WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rational Intellectual Holdings Limited v. Avigdor Lobliansaki
Case No. D2013-1591
1. The Parties
The Complainant is Rational Intellectual Holdings Limited of Isle of Man, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented internally.
The Respondent is Avigdor Lobliansaki of British Virgin Islands, Overseas Territory of the United Kingdom, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <pokerstars.info> is 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 10, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2013, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 17, 2013.
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 the Respondent of the Complaint, and the proceedings commenced on September 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2013. The Response was filed with the Center on October 11, 2013.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 24, 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.
On November 4, 2013, the Complainant sent to the Center a Supplemental Filing and attachments, which were forwarded to the Panel.
4. Factual Background
According to the Complainant, it is the holding company for a group of companies that operate online poker websites including “www.pokerstars.com”, launched in 2001, and “www.pokerstars.net”, launched in 2004. The term “PokerStars” is a common element of the Complainant’s company names and websites.
The online poker industry experienced a boom in 2003 following partly on a spectacular win at the World Series of Poker by a person who had qualified at the Complainant’s online poker website. The event received considerable media attention. PokerStars capitalised on the attention by means of advertising, the placement of PokerStars branded clothing worn by World Series of Poker competitors, and in other ways. In 2005 PokerStars was named “Best Poker Operator of the Year” and became the largest online poker website.
The Complainant lists 43 registered trademarks for POKERSTARS either as a word mark or in the form of a logo. Some of the earliest by either date of filing or date of registration are:
POKERSTARS, word, United States Patent and Trademark Office (USPTO), principal register, filed January 5, 2005, registered February 12, 2008, registration number 3381727, classes 9, 41;
POKERSTARS, word, Office for Harmonization in the Internal Market, filed August 5, 2005, registered December 15, 2006, registration number 4582301, classes 9, 35, 41, 42;
POKERSTARS, word, Benelux Office for Intellectual Property, filed November 9, 2005, registered November 21, 2005, registration number 778011, classes 9, 41, 42;
POKERSTARS, word, IP Australia, filed April 24, 2007, registered April 7, 2010, registration number 1172628, classes 9, 28, 41, 42.
According to the Respondent, he has a personal interest in gaming and operates a website that, among other things, provides information about online poker websites and provides a source of education and training for poker players.
The WhoIs record shows the disputed domain name to have been created on February 14, 2004. The WhoIs record dated March 28, 2005, still shows a previous registrant. The WhoIs record dated September 8, 2005, names the present registrant and shows the record to have been updated on June 6, 2005.
5. Parties’ Contentions
The Complainant has produced a list of trademarks held in its name and copies of the certificates of registration.
The Complainant states that its rights in the trademark POKERSTARS derive from its initial entry into the online poker market in 2001 with the website “www.pokerstars.com”. In the following years the Complainant and its trademark became well known through exposure in the media resulting from its hosting of the World Championship of Online Poker, and particularly in 2003 after a player who qualified through “www.pokerstars.com” went on to win USD 2.5 million at the World Series of Poker. Players wearing clothing with the Complainant’s name appeared on ESPN (Entertainment and Sports Programming Network) television internationally in 2003. In 2005 “www.pokerstars.com” was named Best Poker Operator of the Year. The Complainant states that through its activities, including certain tournaments, poker aboard cruise ships, and the production of television programs, it has a substantial reputation worldwide.
The Complainant contends that it had unregistered trademarks rights in POKERSTARS at the time of registration of the disputed domain name, and that the disputed domain name is identical to its trademark word and confusingly similar to its logo.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and has not been authorised to use the Complainant’s trademark.
The Complainant states that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. He is not making a noncommercial or fair use of the disputed domain name. The disputed domain name has been used since 2005 to provide sponsored links to competitors of the Complainant in the field of online gaming for the Respondent’s commercial gain. More recently, since at least as early as 2011, the disputed domain name has continued to provide such links, including a link to the Complainant, together with information about the Poker Superstars Invitational Tournament. The Complainant contends that the Respondent’s website carries information as a pretext for the provision of its commercial links and that it trades on the Complainant’s name and trademark.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant had filed applications for the trademark POKERSTARS and was well known before the Respondent registered the disputed domain name in 2005. The Respondent knew or should have known of the Complainant’s trademark.
The Complainant contends that the Respondent has attempted to attract visitors to his website, to which the disputed domain name resolves, for commercial gain by creating confusion as to the source or endorsement of that website.
The Complainant contends that, notwithstanding the provisions of paragraph 4(b) of the Policy, bad faith may be found where a domain name has been registered that comprises a well-known trademark.
The Complainant has produced a copy of a cease and desist letter sent to the Respondent in May 2012, and states that no reply was received.
The Complainant has cited a number of previous decisions under the Policy that the Panel is invited to consider as having precedent value.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent denies the Complaint. His contentions include the following.
