WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars Interactive Entertainment, LLC v. Registration Private, DomainsByProxy.com / Nan Zhu

Case No. D2017-2393

1. The Parties

The Complainant is Caesars Interactive Entertainment, LLC of Las Vegas, Nevada, United States of America (“USA” or “US”), represented by Greenberg Traurig, LLP, USA.

The Respondent is Registration Private, DomainsByProxy.com of Scottsdale, Arizona, USA / Nan Zhu of Nanjing, Jiangsu, China, self- represented.

2. The Domain Name and Registrar

The disputed domain name <wsopchina.com> 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 December 5, 2017. On December 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2017, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 8, 2017 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 amended Complaint on December 13, 2017.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2018. The Response was filed with the Center on December 25, 2017. On January 2, 2018, the Complainant submitted a supplemental filing, the status of which is considered below.

The Center appointed Antony Gold as the sole panelist in this matter on January 5, 2018. 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

The Complainant is the owner and operator of a poker tournament called the World Series of Poker. The tournament is also known by its acronym, WSOP. It was founded in 1970 and is large and well known; in 2017, almost 120,000 people from 111 countries participated in the World Series of Poker. In addition, the Complainant operates a series of other poker tournaments as well as a website at “www.wsop.com”, which provides information about its services, schedules for events and opportunities to buy branded merchandise.

The Complainant has also produced an app through which its services can be accessed. This is distributed by a licensee of the Complainant and has been extensively downloaded.

The Complainant has registered numerous trade marks for both WORLD SERIES OF POKER and WSOP in many jurisdictions. Its registrations include the following;

- US trade mark, registration number 3,499,073 for WSOP, registered on September 9, 2008 for goods in International class 28;

- US trade mark, registration number 3,499,087, for WSOP, registered on September 9, 2008 for services in International class 41;

- US trade mark, registration number 3,794,994, for WSOP, registered on May 25, 2010 for goods in International classes 16 and 28;

- US trade mark number 1025395 for WORLD SERIES OF POKER, registered on November 18, 1975 for services in International class 41;

- Chinese trade mark number 4552327 for WSOP, registered on July 10, 2008 for services in International class 41.

The disputed domain name <wsopchina.com> was registered by the Respondent on August 28, 2010. The website to which it points contains content which is primarily in Chinese characters. However, there is a prominent banner at the top of the home page comprising the word “WSOPChina.com”. The stylisation of “WSOP” is either very similar or identical to the logo used by the Complainant on its website. The web pages feature links to a variety of third party poker and other gambling-related services, many of which appear to offer online poker play facilities.

On September 27, 2017, the Complainant’s representatives sent a cease-and-desist letter to the Respondent seeking the transfer to the Complainant of the disputed domain name. The Respondent did not reply.

5. Parties’ Contentions

A. Complainant

In support of its assertion that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights, the Complainant has provided information concerning its many registered trade marks for WSOP and WORLD SERIES OF POKER, including the trade marks detailed above. The Complainant says that it has used the mark WORLD SERIES OF POKER to identify its tournament and related goods and services since 1970 and that the mark WSOP has been in use since 2003. The Complainant says that the general public often uses WSOP as an abbreviation for “World Series of Poker”, and, as a result, its WSOP trade mark is widely known and is closely identified with both the World Series of Poker and the Complainant.

The Complainant says that, to its knowledge, no other person or entity anywhere in the world has the legal right to use WSOP to identify poker-related goods or services without a licence from it. In this respect, the Complainant draws particular attention to its Chinese-registered trade marks for WSOP because this is the country in which the personal Respondent is located and to which the Respondent’s website is primarily directed.

The Complainant says that the disputed domain name is confusingly similar to its WSOP trade marks because it incorporates its WSOP trade mark in full and simply adds “China” as a geographical term, followed by the generic Top-Level Domain (“gTLD”) “.com”. It says that the addition of a generic term to its trade mark is insufficient to produce a domain name which is distinct from that mark.

The Complainant further asserts that the disputed domain name is also confusingly similar to its WORLD SERIES OF POKER trade marks, because the use of an acronym in a domain name gives rise to confusing similarity where the acronym is a “distinctive element of the complainant’s mark” and is entirely reproduced within the domain name. The Complainant points to previous panel decisions in support of this contention, including Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, WIPO Case No. D2004-0520.

