WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rational Entertainment Enterprises Limited v. Sorin Cristea
Case No. DRO2011-0005
1. The Parties
The Complainant is Rational Entertainment Enterprises Limited, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by PokerStars Legal Team, Isle of man, United Kingdom.
The Respondent is Sorin Cristea of Oltenita, Romania.
2. The Domain Name and Registrar
The domain name <pokerstars.ro> (the "Disputed Domain Name") is registered with ICI - ROTLD.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2011. On June 7, 2011, the Center transmitted by email to ICI - ROTLD a request for registrar verification in connection with the Disputed Domain Name. On June 8, 2011, ICI- ROTLD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 10, 2011 the Center notified the Complainant that as the language of the registration agreement for the Disputed Domain Name was Romanian (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Romanian; or submit a request for English to be the language of the proceedings, providing the reasons for such request. On June 13, 2011 the Complainant submitted a formal request for the language of these proceedings to be English. On June 16, 2011 the Respondent submitted a request by email for Romanian to be the language of the proceedings, providing a number of reasons for this.
On June 21, 2011 the Parties were informed by the Center of the following:
"The Complaint has been submitted in English. Pursuant to Rules, paragraph 11, in the absence of an agreement between 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. According to information we have received from the concerned Registrar, the language of the registration agreement for the Disputed Domain Name is Romanian.
Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Romanian; and
3) appoint a Panel familiar with both languages mentioned above, if available.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communication received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment). The Panel may choose to write a decision in either language, or request translation of either party's submissions."
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 both in English and Romanian the Respondent of the Complaint, and the proceedings commenced on June 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2011. The Response (in English) was filed with the Center on July 20, 2011.
The Center appointed Gabriela Kennedy as sole panelist in this matter on August 1, 2011. 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. Language of Proceedings
The Panel notes that paragraph 11(a) of the Rules provides:
"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 Complainant submitted that both English and Romanian versions of the "Dispute Resolution Policy" were available on the registry's website. Furthermore, the Complainant provided evidence that the Respondent communicated with them in English and that the Respondent has a good ability to read and write in English. The Respondent corresponded with the Complainant in connection with his player account in English on a number of occasions. On June 16 and June 22, 2001 the Respondent sent further communications to the Center requesting Romanian to be the language of these administrative proceedings.
Although the Registrar informed the Center that the language of the relevant registration agreement was Romanian, the Panel considers that the language of the present proceedings should be English, mainly because both the Complaint and the Response were filed solely in English (despite the Center providing the Respondent with an opportunity to submit the Response in Romanian), which indicates that both parties understand the English language. This is further supported by the fact that the Respondent uses the English version of the Complainant's online poker website and corresponded with the Complainant in English in the past.
In the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings be English.
5. Factual Background
The Complainant and its group of companies operate an online poker business using the POKERSTARS trade mark. The Complainant commenced use of the POKERSTARS trade mark in 2001, when it launched its online gambling website located at “www.pokerstars.com”. The Complainant subsequently launched a second website at “www.pokerstars.net” in 2004. For the purpose of this decision, these websites shall collectively be referred to as the "PokerStars Websites". The PokerStars Websites have nearly 34 million registered users from approximately 250 countries. The Complainant also sponsors live poker tournaments and produces television programs around the globe via its website “www.pokerstars.tv”. As a result, the Complainant's enjoys a worldwide reputation as a market leader in the field of online poker.
The Complainant owns a number of registrations for the POKERSTARS trade mark throughout the world, including in the European Union, Australia, Benelux, Bulgaria, Chile, the Republic of Korea, Mexico, Norway, Russian Federation and Ukraine.
The Complainant has registered a number of country code top level domain names to redirect users searching for its websites in these countries to its PokerStars Websites and to provide online poker services to those countries where it holds a local license. Currently, in addition to its Isle of Man license (which regulates its provision of online poker via “www.pokerstars.com”), the Complainant holds local licenses to operate gambling websites in Italy, France and Estonia and provides such services via websites located at “www.pokerstars.it”, “www.pokerstars.fr” and “www.pokerstars.ee”, respectively.
The Respondent is an individual residing in Romania. The Disputed Domain Name was registered on January 24, 2006. The Disputed Domain Name does not presently resolve to an active website.
6. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is identical to the Complainant’s registered POKERSTARS trade mark;
(b) At the time that the Respondent registered the Disputed Domain Name, the Complainant owned a Benelux registration for the POKERSTARS trade mark and had also filed an application to register this mark in the European Union and the United States of America;
(c) The Complainant intends to apply for a license to operate a gambling website in Romania once such licenses become available, and would like to use the Disputed Domain Name to host its local Romanian website;
(d) The Respondent has no legitimate interests in the Disputed Domain Name. The Respondent is not affiliated with the Complainant and has never been licensed or otherwise authorized to use the Complainant’s POKERSTARS trade mark;
(e) To the best of the Complainant's knowledge, the Respondent has never used the Disputed Domain Name, even though 5 years have lapsed since the Disputed Domain Name was registered. The Respondent has not made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. If the Respondent had genuinely intended to make legitimate use of the Disputed Domain Name, one would have expected that he would have done so by now;
(f) As of 2007, when Romania joined the European Union, any marketing by the Respondent under the Complainant’s POKERSTARS trade mark, would constitute an infringement of the Complainant’s Community Trade Mark rights. The Complainant’s Community Trade Mark was registered on December 15, 2006. Since the Complainant’s trade mark has substantial reputation in the European Union, the Respondent’s use of the Disputed Domain Name also constitutes an infringement of the Complainant’s Community Trade Mark. In addition, since unregistered trade marks are protected in Romania and the Complainant’s POKERSTARS mark enjoyed a reputation in Romania prior to 2007, the Complainant also has unregistered trade mark rights in the POKERSTARS mark in Romania;
(g) To the best of the Complainant’s knowledge, neither the Respondent, nor any business operated by him, is or has been commonly known by the Disputed Domain Name;
(h) As the Respondent never used the Disputed Domain Name he cannot be said to be making legitimate noncommercial or fair use of the Disputed Domain Name;
(i) The Respondent registered and is using the Disputed Domain Name in bad faith. At the time of the registration of the Disputed Domain Name, the Complainant had operated “www.pokerstars.com” for 5 years, and had a trade mark registration as well as applications for the POKERSTARS mark. In addition, the POKESTARS trade mark was world famous as it was associated with the worlds' largest online poker site at the time the Respondent registered the Disputed Domain Name. The Respondent's brother, who is also the Respondent's business partner, has held a player account at “www.pokerstars.com” since May 2005 and the Respondent has held a player account since July 2009. Given all of this, it is inconceivable that the Respondent did not know about the Complainant's rights in the POKERSTARS mark when he registered the Disputed Domain Name;
(j) The Complainant offered USD 500 to acquire the Disputed Domain Name, but the Respondent did not reply to this offer. Via a subsequent telephone call, the Respondent's brother offered to transfer the Disputed Domain Name along with poker software developed by the Respondent (the "Program") for EUR 15000, either to the Complainant or to any other third party. It is clear that the Respondent registered the Disputed Domain Name with a view to sell it to the Complainant, or a competitor of the Complainant;
(k) Moreover, the Respondent hid his true identity after being contacted by the Complainant and after this date he used a privacy service so that his contact details were no longer visible. This use of a privacy service, in combination with other factors, suggests bad faith; and
(l) The Respondent's passive holding of the Disputed Domain Name can constitute bad faith and in the present case it is not possible to conceive of any plausible actual or contemplated use of the Disputed Domain Name that would be legitimate.
The Respondent’s contentions can be summarised as follows:
(a) The Complainant did not have trade mark rights in the POKERSTARS mark at the time that the Respondent registered the Disputed Domain Name in January 2006, and they did not obtain such rights until December 2007 when the POKERSTARS trade mark was registered;
(b) The Complainant’s allegations that the Respondent was aware of the Complainant’s business when he registered the Disputed Domain Name and that he wanted to sell the Disputed Domain Name to the Complainant for an amount in excess of his out-of-pocket expenses, are assumptions without any regard to the facts;
(c) The fact that the Respondent's brother held an account on “www.pokerstars.com” at the time that the Disputed Domain Name was registered is irrelevant and the same applies to the account held by the Respondent which was registered 6 months after the registration of the Disputed Domain Name. Furthermore, the Respondent stresses that his brother spends a lot of time abroad and hence they have limited contact;
(d) The Respondent’s contact details are not hidden, but unpublished by the Registrar, as required under Romanian data protection law;
(e) The Disputed Domain Name comprises of the words "poker" and "star" which are common, indistinctive and purely descriptive words, used by many people in cyberspace and are commonly used words in Romanian;
(f) The Complainant's trade mark is not registered in Romania;
(g) The law on online gambling was not enacted in Romania until December 2010. Hence, before this date, the Respondent was not able to use the program for which the Respondent registered the Disputed Domain Name, to operate an online gambling business, even though the program was already developed;
(h) The Respondent denies that his brother ever made an offer to sell the Disputed Domain Name along with the Program, but rather he simply explained the costs related to the website; and
(i) The Respondent does not use the Disputed Domain Name in connection with the sale of any goods.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the extension, in this case “.ro” should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762). When the domain name extension is disregarded, the Disputed Domain Name is identical to the Complainant's POKERSTARS trade mark.
