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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PartyGaming Plc v. Kriss Vance

Case No. D2006-0456

 

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 Kriss Vance, Wichita, Kansas, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <partypokerbot.com> (“the “Domain Name”) is registered with Go Daddy Software (the “Registrar”).

 

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 the Registrar a request for registrar verification in connection with the Domain Name. On April 13, 2006, the Registrar 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. 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, and the proceedings commenced on April 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2006.

The Center appointed Warwick Smith as the sole panelist in this matter on May 19, 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.

As the Respondent has not submitted any response, the Panel has considered whether the Center has discharged its responsibility under the Rules to notify the Complaint to the Respondent. The Panel is satisfied that the Center has discharged that responsibility: the record shows that the Complaint was delivered personally to the Respondent’s address in Wichita, Kansas on April 20, 2006, and appears to have been signed for by the Respondent personally.

 

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>, and 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 relevant trademarks 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, organising 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. Sweden appears to be one of the many European and Scandinavian countries in which this mark is registered.

The Complainant’s Group has also sought to register numerous trademarks containing the word “party”. It is not necessary to list them all, but 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 relevant marks. 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 Respondent registered the Domain Name on May 20, 2005. When this proceeding was commenced, the Domain Name resolved to a commercial website at “www.holdemspy.com” (the “holdemspy website”). A Whois report on the domain name <holdemspy.com>, run on April 10, 2006, discloses that the owner of that domain name is Filip Heybroek, with an address in Sweden.

The Complainant has produced a copy of the “holdemspy” website, downloaded on April 10, 2006. An introductory paragraph describes “Holdem Spy”, as “a software developed to simplify and improve your online poker gambling”.

The “holdemspy” website asserts that “Holdem Spy will give you real-time information in each betting round by instantly reading your cards and tracking your opponents”. On what appears to be the home page, there is a heading “Supported poker rooms”. Underneath that heading, there is a list of what appear to be online poker sites, the first name of which is “Party Poker”. The website offers the browser a free download of the software, which is described as “the ultimate player recognition software”. The holdemspy website offers software free of charge to persons who make a deposit at “Titan Poker”, which the Complainant says is a website that competes with the Complainant’s Group’s website. There is also a paid affiliate programme to persons who direct traffic to the holdemspy website.

 

5. Parties’ Contentions

A. Complainant

Domain Name confusingly similar to the Complainant’s Mark

1. Because the various registrations and applications on which the Complainant relies are in the names of subsidiaries which are directly or indirectly wholly-owned and controlled by the Complainant, it is appropriate to recognise the Complainant as the owner of the marks for the purposes of this proceeding (citing Grupo Televisa S.A. v. Party Night Inc, WIPO Case No. D2003–0796).

2. The Domain Name is confusingly similar to the Complainant’s mark because it incorporates that mark in its entirety (citing Nikon Inc and Nikon Corp v. Technilab Inc, WIPO Case No. D2000–1774).

3. The addition of “bot” does not distinguish the Domain Name from the Complainant’s mark (citing Whirlpool Properties Inc and Whirlpool Corp v. Ace Appliance Parts and Service; NAF Case No. FA109386; and eBay Inc v. Progressive Life Awareness Network, WIPO Case No. D2001–0068.

Respondent has no rights or legitimate interests in the Domain Name

1. The Respondent is not generally known by the Domain Name or the Complainant’s mark, and has not acquired any trademark or service mark rights in the Complainant’s mark.

2. The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s mark.

3. The Respondent uses the Domain Name to redirect internet users to the “holdemspy” website, which competes with the Complainant’s website. The Respondent has registered and used the Domain Name to unlawfully divert internet users seeking the Complainant’s “Party Poker” website, for commercial gain. Such use of the Domain Name is not a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the Domain Name.

The Respondent has registered and is using the Domain Name in bad faith

1. Under paragraph 4(b)(iv) of the Policy, bad faith can be demonstrated by circumstances indicating that the respondent has deliberately used a domain name for commercial gain to divert internet users based on a likelihood of confusion with a complainant’s mark. Here, the domain name is being deliberately used for commercial gain to attract internet users to the “holdemspy” website, based on a likelihood of confusion with the Complainant’s mark.

2. The Respondent registered and began unauthorised use of the Domain Name for commercial benefit long after the Complainant’s use and registration of the Complainant’s mark.

3. The widespread use and fame of the Complainant’s mark in the gaming industry, together with the Complainant’s mark’s inherent distinctiveness and the Complainant’s prior Domain Name registrations and trademark applications and registrations, point to the Respondent having registered and used the Domain Name with actual knowledge of the Complainant’s rights. Actual or constructive knowledge of a complainant’s rights in trademarks is a factor supporting bad faith (citing Ticketmaster Corp v. Spider Web Design Inc, WIPO Case No. D2000–1551. The Respondent’s actual knowledge of the Complainant is also confirmed by the reference to “Party Poker” on the holdemspy website.

4. 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.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

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.