The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name and registered the disputed domain name without its consent, or authorisation. The Respondent is not commonly known by the disputed domain name nor by the designation “wsop” nor as “World Series of Poker”. Additionally, the Complainant alleges that, so far as it is aware, the Respondent does not have any pending trade mark applications or registrations for any mark incorporating “wsop” or “World Series of Poker”. It further says that the Respondent has not used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Specifically, the Complainant says that the website resolved to by the disputed domain name is being used to divert Internet users to a commercial website advertising goods and services belonging to competitors of the Complainant. It draws attention to previous panel decisions, including Ticketmaster Corp. v. DiscoverNet, Inc., WIPO Case No. D2001-0252, where the panel found that no rights, or legitimate interests arose where the respondent obtained commercial gain from intentionally and misleadingly diverting users away from the complainant to a competing website. The Respondent is not making a noncommercial or fair use of the disputed domain name, not least because, the Complainant says, the Respondent’s registration of the disputed domain name is for the purpose of perpetuating a fraud on the public.

Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. It says that, as at the date of registration of the disputed domain name, the Respondent plainly had constructive and actual knowledge of the Complainant and its WSOP and WORLD SERIES OF POKER trade marks and indeed, it was this awareness that prompted the registration of the disputed domain name. It says that registration of a domain name, which incorporates its famous WSOP trade mark is, in itself, sufficient to create an inference of bad faith.

The Complainant says that the Respondent has used the disputed domain name in order to divert Internet traffic away from the Complainant and to its own website, which offers goods and services which compete with those of the Complainant. The Complainant refers to Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100, in which the panel found bad faith where the respondent used the domain name to resolve to a website at which similar services were offered on the basis that this was likely to confuse Internet users into believing that the complainant was the source of, or was sponsoring, the services offered at the website.

The Complainant relies on one of the non-exhaustive circumstances in which bad faith registration and use will be found, as set out at paragraph 4(b)(iv) of the Policy. This provides that one of the circumstances which will support a finding of bad faith registration and use of a domain name is if a 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 its website or of a product or service on the website. This, the Complainant contends, is exactly what the Respondent has done.

The Complainant asserts in addition that the disputed domain name was registered in for the purpose of disrupting the business of a competitor and that it should be considered a bad faith registration on that basis also. Lastly, the Complainant claims that the failure of the Respondent to answer its cease-and-desist letter, and its use of a privacy service to shield its identity, are both suggestive of bad faith.

B. Respondent

The Respondent says that, whilst he recognises the Complainant’s ownership of its WSOP and WORLD SERIES OF POKER trade marks, the disputed domain name should not be considered identical or similar to them. He says that the Complainant has deliberately and misleadingly capitalised and styled the disputed domain name as <WSOPChina.com> so that it appears to be identical to the Complainant’s WSOP trade marks.

The Respondent says that, when he registered the disputed domain name on August 28, 2010, he was not aware of the Complainant’s WSOP trade marks. In fact, the Respondent says, he intended to register the domain name <opchina.com> as an abbreviation for “online poker china” but found that this domain name was unavailable. Accordingly, he was forced to add two letters to his preferred choice of domain name. He says that, the letters “ws” are a transliteration of the first letters of the Chinese phrase for “online”. Consequently, the disputed domain name is intended to mean “online online poker china” and has no connection with the Complainant’s trade marks. It is, the Respondent says, purely coincidental, that the first four letters of the disputed domain name correspond with the abbreviation of “World Series of Poker”.

The Respondent says that, prior to registration of the disputed domain name, the combination of “wsop” and “china” had not previously been used. The Respondent says, that according to a press release on the Complainant’s website, it was not until July 2017 that the Complainant made arrangements with a third party, to stage the first ever World Series of Poker tournament in China, scheduled for December 2017 and that this was the first time that the combination of “wsop” and “china” has been used in relation to the Complainant’s business. The Respondent says that the combination of “wsopchina” was both invented and first used by him in 2010 and that the Complainant’s newly launched joint venture, has no legal rights to claim the disputed domain name, as it was registered seven years before the Complainant’s first tournament in China.

The Respondent says that “wsopchina” has never been registered as a trade mark in any jurisdiction. The Respondent concedes that there may be conflicts between the disputed domain name and the operators of the World Series of Poker event in China. However, he says that according to the official website of WSOP China, the owner of this event is the third party and there is no legal or copyright information of the Complainant on that website. Accordingly, the Respondent claims, that the Complainant is not the proper party to bring this Complaint.

The Respondent says he did not register and is not using the disputed domain name in bad faith. The Respondent denies any awareness of the Complainant’s WSOP trade mark at the time of registration of the disputed domain name. He says that the Complainant’s suggestion that he was aware of it or its trade marks at the time of registration, is wrong.

The Respondent says that his use of a privacy service to hide his identity should not imply bad faith and instead evidences his intention not to sell, rent or transfer the disputed domain name. The Respondent says that his only reason for registering and using the disputed domain name is to “promote online poker sports in China”. The Respondent states that neither the Complainant’s World Series of Poker online poker service, nor its mobile app is available in the Chinese market. Conversely, the Respondent says, the poker services linked to on the website to which the disputed domain name points are not available in the US market. Consequently, the links to other poker services on the website resolved to by the disputed domain name should not be considered as linking to the Complainant’s competitors. In fact, the Respondent says, the “888 poker” brand listed on his website is a partner of the Complainant.

