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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bwin.party digital entertainment plc and Partygaming IA Limited v. Domain Admin / Arthur Bujan

Case No. D2014-0056

1. The Parties

The Complainants are bwin.party digital entertainment plc of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Partygaming IA Limited, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Domain Admin of Nobby Beach, Australia / Arthur Bujan of Rutherford, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <njpartypoker.com> is registered with Register4Less, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2014. On January 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2014 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the name of the Respondent and the contact information in the Complaint. The Center sent an email communication to the Complainants on January 23, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on January 24, 2014.

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 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2014. The Respondent, although asking for additional guidance by email on January 28, 2014 and receiving an answer by the Center on January 30, 2014, did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2014.

The Center appointed Mr. Michael A.R. Bernasconi as the sole panelist in this matter on March 3, 2014. 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 March 4, 2014, the Respondent filed a Supplemental Filing asking what he is supposed to do vis-à-vis the Center's Notification of the Panel Appointment. On March 5, 2014, the Center acknowledged receipt of the Respondent's Supplemental Filing. The Panel finds that the Supplemental Filing of the Respondent is of no relevance in these proceedings because all means available to the Respondent were clearly indicated in the Notice Documents as well as the Notification of the Panel Appointment sent to the Respondent.

4. Language of the Proceedings

Paragraph 11(a) of the Rules provides as follows:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Panel has not been provided with the Registration Agreement in force at the point of registration of the disputed domain name, which was August 21, 2006. Instead, the Complainants provided the Panel with a copy of the Registrar's current Registration Agreement, which is held in English. Based on the fact that the Registrar's current Registration Agreement is a 2012 update to an older version of the Registration Agreement, it is to be assumed that also the older version of the Registration Agreement, which was in force at the point of registration of the disputed domain name, was held in English.

Furthermore, the Panel notes that both the Complainants as well as the Respondent are domiciled in English speaking countries.

Therefore, the Panel determines that English shall be the language of the proceeding. Accordingly, the decision will be rendered in English.

5. Factual Background

The Complainants in these proceedings are bwin.party digital entertainment plc and Partygaming IA Limited. The latter is an indirectly wholly owned subsidiary of the former as well as the owner of the Complainants' trademarks. bwin.party digital entertainment plc, the ultimate parent of the bwin.party group, is the world’s largest listed online gaming company and is a company quoted on the London Stock Exchange under the ticker BPTY and is a member of the FTSE250 Index.

bwin.party digital entertainment plc filed applications to register PARTYPOKER as a trademark in various territories worldwide. These trademark registrations are all for goods and/or services in Classes 9, 38, 41 and/or 42. They are all owned by PartyGaming IA. In Australia, the trademark was registered on April 12, 2005. In the Unites States, the trademark was registered on August 16, 2005.

In addition, bwin.party digital entertainment plc contends to own hundreds of domain names corresponding to its PARTY marks, amongst others through an indirectly wholly owned subsidiary, IGM Domain Name Services Limited. These domain names allegedly include the domains <partypoker.com> and <nj.partypoker.com>.

The Respondent is the registered owner of the disputed domain name <njpartypoker.com>. The disputed domain name was registered on August 21, 2006.

6. Parties’ Contentions

A. Complainants

The Complainants argue that the disputed domain name <njpartypoker.com> is identical or confusingly similar to the Complainants' trademark PARTYPOKER because the disputed domain name incorporates the Complainants' famous trademark in its entirety with the addition of a mere prefix (“nj”). The Complainants bring forward that the addition of a geographic descriptor, such as “nj” for New Jersey, does not change the confusing nature of the similarity of the disputed domain name and that the addition of “.com”, a generic Top-Level Domain suffix, is non-distinctive and is without legal significance when assessing the identity or similarity of a domain name with a trademark. Moreover, the Complainants note that the disputed domain name is very similar to the domain names allegedly owned by the Complainants, such as <partypoker.com> and <nj.partypoker.com>.

Furthermore, the Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants argue that since they have not found any registered trademarks or trade names of the Respondent corresponding to the disputed domain name the Respondent may not claim any rights established by common usage. The Complainants further argue that the Respondent is not connected to the disputed domain name either through its name or its business and therefore assume a lack of legitimate interests on the Respondent's behalf. Simultaneously, the Complainants mention that the disputed domain name was registered on August 21, 2006 only and thus subsequent to the vast majority of the Complainants' trademarks, including the Australian trademark (registered on April 12, 2005) and the U.S. trademark (registered on August 16, 2005). The Complainants also mention that the Respondent, due to his knowledge of the poker industry and the fame of Complainants' trademark PARTYPOKER in this industry, was aware of Complainants' trademark rights and that the Respondent currently is not making fair use of the disputed domain name since he has left the disputed domain name inactive, which is misleading to Internet users.

