WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Neteller plc v. Prostoprom
Case No. D2007-1713
1. The Parties
The Complainant is Neteller plc, of United Kingdom of Great Britain and Northern Ireland, represented by Brownlee LLP, Barristers & Solicitors, Canada.
The Respondent is Prostoprom, of Woodland Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pokerneteller.com> (the “Domain Name”) is registered with GoDaddy.Com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2007. On November 22, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On November 26, 2007, GoDaddy.Com, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 on December 6, 2007 (although “November 6, 2007” was mistakenly stated to be the date of commencement of the proceeding in the formal notification document given to the Respondent with the Complaint on December 6, 2007). That minor error would have been obvious to the Respondent, as the same document made it clear that the email copy of the Complaint had not been received by the Center until November 20, 2007 and the hard copy not received until December 3, 2007. The due date for Response was correctly stated to be December 26, 2007.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2007.
The Center appointed Warwick Smith as the sole panelist in this matter on December 31, 2007. 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.
The Panel is satisfied that the Center has discharged its responsibility under Rule 2 of the Rules to “employ reasonably available means calculated to achieve actual notice [of the Complaint] to Respondent”. Indeed it appears that the Respondent has had actual notice of the Complaint, which was successfully delivered to the Respondent’s physical and email addresses which are provided in the Whois information for the Domain Name and which have been confirmed by the Registrar.
4. Factual Background
The Complainant
According to the Complaint, the Complainant is a publicly-traded financial services provider which is listed on the London AIM Stock Exchange. It provides online financial services, which relate to facilitating the purchase of other services online, including third-party online gaming services. Briefly, the Complainant provides its members who are internet users with an electronic account (known as an “E-wallet”), which the member obtains through an online application process. The member then has access to the system online. Certain online merchants accept payment from these electronic accounts. The Complainant provides these online services through its website at “www.neteller.com”.
The Complainant says that there are over 3000 merchants’ websites which display the Complainant’s marks, and which accept online payments using the Complainant’s services. Some of these merchants are in the gaming industry, and the Complainant has produced some screen shots taken from gaming websites which accept online payments using the Complainant’s services, display the Complainant’s trade marks, and provide links to the Complainant’s website.
According to the Complaint, the Complainant operates in 160 countries, and has over 3 million members operating E-wallet accounts. The Complainant says that it has created a strong brand presence and an extensive reputation (through its use of a NETELLER mark) throughout the world over the period since December 2000.
The Complainant’s Trade Marks
The Complainant asserts (and the Respondent does not deny) that it is the registered proprietor of the word marks NETELLER and NETELLER.COM in a number of countries, including the United States of America. The Complainant’s United States registration of the word mark NETELLER is No. 2812884, and its United States registration of the word mark NETELLER.COM is No. 2603878.
The Respondent and the Domain Name
The Domain Name was registered on September 29, 2005.
The Domain Name resolves to a website (“the Respondent’s website”) which provides information on the game of poker, and also provides information about the Complainant and its E-wallet accounts.
The Complainant has produced extracts from the Respondent’s website, and the Panel visited the Respondent’s website on January 2, 2008.
The home page of the Respondent’s website prominently features advertising for an online casino known as “Intertops Casino”, with a “Play Now!” click-on link to that casino’s gaming site. Immediately above the Intertops Casino advertising and click-on link, there are the words “Poker Neteller”. To the right of that there is a click-on link “Skip Our Sponsor’s Message”. Clicking on that link simply takes the site visitor past the Intertops Casino advertising and link, to the bottom of the home page, where there is featured information about various forms of poker (and different ways of betting on those games), tips relating to dealing with online merchants, and some information about the Complainant’s E-wallet online payments system. The latter section contains a click-on link: “What is NETeller?” Clicking on that link takes the site visitor to a subpage which explains the service provided by the Complainant, including how a site visitor can open a NETeller account (step 1 is said to be “Sign up as a new user in “www.neteller.com” …”).