The Respondent says that he has not intentionally attempted to attract for commercial gain, Internet users to the website resolved to by the disputed domain name, nor has he created any likelihood of confusion with the Complainant’s WSOP trade mark. On the contrary, the Respondent claims, after being alerted to the potential for confusion, he published a disclaimer on the website resolved to by the disputed domain name, disavowing any connection to the Complainant, its trade marks, goods or services.

Finally, the Respondent says his failure to respond to the cease-and-desist letter from the Complainant was not due to any bad faith on his part, but because the email was filtered into a spam folder.

6. Supplemental filing

The Panel will first address the supplemental filing from the Complainant.

The Rules and Supplemental Rules provide for service of a complaint and a response. There is no explicit provision for additional filings save in respect of further statements or documents which are provided in response to a request from the Panel itself (paragraph 12 of the Rules). Under paragraph 10 of the Rules, the Panel “shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”. It must “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”. Although it must also “ensure that the administrative proceeding takes place with due expedition”.

The decision whether to accept supplemental filings remains at the discretion of the panel, but is exercised only sparingly. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6 and, in particular, the commentary that “Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel” and the comment that “panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance)”.

It is common ground between the Parties that the Respondent did not answer the cease-and-desist letter sent by the Complainant’s advisors in September 2017. As there have been no other communications between the Parties, the first time the Complainant was made aware of the basis of the Respondent’s case has been on receipt of its response to the Complaint. Accordingly, to the limited extent that the supplemental filing addresses responds to assertions of fact made by the Respondent of which the Complainant could not reasonably have been aware as at the time of filing its Complaint, or to points of argument which the Complainant could not have anticipated, the Panel will give consideration to it.

The material submissions in the supplemental filing which fall into these categories can be summarised as follows;

- the Respondent’s explanation as to why it registered the disputed domain name is not credible and is, in any event, irrelevant;

- the Complainant is the proper party to bring the Complaint, notwithstanding the Respondent’s assertions as to the basis on which the World Series of Poker event is to be held in China;

- the Respondent has had, at least, constructive notice of the Complainant’s rights;

- the assertions by the Respondent as to the form of disclaimer on his website demonstrates his bad faith;

- since the filing of the Complaint, the Complainant has established that the disputed domain name is for sale for an amount in excess of the likely cost of registration.

Most of the points raised above are essentially points of argument of which the Panel takes note. So far as the disclaimer is concerned, the Respondent says this was posted on its website “after being told of the potential confusion”. The Complainant says that this is untrue and, in support of its assertion, it provides a screen print of the Respondent’s website which predates the date of the cease-and-desist letter and shows the disclaimer to be present. The Complainant says that the existence of the disclaimer points to an awareness by the Respondent of the Complainant and its trade mark rights in its WSOP trade mark.

In relation to the final submission in the supplemental filing, the Complainant has produced a screen print from a well-known domain name sales platform, dated December 27, 2017 which shows that the disputed domain name was, at that time, being offered for sale for USD 10,000.

7. Discussion and Findings

Paragraph 4(a) of the Policy provides that, for that the Complainant proves each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the 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

A. Identical or Confusingly Similar

The Complainant has established that it has trade mark rights in WSOP; see the details of the WSOP trade marks owned by the Complainant set out above.

In considering whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks, it is well established that the gTLD, (“.com”, in this instance) is disregarded as it is a technical requirement of registration. The disputed domain name accordingly comprises the Complainant’s WSOP trade mark coupled with the geographical term “China”. Subject to consideration below of the Respondent’s assertions, the addition of a geographical term does not serve to prevent the disputed domain name from being confusingly similar to the Complainant’s trade marks. Internet users are likely to assume that the addition of China simply designates that the website is specifically directed to activities of the Complainant in that country. See, for example, BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284 (<bhpbillitonusa>).

The Respondent has criticised the Complainant for styling the disputed domain name as <WSOPChina.com> in an attempt, he says, to accentuate the similarities between the disputed domain name and the Complainant’s trade marks. The Panel accepts that, in proceedings under the Policy, it is more usual to refer to domain names in lower case. However, the Domain Name System is not case sensitive and accordingly there is no significance in whether domain names are depicted in upper or lower case; the comparison for the purpose of assessing confusing similarity is exactly the same.

