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and Mediation Center
PartyGaming Plc v. WHOis Privacy Protection Service, Inc./Henao Berenice
Case No. D2006-0508
1. The Parties
The Complainant is PartyGaming Plc, 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 WHOis Privacy Protection Service, Inc./Henao Berenice, Port
Moresby, Papua New Guinea.
2. The Domain Name and Registrar
The disputed domain name <patrypoker.com> (the “Domain Name”)
is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2006. On April 24, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 25, 2006, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 11, 2006. The Center verified that the Complaint and the Amendment thereto 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 May 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2006.
The Center appointed Warwick Smith as the sole panelist in this matter on June 20, 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.
In view of the fact that the Respondent did not file
any Response, the Panel has checked to ensure that the Center has discharged
its duty under the Rules to notify the Complaint to the Respondent. The Panel
is satisfied that the Center has discharged that responsibility.
4. Factual Background
The Complainant and its related companies and their predecessors, comprise one of the world’s leading online gaming groups, having been engaged in providing online gaming services since 1997. According to the website at “www.partygaming.com”, the Complainant owns and operates the world’s largest online poker room at “www.partypoker.com”. The Complainant’s Group also owns a substantial online casino, and online bingo games, at a variety of websites, including <partycasino.com>, <starluckcasino.com>, and <partybingo.com>.
According to the website, the Complainant is listed on the London Stock Exchange, with a market capitalization of over $8 billion and revenues in the year to December 31, 2005, of $977 million.
The website explains that the Complainant Group is regulated and licensed by the government of Gibraltar, and has over 1,200 employees in its head office and operations center in Gibraltar, a business process outsourcing operation in India, and a marketing services subsidiary in London. The website states that the group has customers in over 190 countries.
On the “Mission and Strategy” page of the website, one of the Complainant’s key strategies is said to be: “to enhance the business through the integration of the Group’s existing brands under a single brand with unified customer accounts and introduce new games under the “Party” brand”.
In August 1999, a member of the Complainant’s Group registered the domain name <partypoker.com>. According to the Complainant, the website at that address has since become the number one online poker site in the world, with annual revenues in excess of $123 million. As of March 31, 2005, the website at “www.partypoker.com” had more than 6 million registered players.
The partypoker website has been the subject of extensive advertising and promotion, including both television and print media advertising. As a result, the Complainant says that the mark PARTYPOKER (“the Complainant’s mark”) has become famous and well known worldwide.
The Complainant’s Group Trademarks
In July 2001, a member of the Complainant’s Group applied to register the Complainant’s mark with the United States Patent and Trademark Office, and with the Canadian Trademarks Office.
The Canadian application led to the registration of the Complainant’s mark in Canada for various services, including “providing online interactive casino facilities, conducting online interactive games of skill, contests, sweepstakes, lotteries and wagering, that may all be accessed over means of local and global computer and communication networks”.
The Complainant has produced copies of trademark certificates issued by the United States Patent and Trademark Office, for two separate “PARTYPOKER” marks. One is the Complainant’s mark, with the letter “o” in “Poker” stylized (it has a $ sign in the middle of the “o”). That registration is in International Classes 9, 41 and 42, and has effect from December 10, 2003. The Class 41 registration is for “arranging, organizing and conducting entertainment services in the form of online contests and games of chance, in Class 41”.
Members of the Complainant’s Group have also registered the Complainant’s mark in a number of other jurisdictions, including Australia (with effect from April 12, 2005), the Benelux countries (with effect from September 2, 2005), and Japan (with effect from February 18, 2005).
The Complainant has also produced an OHIM certificate for the mark PARTYPOKER.COM MILLION. This registration covers various goods or services in International Classes 9, 41 and 42, and was registered in 2004.
The Complainant’s Group has also sought to register numerous trademarks containing the word “party”. In the United States alone, the applications include applications to register PARTYBACCARAT, PARTYBACKGAMMON, PARTYBASEBALL, PARTYBASKETBALL, PARTYBET, PARTYBETS, PARTYBINGO, and so on. As the Complainant puts it, the Complainant’s group now owns “a PARTY-based family of marks”.