At the bottom of the home page on the Respondent’s website, there is an “About Us” link. Clicking on that link takes the site visitor to a subpage which informs the browser that “PokerNeteller International is based in West Sussex in the United Kingdom”. The text goes on to say that “PokerNeteller” is “the world’s finest database of secure online financial transactions – over 200,000 and growing. Our database is updated NETeller daily to include new online tips and neteller online news and their meanings. Our resource is free to use, allowing people to instantly look up meanings for online tips and neteller online news from the fields of internet financial online business”. The subpage goes on to say that the Respondent has also expanded its services to include a searchable database of internet secure online gaming companies, poker related articles, “and so much more”.
It will be noted from the passages quoted above from the “About Us” subpage, that the expressions “NETeller” and “neteller” have been included in the text for purposes which are clearly unrelated to the meaning intended to be conveyed by the text (e.g. “updated NETeller daily …” contains a clearly meaningless and apparently unnecessary addition to the ordinary English expression “updated daily”). Similar linguistically inappropriate insertions of “neteller”, or “NETeller”, appear in numerous places throughout the Respondent’s website.
On the home page of the Respondent’s website, there are a number of click-on links containing the word “Neteller”. First, there is “Neteller”. Clicking on this link, the site visitor is taken to a subpage headed “Poker Neteller”, under which there are set out the rules and various strategies associated with the game Five Card Draw Poker.
Clicking on “Neteller News” on the home page, takes the site visitor to a subpage which appears to contain genuine information about the Complainant, including information related to the acquisition by the Complainant of a corporation or business called Online Poker Payments (“OPP”).
In addition, information about the Complainant (which appears to be genuine), is featured in a “rolling text” section of the home page. In that “rolling text” section, there appears the following:
“PokerNETeller is announcing the birth of a new online poker and casino gambling branch. Here you’ll find articles on online money handling, online poker finance issues and so much more. The site is updated on a daily basis.”
At the very foot of the home page on the Respondent’s website, in relatively small print, the following appears:
“This site is an independent financial online gaming overview site and has got absolutely nothing to do with neteller.
All rights reserved for Poker 2006.”
In similar-sized font, but in red print, there appears below those words the following:
“This Site is not associated or affiliated with NETeller.com in any way!!!”
In the Complaint, the Complainant asserts that the Respondent is in the business of registering and using domain names which incorporate and trade on the reputations of well-known third-party trade marks. The Respondent’s business model is alleged to involve the creation of websites at such domain names, and the use of various search engine optimization strategies to increase internet traffic to those websites (or to affiliated or third-party sites), for the purpose of generating pay-per-click (“PPC”) or advertising affiliate program revenue.
The Complainant refers to a website allegedly operated by the Respondent at “www.prostoprom.com”, where the concept of search engine optimization is explained in the following terms:
“The strategy of improving a website’s rank in the different search engine’s lists … We at ProsToProm developed several unique strategies to make the different search engines love our sites. We know how MSN thinks, what makes Yahoo tick, and the way to get Google’s attention. We can make your site top any search engine’s list.”
The Complainant also refers in the Complaint to three other cases where the Respondent (or its agents, associates, or affiliates) have been responsible for disputed domain name registrations. One of them was a dispute between the parties in this case, concerning the domain names <netellerbonus.com> and <netellerreviews.com>. The Complainant was successful in that case Neteller PLC v. Prostoprom, WIPO Case No. D2006-0874.
The Respondent also registered <pokerladbrokes.com>, which was the subject of a successful complaint under the Policy by Ladbrokes PLC, Ladbrokes Betting & Gaming Limited, WIPO Case No. D2006-1498.
The third disputed Domain Name to which the Complainant referred, was netellerbonus.be. The Complainant has produced Whois information for this domain name showing the registrant as Amnon Sharoor of Woodland Hills, California, with an email address of prostoprom@hotmail.com, being the same email address as that provided in the Whois particulars for the Domain Name in this case. The Complainant has produced a print out of the home page of the website at “www.netellerbonus.be”, showing prominently a PPC advertisement providing a link to the Mansion online gaming site.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights:
1.1 The Domain Name entirely incorporates the Complainant’s NETELLER mark, and is nearly identical to the Complainant’s NETELLER.COM mark.