The Panel accepts that the Complainant presently has rights in the POKERSTARS trade mark due to its registration in the Benelux (dated November 21, 2005) and other trade mark registrations including its use of this mark prior to this time. While the Complainant did not have any registrations for the POKERSTARS trade mark in Romania at the time that the Disputed Domain Name was registered, paragraph 4(a)(i) of the Policy does not require that the Complainant show that it had rights in the trade mark at the time that the Disputed Domain Name was registered, but rather it merely requires that such right exists at the time of filing the Complaint (see, for example, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; and Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Administrator, WIPO Case No. D2007-0856).
The Panel accordingly finds that the Disputed Domain Name is identical to the POKERSTARS trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the respondent's rights in the Disputed Domain Name (or lack thereof) based on the Respondent's use of the Disputed Domain Name in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the POKERSTARS mark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Name.
Accordingly, the only way for the Respondent to acquire rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy would be through the use of the Disputed Domain Names for legitimate noncommercial purposes or in connection with a bona fide offering of goods or services.
According to the Complainant, the Disputed Domain Name has never been used by the Respondent, a fact that the Respondent has not denied. While the Respondent asserts that he planned to use the Disputed Domain Name to host a website featuring the Program that he developed, the Respondent did not provide any evidence of demonstrable preparations to use the Disputed Domain Names for such purposes.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Evidence of bad faith includes actual or constructive notice of a well known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corp. v. Colony Holding, NAF Case No. FA 94313). The Panel accepts that the POKERSTARS mark enjoyed a significant degree of fame throughout the world (particularly in the online gambling industry) at the time that the Disputed Domain Name was registered by the Respondent (January 24, 2006), at which time the Complainant's “www.pokerstars.com” website had been operational for over 5 years.
Even though the Complainant had not registered the POKERSTARS mark in Romania at the time of registration of the Disputed Domain Name, the Complainant owned a registration for the mark in Benelux and had also applied to register a Community Trade mark. The Respondent's brother, who appears from the correspondence provided to the Panel to be closely involved in the business of the Respondent, had a player account with “www.pokerstars.com” from May 2005 and the Complainant had created a similar account in July 2007. Given this, it is rather difficult to accept that the Respondent was not aware of the Complainant's business when he registered the Disputed Domain Name. This in itself is an indicator of the type of opportunistic bad faith that the Policy is designed to prevent. In these circumstances, the Panel finds that there is no basis on which to infer that the Respondent registered the Disputed Domain Name in any manner or for any purpose other than in bad faith.
Furthermore, there was an indication that the Respondent was at least considering to sell the Disputed Domain Name to the Complainant. The Respondent (occasionally acting through his brother) was willing to sell the Disputed Domain Name together with the Program to the Complainant, or to a third party for EUR 15,000. While no evidence was provided as to the functionality of the Program, and therefore it is not possible to ascertain the value of the Program, it appears that the Respondent would not be prepared to transfer the Disputed Domain Name for less than this amount. Hence, it is considered likely that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to the Complainant or to the Complainant's competitors.
The Panel considers the fact that the Respondent has not used, or shown any demonstrable preparations to use the Disputed Domain Name is further evidence of bad faith on the part of the Respondent. While passive holding in itself is not evidence of bad faith (Indofil Chemicals Company v. Amar Vakil, WIPO Case No. D2006-0792), passive holding, under certain circumstances, may support an inference of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). When examining the entire circumstances of this case, the Panel considers that the Respondent's passive holding of the Disputed Domain Name is indicative of bad faith. In particular, the Panel notes that the Complainant's POKERSTARS trade mark enjoys a substantial reputation (particularly in the online gambling industry), that the Respondent has not provided any credible evidence of any actual or contemplated good faith use of the Disputed Domain Name, and that the Respondent took steps to conceal his identity once the Complainant made contact with him, by using a privacy service.
In the circumstances, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <pokerstars.ro> be transferred to the Complainant.
Dated: August 15, 2011