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Complainant’s trademark. The Respondent sets out his detailed understanding of the role of a domain name for the sourcing and description of products or services, and submits that similar domain names or trademarks can co-exist for non-competing purposes. He states that his website targets players who wish to be educated, trained and become stars in gaming, hence the gTLD “.info”, and is in a different market from the Complainant’s website which is for online gaming. The Respondent states that his is a non-profit website.
The Respondent contends that the disputed domain name is not passively held but provides links and information about events and tournaments. The name “PokerStars” is not extraordinary in the context and terminology of the gaming industry and many websites use the words “stars” or “poker”. The corresponding website is operated for the Respondent’s personal interest. It has not been inspired by the Complainant’s website or to gain profit from the Complainant’s identity.
The Respondent further contends in some detail that he does have rights or legitimate interests in the disputed domain name. The Respondent operates independently of, and has no relationship with, the Complainant. He evaluates and recommends other websites that players may wish to try but receives no payment. The Respondent recommends but does not advertise other websites. The Respondent’s activities with the disputed domain name include the conduct of certain tournaments named Poker Superstars Invitational Tournaments, which are intended to attract and play a part in the education of prospective poker stars and superstars.
The Respondent further contends that the disputed domain name has not been registered or used in bad faith. There have been no complaints about it in the past 8 years. The Respondent has been commonly known by the disputed domain name and it was not registered in order to block the Complainant from doing so. There is no proof that visitors to the Respondent’s website will confuse it with the Complainant and it is an overstatement to assert so. The Respondent states that he is respectful member of the gaming industry and that players recognise the difference between his website and the Complainant’s.
The Respondent has cited a number of previous decisions under the Policy that he considers to support his Response.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. The Complainant's communication to the Center of November 4, 2013, which was forwarded to the Panel, was an unsolicited Supplemental Filing. It was not requested, was not required, and is not admitted to this proceeding in accordance with paragraphs 10 and 12 of the Rules.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy is written in the present tense and requires the Complainant to prove that it has, at the present time, rights in a trademark or service mark, and that the disputed domain is confusingly similar or identical to that mark. It is not necessary at this juncture to take into account the Respondent’s submission that similar domain names or trademarks can co-exist for non-competing purposes.
The Complainant has produced ample evidence of its possession of registered trademarks for the word “pokerstars”. The disputed domain name is <pokerstars.info>, of which the gTLD “.info” may in this case be disregarded in the determination of confusing similarity. The Respondent has said, by implication, that the term “pokerstars” is not extraordinary because it comprises the ordinary generic dictionary words “poker” and “stars” that are part of the lexicon of gaming and are used in other domain names. Whilst that may be so, the Respondent’s construction from those words of the single term “pokerstars” inevitably reproduces precisely the Complainant’s registered trademark. The Panel finds that the distinctive component of the disputed domain name, “pokerstars”, is confusingly similar and in fact identical to the Complainant’s trademark POKERSTARS.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has not been licensed or authorised in any way to use the Complainant’s trademark. The Respondent has conceded that he has no relationship with the Complainant.
The Respondent has asserted that he does have rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides for the Respondent to establish such rights or legitimate interests by demonstrating:
“(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 non-commercial 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.”
The above circumstances are illustrative and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The Respondent has stated that his usage of the website, to which the disputed domain name resolves, is for information and education, which, he claims, distinguishes it from the Complainant’s business of online gaming. Irrespective of whether any such distinction may withstand scrutiny, the Respondent’s use of the disputed domain name in connection with an offering or goods or services would require to be bona fide in order to qualify in the terms of paragraph 4(c)(i) of the Policy.
The earliest registration date among the list of POKERSTARS trademarks produced by the Complainant is November 9, 2005, in respect of Benelux registration number 778011. The disputed domain name evidently was acquired and thereby registered by the Respondent on an earlier date, no later than September 8, 2005, and may have been acquired and registered on June 6, 2005.
A trademark need not have been registered, however, for it to be one in which the Complainant has rights, depending upon the facts. The earliest date on which the Complainant filed an application for a POKERSTARS trademark appears to be January 5, 2005, in respect of USPTO trademark registration number 3381727 granted on February 12, 2008. This trademark application was made prior to the registration of the disputed domain name and is at least supportive of the Complainant’s claim to have used the trademark POKERSTARS for some time before obtaining registered trademarks.