1.2 It is well settled that the addition of the suffix “.com” does not create a distinct mark capable of overcoming an “identical or confusing similarity” claim (citing Rollerblade Inc. v McCrady, WIPO Case No. D2000-0429), so the only difference is the addition of the prefix “poker” used in its generic sense.
1.3 The word “poker” in the field of online gaming is descriptive of sites offering online poker games. Prior Panels dealing with cases under the Policy have held that the addition of generic words to established marks does not create a distinct mark capable of overcoming a claim of identical or confusing similarity under the Policy citing Broadcom Corp v. Domain Depot, NAF Case No. 96854, Christie’s Inc. v. Tiffany’s Jewellery Auction Inc., WIPO Case No. D2001-0075, Volkswagon Aktiengesellschaft v Iggi Networks Inc., NAF Case No. 98077, and Aventis Pharma SA, Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037.
1.4 NETELLER is a coined, or invented word, with a high degree of inherent distinctiveness reinforced by widespread international use, particularly in the online gaming industry.
1.5 The word “poker” exploits the trade mark signification of NETELLER as an indication of origin, as consumers will understand the Domain Name to offer for sale online gaming services by the Complainant, thereby increasing the risk of confusion among those familiar with the online gaming industry.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, for the following reasons:
2.1 The Respondent has not been authorized or licensed by the Complainant to use the Complainant’s marks.
2.2 There is no evidence that the Respondent is known by the name NETELLER, or that the Respondent is offering any goods or services which could justify the use of that name. The Respondent’s sole use of the Domain Name is in association with a website designed to attract internet users by practising a deception on those seeking genuine NETELLER services. Any commercial use in this way is not bona fide.
3. The Domain Name was registered, and is being used, in bad faith, for the following reasons:
3.1 The Respondent was aware of the Complainant’s marks at the time of registration of the Domain Name, and intended to use the drawing power of those marks to promote the interests of its own websites for commercial gain.
3.2 The Respondent registered the Domain Name primarily to create a site to attract internet traffic for the purpose of generating advertising revenue, or of diverting internet traffic to the Respondent’s affiliated sites, or for some other illegitimate and improper purpose.
3.3 Alternatively, the Respondent registered the Domain Name (a) to prevent the Complainant from using the Domain Name, (b) to sell the Domain Name to the Complainant for an amount in excess of the Respondent’s documented costs, or (c) to sell the Domain Name to a competitor of the Complainant. The Complainant cannot conceive of a legitimate, fair, or good faith reason for registration of the Domain Name.
3.4 The Respondent’s bad faith use of the Domain Name is evidenced by the multiple recurrences of the Complainant’s mark NETELLER within the text on the Respondent’s website. The multiple uses of the Complainant’s mark are designed to improve the Respondent’s website’s performance in search engine rankings, thereby allowing the Respondent to earn greater revenue from advertising. For example, one web page on the Respondent’s website contains 66 uses of the mark NETELLER in often gratuitous and meaningless ways, purely for the purpose of increasing the number of recurrences of the word to attract attention from search engines.
3.5 The Respondent’s website contains references to the Complainant, and copies of genuine press releases issued by the Complainant, but with the gratuitous and meaningless addition of the expression “PokerNetteller”. Such use results in confusion about the relationship between the Respondent and the Complainant and gives the false impression that the Respondent is somehow endorsed by, or affiliated or associated with, the Complainant.
3.6 The Respondent’s website contains internal links within the site using the Complainant’s NETELLER mark as a hyperlink, falsely suggesting an affiliation or relationship between the Respondent and the Complainant.
3.7 The Respondent’s website is also designed to contain multiple links to other websites, showing that the Respondent is using the Respondent’s website as a platform from which to coat-tail on the fame of the Complainant’s mark, attracting internet traffic for the Respondent’s commercial gain. Specifically, the Respondent’s website contains links to third party online gaming sites, and those links form part of an affiliate advertising program which generates revenue for the Respondent.
3.8 The Respondent will be deriving revenue from the prominent advertisement for Intertops Casino. Customers coming to the Intertops website at “www.intertops.com” via the Respondent’s website will be tracked, and provide revenue for the Respondent for each use of the link from the Respondent’s website. The link from the advertisement on the Respondent’s website shows that it is clearly part of the Intertops.com affiliate program. (This program is described in an Intertops document, a copy of which was annexed to the Complaint. The document describes the system under which Intertops Casino would pay the Respondent a referral commission based on a percentage of Intertops’ net house profits.)
