WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PartyGaming Plc v. Lewis Clipper
Case No. D2006-0457
1. The Parties
The Complainant is PartyGaming Plc, Gibraltar, United Kingdom of Great Britain and Northern Ireland, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Lewis Clipper, Westmont, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <partypokerplayer.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2006. On April 13, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On April 13, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 21, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2006.
The Center appointed Adam Taylor as the sole panelist in this matter on May 22, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant (including its related companies and predecessors in interest) is one of the world’s leading online gaming companies and has been engaged in online gaming since 1997.
The Complainant operates a number of online gaming websites including an online poker gaming service at “www.partypoker.com” which was launched in July 2001. That site now has annual revenue in excess of $123 million and had more than 6 million total registered players as of March 31, 2005. Another of the Complainant’s site is an online casino at www.starluckcasino.com.
Since June 30, 2005, the Complainant has been listed on the London Stock Exchange and has a market capitalisation of over $8 billion. In the year to December 31, 2005, the Complainant’s group had revenues of $977.7m.
The Complainant’s group, which is regulated and licensed by the Government of Gibraltar, has over 1,200 employees located in the head office and operations centre in Gibraltar, a business process outsourcing operation in Hyderabad, India and a marketing services subsidiary in London. The group has customers in over 190 countries.
The Complainant and/or its group owns, inter alia, the following trademark registrations for PARTYPOKER:
Trademark |
Jurisdiction |
Application/Registration Date |
Registration No. |
PartyPoker |
Australia |
12 Apr 2005/ 9 Jan 2006 |
1050485 |
PartyPoker |
Benelux |
2 Dec 2005/7 Dec 2005 |
782215 |
PartyPoker |
Canada |
24 Jul 2001/22 Dec 2003 |
TMA598288 |
PartyPoker |
Canada |
25 Jun 2003/15 Sep 2004 |
TMA619641 |
The Respondent registered the disputed domain name on October 10, 2004.
As of April 11, 2006, the disputed domain name was used for a website entitled “Play Poker” with commercial links to the Complainant’s own website as well as various online gaming businesses in competition with the Complainant. The notice at the top of the webpage included the following statement: “win big money at party poker and starluck casino”.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant’s website at “www.partypoker.com” has been the subject of extensive advertising and promotion, including television and print media advertising, and has received substantial media coverage. As a result of the Complainant’s long and extensive use, advertising, promotion and public recognition, the inherently distinctive PARTYPOKER has become famous and well-known worldwide.
The disputed domain name is confusingly similar to the Complainant’s PARTYPOKER mark because it incorporates the entirety of that mark. The addition of the generic or descriptive term “player” does not distinguish the disputed domain name from the Complainant’s mark.
Rights or Legitimate Interests
The Respondent is not generally known by that name or mark and has not acquired any trademark or service mark rights in that mark.
The Complainant has not licensed or otherwise permitted Respondent to use the PARTYPOKER mark.
The Respondent uses the disputed domain name for a website featuring numerous links to various commercial websites providing online gaming services in competition with the Complainant. Thus, Respondent has registered and used the disputed domain name to unlawfully divert and siphon off visitors seeking Complainant’s website. Such use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names.
Registered and Used in Bad Faith
The disputed domain name is deliberately used for commercial gain to attract internet users to Respondent’s website based on a likelihood of confusion with the Complainant’s mark. The Respondent registered and began unauthorized use of the disputed domain name for commercial benefit long after the Complainant’s adoption, use and registration of its PARTYPOKER mark.
The widespread use and fame of the PARTYPOKER mark in the gaming industry, the inherent distinctiveness of the mark, and the Complainant’s prior domain name registrations and trademark applications, lead to conclusion that Respondent registered and used the disputed domain name with actual knowledge of the Complainant’s rights. Actual knowledge of the Complainant’s rights in the PARTYPOKER mark is further demonstrated by the reference to “Starluck Casino” on the Respondent’s website.
There is no plausible reason for the Respondent’s selection of the disputed domain name other than as a deliberate attempt to profit unfairly from confusion with the Complainant’s PARTYPOKER mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrates that it has “rights” to the trademark the Complaint is based upon. The Panel notes that the trademark registrations annexed to the Complaint are not held by the Complainant itself but rather its subsidiaries or related companies. The Complainant claims, in addition to having registered trademark rights through its subsidiaries, that it has established valuable goodwill to the term “partypoker” through “long and extensive use, advertising, promotion and public recognition”.
The Panel refers to a recent decision involving the Complainant, PartyGaming Plc v. Kriss Vance, WIPO Case No. D2006-0456, in which the panel discussed the issue and found as follows :
“In this particular case, the Panel notes from the Complainant Group’s website, that one of the Group’s key strategies is to “enhance the business through the integration of the Group’s existing brands under a single brand …”. Particularly in the absence of any challenge from the Respondent, the Panel is prepared to infer that existing registered trademarks held by subsidiary corporations within the Complainant’s group are probably held for the benefit of all companies within the Group, including the Complainant (whether as licensee or on the basis that the registered marks, including the Complainant’s mark, are held on trust for all members of the Group, including the Complainant).”
The Panel agrees with the panel in the above-referenced decision and, accordingly, finds that the Complainant has demonstrated that it has rights to the trademark PARTYPOKER for the purposes of this proceeding.
The generic term “player” fails to dispel the connection between the domain name and the trademark; indeed that term reinforces the link. The domain suffix can be disregarded for the purposes of the comparison.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from internet users seeking the Complainant. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is difficult to conceive of any genuine reason why the Respondent would want to register or use the disputed domain name and the Respondent has not come forward to offer any explanation.
It is clear from the disputed domain name itself that the Respondent must have been aware of the Complainant and/or its trade mark when it registered the domain name. Such awareness is also evident from the Respondent’s website at the disputed domain name, in particular the link to the Complainant’s own website and the statement: “win big money at party poker and starluck casino”. (“Starluck Casino” is another brand of the Complainant.)
Furthermore the Respondent’s website contains affiliate links to sites competing with the Complainant.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
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, <partypokerplayer.com> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: June 5, 2006