The Complainant is POEX Ltd. of Floriana, Malta represented by Certa Legal Advocaten B.V., Netherlands.
The Respondent is Zoran Stary of Ljubljana, Slovenia, / WhoIs Privacy Protection Service Inc. Bellevue Washington, United States of America represented by Kanalec Juzina Attorneys, Slovenia.
The disputed domain name <pokerfriends.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2010. On February 24, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 24, 2010, eNom 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 March 2, 2010 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 March 5, 2010. The Center verified that 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 March 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response March 28, 2010. The Response was filed with the Center March 28, 2010.
The Center appointed David Perkins, Tobias Cohen Jehoram and Mladen Vukmir as panelists in this matter on April 28, 2010. The Panel finds that it was properly constituted. Each member of 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 May 5, 2010 the Panel directed Procedural Order No. 1 be transmitted to the Parties. That Order noted that the dispute revolves around a number of factual assertions, in respect of which the Panel considered the Complaint and the Response were deficient in certain respects. Accordingly, pursuant to Rule 12, the Panel requested the clarification and documents specified in the Order. Time for response to that Order was set as May 17, 2010.
On May 10, 2010 the Complainant and on May 12, 2010 the Respondent submitted their responses to the questions addressed to them in the Order.
Then, on May 17, 2010 both Parties filed Supplementary Submissions. Since those Submissions relate to the questions posed in the Order and were made within the deadline for responding to the Order, the Panel will admit these Supplementary Submissions into this administrative proceeding.
4.1.1 The Complainant was incorporated in Malta on October 13, 2009. The Company's Memorandum of Association provides that one of its objectives is:
“To develop, maintain, exploit, produce, license and sublicense poker information and poker content mainly for international dissemination through electronically accessed media including the internet.” (Article 3(a)).
Mr. Jurriaan Felix Hillen was appointed Director and Secretary of the Company.
4.1.2 The Complainant was to become wholly owned by P.F.S. Intermedia BV (“Intermedia”). Shareholders in Intermedia were to include Kenick Beheer BV and IQ Media Group BV.
4.1.3 Mr. A. von Ommen and Mr. A. de Keijzer are Directors of Kenick Beheer, B.V. Mr. B. Brennan and Mr. Yilmaz Schoen are Directors of IQ Media. IQ Media was to become the service / hosting provider and web developer for the Complainant.
The Agreement with Media 365 Inc.
4.1.4 Pursuant to the above identified object and prior to its formal incorporation, the Complainant entered into negotiations to purchase the disputed domain name and to develop a website with a view to establishing an online poker community. This disputed domain name was created on September 2, 2001 and was owned by Media 365 Inc., a company located at St. John's, Antigua in the British West Indies.
4.1.5 It appears that terms for that purchase were agreed in early September 2009 and a formal Purchase and Transfer Agreement dated September 21, 2009 (effective, September 18, 2009) was entered into between Media 365 Inc. (as Seller) and the Complainant (as Purchaser). The purchase price of USD 35,000.00 was to be paid into an escrow account with Escrow.com of Irvine, California, which was to be released upon transfer of the disputed domain name into the Complainant's account at “www.enomcentral.com”. Time for completion of the transaction was September 24, 2009.
4.1.6 A Closing Statement from Escrow.com – comprising an email from Escrow.com to Media 365 Inc dated September 30, 2009 – is captioned “Subject : #488086 – 367668 poex – Closing Statement” confirms transfer of USD 35,000.00 but, somewhat confusingly, refers to the Buyer as:
“eric vanderburg
eric@pokerfriends.tv”
It appears from the Complainants' Second Supplementary Submission that the USD 35,000.00 consideration was financed by Kenick Beheer BV.
Mr. E. van der Burg
4.1.7 The Complainant says that it appointed Mr. van der Burg
“… to arrange the practical affairs concerning the transfer of the Domain Name, inter alia, the transfer of the Domain Name to the account of the Complainant and having the purchase price of US$35,000.00 ex VAT transferred to escrow.com on behalf of the Complainant.”
As noted from the Purchase and Transfer Agreement, the Complainant's account was at “www.enomcentral.com.”
4.1.8 The Complaint and the Complainant's First Supplementary Submission exhibited a string of email correspondence. Because of the factual assertions disputed by the Parties, these are summarized below (from English translations of the originals in the Dutch language):
September 2, 2009: Mr. Sharma (Kenick Beheer) to Mr. Hillen (Complainant) and copied, inter alia, to Mr. van der Berg reads as follows:
“Erik just informed me our offer has been accepted.”
“Erik I assume you will supervise the formalities: transfer of the domain name registration to our account / payment / agreement.”
The reference to “agreement” appears to be to the drafting of the document which was eventually signed on September 21, 2009 between Media 365 Inc. and the Complainant, namely the Purchase and Transfer Agreement (see, paragraph 4.1.5 above).