3.9 The Respondent has also included links on the Respondent’s website, to sites operated or directly affiliated with the Respondent. Specifically, the Respondent’s website contains links to the sites at “www.pokerjeux.be”, “www.dejeuxcasino.com”, and “www.sweden-poker-online.se”. These three websites are at domains owned by the Respondent (or by Amnon Sharoor of Woodland Hills, California, who has the same internet address as that provided by the Respondent in the Whois details for the Domain Name).
3.10 Internet users familiar with the NETELLER marks might use terms such as “neteller”, with or without the term “poker”, in search engines, in the hope of locating a website they assume will tell them more about genuine NETELLER services in relation to online games such as poker. Instead of being taken to the site for which they are searching, internet users will be diverted to the Respondent’s website. Such use by the Respondent causes confusion and deception in the minds of internet users and the Complainant’s customers, by giving the impression that (a) the Domain Name is a reference to the Complainant, or (b) the Respondent is somehow affiliated or associated with or endorsed or licensed by the Complainant. This confusion is compounded by the fact that the Domain Name resolves to a website which contains multiple false or misleading references to the Complainant.
3.11 The Respondent has achieved some success in diverting internet traffic to the Respondent’s website. The online traffic rank monitor Alexa listed the Respondent’s website on October 30, 2007, as having had an average of 4,445,297 visits per day (averaged over a three month period).
3.12 The use of the Domain Name in association with PPC or affiliate advertising programs, is evidence of bad faith under the Policy, since it shows that the Respondent is intent on attracting, for commercial gain, internet users to the Respondent’s site by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement (citing Sanofi-Aventis, Aventis Pharma SA and Aventis Pharma Deutschland GmbH v. IN4 Web Services, WIPO Case No. D2005-0938, and RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540).
3.13 The “disclaimer” on the Respondent’s website – in all cases, the disclaimer appears to the viewer only after the prominent links on the Respondent’s website have been presented. The site visitor has access to the advertising links and other internal links prior to seeing the disclaimer, and will likely use those links before being confronted by the disclaimer. The disclaimer comes after a full page of advertising and marketing, where the NETELLER name appears many times. On some of the internal web pages on the Respondent’s website, no disclaimer appears at all.
In the foregoing circumstances, the disclaimer is ineffective to negate or diminish the misleading effect of using such a prominent mark as NETELLER in the Domain Name. It is only by unauthorized use of the Complainant’s mark that the internet user is brought to the Respondent’s website (containing the disclaimer) in the first place. A number of decisions under the Policy have found that the presence of a disclaimer, particularly where it is in small typeface at the bottom of a page, after the appearance of other advertising and links, cannot defeat a finding of bad faith registration and use (see Dr. Ing h.c.F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224, Pliva Inc. v. Eric Kaiser, WIPO Case No. D2003-0316, SENSIS Pty Limited, Research Resources Pty Limited v. Kevin Goodall, WIPO Case No. 2006-0793, IFL Worldwide and the Federal Internationale de Football Association v. Western States Ticket Service, WIPO Case No. D2001-0070).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Issue – Mistaken Date in Notice of Commencement
The Panel is satisfied that there is no reasonable possibility of the Respondent having been misled or confused by the mis statement (in the Center’s Notice which accompanied the service copy of the Complaint), of the date of commencement of the proceeding. Both the Notice itself and the covering email were clearly dated December 6, 2007, and the wording of both documents clearly implied that this was the first notice of the proceeding the Respondent was being given. Logically, the actual date of the commencement of the proceeding could not have been any earlier than the date of that (first) notice to the Respondent. Further, the last date for filing a response was stated in bold type, in a section of the Notice prominently headed “Deadlines”, to be “December 26, 2007”, and the following section of the Notice, headed “Default”, made it clear that the Respondent would only be regarded as being in default if a response was not sent by “the above date”. In the context, the “above date” could only have been December 26, 2007.
