It engages in substantial advertising and promotion.
Complainant operates commercial websites at <worldpokertour.com>, <wpt.com>, and other domain name addresses. Complainant has provided a non-exhaustive listing of more than 150 domain names incorporating WPT or WORLD POKER TOUR, including domain names that append geographic names, such as <worldpokertourbucharest.com>.
According to the Registrar’s verification, Respondent is registrant of the disputed domain names. According to that verification, the record of registration of the disputed domain name <worldpokertourmontreal.com> was created on April 9, 2013; the record of registration of the disputed domain name <wptmontreal.com> was created on March 20, 2013, and; the record of registration of the disputed domain name <wptmontreal.net > was created on April 9, 2013. According to the Registrar, the disputed domain names were each registered to Respondent on the record creation dates with the Registrar.
Complainant indicates that it released a schedule of its 2013 poker tour events on February 21, 2013, which included a tournament to be held in Montreal on November 29 to December 5, 2013. This event is scheduled to be televised. Although the specific release date of the tour information made public by Complainant is not shown on the webpage printout it provided as evidence, there are upcoming events listed on that printout as early as July 7, 2013.3
Complainant has furnished printouts of webpages from several poker-related websites listing information concerning Respondent, showing his “total cashes”, rankings and other statistics. Some of those webpages identify Respondent at the same city (Laval, Quebec, Canada) listed in the disputed domain name records of registration. Because Respondent’s name is distinctive, it appears that the individual listed on the poker-related websites is the same person. Respondent is specifically listed on Complainant’s website located at <worldpokertour.com>, which website is identified by the banner WPT, with subheading World Poker Tour.
Complainant transmitted a cease-and-desist and transfer demand dated April 22, 2013 to Respondent by email and Federal Express. Complainant asserts that on May 6, 2013, it received a telephone call from a lawyer representing Respondent who asked whether Complainant would pay USD 5,000 for the disputed domain names. Complainant has provided the identity of the lawyer with address in Laval, Canada. Complainant indicated that it responded that it would pay only Respondent’s costs of registration and any costs of transfer. According to Complainant, the lawyer for Respondent indicated he would discuss with his client and revert the following day, but there was no further contact from Respondent or the lawyer.
There is no indication that Respondent has used the disputed domain names other than in connection with a Registrar’s parking page that states “Learn how you can get this domain” (in the case of <wptmontreal.com and <worldpokertourmontreal.com>), and a generic “my site” webpage (in the case of <wptmontreal.net>).
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant claims rights in the trademarks WPT and WORLD POKER TOUR as evidenced by registration in various national trademark offices, including in the USA and Canada, and that such trademarks have been used in commerce. Complainant asserts that it’s WPT and WORLD POKER TOUR trademarks are well-known based on extensive publicity generated through television broadcasts, its websites, and other media.
Complainant alleges that the disputed domain names are confusingly similar to its trademarks. Complainant contends that the addition of a geographic identifier to its well-known and distinctive trademarks is not sufficient to dispel Internet user confusion, and that Complainant’s own use of its trademarks in connection with geographic identifiers associated with its tour locations strengthens the likelihood of confusion.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent has not registered any trademarks or trade names corresponding to the disputed domain names, and has not been using the trademark terms in some other way that would establish legitimate rights; (2) Complainant has not licensed or authorized Respondent to use its trademarks; (3) the mere registration of the disputed domain names does not establish rights or legitimate interests; (4) Respondent was certainly aware of Complainant’s well-known trademarks when he registered the disputed domain names, and registered them knowing he would not have rights or legitimate interests; (5) Respondent is not making and has not made a legitimate noncommercial or fair use of the disputed domain names, rather they have been parked. By parking the disputed domain names, Respondent may have caused Complainant to lose Internet traffic.
