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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> PartyGaming Plc v Sorilla [2005] DRS 2783 (12 September 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2783.html Cite as: [2005] DRS 2783

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Nominet UK Dispute Resolution Service
DRS 02783
PartyGaming Plc –v- Elsie Sorilla
Decision of Independent Expert
1. Parties:

Complainant: PartyGaming Plc

Address: iGlobalMedia Centre

Country: Gibralta

Respondent: Elsie Sorilla

Country: Philippines

2. Domain Name:

party-gaming.co.uk

3. Procedural Background:

The Complaint was lodged with Nominet on 5 July 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on 8 July 2005 and informed the Respondent that she had until 1 August 2005 to lodge a Response. The Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the parties on 2 August 2005 and invited the Complainant to pay the fee to obtain an Expert Decision by 16 August 2005. The Complainant duly paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

On 22 August 2005, David King, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.

On 25 August 2005 Nominet appointed the Expert to act as expert in this case.

4. Outstanding Formal/Procedural Issues (if any):

Under Section 13a of Nominet's DRS Procedure (the Procedure), "in addition to the complaint, the response and if applicable the reply and any appeal, the Expert may request further statements or documents from the Parties."

On 31 August 2005, the Expert asked Nominet to request certain further information from the Complainant. On the same day Nominet sent the request to the Complainant and a copy to the Respondent and gave the Complainant until 5 September 2005 to fax the response to them. On 5 September Nominet received a response from the Complainant and gave the Respondent until 7 September to make a response. On 7 September 2005 Nominet informed the Expert that they had not received a response from the Respondent.

Details of the further information supplied by the Complainant are contained in paragraph 6 of this Decision.

The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a of the Procedure.

Paragraph 15b of the Procedure provides, inter alia, that "if in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

Paragraph 15c of the Procedure provides that "if in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure….., the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."

Are there exceptional circumstances present in this case? At this point in the Decision, the Expert wishes to consider whether the complaint has been properly communicated to the Respondent. Under Paragraph 2a of the Procedure, Nominet will send a complaint to the Respondent using, in its discretion, one of the following means:

(i) sending the complaint by first class post, fax or e-mail to the Respondent at the contact details shown as the registrant or other contacts in Nominet's Domain Name register database entry for the Domain Name in dispute;

(ii) sending the complaint in electronic form (including attachments to the extent available in that form) by e-mail to:

A postmaster@ domain name in dispute>: or

B if the Domain Name resolves to an active web page (other than a genuine page which Nominet concludes is maintained by an ISP for the parking of Domain Names), to any e-mail address shown or e-mail links on that web page so far as this is practicable; or

(iii) sending the complaint to any addresses provided to it by the Complainant under Paragraph 3 (b) (iii) of the Procedure so far as this is practicable.

Under Nominet's current Terms and Conditions the registrant must inform Nominet promptly of any change in his registered details, and those of his Agent if applicable. It will be the registrant's responsibility to maintain and update any details he submits to Nominet and to ensure that his details are up to date and accurate.

Nominet have written to the Respondent at the address shown in the Register Entry for the Domain Name and by e-mail to the e-mail address shown in the Register Entry and to [email protected]. Bearing in mind the location of the Respondent in the Philippines, it is quite possible that the Respondent has not received the hard copy of the complaint. Nominet's e-mail to the Respondent's e-mail address resulted in a Delivery Failure Report but the e-mails to [email protected] did not and it is reasonable to infer that the Respondent has received notice of the complaint and the further information submitted by the Complainant. At the time the Complainant became aware of the registration of the Domain Name, the Domain Name diverted to a web-site called partygamecentral.com but the Domain Name web-site had been disabled by the Respondent's Hosting company by the time the complaint was lodged and, therefore, did not resolve to an active web-site. The Expert is satisfied that paragraph 2 a ii B of the Procedure mentioned above does not apply in this case.

The Expert, therefore, does not consider that there are exceptional circumstances present in this case, which prevent him from proceeding to a Decision of this complaint.

5. The Facts

The Complainant and its related companies operate on-line casino and gaming services. One of its related companies, WPC Productions Ltd owns the world's largest on-line poker web-site partypoker.com and several registrations in Canada for its PARTYPOKER mark. In September 2004 WPC filed an application in the U.S. for registration of the mark PARTYGAMING and in December 2004 WPC filed a CTM application for registration of the mark PARTYGAMING. The Complaint's related companies also have various trademark applications pending for its PARTY marks. The Complainant's company PartyGaming Ltd was incorporated in England on 14 January 2005 and PartyGaming plc was floated on the London Stock Exchange in June 2005.

The Respondent registered the Domain Name on 1 February 2005.