The Respondent is obviously an experienced domain name registrant, who has been a respondent in proceedings under the Policy on several occasions in the past. That he might have been misled or confused, or otherwise prejudiced, by the technical error in the Notice, is not plausible.
The date of commencement of an administrative proceeding under the Policy can also affect the concerned Registrar, in matters such as transfers of domain names during a dispute (Policy, Paragraph 8), and the availability of Court proceedings (Policy, paragraph 4(k)). The date is defined in the Rules, at Paragraph 4(c), as being the date on which the Center actually completes its service obligations under Paragraph 2(a) “in connection with forwarding the Complaint to the Respondent.” That actual date would also have been obvious to the Registrar, GoDaddy.com,Inc., because copies of the Complaint and the Center’s accompanying Notice were sent to the Registrar at the same time as they were sent to the Respondent.
In the foregoing circumstances, the Panel is of the view that this single error in the Center’s Notice did not cause any prejudice to the Respondent, and that both the Respondent and the Registrar have received sufficient notice of the actual date of commencement of the proceeding and the date by which any response was to have been filed.
B. General Principles under the Policy
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondents have 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.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
C. Identical or Confusingly Similar
The Complainant has sufficiently proved that it is the registered proprietor of the marks NETELLER and NETELLER.COM. Although it has not provided copies of the relevant registration certificates, it has provided registration numbers for its United States registrations of those marks, and the Panel has been able to confirm that the Complainant holds the relevant registrations by visiting the website maintained by the United States Patent and Trademark Office at “www.tess2.uspto.gov”. (The Panel undertook that research only because the Complainant appeared to enjoy common law rights in the NETELLER mark in any event, the merits of the Complaint appeared to be overwhelmingly in the Complainant’s favor, and no response had been filed. As noted by the panel in Coloplast A/S v Domain Drop S.A., WIPO Case No. D2007-1559, where (in similar circumstances to this case) the panel also elected to undertake its own research by visiting the USPTO website, “complainants should not rely on the Panel undertaking such investigations.” Panels will not normally carry out a complainant’s work for it.)
Even without proof of the United States registrations, the Panel would have been satisfied from the evidence provided in the Complaint that the Complainant has made sufficient use of the expression “Neteller” as a service mark, to establish that the Complainant is entitled to assert common law, or unregistered, service mark rights in NETELLER. As an invented word, “Neteller” is inherently distinctive, and not much in the way of proof of prior use is usually required to establish common law rights in such words. In this case, the Complainant appears to have made very substantial service mark use of the NETELLER mark worldwide, and in the absence of any response, its entitlement to claim a “right” in that mark for the purposes of Paragraph 4(a)(i) of the Policy must be regarded as sufficiently proven.
The Domain Name differs from the NETELLER.COM mark only by the addition of the word “poker”.
The Domain Name wholly incorporates the Complainant’s NETELLER mark, and numerous panels have found that the fact that a domain name wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See, for example Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, referred to in the three-member Panel decision The Ritz Hotel Ltd v. Damir Kruzicevic, WIPO Case No. D2005-1137, and by this Panel in Quintessentially (UK) Ltd v. Mark Schnorenberg/Quintessentially Concierge, WIPO Case No. D2006-1643.
The dominant part of the Domain Name is clearly the coined, or invented expression “neteller”. The word “poker” is merely descriptive of a particular card game. Furthermore, the evidence clearly shows that the Complainant has used its NETELLER mark extensively to denote the origin of the services which it provides to facilitate online betting on the game of poker. In that regard, the situation is similar to a number of cases where panels have held that forming a domain name by adding to a complainant’s trade mark a word which is descriptive of the goods or services provided by the complainant under that mark, only serves to increase the likelihood of confusion – see for example the decision of this Panel in Société des Participations du Commissariat à L’Energie Atomique v. David Morton, WIPO Case No. D2007-0679, where the at-issue domain name was <arevachallenge.com>. The panel in that case noted:
“In this case, the Complainant contends (and the Respondent has not denied) that the word “AREVA” has no meaning in the English language. As an apparently made-up word coupled with the ordinary English word “challenge”, the “areva” part of the Domain Name is the distinctive part. As in the Ritz Hotel and Quintessentially cases [supra], the additional word which has been joined with the trade mark to form the Domain Name (the word “challenge”), only serves to increase the likelihood of confusion, as a “challenge” describes precisely one of the Complainant’s well-publicized ventures (the America’s Cup campaign).”