September 2, 2009: Mr. Schoen (IQ Media) to Mr. van der Burg, which read:
“Erik, please let us arrange the transfer, we will connect it directly to the server. Beside this practical advantage, I can check if everything will go according to plan. And if the owner transfer is correct.”
September 22, 2009: Mr. van der Burg to Mr. de Keijzer (Kenick Beheer) explaining to Mr. de Keijzer how to make payment of US$35,000.00 to Escrow.com. In this respect, see the reference in the Complainant's Second Supplementary Submission relating to the financing of the purchase of the disputed domain name by Kenick Beheer (paragraph 4.1.6 above.)
September 28, 2009: Ms. Braat (Complainant's outside legal counsel) to Mr. van der Burg:
“Eric
I saw that the amount was accepted by escrow.com. Did you have contact with Enom about the domain name? Liz stated that she has put into effect the transfer, but I don't have the data to check that with the Registrar.”
September 28, 2009: Mr. van der Burg replied:
“At Enomcentral we haven't received www.pokerfriends.com yet.”
October 5, 2009: Ms. Braat to Mr. van der Burg:
“Dear Eric
Via escrow.com I can see that the transfer of the domain name has been completed and that the amount has been paid. The Whois doesn't show who is the owner of POEX now.
Can you let me know if everything went properly?
Thanks”
October 5, 2009: Mr. van der Burg replied:
“That's correct, got the url to place into a so-called ID Protect. This is a protection and hence does not show who the owner is!”
October 5, 2009: Ms. Braat responded to Mr. van der Burg as follows:
“Thank you for your email. It's good to know the domain name has been transferred.
With reference to the ID Protect service, I would like to remake that – still – it is generally assumed that the privacy protect service is the legal owner of the domain name instead of Poex Ltd. From a legal point of view, I therefore recommend not to make use of this and to have the domain name out in the name of Jurriaan or Poex Ltd, once it has been incorporated.”
As noted in paragraph 4.1.1, Jurriaan is Mr. Hillen, the Director and Secretary of the Complainant, which was not formally incorporated until October 13, 2009.
October 5, 2009: Mr. van der Burg replied:
“The id protection can be switched off very easily. For the moment, there are more benefits in keeping the id protection:”
4.1.9 The correspondence demonstrates that Mr. van der Burg was, as asserted in the Complaint, carrying out services on behalf of the Complainant and/or Kenick Beheer and/or the entities involved in establishment of the Complainant in relation to the acquisition of the disputed domain name by the Complainant from Media 365 Inc. The Complainant's First Supplementary Submission explains that, in fact, no formal agreement was entered into with Mr. van der Burg. Under a draft Management Agreement dated December 3, 2009 between the Complainant and Mr. van der Burg's company, Mr. E. van der Burg BV (“Management BV”) Management BV would provide the Complainant with “operational and commercial support” by reason of its “knowledge and experience in the area covered by the objectives” of the Complainant. In that respect, the language of the draft Agreement tracks Article 3(a) of the Complainant's Memorandum of Association set out in paragraph 4.1.1 above. This Agreement was not signed but, according to the Complainant, its relationship with Mr. van der Burg was made orally and was operated with him as demonstrated from the email exchanges in September 2009 listed above.
4.1.10 That arrangement was formerly terminated by letter from the Complainant's attorney to Mr. van der Burg dated January 4, 2010. That letter was written on behalf Kenick Beheer, IQ Media and another party, Felti BV. It refers to Intermedia being incorporated to hold the entire share capital of the Complainant, as part of the establishment of what is described as “the Pokerfriends project”. It accuses Mr. van der Burg of breaching an obligation of confidence by making unauthorized disclosure of confidential information relating to that project to “other parties”, such information being the property of the Complainant.
4.1.11 The Complainant says that such disclosure is evidenced by an email dated December 15, 2009 sent by Mr. van der Burg to a third party, Mr. G. den Hertog. The Complainant says that Mr. den Hertog subsequently passed this email on to it. Although the Panel finds the English language translation from the Dutch which has been provided by the Complainant is rather poor, in this email Mr. van der Burg seems to be voicing disagreement with the investors behind the “Pokerfriends” project and soliciting Mr. den Hertog's collaboration. The email refers to attaching (1) the time-line planning and outline cost structure for the project; and (2) an example of the proposed structure identifying the role of IQ Media in that structure.
4.1.12 The Complainant then exhibits email exchanges in December 2009 and January 2010 between Mr. Hillen (of the Complainant) and eNom requesting transfer of the disputed domain name into the name of the Complainant. The Registrar explained that this was not possible since the registrant was none of Kenick Beheer, Intermedia or the Complainant and that, despite being provided with the Purchase and Transfer Agreement dated September 21, 2009 evidencing the acquisition of the disputed domain name by the Complainant from 365 Media Inc., there was nothing the Registrar could do without a Court Order directing a change of ownership to the Complainant.