The Respondent’s explanation as to how and why the disputed domain name was registered, instead of his claimed first choice of domain name, is implausible. But, more importantly, for present purposes, it is also irrelevant. The exercise of comparing the disputed domain name and the Complainant’s trade marks for the purpose of considering identicality or confusing similarity, is an objective test, unrelated to the circumstances of registration. The Respondent’s claimed intentions, whether credible or not, have no bearing on this exercise.

The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. It is therefore unnecessary to consider the Complainant’s additional contention that disputed domain name is also confusingly similar to its WORLD SERIES OF POKER trade marks.

B. Rights or Legitimate Interests

The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.

The Respondent’s contention is essentially that he has been using the disputed domain name in connection with a bona fide offer of goods and services. He claims that he “both invented and first used” the combination “wsopchina” and asserts that Tencent Interactive Entertainment is the operator of the Complainant’s WSOP event in China, rather than the Complainant, that is entitled to dispute the Respondent’s activities.

So far as the first of these assertions is concerned, there is no evidence at all adduced by the Respondent to support its contention that, save for the fact of its registration of the disputed domain name which incorporated this combination of words, it had used the combination “wsopchina” in any other manner in 2010. Nor is there any information about the context in which these words were allegedly used, nor any evidence to show that, even if they were used, the Respondent had acquired any rights or legitimate interests in that combination of words. The Panel does not accept the Respondent’s unsupported and unparticularized assertion, not least when, as at the date of registration of the disputed domain name, the Complainant already owned a registered trade mark in China for WSOP.

The Panel notes that the Complainant has not explained why it did not complain earlier about the Respondent’s registration of the disputed domain name nor has it provided information about the extent of its activities in China prior to the event which was scheduled to be held in December 2017. However, having regard to the global nature of the Complainant’s activities, even if the Respondent had been operating essentially the same website since 2010 in the form in which it appears at present, it would not constitute a bona fide offering of goods and services because it would, for the purposes of the Policy, have been encroaching on the Complainant’s rights, both in China and elsewhere. See, for example, Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796: “The Policy places no limitation on the operative extent of a trademark, which the Complainant must show the disputed domain name to be identical or confusingly similar to. If the intention had been that the Complainant’s right to complain about registration and use of a domain name which is identical or confusingly similar to its trade mark had to be limited to a trademark recognized by the law of the Respondent’s country of incorporation or residence, the Policy would have said so expressly”.

So far as the Respondent’s questioning of the Complainant’s entitlement to bring these proceedings is concerned, the Complainant is required to satisfy the requirements of paragraph 4(a) of the Policy and, in particular, to establish that it has rights in the trade mark or service mark on which its Complaint is based. It has done that. The nature of the Complainant’s licensing arrangements for WSOP tournaments hosted in China is irrelevant to a consideration as to whether the Respondent has any rights or interests with respect to the disputed domain name.

The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant’s case on bad faith registration is essentially that the Respondent was aware of the Complainant, as at the time of registration of the disputed domain name, alternatively, that it had constructive notice of the Complainant’s trade mark rights. The Respondent asserts that, as at the date of registration of the disputed domain name it was unaware of the Complainant and that the similarities between the disputed domain name and the Complainant’s WSOP trade marks are entirely coincidental.

The Panel is unable to accept the Respondent’s contentions in this respect. As the Complainant has pointed out in its supplemental filing, there is no explanation as to why a domain name comprising (allegedly) two letters that are a transliteration of the first letters of the Chinese word for “online” coupled with an abbreviation of the English words “online poker” would remotely be understood by Chinese users to comprise an acronym of “online online poker China”. Nor has the Respondent explained why he would seek to adopt such an ungainly trading style. Nor has he explained why the website to which the disputed domain name points features the Complainant’s branding. For these reasons, this explanation is far-fetched and is not accepted. The Panel finds, on a balance of probabilities, that the Respondent was aware of the Complainant’s activities as at the date of registration of the disputed domain name and registered it in order to derive a commercial advantage from the fact that many Internet users would associate it with the Complainant. This amounts to a bad faith registration.

So far as bad faith use is concerned, the Respondent has asserted that many of the poker services available on its website are not available outside China and, conversely, that not all of the Complainant’s services are available inside China. For this reason, the Respondent says, the services listed on its website do not directly compete with the Complainant. However, even if this at least partially correct, it misses the point; the Respondent is deriving commercial benefit from the assumption that many Internet users will make to the effect that both the disputed domain name and the website to which it points have some form of connection with the Complainant and this arises irrespective of whether the services on the website directly compete with those of the Complainant. See, for example, Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2011-0315.

The Panel finds that the Respondent’s activities fall within the circumstances set out in paragraph 4(b)(iv) of the Policy namely that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.

For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. It is accordingly not necessary to consider the Complainant’s additional submissions.

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 <wsopchina.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: January 18, 2018