So in this case the addition of the word “poker” only increases the likelihood of confusion, as the Complainant’s NETELLER mark is used extensively in connection with the facilitation of placing bets in poker games which are played online.
For the foregoing reasons, the Panel is satisfied that the Domain Name is confusingly similar to the NETELLER mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making 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 or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to the Complainant’s NETELLER and NETELLER.COM marks, and the Complainant has not authorized the Respondent to use those marks, whether in the Domain Name or otherwise. In the absence of anything in the record indicating that the Respondent might have some right or legitimate interest in the Domain Name, proof of those matters is sufficient to establish a prima facie case of “no right or legitimate interest”, and the evidential burden under Paragraph 4(a)(ii) of the Policy shifts to the Respondent.
No response has been filed, and the record does not suggest that any of the examples of rights and legitimate interests set out at Paragraph 4(c) of the Policy could have been raised by the Respondent.
The fact that a respondent has been commonly known by an at-issue domain name does sometimes provide a basis for a right or legitimate interest under Paragraph 4(c)(ii) of the Policy, and the Panel notes that the Respondent’s website in this case does include the words:
“PokerNeteller – Who are we?
PokerNeteller International is based in West Sussex in the United Kingdom….
What we do.
PokerNeteller has the world’s finest database ….”
That language perhaps carries a possibility that the Respondent or its business might have been “commonly known by” the Domain Name.
But in the Panel’s view the material on the Respondent’s website is not sufficient to provide a defense under Paragraph 4(c)(ii) of the Policy. First, a respondent must produce sufficient evidence to show that he or she has been “commonly known” by the Domain Name (see Banco Espirito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890, referred to by this Panel in Sanderling Pty Limited, trading as Thimblelady v. Roxanne International, WIPO Case No. D2007-0385). In this case, the Respondent has produced no evidence at all, and the wording on the Respondent’s website referred to above does not clearly show that the Respondent has been commonly known by the name “Poker Neteller” (as opposed to “PokerNeteller International” (the Panel’s emphasis)).
But there is an even more fundamental reason why Paragraph 4(c)(ii) of the Policy can have no application. It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become “commonly known by” the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to “create” a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy.
In the Panel’s view, the better interpretation of Paragraph 4(c)(ii) is that, to come within the safe harbor of that provision, a respondent (or his/her organization or business) must have been commonly known by the at-issue domain at the time of registration. There is no evidence of that in this case.
The Panel is therefore satisfied that Paragraph 4(c)(ii) of the Policy does not apply.
Nor is there anything in the record to suggest that Paragraph 4(c)(iii) of the Policy might apply. That provision might apply if the Respondent had been making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain. The Respondent’s website shows clearly that the Respondent’s activities are commercial in nature (revenue generation through affiliate advertising or PPC programs). So Paragraph 4(c)(iii) of the Policy can have no application.
Turning to Paragraph 4(c)(i) of the Policy, the Respondent does appear to have been using the Domain Name in connection with the offering of services (the provision of information about the game of poker, about the Complainant, and about making payments on online gaming sites). The question is whether the use has been in connection with a bona fide offering of those services.
The Panel is satisfied that the Respondent’s use and its offering of its services have not been bona fide. First, “Neteller” is an invented word, and the Complainant has shown that it has a significant and established presence on the Internet, including a presence on a number of gaming websites. There is no serious possibility of the Respondent having thought of the Domain Name without knowledge of the Complainant and its activities, and that is confirmed by the numerous references to the Complainant on the Respondent’s website. Secondly, the Panel can think of no reason for the Respondent to scatter the Complainant’s mark on an apparently random and meaningless basis across the Respondent’s website, other than the reason advanced by the Complainant – the frequent use of “neteller” is designed to increase internet traffic to the Respondent’s website by providing a greater level of “attraction” to search engines searching on that expression. It seems to the Panel to be highly likely that most such search engine searches would be initiated by Internet users looking for sites associated with the Complainant.