The Complainant's “Pokerfriends” Project
4.1.13 With its first Supplementary Submission the Complainant has provided documentation evidencing the plans for this project. This comprises:
(1) four undated PowerPoint presentations all captioned “Pokerfriends.com” and variously titled (i) Poker Friends Tools; (ii) Pre-Presentation Pokerfriends.com; (iii) The International Poker Social Network; and (iv) “a sneak peak”;
(2) an undated Business Plan (in Dutch) for a website entitled “10X Poker” comprising 29 pages;
(3) emails from Peter Jansen (of IQ Media) dated July 8 and 9, 2009 relating to designing a logo for the <pokerfriends.com> website;
(4) a quotation from IQ Media dated July 28, 2009 for Phase 1 of the Pokerfriends Project;
(5) a proposal from Mr. Schoen of IQ Media also dated July 28, 2009 with proposed Phase 1 Planning for “Project Pokerfriends.com”;
(6) an email from Peter Jansen (of IQ Media) dated October 14, 2009 with mock-ups of the proposed “www.pokerfriends.com” website;
(7) draft emails dated October 14 and December 15, 2009 to be sent by IQ Media as the Complainant's provider to persons joining the “pokerfriends network”; and
(8) a list of domain names stated to be owned by the Complainant and Kenick Beheer, including <pokerfriends.tv> created on June 30, 2009; <pokerfriends.net> created on August 30, 2008; <pokerfriends.org> created on April 2, 2010; <pokerfriends.mobi>, some 19 “pokerfriends” country code domain names; and a further 25 “pokerfriend” country code domain names.
The “pokerfriends.com” trademark
4.1.14 On December 28, 2009 the Complainant registered POKERFRIENDS.COM as a word / figurative trademark in the Benelux under Registration No. 0874271 in Classes 38, 41 and 42.
Sale of the disputed domain name to the Respondent
4.1.15 The Complainant says that it was not until its email exchanges with the Registrar over the period December 30, 2009 to January 6, 2010 (as to which, see paragraph 4.1.12 above) that it discovered that Mr. van der Burg had not transferred the disputed domain name into either Mr. Hillen's name or into the Complainant's name (when incorporated) as had been requested in Ms. Braat's email dated October 5, 2009 (see, paragraph 4.1.8 above). Consequently, the Complainant's counsel wrote to Media 365 Inc. on January 21, 2010 requesting written confirmation that the disputed domain name would be transferred to the Complainant company as provided for by the Purchase and Transfer Agreement (dated September 21, 2009). Media 365 Inc. responded on February 5, 2010 by providing the Closing Statement which it had received from Escrow.com dated September 30, 2009 (as to which, see paragraph 4.1.6 above).
4.1.16 The Complainant says that it was not until after Mr. van der Burg was confronted with his breach of confidence – the email to Mr. G. den Hertog [see, paragraph 4.1.11 above) and after January 4, 2010 when the Complainant had terminated his relationship (see, paragraph 4.1.10 above) that Mr. van der Burg wrongfully transferred the disputed domain name to the Respondent. The Complainant says in the Complaint that, in earlier correspondence, Mr. van der Burg had introduced the Respondent “as a friend and business companion”.
In its Second Supplementary Submission the Complainant explains that there was no such “earlier correspondence “but that Mr. van der Burg had told several of the promoters behind the “Pokerfriends” Project about the Respondent, indicating that the Respondent had established a poker Internet website known as Maxima Casino through a Netherlands Antilles company. The Complainant speculates that Mr. van der Burg and the Respondent were formerly connected through a Netherlands Antilles company, Amixam BV, which they believe was the vehicle behind the Maxima Casino website. That company appears from the Curacao Commercial Register to have ceased trading as from March 11, 2008. A print out from the website to which the <maximacasino.com> domain name resolves directs the user to the website of <bodybuilding.com> and advises that Maxima Casino has closed down and is no longer operating Internet casino or poker gaming activities.
4.2.1 The Respondent states that he has been in the business of running Internet casinos since 2004, when he established an Internet casino known as Maxima Casino which was owned by Amixam. That company was established in Curacao in the Netherlands Antilles in March 2004 and the Respondent was the Chief Executive Officer of that company. With the First Supplementary Submission he exhibits a (redacted) copy from the Share Register of Amixam showing himself as apparently having acquired 3000 of the issued 6000 shares in the company on September 1, 2004.