The Complainant does not appear to be the registered proprietor of the PARTYPOKER (with stylized $ sign) mark or of any of the other registered trademarks discussed above. Some are registered in the name of a Gibraltar-based corporation called WPC Productions Limited, while some of the Canadian registrations are in the name of “WPC Productions”, of the British Virgin Islands. The registered proprietor named in the OHIM registration, is yet another corporation, iGlobalMedia Marketing (UK) Limited. The different ownership of the various marks is explained in the Complaint as follows:
“The relevant registrations and applications appear in the names of subsidiaries that are directly or indirectly wholly-owned and controlled by [the Complainant]: WPC Productions Limited, WPC Productions Inc …iGlobalMediaMarketing (UK) Limited…”
The Respondent and the Domain Name
The Domain Name was originally registered on January 14, 2003. On September 8, 2005, it was transferred to the Respondent. When this Complaint was originally filed, the named Respondent was “Whois Privacy Protection Service, Inc”. As a result of the Registrar’s response to the Center’s verification request, a deficiency notice was issued to the Complainant advising that the identity of the true registrant was Henao Berenice of Papua, New Guinea. An Amended Complaint was subsequently filed naming Henao Berenice as the Respondent.
At the time of filing the Complaint, the Domain Name
pointed to a website page with what appear to be commercial links to various
organizations, including online gaming businesses which compete with the online
services offered by the Complainant Group. The links are listed under the headings
“Popular Links” and “Popular Categories”, and they include
links to the Complainant’s “www.partypoker.com” website.
5. Parties’ Contentions
Domain Name confusingly similar to trademark or service mark in which Complainant has rights
(i) The Complainant has rights in the Complainant’s
mark. The various registrations of the Complainant’s mark are held by
subsidiary companies which are directly or indirectly wholly-owned and controlled
by the Complainant. In those circumstances, it is appropriate to recognize the
Complainant as the owner of the Complainant’s mark (citing Grupo Televisa,
S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel,
Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO
Case No. D2003-0796).
(ii) The Domain Name is nearly identical to the Complainant’s mark. The Respondent has simply transposed the letters “r” and “t” in the “PARTY” portion of the Complainant’s mark.
(iii) The deliberate transposition of letters in that
fashion is an example of the practice known as “typo squatting”,
where a respondent intentionally misspells the complainant’s trademark
in order to attract internet users who have mistyped the complainant’s
corresponding URL address (citing Volvo Trademark Holding, AB v. Unasi, Inc,
WIPO Case No. D2005-0556). The practice
of typo squatting has consistently been regarded as creating domain names confusingly
similar to the relevant marks (citing Acuity, Inc v Netsolutions Proxy Services,
WIPO Case No. D2005-0564, Pfizer Inc
v. Mark Catroppa, WIPO Case No. D2002-100, and Swarovski AG v. Modern
Empire Internet Limited, WIPO Case No. D2006-0148).
Respondent has no rights or legitimate interests in the Domain Name
(i) The Respondent is not generally known by the Domain Name, and has not acquired any trademark or service rights in the Domain Name or in the Complainant’s mark.
(ii) The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s mark in connection with the Respondent’s website.
(iii) The Respondent uses the Domain Name as the address
of a website featuring numerous links to various commercial websites which provide
online gaming services in competition with the Complainant. The Respondent has
registered and is using the Domain Name to unlawfully divert visitors seeking
the Complainant’s “PartyPoker” website. That is not a bona
fide offering of goods or services, nor a legitimate non-commercial or fair
use of the Domain Name (citing National Association of Professional Baseball
Leagues v. Zuccarini, WIPO Case No. D2002
Respondent has registered and is using the Domain Name in Bad Faith
(i) The Domain Name is being used for commercial gain to attract internet users to the Respondent’s website, based on a likelihood of confusion with the Complainant’s mark.