Complainant argues that Respondent registered and is using the disputed domain names in bad faith because: (1) Respondent was fully aware of Complainant’s trademark rights when he registered the disputed domain names with the intent to exploit the value and goodwill associated with Complainant’s marks; (2) Respondent registered the disputed domain names shortly following Complainant’s announcement of its forthcoming tour schedule that included an event in Montreal, and well after Complainant acquired rights in its trademarks; (3) because Respondent understood that Complainant’s tour event in Montreal would be broadcast, it is clear that Respondent’s aim was to take advantage of Complainant’s trademark rights; (4) following receipt of a cease and desist and transfer demand, Respondent’s counsel requested payment in excess of his out-of-pocket expenses in registering the disputed domain names; (5) Respondent has not actively used the disputed domain names in connection with websites (other than parking pages); (6) there is precedent under the Policy that “inaction” by a domain name registrant can constitute bad faith use. Complainant asserts that such circumstances exist in respect to Respondent here.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical address provided in his record of registration. The express courier delivery service engaged by the Center reported that delivery of the Complaint was accepted by Respondent. There is no indication of difficulties in email transmission. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has alleged ownership of rights in the trademarks WPT and WORLD POKER TOUR as evidenced by registration in various national jurisdictions, including the USA and Canada, and has used those trademarks in commerce. The Panel has confirmed registration of the WTP and WORLD POKER TOUR word service marks on the Principal Register of the USPTO (see Factual Background, supra). Complainant has established a presumption of rights in the trademarks WPT and WORLD POKER TOUR, and Respondent has not challenged that presumption. The Panel determines that Complainant has established rights in the trademarks WPT and WORLD POKER TOUR.
The disputed domain names directly incorporate Complainant’s WPT and WORLD POKER TOUR trademarks, adding only the geographic identifier “Montreal”. Complainant’s ordinary business involves operation of poker tour events in various cities, and it uses its trademarks in association with those city names to identify its events. In such circumstances, the addition by Respondent of the geographic identifier “Montreal” to Complainant’s trademarks in the disputed domain names does not distinguish the disputed domain names from those trademarks. Internet users would be likely to assume that the disputed domain names reflect Complainant’s ordinary practice of identifying its tour events with a city name. The Panel determines that the disputed domain names are confusingly similar to Complainant’s trademarks.
The Panel determines that Complainant has established rights in the trademarks WPT and WORLD POKER TOUR, and that the disputed domain names are confusingly similar to its trademarks.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not responded to the Complaint, and has not affirmatively provided any ground on which he might establish rights or legitimate interests in the disputed domain names. Respondent’s sole apparent use of the disputed domain names is in connection with basic parking pages and a generic “my site” webpage, and with the offering of the disputed domain names for sale to Complainant. These uses do not affirmatively establish rights or legitimate interests in the disputed domain names. The Panel does not find any alternative grounds of rights or legitimate interests on the part of Respondent to be facially apparent. Respondent has not rebutted Complainant’s prima facie showing of lack of rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include: “(i) circumstances indicating that [respondent has] registered or [respondent 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 [respondent’s] documented out-of-pocket costs directly related to the domain name”.
The evidence presented by Complainant in this proceeding indicates that Respondent registered the disputed domain names shortly following Complainant’s announcement of its forthcoming tour schedule, which included an event in Montreal. Respondent lists an address in Laval, Canada, and there is substantial evidence that Respondent is an active poker player. The Panel draws the inference that Respondent was aware of Complainant’s trademarks and tour plans when the disputed domain names were registered. Upon contact by Complainant, a lawyer representing Respondent offered to sell and transfer the disputed domain names to Complainant for a price substantially in excess of Respondent’s out-of-pocket costs directly related to the domain names. The Panel considers that Complainant has sufficiently demonstrated circumstances indicating that Respondent registered the disputed domain names for the purposes of selling them to Complainant for valuable consideration in excess of his out-of-pocket expenses directly related to the disputed domain names.
Complainant has made a further argument concerning Respondent’s passive bad faith use of the disputed domain names. In light of Respondent’s offer to sell the disputed domain names to Complainant outlined above, the Panel does not consider it necessary to address the issue of passive bad faith use.
Respondent received the Complaint, and might have responded with an alternative explanation for his conduct, or by refuting the factual claims of Complainant. Respondent failed to do so.
The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
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 names <worldpokertourmontreal.com>, <wptmontreal.com> and <wptmontreal.net> be transferred to Complainant.
Frederick M. Abbott
Date: October 20, 2013
1 The Complaint, at paragraph 12.17, indicates that the list of registrations is set forth as Annex 13. The relevant Annex is in fact attached and labeled as Annex 8.
2 Panel visit to USPTO Trademark Electronic Search System (TESS) database, October 19, 2013.
3 The webpage printouts furnished by Complainant are dated June 28, 2013.