The Respondent's intended use of the disputed domain name
4.2.2 The Respondent explains that the disputed domain name is intended to be used in a VIP Affiliate Program. This, he says, will have no “direct commercial purpose” and “no goods or services are being sold through the website”. It is, according to the Respondent, intended “to support the marketing campaign of the partners' internet poker rooms' webpages such as “www.class1casino.com”.” The proposed website is further described in the following terms:
“The page is going to offer the latest news on online poker market, it is going to offer the possibility of the information exchange through the forum of online poker players who will sign up with this webpage and it is going to organize better conditions for members of this online poker site community. Furthermore, the page will offer information on legal part of protection of online poker players for particular markets and jurisdictions and is going to give information on techniques on online poker gaming. As can be noticed, the name chosen for this campaign completely suits the purpose of this site and the domain name suits the campaign, since it will encourage amicable relationship and information sharing among poker player, among poker friends.”
4.2.3 The Respondent says that Amixam BV was not the intended user of the disputed domain name. His intention is to set up a new company in Cyprus which will possibly use the domain name for the proposed VIP Affiliate Program.
4.2.4 As evidence of his intended use of the disputed domain name, in the First Supplementary Response the Respondent exhibits a 14-page Business Plan entitled “Pokerfriends.com Affiliate Program Document” dated January 11, 2010. He states that the first version of that Plan was made on December 4, 2009 after Mr. van der Burg had introduced him to the availability of the disputed domain name, and a second version was made on January 5, 2010.
Mr. van der Burg and the Respondent's purchase from him of the disputed domain name
4.2.5 The Respondent says that Mr. van der Burg never mentioned to him the Complainants' claim to ownership of the domain name nor that the Complainant was intending to engage in an Internet entertainment or gambling business. Consequently, the Respondent says that he registered and is intending to use the domain name in good faith.
4.2.6 Indeed, the Respondent says that he paid Mr. van der Burg EUR 80,000.00 pursuant to a Domain Name Purchase Agreement signed December 22, 2009. As to the Purchase and Transfer Agreement of September 21, 2009 between Media 365 Inc. and the Complainant, the Respondent says that, at the time he acquired the disputed domain name, there was no record of any change of ownership, from which he can only conclude such transaction was never completed. Indeed, he points to the Closing Statement which shows Mr. van der Burg as the Purchaser from Media 365 Inc – see, paragraph 4.1.6 above.
4.2.7 Exhibited to the First Supplementary Response is a document signed by Mr. van der Burg acknowledging receipt of EUR 80,000.00 on January 12, 2010 pursuant to the Domain Name Purchase Agreement signed December 22, 2009. Clause 1 of that Agreement contains the following warranty from Mr. van der Burg as the Seller:
“The Seller explicitly states and warrants that he is the owner of the domain name “www.pokerfriends.com” which is evident from the records of the domain name, held by the authorized registrar”.
4.2.8 As to the Complainant's registered trademark, the Respondent points to this as having been registered on January 4, 2010 which was only an approximate 10 days before his ownregistration of the disputed domain name took place between January 14 and 16, 2010. (It is to be noted however, that the Complainant's Benelux trademark for <pokerfriends.com> was registered on December 28, 2009 not on January 4, 2010 – see, paragraph 4.1.14 above.)
4.2.9 The Respondent says that, before entering into the Domain Name Purchase Agreement signed December 22, 2009, he carried out a trademark availability search against the disputed domain name but this disclosed no existing trademark rights. He says that the databases searched were Madrid Express; Romarin; and OHIM online. He says that he discarded the prints of those searches. The Respondent says that Mr. van der Burg also confirmed that he was not aware of any third party trademark rights which bore on the disputed domain name.
5.A.1 The Complainant is the owner of the Benelux trademark POKERFRIENDS.COM registered on December 28, 2009. The disputed domain name is identical to that trademark.
5.A.2 On the facts, the Complainant says that the Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. As to paragraph 4(c)(i) the Complainant challenges that before being put on notice of this dispute the Respondent had made any use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. In that respect, the Complainant points to the allegedly false impression given in the Response of the activities of Amixam BV and Maxima Casino, when it is apparent from enquiry that Amixam ceased trading in March 2008 (paragraph 4.1.16 above) and to the total lack of information in relation to the Respondent's proposed company to be incorporated in Cyprus [paragraph 4.2.3 above].
5.A.3 As to the Respondent's Business Plan (paragraph 4.2.2 above), the Complainant regards it as generic to the concept of affiliate programs, which it says are a commonly used concept in the poker industry. The Complainant suggests that references to the disputed domain name have been added as an afterthought solely for the purpose of defending this administrative proceeding. For example, it refers to the disputed domain name “as having a large coverage” on the Internet, whereas in fact it is not yet in operation.