6. The Parties Contentions

Complainant:

The Complaint reads as follows:

"FACTUAL AND LEGAL GROUNDS

PartyGaming's Trademarks. Since at least as early as February 2001, PartyGaming or its related companies has been using the inherently distinctive mark PARTYPOKER on or in connection with a wide variety of goods and services, most notably online and land-based casino and gaming services and card tournaments ("PartyGaming goods and services"). PartyGaming does business primarily over the Internet and is one of the most successful Internet gaming companies. PartyGaming's online game room at is the world's largest and most widely used poker room, with participants located throughout the world. Due in part to the success of the site, PartyGaming and its related companies decided to expand the use of the inherently distinctive PARTY portion of the PARTYPOKER mark. Thus, in subsequent years PartyGaming and its related companies began using a variety of marks composed of the word PARTY followed by various gaming- or gambling-related terms. Such marks include, but are not limited to, PARTYBINGO, PARTYBLACKJACK, PARTYCRAPS, PARTYBACKGAMMON, and PARTYGAMING. Due to this expansion in use, PartyGaming and its related companies now own a PARTY-based family of marks (collectively "PARTY Marks"). PartyGaming, through its related company WPC Productions Ltd. ("WPC") owns several registrations for its PARTYPOKER mark in Canada for its online casino services (Reg. Nos. TMA 598,288; 598,290; 619,488; and 619,641). Moreover, PartyGaming through its related companies WPC and iGlobalMedia Marketing Ltd., owns numerous applications in jurisdictions throughout the world for its PARTY Marks, including, but not limited to, those United States and CTM applications listed in Exhibit B. Each of these applications is valid, subsisting and owned by PartyGaming or its related companies. Copies of the records for each of these applications are attached as Exhibit C. Specifically, PartyGaming filed its U.S trademark application for the PARTYGAMING mark in September of 2004, and filed its CTM application for the mark in December of 2004. In addition, one of PartyGaming's related companies incorporated in the U.K. on January 14, 2005, under the name PartyGaming Ltd. On January 27, 2005, PartyGaming made a well-publicized announcement that it was contemplating an initial public offering ("IPO") of shares on the London Stock Exchange. A sample of articles discussing PartyGaming's IPO announcement are attached as Exhibit D. Thus, prior to the Respondent's registration of the Infringing Domain Name, PartyGaming adopted, and has continuously used since that adoption, its inherently distinctive PARTYPOKER mark for the PartyGaming goods and services that include providing online casino and gaming services. Additionally, prior to the Respondent's registration of the Infringing Domain Name, PartyGaming or its related companies adopted and began using many of its family of PARTY Marks. PartyGaming has invested many millions of dollars in advertising and promoting its PARTY Marks, and has sold or licensed many millions of dollars in its PartyGaming goods and services under its PARTY Marks, including online gaming services. In addition to its inherent distinctiveness, and as a result of PartyGaming's extensive marketing efforts, substantial sales and the resulting success of its PartyGaming goods and services, PartyGaming's PARTYPOKER mark has become famous. Moreover, PartyGaming's PARTYPOKER mark, along with its family of PARTY Marks, including PARTYGAMING, now represents extraordinarily valuable goodwill owned by PartyGaming. PartyGaming's extension, numerous applications, and its use of the various PARTY Marks evidences its family of PARTY Marks for online casino and gaming services. Respondent's Registration and Use of the Infringing Domain Name Respondent is not affiliated with or related to PartyGaming in any way, nor is Respondent licensed by PartyGaming to use the PARTYGAMING mark or any of its family of PARTY Marks. Respondent registered the Infringing Domain Name on February 1, 2005, long after PartyGaming's PARTYPOKER mark became famous, and long after PartyGaming expanded its use into a family of PARTY Marks. Moreover, the registration of the Infringing Domain Name came months after PartyGaming applied to register its PARTYGAMING mark in the U.S. and the CTM, shortly after PartyGaming Ltd. incorporated in the U.K., and just after PartyGaming announced that it was considering an IPO of shares on the London Stock Exchange. See Exhibits B and D. Until recently, Respondent was using the Infringing Domain Name to divert consumers to , a web site providing information about various "party games." A print out of the home page is attached as Exhibit E. As is discussed in more detail below, the functionality of the web site has since been disabled as a result of action taken by PartyGaming. Correspondence Between PartyGaming and Other Parties Relating to the Infringing Domain Name In early June of 2005, an individual identified only as Party Time, who was using the e-mail address , contacted PartyGaming about purchasing the Infringing Domain Name. Party Time's original e-mail stated that due to the upcoming PartyGaming IPO, he/she was under pressure to sell the Infringing Domain Name to Cassava Enterprises ("Cassava"), a direct competitor of PartyGaming. After an inquiry was received from PartyGaming regarding the price for the Infringing Domain Name, Party Time replied that he/she was in the process of selling the Infringing Domain Name to Cassava for £20,000. In response to the last e-mail from Party Time, on June 13, 2005, PartyGaming sent cease and desist letters to PIPEX Communications Hosting Ltd. (the registrant's agent for the Infringing Domain Name), Mr. Randy Pinder (the registrant of ), and Party Time. These letters advised all three parties of PartyGaming's rights in the PARTYGAMING mark, as well as its family of PARTY Marks, and demanded that the Infringing Domain Name be transferred to PartyGaming. A copy of each of these letters is attached as Exhibit F. On June 17, 2005, PIPEX responded to PartyGaming's letter by agreeing to disable the functionality of the Infringing Domain Name. A copy of PIPEX's response is attached as Exhibit G. The Infringing Domain Name now resolves to a holding page for 123-reg.co.uk, a domain name owned by PIPEX. A copy of the current web site at the Infringing Domain Name is attached as Exhibit H. Neither Mr. Pinder nor Party Time responded to PartyGaming's June 13th letter. The Infringing Domain Name is Confusingly Similar to the PARTYGAMING Mark The Infringing Domain Name, party-gaming.co.uk, is confusingly similar to the PARTYGAMING mark because the Infringing Domain Name is identical in material part to Complainant's PARTYGAMING mark. Persons encountering the Infringing Domain Name in the context of the Internet are likely to believe, incorrectly, that the Infringing Domain Name relates to PartyGaming's goods and services. See, e.g., Nokia Corp. v. LiquidSMS Ltd., DRS 00382 (holding that the domain name mynokiastuff.co.uk was similar to complainant's NOKIA trademark and ordering the domain name transferred); Pickfords Ltd. v. Anglo Continental Ltd., DRS 00187 (holding that the domain name 4pickfords.co.uk was similar to complainant's PICKFORDS trademark and ordering the domain name transferred).