(ii) The Respondent acquired and began using the Domain Name long after the Complainant’s adoption, use and registration of the Complainant’s mark. At the time the Domain Name was registered, the Complainant had made substantial use of the Complainant’s mark and the <partypoker.com> Domain Name, and had filed applications to register the Complainant’s mark in the United States and Canada.
(iii) The widespread use and fame of the Complainant’s mark in the gaming industry, the inherent distinctiveness of the mark, and the Complainant Group’s prior domain name registrations and trademark applications, lead to the conclusion that the Respondent registered the Domain Name with actual knowledge of the Complainant’s rights. That actual knowledge is further demonstrated by the use of “Party Poker” and “Partypoker” on the Respondent’s website.
(iv) There are no plausible reasons for the Respondent’s selection of the Domain Name, other than as a deliberate attempt to profit unfairly from confusion with the Complainant’s mark.
(v) The fact that the Respondent registered a common
misspelling of the Complainant’s mark is further evidence of registration
and use in bad faith (citing Six Continent Hotels Inc v. null John Zuccarini
d/b/a Country Walk, WIPO Case No. D2003-0161,
Ameriquest Mortgage Company v. Phayze Inc, WIPO
Case No. D2002-0861, Deutsche Bank AG v. New York TV Tickets Inc,
WIPO Case No. D2001-1314, and ACCOR
v. Brigit Klostermann, WIPO Case No. No.
(vi) The foregoing conduct falls within paragraph 4(b)(iv) of the Policy – the Respondent has deliberately used the Domain Name for commercial gain to divert internet users based on a likelihood of confusion with the Complainant’s mark.
The Respondent has not filed any Response.
6. Discussion and Findings
A. General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(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 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.
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 trademark 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 trademark 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.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the 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 trademark 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 trademark or service mark at issue.
Paragraph 5(e) of the Rules provides that if the Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute based upon the Complaint.
Paragraph 14(b) of the Rules provides that:
“(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under these Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
B. Identical or Confusingly Similar
The various registered proprietors of the Complainant’s mark are wholly-owned and controlled subsidiaries of the Complainant. The Complainant submits that, in those circumstances, the Complainant itself has “rights” in the Complainant’s mark for the purposes of paragraph 4(a)(i) of the Policy.
In Party Gaming Plc v. Kriss Vance, WIPO Case
No. D2006-0456, a decision of this Panelist, in which the complainant was
the same Complainant as in this case, the Panel considered the question of whether
a parent company must necessarily have “rights” in a trademark or
service mark owned by its subsidiary. After considering a number of cases referred
to by the Complainant in that case, the Panel said:
“In the end, this Panel prefers the view that the parent company must have some right to use or otherwise deal with the mark itself, whether under an express or implied license from its subsidiary, or perhaps because the subsidiary holds the mark in trust for the parent company and/or others within the group.”
On further consideration, the Panel would amend the last part of that proposition to read “in trust for others within the group including the parent company”. That refinement would not have affected the outcome in the Kriss Vance case, for the reasons set out below. Equally, it does not affect the outcome of this case.
There was no response filed in the Kriss Vance case, and the point was therefore not fully argued. But in the end that did not matter, as the Panel took the view that the evidence produced was sufficient in any event to satisfy the test proposed. The Complainant had produced a copy of the website at “www.partypoker.com”, including the statement on that website that one of the Group’s key strategies was to “enhance the business through the integration of the Group’s existing brands under a single brand …” the Panel took the view that that statement was sufficient to support an inference that existing registered trademarks held by subsidiary corporations within the Complainant’s group were probably held for the benefit of all companies within the Group, including the Complainant, and that the Complainant therefore had rights in those registered marks.
The same result followed, on the same relevant evidence, in the later case
of Party Gaming Plc v. TPCR Development, (WIPO
Case No. DTV2006-0004).