5.A.4 The Complainant also points to the first version of the Respondent's Business Plan being dated December 4, 2009 as inconsistent with the fact that only two days before on December 2, 2009, the Complainant had sent Mr. van der Burg a draft of the Management Agreement to which he had responded with substantial comments.
5.A.5 Furthermore, the Complainant suggests that it is hardly consistent with the intended use of the disputed domain name for the Respondent to have permitted that domain name to continue to resolve to the Complainant's website until after February 23, 2010, which is the date when this Complaint was first notified to the Respondent.
5.A.6 The Complainant says that the domain name must have been registered by the Respondent in bad faith because at the date of registration in January 2010 it was the Complainant who was the true beneficial owner of that domain name by reason of the Purchase and Transfer Agreement with Media 365 Inc. dated September 21, 2009.
5.A.7 The Respondent does not deny his relationship with Mr. van der Burg as “a friend and business companion” from which it is, the Complainant says, a fair inference that the Respondent knew very well of the Complainant's prior rights to the disputed domain name. For example, at the date of the transfer of the disputed domain name from Mr. van der Burg to the Respondent, the domain name still resolved to the Complainant's webpage, which used the Complainant's Benelux trademark, which had been registered on December 28, 2009. In the circumstances, the Complainant says that the Respondent cannot credibly contend that he was unaware of the Complainant and that he had “no notice” of Mr. van der Burg's lack of title to transfer the domain name. Indeed, as stated in paragraph 5.A.5, the disputed domain name continued to resolve to the Complainant's website until after this Complaint was filed on February 23, 2010.
5.A.8 Since the Respondent is aware of the Complainant's prior rights and entitlement to the disputed domain name, no intended or actual bona fide use can now be made by the Respondent of that domain name.
5.A.9 As general evidence of his lack of good faith, the Complainant also refers to the Respondent's “changing story” in relation to his activities with Amixam BV and the now defunct Maxima Casino website. The Complainant suggests that Mr. van der Burg was a shareholder in Amixam and the transferor of shares in that Company to the Respondent. Why else, the Complainant says, is the extract from the Amixam Shareholder Register largely redacted (see paragraph 4.2.1 above)?
5.A.10 The Domain Name Purchase Agreement signed December 22, 2009 (as to which, see paragraph 4.2.7 above) is - the Complainant says – a sham and the document signed by Mr. van der Burg acknowledging receipt of the EUR 80,000.00 paid on January 12, 2010 pursuant to that Agreement is quite unconvincing. In that respect, why – the Complainant asks – is there no documentary evidence of a bank transfer of that amount? Such a large sum would hardly have been paid in cash. As to the Agreement, the Complainant suggests that it was concocted by Mr. van der Burg and the Respondent only after receipt of the Complaint in this administrative proceeding when they realized that the Complainant had registered POKERFRIENDS.COM as a trademark on December 28, 2009. It is also, the Complainant says, not coincidental that the transfer of the disputed domain name took place only 10 days after the Complainant terminated its arrangement with Mr. van der Burg by the letter dated January 4, 2010 (paragraph 4.1.10 above).
5.B.1 The Respondent says that the identity of the Complainant's registered trademark POKERFRIENDS.COM and the disputed domain name is irrelevant. This is for two interrelated reasons. First, when purchasing the disputed domain name from Mr. van der Burg the Respondent was unaware of that trademark. Second, the Domain Name Purchase Agreement was made on December 22, 2009, 6 days before the Complainant obtained its registered trademark in the Benelux.
5.B.2 The Respondent relies upon paragraph 4(c)(i) of the Policy based on the first draft Business Plan of December 4, 2009 for the intended use of the disputed domain name. In that respect, the Respondent refers to his background in operating Internet gaming sites, such as Maxima Casino through his company Amixam BV as indicative of his experience and knowledge of that industry.
5.B.3 The Respondent also relies upon paragraph 4(c)(iii) of the Policy on the basis that the proposed intended use of the disputed domain name for the VIP Affiliate Program will be a non-commercial use without intent for commercial gain.
5.B.4 The Respondent denies any prior knowledge of the Complainant, its purchase of the disputed domain name from Media 365 Inc. and/or its intended use of that domain name. The Respondent says he was not only given an assurance by Mr. van der Burg that there was no impediment to him using the domain name but he also conducted trademark clearance searches in three databases. Since at the date of those searches – which would have predated the December 22, 2009 Domain Name Purchase Agreement – the Complainant's POKERFRIENDS.COM Benelux trademark had not been registered, those searches were all clear. In any event, knowing nothing of the Complainant, the Respondent would have no reason to suspect that there was a need to search the Benelux Trademark Register.