The Complainant has explained its history of usage of the unregistered trademark POKERSTARS between its entry into the online gaming scene in late 2001 and the time when it started registering its trademark in various jurisdictions in January 2005. Throughout that period the Complainant operated the website “www.pokerstars.com”. Landmark events for the Complainant in that period include its hosting of the World Championship of Online Poker, and the widely publicised event in 2003 when player Chris Moneymaker won USD 2.5 million at the World Series of Poker after qualifying through the Complainant’s website. The Complainant states that this event brought it some notoriety and has produced in evidence copies of a Wikipedia article on the “poker boom”, a Wikipedia article on the “Moneymaker effect”, and an article about the same event on “www.recentpoker.com”, all of which refer to PokerStars. (Without intention to impugn the integrity of the Complainant, the Panel records its awareness that Wikipedia articles, by their very nature, are not always free from subjective contributions). The Complainant has produced photographs of players wearing PokerStars sponsored clothing at the World Series of Poker in 2003. It is further noted that in 2005 the Complainant received the award by “egaming” for Best Poker Operator of the Year.
The Panel is satisfied by the evidence that, for the purposes of the Policy, the Complainant had substantial rights in an established but unregistered trademark, and had commenced to register its trademark, when the Respondent acquired the disputed domain name on a date in 2005. The Panel finds on the balance of probabilities and having regard to all the evidence that the Complainant had a sufficiently high profile in the field of online poker that the Respondent, at the time of registration of the disputed domain name, could not plausibly have been unaware of the Complainant’s reputation and unregistered trademark in a field closely related to the Respondent’s intended purposes. The Respondent has not anywhere denied prior knowledge of the Complainant’s name or trademark. Accordingly the use of the disputed domain name for the provision of the Respondent’s services is found not to have been bona fide in the terms of paragraph 4(c)(i) of the Policy.
The Panel does not find sufficient evidence that the Respondent, either personally or as a business or organization, has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
For reasons to be expanded upon below in the discussion of paragraph 4(b)(iv) of the Policy, the Panel does not find on balance that the disputed domain name was used for a non-profit purpose. Since the Respondent attracts visitors to his website by reliance on a domain name consisting entirely of the Complainant’s trademark for his own purposes, which are closely related to the Complainant’s business, the Panel finds the use of the disputed domain name not to have been legitimate, non-commercial or fair in the terms of paragraph 4(c)(iii) of the Policy.
The second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The pertinent question presently in terms of bad faith is whether the Respondent’s use of the disputed domain name is commercial. The Respondent says that it is not commercial but reflects his personal interest in online poker, and is a service for the provision of training in poker and information about other websites that host online poker. The Complainant interprets the Respondent’s website as a commercially remunerative link farm.
Evidence of historical content of the relevant website obtained from the Wayback Machine (“www.web.archive.org”) has been produced in evidence. Two records made in January 2006 show the disputed domain name to have resolved to a parking page with sponsored links to, for instance, Real Vegas Online, other online gaming sites, and the WSOP (World Series of Poker) Credit Card, together with a comprehensive table headed Popular Searches. The parking page monetization industry is well understood and it may reasonably be inferred in this case that the parking host and the owner of the disputed domain name stood to receive commercial benefit from the featured links and at least some of those accessible through the Popular Searches by means of the pay-per-click business model.
Evidence in the form of screen shots taken on March 21, 2012, show the website of the disputed domain name no longer parked but in use and portraying a mix of information about a Poker Superstars Invitational Tournament and a number of advertisements, called reviews, with accompanying links. These include for example Doyles Room (maximum $550), with “Download” and “Visit Now” buttons, stated to be for players “... to profit and enjoy the card game...”; and Full Tilt Poker (maximum $600) with a “Play Now” button. By any reasonable interpretation, and in the Panel’s finding on the balance of probabilities, these are pay-per-click links to commercial gaming websites.
The provision of pay-per-click links on a website, whereby the website operator is paid a fee for referrals, can be an entirely legitimate business model. The pay-per-click model is commonly used to defray the costs of a public information website or as a legitimate stand-alone business. The model depends, however, on the attraction of visitors, and cannot be legitimate if visitors are attracted by the appropriation of another’s trademark without permission. The Complainant has said that it has not granted the Respondent permission to use the POKERSTARS trademark and has no connection with the Respondent. It is irrelevant that visitors arriving at the Respondent’s website when seeking the Complainant may soon realise their mistake, or see any disclaimer, because the confusion occurred with their initial association of the disputed domain name with the Complainant. The Panel finds the Respondent to have used the disputed domain name to attract Internet visitors by confusion with the Complainant’s trademark for the purpose of commercial gain, constituting bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.
Having regard to all the evidence, including the nature of the gaming-related links on the Respondent’s website revealed by the January 2006 Wayback Machine records, the Panel finds on the balance of probabilities that the disputed domain name was registered for the bad-faith purpose for which it has been used.
A cease and desist letter dated May 3, 2012, setting out the Complainant’s position, was sent to the Respondent by email and by courier. The letter offered an amicable settlement including an uncommonly generous payment, in the circumstances, and assistance with the process of transfer. The Respondent’s bad faith is found to have been compounded by his failure to reply (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
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, <pokerstars.info>, be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: November 7, 2013