WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Poker Host Inc. v. Russ “Dutch” Boyd
Case No. D2008-1518
1. The Parties
The Complainant is Poker Host Inc of Panama, represented by Greenberg Traurig, LLP of United States of America.
The Respondent is Russ “Dutch” Boyd of United States of America.
2. The Domain Name and Registrar
The disputed domain name <pokerhost.net> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on October 3, 2008, and in hard copy on October 6, 2008.
The Center transmitted its request for registrar verification to the Registrar by email on October 7, 2008. The Registrar replied by email on October 8, 2008, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would expire on July 14, 2009, that it had been placed and would remain during this proceeding under Registrar Lock, that the registration agreement was in English and that the registrant had submitted to the jurisdiction at the location of its principal office in Queensland, Australia, for court adjudication of disputes concerning or arising from the use of the Domain Name. The Registrar provided the contact details for the Respondent on its WhoIs database and stated that it had not received a copy of the Complaint.
The Center verified that the Complaint satisfied the formal requirements of 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 10, 2008. The Response was filed with the Center by email on November 5, 2008, and in hard copy on November 12, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on November 17, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant operates an online poker room at “www.pokerhost.com”. It has registered the mark POKER HOST in Panama as of May 19, 2006, for “services and technical research and technology and drawings relating to the same services for industrial analysis and research, design and development of computer hardware and software; legal services”.
At the date of the Complaint, the Domain Name resolved to a web page containing links to other online poker websites and indications that the Domain Name was for sale. The Respondent has since posted a web page containing inter alia criticism of the Complainant for having filed the Complaint.
5. Parties' Contentions
The Complainant contends that the Domain Name is virtually identical and confusingly similar to its registered mark POKER HOST and its domain name, <pokerhost.com>, which it says it has used for a website at “www.pokerhost.com” since February 2002.
The Complainant submits that the Respondent lacks any rights or legitimate interest in the Domain Name. It alleges that the Respondent registered the Domain Name only after the Complainant had established rights in its pokernet.com domain name, and that the Respondent has no similar business but merely chose the domain name to provide links to competing websites.
The Complainant adds that it has not authorized the Respondent to use the Domain Name, that the Respondent is not commonly known by it, and that the Respondent is not making legitimate non-commercial or fair use of it.
The Complainant further alleges that the Respondent registered and is using the Domain Name in bad faith. It states that the Respondent is intentionally using the Domain Name to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant's mark. The Complainant identifies two other domain names confusingly similar to other marks which the Respondent has registered and directed to web pages containing pay-per-click links.
According to the Complainant, in view of the prior use of its mark, the Respondent must have had knowledge of that mark when he registered the Domain Name. The Complainant further accuses the Respondent of registering and using the Domain Name to disrupt its business.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent submits that “Poker Host” is a generic term describing a person who hosts poker games and tournaments or the host of a television show dealing with poker or a person employed by a casino to participate in poker games at its tables. The Respondent further contends that even if the Complainant has trademark rights, the Domain Name is not confusingly similar to its mark.
The Respondent claims that he has a right or legitimate interest in the Domain Name since he has been employed as a poker host by a casino and has hosted a pilot programme for a television gameshow. He adds that he is a well-known poker player, being one of about 600 World Series of Poker bracelet winners.
The Respondent contends that in any event he registered the Domain Name in good faith. He disputes the Complainant's claim to have used its <pokerhost.com> domain name for a website since February 2002. He states that the earliest record retained by “www.archive.org” of the Complainant's website is dated October 24, 2004 and announces that its operation would be commencing in December 2004. According to the Respondent the Complainant's website did not actually start to operate until the beginning of 2005. By contrast, the Respondent registered the Domain Name on July 14, 2004, began using it to display links to poker websites on September 2, 2004, and has retained it ever since.
The Respondent notes that the Complainant is represented by counsel experienced in domain name disputes who may be taken to be familiar with the Policy. He contends that the Complainant must have known that it did not have trademark rights when he registered the Domain Name and complains that the Complainant sought to distort the facts to suggest the contrary.
The Respondent asks the Panel to reject the Complaint and to make a finding of reverse domain name hijacking.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (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. Each of these requirements will be considered in turn below.
A. Identical or Confusingly Similar
The Panel is satisfied that the Domain Name is confusingly similar to the Complainant's registered POKER HOST mark, from which it differs only in the addition of the generic top-level domain suffix. It is well established that this suffix is to be discounted in assessing whether a domain name is confusingly similar to a complainant's mark under the Policy. The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel considers that the Respondent does not have a right or legitimate interest in respect of the Domain Name.
In considering this issue, it is clear that a respondent cannot rely on use of the disputed domain name subsequent to the complaint. If it were otherwise, the Policy would be rendered wholly ineffective by respondents rapidly posting criticism of the complainant following a complaint.
The Panel does not regard the Respondent's use of the Domain Name merely to display links to other websites and to advertise the Domain Name as for sale as a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy.
The Respondent has not been commonly known by the Domain Name. The fact that he has done things which might have justified him being described as a “poker host” does not mean that he is commonly known by this name. Nor does it give him any right or legitimate interest in respect of the Domain Name.
Prior to the Complaint, the Respondent was not making a legitimate non-commercial or fair use of the Domain Name; on the contrary, he appears to have been profiting from its association with the Complainant.
The Respondent does not appear to have a right or legitimate interest in respect of the Domain Name on any other ground. The second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
The two parts of the third requirement of the Policy are cumulative conditions: the Complainant must show that the disputed domain name both was registered and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed in many decisions under it, e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Teradyne, Inc. Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026, and Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782.
The Panel is satisfied on the evidence that the Respondent registered the Domain Name before the Complainant established its online poker room website and before the Complainant registered POKER HOST as a trademark. The phrase “poker host” has a descriptive connotation and the Respondent had no reason to suppose that the Complainant had any trademark rights in it when he registered the Domain Name.
Nor is there any material before the Panel indicating that the Respondent registered the Domain Name in order to target future trademark rights of the Complainant which it specifically knew would arise. While this can constitute bad faith, such a claim must be substantiated by evidence: see e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.
The Panel finds that the Domain Name was not registered in bad faith.
In view of this finding, it is unnecessary to consider whether the Respondent is using the Domain Name in bad faith. The third requirement of the Policy is not satisfied and the Complaint must therefore be rejected.
D. Reverse Domain Name Hijacking
In accordance with paragraph 15(e) of the Rules, if the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
“Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Panel notes that the details of the Respondent's registration of the Domain Name annexed to the Complaint indicate that the record was created on July 14, 2004. The Complainant asserted in the Complaint that “The transfer to Respondent's possession came years after the registration of Complainant's Trademark and Complainant's registration and use of the <pokerhost.com> domain name”. However, the Complainant provided no evidence of any transfer of the Domain Name to the Respondent after July 14, 2004, and no evidence of the Complainant's use of its <pokerhost.com> domain name prior to that date.
The Panel finds that the Complainant brought the Complaint either without any attempt to verify whether it had a case for claiming that the Respondent had registered the Domain Name in bad faith or knowing that it did not have any viable case on this point. In these circumstances, the Panel concludes that the Complaint was brought in bad faith and constitutes an attempt at reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
The Panel further finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Dated: December 1, 2008