5.B.5 The Respondent says that he had no knowledge that the disputed domain name resolved to the Complainant's website under construction entitled “Get Ready to make new Poker Friends around the World” announcing “We're launching soon” and featuring the trademark POKERFRIENDS.COM. Indeed, he suggests that there is no evidence that such website existed before he acquired the disputed domain name from Mr. van der Burg and suggests that it was probably concocted specifically for the purposes of this Complaint, so that he had no prior means of discovering its existence.
5.B.6 The Respondent, effectively, states that he was a bona fide purchaser of the disputed domain name from Mr. van der Burg for value – namely, EUR 80,000.00 - and without notice of any prior rights in that domain name claimed by the Complainant.
5.B.7 Further, as noted in paragraph 4.2.6 above, the Respondent questions whether the Purchase and Transfer Agreement was ever completed because, if it had been, then the Complainant would have been the registrant of the disputed domain name rather than Mr. van der Burg. The Respondent points to the fact that at the date of the Agreement and at the subsequent Closing Date of September 29, 2009, the Complainant company had not been incorporated. Consequently, the Agreement was in capable of performance. The only evidence he had was Mr. van der Burg's ability to transfer the disputed domain name to him, which was conclusive evidence of Mr. van der Burg's ownership of the domain name. Indeed, the Closing Statement from Escrow.com exhibited to the Complaint shows Mr van der Burg as “the Buyer” from Media 365 Inc. Such transfer to Mr. van der Burg is, the Respondent says, entirely consistent with the inability of a non-existent company (i.e. the Complainant) to acquire the disputed domain name.
5.B.8 In the Response, the Respondent suggested to the Panel that it could conduct an in-person hearing with Mr. van der Burg and himself which would support his case. In Procedural Order No. 1 the Panel advised that any such hearing would depend on Mr. van der Burg's willingness to participate and would, in any event, need to be inter partes. In its First Supplementary Response the Respondent stated that it was not, in his opinion, necessary to hear testimony from Mr. van der Burg.
5.B.9 In Procedural Order No. 1 the Panel referred to the provisions in the Domain Name Purchase Agreement of December 22, 2009, requiring payment of EUR 80,000.00 within 3 days thereafter and transfer of the disputed name within 2 days after such payment. However, in fact transfer of the domain name did not occur until between January 14 and 16, 2010. Then Respondent explains in his First Supplementary Response that the delay was caused by the Christmas vacation, the travel schedules of himself and Mr. van der Burg and to the fact that the money was not paid until January 12, 2010.
5.B.10 In answer to the Complainant's First Supplementary Submission the Respondent refers to three other disputed areas of evidence. First, the draft Management Agreement of December 3, 2009 between the Complainant and Management BV – Mr. van der Burg's company – makes no reference to transfer of the disputed domain name. Second, as to Amixam BV, the Respondent says that it is not trading only due to lack of directors. However, the Company continues to exist and will recommence trading shortly. Third, as to the Complainant's planned “Pokerfriends Project”, the Respondent says that prior to the Complainant's incorporation on October 13, 2009 none of the proposals can be attributed to the Complainant. The Proposals exhibited (see paragraph 4.1.13) could have been prepared for any third person but they could not be “prepared for the Complainant since at the time the Complainant did not yet exist.” Then from October 13, 2009 onwards the Respondent says there is scant evidence of any effective activity by the Complainant to develop a website for its Project. As to the Business Plan exhibited by the Complainant (paragraph 4.1.13(2) above), it is for a website entitled “10X Poker” and cannot, therefore, be relevant to the disputed domain name. Others are in Dutch and undated and, all in all, the evidence relating to the Complainant's “Pokerfriends Project” is, the Respondent says, neither coherent nor consistent.
5.B.11 Finally, the Respondent requests that a finding of reverse domain name hijacking should be made against the Complainant.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 The Complainant has rights in the Benelux trademark POKERFRIENDS.COM dating from December 28, 2009. The disputed domain name is identical to the words of that registered trademark. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.6 The Respondent's case depends upon establishing that prior to receiving notice of this dispute on February 23, 2010 he had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
6.7 In that respect, the Respondent relies upon the following:
- the first version of a Business Plan entitled “Pokerfriends.com Affiliate Program Document” dated December 4, 2009. That version has not been produced. Instead, a Business Plan dated January 11, 2010 has been exhibited.
- Evidence that from 2004 to 2008 he was the Chief Executive Officer of a Netherlands Antilles Company, Amixam BV, which operated Maxima Casino, an Internet gambling site and, accordingly, had considerable experience in that field.
- The Domain Name Purchase Agreement dated December 22, 2010 between himself as purchaser and Mr. van der Burg as seller.
- An acknowledgement of receipt on January 12, 2010 of the purchase price payable under that Agreement from Mr. van der Burg.