Thirdly, the Panel accepts the Complainant’s submission that internal hyperlinks on the Respondent’s website which use the Complainant’s NETELLER mark, falsely suggest an affiliation or relationship between the Respondent and the Complainant.
The use on the Respondent’s website of genuine press releases issued by the Complainant, and other apparently accurate information about the Complainant, serves only to convey the impression that the Respondent is somehow endorsed by or associated with the Complainant. That impression is aggravated by the frequent unnecessary use of the expression “neteller” on the Respondent’s website, and the use (as click-on links) of the expressions “Neteller Poker”, and “Neteller Tips”. The latter link takes the site visitor to a subpage headed “Tips”, under which there are offered various tips on financial security matters which are listed as “Poker Neteller” tips. Not only has the Respondent been using the expression “neteller” on the Respondent’s website in a meaningless, gratuitous way, it has also on occasion been using “Neteller” interchangeably with “Poker Neteller”, and it has gratuitously inserted the expression “PokerNeteller” into sections of the Respondent’s website which provide (otherwise) genuine news about the Complainant or its services or activities. In addition to the “search engine optimization” strategy referred to above, those actions appear to have been calculated to create the misleading impression that the Complainant is somehow associated with the Respondent.
For all of the foregoing reasons, the Panel is satisfied that the Complainant has sufficiently proved that the Respondent has not been using the Domain Name in connection with a bona fide offering of services, and that the Respondent has no right or legitimate interest in the Domain Name.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Complainant has also proved this part of the Complaint.
“Neteller” is a coined, or invented word, and in the absence of any response, the Panel concludes that the Respondent’s intention in incorporating that word into the Domain Name was to create the impression that any website at the Domain Name would be associated with one of the services the Complainant provides, namely the provision of online payment systems designed to facilitate betting on online games of poker. The press releases and other information on the Respondent’s website relating to the Complainant remove any possibility of doubt that the Respondent was not only well aware of the Complainant when the Domain Name was registered, but also intended that internet users should understand the “neteller” part of the Domain Name as a reference to the Complainant or its services.
The numerous inappropriate (and apparently random) uses of the word “neteller”, and the use of the expressions “Poker Neteller” and “Neteller Poker” interchangeably on the Respondent’s website, convey the strong impression that the Respondent’s main concern was to use the expression “neteller” as often as possible on the Respondent’s website, thereby increasing search engine-generated internet traffic from users looking for “Neteller” sites. That is no more than a blatant example of trading off the goodwill of someone else’s trade mark.
The Panel has considered the effect of the press releases (and other apparently accurate information about the Complainant), on the Respondent’s website. In the absence of any response, the Panel concludes that they have probably been placed on the Respondent’s website to give the appearance that the Respondent has been exploiting a legitimate interest in providing information on the Internet about the Complainant and its services. In fact, the inclusion of this information without the Complainant’s consent, and interspersed with gratuitous and inappropriate references to “Poker Neteller”, serves only to create a false and misleading impression of an association of some sort between the Respondent and the Complainant.
The Panel finds that the circumstances fall squarely within Paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s NETELLER mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
That conclusion is not affected by the inclusion of small-print “disclaimers” at the foot of the home page on the Respondent’s website. The Panel accepts the Complainant’s submission that, by the time an internet browser has reached the Respondent’s website, the damage has been done; the bad faith use of the Complainant’s mark in the Domain Name, has successfully completed its function as a “hook” intended to catch internet-browsing “fish”, and take them to the Respondent’s website. The disclaimers are in small print, and would likely only be read by site visitors after they have already been exposed to the very prominent online casino advertising and link above them.
It is not necessary for the Panel to refer to the various other arguments advanced by the Complainant. In the event, no Response has been filed, and the Panel has been able to reach the conclusion that the Respondent has acted in bad faith, without the need to traverse all of the Complainant’s arguments.
7. Decision
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 <pokerneteller.com> be transferred to the Complainant.
Warwick Smith
Sole Panelist
Dated: January 11, 2008