The same relevant evidence has been produced by the Complainant in this Complaint, and, in the absence of a response, the same inference is appropriate here.
The Complainant has therefore produced sufficient evidence to show that it has a right in the Complainant’s mark for the purposes of paragraph 4(a)(i) of the Policy.
There is no doubt that the Domain Name is confusingly similar to the Complainant’s mark. The only difference is the two transposed letters, and that difference would be easily missed by some Internet users. The Panel accepts the Complainant’s submission that this is an example of “typo squatting”, where an obvious intention to capitalize on the near-identity between the Domain Name and the Complainant’s mark underscores the confusing similarity between the two. The Complainant has proved this part of the Complaint.
C. Rights or Legitimate Interests
In Cassava Enterprises Ltd. Cassava Enterprises (Gibraltar) Limited v.
Victor Chandler International Limited, WIPO
Case No. D2004-0753, the panel said:
“Although the Policy requires that the complainants must prove each of the elements in paragraph 4(a), it is often observed that difficulties are posed for a complainant in proving a negative, namely that the Respondent does not enjoy some right or legitimate interest in the domain at issue. The wording of paragraph 4(c) of the Policy appears to envisage the Respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, a finding of “no legitimate right or interest” should normally follow if the respondent does not advance any plausible “right or legitimate interest” case. If the respondent does put forward such a case, the Panel decides the issue on the basis of all of the evidence, with the complainant carrying the ultimate burden of proof.”
In this case, the Domain Name is confusingly similar to the Complainant’s mark, and the Complainant has not authorized the Respondent to use the Domain Name. In the absence of any Response, those facts, coupled with the Panel’s findings on the question of bad faith (see section 6D of this decision, below), are sufficient proof of the matters required to be proved under paragraph 4(a)(ii) of the Policy. The Panel finds that the Respondent has no right or legitimate interest in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Panel finds this part of the Complaint proved, for the following reasons:
1. The Domain Name is confusingly similar to the Complainant’s mark, and the Complainant has not authorised the Respondent to use the Complainant’s mark (or any mark confusingly similar thereto), or to register the Domain Name.
2. The Respondent has no right or legitimate interest in the Domain Name.
3. The Domain Name was acquired (and therefore registered) by the Respondent on September 8, 2005. By then, the Panel is satisfied that the Complainant group had an internationally established reputation in the Complainant’s mark in the field of online gaming. The Complainant group had also by then registered the Complainant’s mark in a number of jurisdictions, including Canada, Australia, Japan, and the Benelux countries.
4. The Panel is satisfied that the Respondent knew of the Complainant’s mark (and the Complainant’s website at “www.partypoker.com”) when the Domain Name was registered by the Respondent. The website to which the Domain Name resolves includes links to websites which provide online gaming services, including a link to the Complainant’s website at “www.partypoker.com”. In the absence of any response, that is sufficient proof that the Respondent, even though apparently based in Papua New Guinea, was aware of the Complainant group and the Complainant’s mark when the Domain Name was acquired/registered in September 2005.
5. In the absence of any response, there is no plausible explanation for the Respondent’s decision to acquire a domain name consisting of the name “patrypoker”, other than a desire to trade off the confusion likely to be created by the similarity of that name and the Complainant’s mark. The inevitable inference created by that similarity and the linking of the Domain Name to sites providing online gaming services, is that the Respondent was engaging in the practice of “typo squatting” (as submitted by the Complainant). The Panel accepts the Complainant’s submission that “typo squatting” is often a very strong indicator of bad faith registration and use, and that it should be so regarded in this case.
6. The Panel is satisfied that the Respondent’s probable intention when
acquiring the Domain Name was to attract, for commercial gain, internet users
looking for websites owned by or otherwise associated with the Complainant,
who would be confused by the similarity between the Domain Name and the Complainant’s
mark. Those circumstances constitute bad faith registration and use under paragraph
4(b)(iv) of the Policy.
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, <patrypoker.com> , be transferred to the Complainant.
Dated: June 26, 2006