- Due diligence carried out before the date of the December 22, 2009 Agreement involving searches in three trademark databases – with an indication that the print outs have been destroyed – and an assurance from Mr van der Burg that there was no impediment to the purchase. In that respect, the Respondent notes the warranty given by Mr. van der Burg in Clause 1 of the Agreement, (see paragraph 4.2.7 above).
- The fact that the Domain Name Purchase Agreement was concluded before registration of the Complainant's Benelux trademark, which is consistent with the Respondent's trademark database searches not recording such registration.
6.8 Against that, the Complainant asserts that Mr. van der Burg and the Respondent have effectively colluded to defraud the Complainant from perfecting its rights in the disputed domain name purchased from Media 365 Inc. As to Mr. van der Burg's role, it seems reasonably clear from the correspondence summarized in paragraph 4.1.8 above that he was appointed by the Complainant while developing the “Pokerfriend Project” to take care of the formalities relating to the purchase of the disputed domain name on behalf of the vehicle which would realize that Project (namely, the Complainant); that he placed the disputed domain name after its acquisition from Media 365 Inc. into a Privacy Service – Whois Privacy Protection Service Inc; and that he failed to implement instructions from Ms. Braat on October 5, 2009 to transfer the domain name from that Privacy Service into the Complainant's name (when incorporated, which it was 8 days later on October 13, 2009) or into the name of Mr. Hillen, who was to become the first director of the Complainant.
6.9 It also appears that a disagreement arose when, by mid to late December 2009, the Complainant and its backers became aware that Mr. van der Burg had made an unauthorized communication of confidential business information relating to the Pokerfriends Project to a third party, Mr. den Hertog. As a consequence, the Complainant wrote on January 4, 2010 terminating the management function which Mr. van der Burg had de facto undertaken since July 2009; the IQ Media quotation of July 28, 2009 is addressed to Mr. van der Burg (see, paragraph 4.1.13(4) above).
6.10 At that date and for at least some 7 weeks later, the disputed domain name continued to resolve to the Complainant's website under construction (see paragraph 5.B.5 above).
6.11 When some two days later the Complainant discovered from the Registrar that the disputed domain name had not been transferred by Mr. van der Burg into the name of the Complainant and confronted Mr. van der Burg, he refused to remedy the situation.
6.12 From the foregoing, the Panel is of the view that Mr. van der Burg was not entitled to, effectively, retain the disputed domain name after completion on September 29, 2009 of the purchase of that name from Media 365 Inc. and to sell the name to the Respondent. Mr. van der Burg well knew that he was only an intermediary acting on behalf of the Complainant and its backers and that he had no entitlement to the disputed domain name.
6.13 The question then is whether the Respondent was aware that Mr. van der Burg had no title in the disputed domain name to transfer to him. If he was aware, then his Business Plans to use that domain name cannot have been in connection with a bona fide offering of services under that domain name. This is a question of the Respondent's good faith.
6.14 As noted in paragraph 5.B.6 above, the Respondent's case is that he is a bona fide purchaser of the disputed domain name for value without notice of any prior rights to that domain name. Here there is the following conflict of evidence:
- Mr. van der Burg and the Respondent are stated to be “friends and business companions” (paragraph 4.1.16) and this is not denied by the Respondent.
- Did the Respondent develop the first “Pokerfriends.com Affiliate Program” on December 4, 2009 and has he provided any credible evidence of preparations carried out prior to February 23, 2010 evidencing an intention to make bona fide use of the disputed domain name? The only written Business Plan exhibited by the Respondent is the document dated January 11, 2010, as to which the Complainant doubts its provenance (see paragraph 5.A.3 above). Also, Respondent himself states that he still is to establish a company in Cyprus that may possibly use the domain name, thus even now not demonstrating any concrete plans for a specific legal entity to use the domain name.
- Did the Respondent carry out the due diligence summarised in paragraph 4.2.9 above? He indicates that he has not retained the print outs from the database searches.
- Is the Domain Name Purchase Agreement signed December 22, 2009 genuine or, as the Complainant contends, a sham concocted by the Respondent and Mr. van der Burg only after they became aware of the Benelux trademark registration? Is the receipt of EUR 80,000 signed by Mr. van der Burg genuine? Why hasn't the Respondent provided evidence of a bank transfer as would be usual in such circumstances? In this respect, see paragraph 5.A.10 above.
- Is it really credible that the Respondent's due diligence did not include accessing the disputed domain name, which would immediately have put him on notice that it was resolving to the Complainant's website under construction? This is even more poignant where the sum allegedly paid for transfer of the domain name is substantial. See paragraphs 5.A.7 and 5.B.5 above.
- Is it really credible that Mr. van der Burg and the Respondent were apparently working towards the Domain Name Purchase Agreement (see, the Respondent's first Business Plan dated December 4, 2009) when at the same time Mr. van der Burg was negotiating his Management Agreement with the Complainant? See, paragraphs 4.1.9 and 5.A.4 above.