Finally, the Complainants allege that the Respondent registered and used the disputed domain name in bad faith. The Complainants submit that the Respondent registered the disputed domain name fully aware of the Complainants' trademark rights and that he has been using it in bad faith with the intention to exploit the value and goodwill of the mark. The Complainants allege that the disputed domain name, before being held inactive (see above), was used by the Respondent to promote a competing poker site called “topgirlpoker.com”. The Complainants finally note that the Respondent has failed to respond to a cease and desist letter of the Complainants within the timeline stipulated therein, which according to the Complainants is further evidence of the Respondent's bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions. Accordingly, and based on paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate.

7. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainants must prove that:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and that

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainants have proven that they have held trademark rights in the term PARTYPOKER since April 12, 2005 (in Australia) and August 16, 2005 (in the U.S.), respectively. As to what regards the disputed domain name <njpartypoker.com>, the Panel notes that the generic Top-Level Domain suffix “.com” is typically ignored when assessing identity or similarity (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; Crédit Industriel et Commercial S.A. v. Name Privacy, WIPO Case No. D2005-0457; F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694) and that the addition of a geographic descriptor does not change the confusing nature of the similarity of a domain name (see A. Nattermann & Cie GmbH, Aventis Pharma SA v. Bob Smith, WIPO Case No. D2003-0733; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046). Given that the disputed domain name incorporates the Complainants' well-known trademark in its entirety, and given that Internet users would likely think that the disputed domain name is owned by or related to the Complainants, the disputed domain name must be qualified as being confusingly similar to the Complainants’ trademark (see hereto Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292).

The Complainants have further argued that the disputed domain name is very similar to the domain names allegedly owned by the Complainants, such as <partypoker.com>. The Panel notes that the Complainants have failed to prove that IGM Domain Name Services Limited, which is the entity under which the domain name <partypoker.com> was registered, is an indirectly wholly owned subsidiary of the Complainants. However, given that the disputed domain name must already be qualified as being confusingly similar to the Complainants’ trademark (see hereinabove), the Panel considers this lack of proof to be of no detriment to the Complainant’s case under paragraph 4(a)(i) of the Policy.

Consequently, the Panel has no difficulty in finding that the prerequisite of identity or confusing similarity, as provided for by paragraph 4(a)(i) of the Policy, is established.

B. Rights or Legitimate Interests

There is no evidence of any registered trademarks or trade names of the Respondent corresponding to the disputed domain name. Also, there is no evidence that the Respondent was commonly known by the disputed domain name prior to its registration or that, after the registration of the disputed domain name, he has legitimately become known by the disputed domain name for reasons beyond its simple use. Rather, the Respondent registered the disputed domain name after the Complainants had registered their PARTYPOKER trademark in Australia and the U.S. The Complainants have thus provided a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, it does not seem that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, the Respondent seems to have used the disputed domain name firstly to promote a competing poker site called “topgirlpoker.com” and, at a later point in time, to keep the website inactive. Therefore, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name (see Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630). Given that the Respondent has failed to submit a response, which is a fact that may speak for the nonexistence of any right or legitimate interest with respect to the disputed domain name (see Spenco Medical Corporation v. Transure Enterprise Ltd, WIPO Case No. D2009-1765), the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

For the above mentioned reasons, the Panel concludes that the prerequisite of a lack of rights or legitimate interests of Respondent in respect of the domain name, as provided for by paragraph 4(a)(ii) of the Policy, is established.

C. Registered and Used in Bad Faith

The Complainants have proven that their trademark PARTYPOKER was registered well in advance of the disputed domain name. Since the Respondent seems to be knowledgeable of the poker industry and the Complainants' trademark is well-known in this industry, the Panel finds it unlikely that the Respondent was unaware of the Complainants' trademark. Moreover, the Complainants’ trademark is registered in several countries and became well-known in the markets it has entered, also due to the Complainants' extensive advertising and use of its trademark (see Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630). Consequently, the Panel draws the conclusion that the Respondent knew of the Complainants, its services and its trademark prior to and after the registration of the disputed domain name (see Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; The Nasdaq Stock Market, Inc., v. H. Pouran, WIPO Case No. D2002-0770). The Complainants were particularly successful in establishing that the disputed domain name was used by the Respondent in the past to promote a competing poker site called “topgirlpoker.com”. Hence, the Panel is of the view that the Respondent has used the disputed domain name in bad faith. Although being held inactive momentarily, the Panel cannot exclude that the Respondent will use the disputed domain name in the future in bad faith again. Under these circumstances, the Panel believes that the Respondent was - and still is - using the disputed domain name in bad faith.

Consequently, the Panel concludes that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.

8. 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 <njpartypoker.com> be transferred to the Complainants.

Michael A.R. Bernasconi
Sole Panelist
Date: March 13, 2014

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