The Complainant cites Grupo Televisa SA v. Party Night Inc, WIPO Case No. D2003–0796, in support of that proposition. The panelist in that case noted that paragraph 4(a)(i) does not require that the complainant be the owner of the mark, and that the words of paragraph 4(a)(i) are wide enough to include, for example, a licensee of the mark. The panelist in that case went on to say: “It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark”. The panelist referred to Miele Inc v Absolute Air Cleaners and Purifiers, WIPO Case No. D2000–0756, where the panel held that rights owned by the complainant’s “grand-parent” corporation were sufficient to constitute rights of the complainant for the purposes of paragraph 4(a)(i) of the Policy. The panelist in the Miele Inc case noted that paragraph 4(a)(i) makes no mention of “exclusive rights”, and expressed the view that the purpose of the paragraph 4(a)(i) requirement that the complainant have a right in a relevant mark, is simply to ensure that the complainant has a bona fide basis for making the complaint in the first place.

The panelist in the Grupo Televisa SA case also referred to two other WIPO UDRP decisions involving the same complainant, namely Grupo Televisa SA et al v. Joel Gonzales, WIPO Case No. D2002–0001, and Grupo Televisa SA v. Party Night Inc aka Peter Carrington, WIPO Case No. D2003–0228. In both cases, the panels concluded that the complainant corporation had rights in service marks registered by its wholly-owned subsidiaries.

There is little detailed discussion of the issue in any of these cases, and this Panel has not found them particularly helpful. None of them appears to offer any compelling reason why a parent (or grand-parent) corporation must necessarily have a “right” in a trademark owned by one of its subsidiaries, and, in this Panel’s view, it goes too far to say that the test under paragraph 4(a)(i) of the Policy “is or ought to be a relatively easy test for a complainant to satisfy, its purpose simply being to ensure that a complainant has a bona fide basis for making a complaint in the first place” (the view expressed by the Panel in the Miele Inc. case). Paragraph 4(a)(i) of the Policy quite clearly requires a complainant to demonstrate that it has a right in a relevant trademark or service mark, and that is what it must do. It is by no means obvious to this Panel that having an ability to exercise general control over some other entity which enjoys rights in a mark, is always going to be the same thing as having rights in that mark itself. No doubt it will often be the case that parent companies will enjoy direct control over marks owned by their subsidiaries, but one can envisage circumstances where that might not be the case, e.g. where the parent company has deliberately conferred a degree of autonomy on the subsidiary company which effectively negates any right to directly control the use of the mark, or perhaps where the subsidiary company is insolvent (or marginally solvent), and the subsidiary’s creditors have an interest in the assets of the subsidiary.

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 licence from its subsidiary, or perhaps because the subsidiary holds the mark in trust for the parent company and/or others within the group.

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 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.

Before leaving that point, the Panel notes that there should rarely be any need for panels to consider the question of whether a parent company has “rights” in respect of registered trademarks owned by a subsidiary. It will normally be a simple matter to make the registered owner of the mark either the sole complainant or at least a co- complainant.

The Panel has little difficulty in concluding that the Domain Name is confusingly similar to the Complainant’s mark. The Panel accepts the Complainant’s submission that, where a domain name incorporates someone’s registered mark in its entirety, there is a high likelihood of the domain name being confusingly similar to that mark. See, for example, Nokia Group v. Mr Giannattasio Mario WIPO Case No. D2002–0782, and the decisions referred to at pages 4 to 5 of that case, as noted in the three-member panel decision in The Ritz Hotel, Limited v. Damir Kruzicevic WIPO Case No. D2005–1137.

In this case, the prominent and distinctive part of the Domain Name consists of the words “Party Poker”, which are identical to the Complainant’s mark. The addition of “bot” does nothing to create any new or different “impression”, or “idea”, and is wholly ineffective to differentiate the Domain Name from the Complainant’s mark.

For those reasons, the Panel finds that the Domain Name is confusingly similar to the Complainant’s mark.

C. Rights or Legitimate Interests

In Cassava Enterprises Ltd 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. Furthermore, the case file contains no indication that the Respondent is known by 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 6C of this decision, below), are sufficient proof of the matters required to be proved under paragraph 4(a)(ii) of the Policy. The Panel therefore 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 also 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 authorized the Respondent to use the Complainant’s mark or to register the Domain Name.

2. The Respondent has offered no evidence that he has any right or legitimate interest in the Domain Name. Nor has he offered any explanation for his choice of the Domain Name, and in particular the inclusion of the word “party” in the Domain Name.

3. The Complainant’s mark is registered in the United States, where the Respondent resides.

4. The Domain Name points to a website (the holdemspy website) which is concerned with the same field of commerce in which the Complainant’s mark is used, namely the field of online gaming.

5. The Complainant group’s Party Poker website is expressly referred to in the holdemspy website.

6. The foregoing factors, coupled with the Respondent’s failure to respond to this Complaint, point irresistibly to the conclusion that the Respondent was well aware of the Complainant’s mark when he registered the Domain Name. From there, his apparent interest in online gaming, and the very close similarity between the Domain Name and the Complainant’s mark, lead inevitably to the conclusion that the Respondent registered the Domain Name with a view to creating confusion among Internet users looking for websites associated with the Complainant’s group, and to divert them to the holdemspy website. As that is clearly a commercial website, the Panel infers that the Respondent did so for commercial gain.

7. The facts fall squarely within paragraph 4(b)(iv) of the Policy, and the Complainant has therefore discharged its burden of proof under this head.

 

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 be transferred to the Complainant.

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Warwick Smith
Sole Panelist

Dated: June 2, 2006