- Why, if there really was a transfer of the disputed domain name to the Respondent between January 14 and 16, 2010 and the Respondent had produced a version of its Business Plan for the VIP Affiliate Program by January 11, 2010 (or earlier), did the Respondent allow the disputed domain name to continue to resolve to the Complainant's website under construction? Is it perhaps more likely that the transfer to the Respondent was made only after the Complaint was first notified to Whois Privacy Protection Service, Inc.?
- Has the Respondent dealt with this Complaint openly and honestly or has he attempted to mislead the Panel? For example, in relation to the impression intended to be created by reference to his experience in the online gaming industry with Maxima Casino, which he failed to explain had ceased to trade over 12 months ago.
6.16 While it is not easy to resolve conflicts of evidence in proceedings brought under the Policy, the Panel's duty is to determine the relevance, materiality and weight of the evidence presented to it: Rules, paragraph 10(d). In this instance, each Party has been invited to supplement the original Amended Complaint and Response and each party has filed two Supplementary Submissions pursuant to that invitation.
6.17 The standard of proof is to evaluate the evidence on the balance of probabilities. On that basis, as stated in paragraph 6.12 above, it is clear to the Panel that the Complainant purchased the disputed domain name from Media 365 Inc. The Respondent's proposition is that the Purchase and Transfer Agreement dated September 21, 2009 is null and void by reason of the Complainant being formally incorporated later on October 13, 2009 is without substance. It is perfectly normal for such transactions to be ratified after incorporation. Insofar as Mr. van der Burg became the transferee of the disputed domain name, he clearly held it for the benefit of the Complainant and/or for its future shareholder, Kenick Beheer B.V. which financed the purchase. Moreover, Mr. van der Burg ignored the Complainant's request (Ms Braat's email of October 5, 2009) to transfer ownership to the Complainant after incorporation or to Mr. Hillen in the meantime.
6.18 There is nothing to suggest that Mr. van der Burg acquired any personal ownership of the disputed domain name and all the evidence points to him wrongfully transferring that name to the Respondent. The issue to be decided is whether, on the evidence before the Panel, the Respondent's version of events is to be believed or not.
6.19 On the preponderance of the evidence, the Panel cannot accept that the Respondent acquired the disputed domain name without notice of the Complainant's rights in it. If he was a friend and business associate of Mr. van der Burg - which he has not denied - it must be quite likely that he was aware of the purchase of the disputed domain name from Media 365 Inc. Also, by exercising the most rudimentary due diligence, namely accessing that domain name, the Respondent would immediately have been put on notice of its existing use for the Complainant's website under construction. It just doesn't ring true that the Respondent then acquired the disputed domain name with clean hands.
6.20 Also to be taken into consideration by the Panel is that, having at first suggested that Mr. van der Burg and himself should provide oral testimony to the Panel, when the Respondent subsequently decided not to pursue that proposal he did not at least supply a witness statement from Mr. van der Burg verifying the Respondent's account of events. The Respondent has also had every opportunity to document a case demonstrating genuine arm's length negotiations with Mr. van der Burg but has failed to.
6.21. Accordingly, the Respondent's intended use of the disputed domain name could not be bona fide and he cannot demonstrate rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy. Nor for the same reason can the Respondent demonstrate circumstances within paragraph 4(c)(iii) of the Policy. Further, it is nonsense to suggest that the Respondent's proposed use could qualify as “noncommercial” under paragraph 4(c)(iii) of the Policy, since in the Panel's view there would be no purpose in promoting the website in the way described in paragraph 4.2.2 above free of charge to third-party entities such as <www.class1casino.com>.
6.22 In the light of the foregoing, the Complaint satisfies paragraph 4(a)(ii) of the Policy.
6.23 Given the finding of the Respondent's lack of good faith in terms of his proposed use of the disputed domain name, it follows that the Complainant must also succeed under paragraph 4(a)(iii) of the Policy. If, as the Panel believes, the preponderance of the evidence indicates that the Respondent either knew of or could and should readily have ascertained the Complainant's use (and, thereby, claim to entitlement) of the disputed domain name, accepting transfer of that domain name from Mr. van der Burg constitutes registration in bad faith.
6.24 Furthermore, in the light of the circumstances explained in the Amended Complaint, the proposed subsequent use of the disputed domain name by the Respondent for the VIP Affiliate Program can only be in bad faith. The Respondent's remedy, if he has one, lies against Mr. van der Burg.
6.25 In the light of the foregoing, the Respondent's request for a finding of reverse domain name hijacking by the Complainant is rejected.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pokerfriends.com> be transferred to the Complainant.
David Perkins | |
Tobias Cohen Jehoram | Mladen Vukmir |
Dated: June 3, 2010