Complainant is 24Poker AB, Solna, Sweden, represented by Wistrand Advokatbyrå, Sweden.
Respondent is Jim Bim, Tarazana, CA, United States of America; BPR Services
Ltd, Annfield Plain, Stanley, County Durham, United States of America.
2. The Domain Name and Registrar
The disputed domain name <24poker.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2005. On October 19, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 21, 2005, Register.com 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 Center was not yet in receipt of an electronic copy of the Complaint, Complainant transmitted an electronic copy of the Complaint on October 31, 2005. 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 November 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2005. On October 11, 2005, the Respondent’s representative requested a 15 day extension of the deadline to file a response on the grounds that he was engaged in another trial. The Complainant’s representative objected to the request. The Center refused to exercise its discretion to extend the period of time to file a response, stating that the mere fact that the Respondent had a busy schedule could not be considered to constitute an “exceptional case” under paragraph 5(d) of the UDRP rules.
On November 24, the Respondent’s Representative again requested an extension of the deadline to file a response, arguing that November 24, 2004, is the commencement of the Thanksgiving weekend and that it compounds the difficulty in getting a reply on file on Thanksgiving Day.As Complainant accepted that the deadline for filing a response should extended until November 28, 2005, the Center agreed to postpone the deadline for the filing of a Response to such date.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2005.
The Center appointed Torsten Bettinger as the Sole
Panelist in this matter on December 7, 2005. 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
Complainant is a Swedish limited company involved in the business of online sports betting and online gaming. In December 1999, Complainant registered the domain name <24hpoker.com> and posted an informational web page for its upcoming online poker gaming room. In May 2002 Complainant launched its online poker room under the name of “24hPoker”.
Complainant is the registered owner of the domain name <24hpoker.com>. Complainant has filed an application for a US Trademark with the USPTO and a Community trademark with OHIM in March 2005.
During 2004, Complainant noticed that the domain name <24Poker.com> had been registered. In September 2004, Complainant sent an email to the administrative contact of the domain name, Tomer Feldman, requesting to cease using the domain name for online poker services. Neither the administrative contact nor the Registrant replied to this e-mail.
The domain name was subsequently transferred to the
Respondent. In March 2005, the Respondent launched an online poker service under
the disputed domain name. The Complainant contacted the Respondent’s attorney,
claiming that the use of the domain name constitutes a violation of Complainant’s
trademarks rights in the term “24hpoker”. The Respondent’s
Representative denied Complainant’s claims and requested documented proof
showing the extent of Complainant’s alleged trademark rights.
5. Parties’ Contentions
A. Complainant
Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied. In reference to the element in paragraph 4(a)(i) of the Policy, Complainant relies on its trademark applications and states that
- it has invested EUR 430,000 in marketing its online poker games services;
- it is a recognized and acclaimed provider of online poker and betting services;
- it has placed advertisements for its website in the leading U.S. magazine “CardPlayer” and the European magazine “Poker Europa” from 2001 to date;
- its website has been listed on Poker Listings, one of the major aggregators of web traffic to poker websites since 2003;
- it has been listed by PokerPulse, the leading website for measuring the activity within the different poker networks since October 2003;
- it is quoted by stock analysts when presenting reports on online gaming companies;
- it is the twelfth largest online poker operator in the world;
- it has regularly been placing banner ads on PokerPages;
- it has registered the corporate name “24hPoker” under Swedish law;
- it has approximately 70,000 registered users of which approximately 27,000 are domiciled in Sweden and 14,000 are domiciled in the U.S.
Complainant contends that the disputed domain name is almost identical to its trademarks and that there is a clear risk that Internet users believe that Complainant’s website at “www24hpoker.com” and Respondent’s website at “www.24poker.com” originate from the same provider.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant alleges that Respondent has no legitimate interest in the domain name because:
- Respondent has no trademark rights or license to use Complainant’s mark “24hpoker”;
- Respondent uses the mark to promote competing services;
- Respondent uses the domain name not only to promote its own services but also the services of other online poker operators.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant argues that at the time when the Domain Name was acquired by the Respondent:
- Complainant had been in business for almost three years and acquired a considerable reputation and value in the trademark “24hpoker.com”;
- Complainant and the website operated under “24hpoker.com” was widely known among online gaming community and among competing providers of online poker services;
- Respondent which is a direct competitor was well aware of the existence and use of Complainant’s trademark;
- the disputed domain name was registered and is being used in order to attract poker players to Complainant’s website by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or confusingly similar to a Trademark or Service Mark in which the Complainant has rights
Complainant has relied on an U.S. and a community trademark application, filed respectively in March 2005 with the United States Patent and Trademark Office and The Office for Harmonization in the Internal Market.
There is general agreement among panelists that a
trademark application does not establish a trademark right within the meaning
of paragraph 4(a)(i) (usDocuments, Inc. v. Flexible Designs, Inc. / Craig
Dinan, WIPO Case No. D2003-0583 -<usdocuments.com>;
Aspen Grove, Inc. v. Aspen Grove, WIPO
Case No. D2001-0798 – <aspengrove.com>).
As regards the question whether Complainant has rights in an unregistered trademark, the Panel notes that Complainant has not relied on a common law trademark in the United States of America where the Respondent residues or an unregistered trademark right under Art. 2 of the Swedish Trademark Act. Complainant has only submitted evidence that it has registered “24hPoker AB” in the Register of the Swedish Companies Registration Office and has started to use that name as a company name or business identifier. Furthermore, no circumstances have been submitted in the case to suggest that the company name is actually used as trademark or service mark even if it seems to have been used to identify Complainant’s activities.
However even if the Panel accepts that Complainant has used the term “24hpoker” as trademark, the term “24hpoker” appears to be descriptive as it indicates the rendering of Complainant’s online poker game services on a 24 hour basis and would therefore only be entitled to protection as a trademark if it has acquired secondary meaning in Sweden or in the United States.
Complainant neither contended or provided evidence to the Panel as to whether the mark “24hpoker.com” has acquired secondary meaning through the use of the company name for the purpose of identifying Complainant’s goods or services.
It is the clear language of the Policy that this administrative proceeding does only apply to disputes involving trademarks or service marks, but does not offer relief to holders of company names in the absence of a demonstration that such names also enjoy protection as trademarks. As a result, in the event of abuse, holders of these rights are required to defend their legal rights through national judicial systems.
Therefore, the Panel finds Complainant has not discharged its burden of proof to show it has trademark rights in the mark “24hpoker.com”.
B. Rights or Legitimate Interests/Registration and Use in Bad Faith
The Policy requires that Complainant prove all elements
of paragraphs 4(a)(i-iii) of the Policy. Thus, since Complainant has failed
to prove 4(a)(i), the Panel need not discuss whether the Respondent has legitimate
rights and interests in the disputed domain name, or whether the Respondent
registered and was using the disputed domain in bad faith.
7. Decision
The Panel has found the Complainant failed to show that it has the right in a trademark or service mark which is identical or confusingly similar to the disputed domain name <24poker.com> pursuant to paragraph 4(a)(i) of the Policy.
For this reason the Complaint is denied.
Torsten Bettinger
Sole Panelist
Dated: January 2, 2006
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