Respondent's Use of the Infringing Domain Name is an Abusive Registration. After PartyGaming's adoption, use and applications to register its PARTYGAMING mark, Respondent began making unauthorized use of the PARTYGAMING mark by registering and using the Infringing Domain Name. Based on the fame of PartyGaming's PARTYPOKER mark, and the widespread use of PartyGaming's family of PARTY Marks, Respondent necessarily has actual knowledge of PartyGaming's rights. Moreover, the fact that Respondent registered the Infringing Domain Name mere days after the much-publicized announcement of the forthcoming PartyGaming IPO suggests that Respondent registered the Infringing Domain Name to capitalize on the interest created by the IPO announcement. Thus, because Respondent had knowledge of PartyGaming's trademark rights in the PARTYGAMING mark, and PartyGaming's family of PARTY Marks, Respondent could not have registered the Infringing Domain Name with the intention of using it legitimately. As noted above, Respondent, through the individual identified as Party Time, has attempted to sell the Infringing Domain Name to PartyGaming or one of its direct competitors, for a price far in excess of the costs of acquiring or using the Infringing Domain Name. Respondent reported to PartyGaming that it had agreed to sell the Infringing Domain Name to Cassava for £20,000, and then offered to sell the Infringing Domain Name to PartyGaming if it could beat Cassava's alleged offer. Thus, Respondent's registration of the Infringing Domain Name is an abusive registration under § 3(a)(1)(A) of the DRS Policy."

Following initial consideration of the Complaint, the Expert asked Nominet to request the Complainant to supply copies of all e-mails and correspondence with the individual called Party Time referred to in the Complaint and to confirm the current status of the applications for the registration of the PartyGaming mark.

In its e-mail response to the Expert's request, the Complainant attached copies of an exchange of e-mails with Party Time on 10 June 2005 and copies of the CTM database and U.S Trademark Office TARR and TESS records.

The e-mail exchange commences with an e-mail from the Complainant thanking Party Time for contacting them about the Domain Name and asking for what price they could purchase it. Party Time replied that he was about to proceed to escrow with Cassava (a competitor of the Complainant) as they were offering £20k and they had accepted. Party Time asked the Complainant to let him know if they wanted the Domain asap and for how much.

The U.S. Trademark Office records confirm that an application for registration of PARTYGAMING was filed on 10 September 2004, received application number 78/481570 and was approved for publication on 28 July 2005. The CTM records confirm that an application for registration of PARTYGAMING was filed on 14 December 2004, received application number 004169851 and was published for opposition on 18 July 2005.

The Expert confirms that he has perused all the Exhibits referred to in the Complaint and the further information supplied by the Complainant at the request of the Expert.

Respondent:

The Respondent has not responded to the Complaint or the further information supplied by the Complainant at the request of the Expert.

7. Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in paragraph 1 of the Policy.

Complainant's Rights

Although the Complainant has not submitted any evidence regarding thestructure of its group of companies, the Expert has no reason to doubt that the Complainant is the holding company of the related companies to which it has referred in the Complaint and in the further information supplied by the Complainant at the Expert's request. The Expert is satisfied that it is appropriate for the Complaint to be made by the Complainant.

Under paragraph 1 of the Policy "Rights includes, but is not limited to, rights enforceable under English Law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business." The word "gaming" on its own might well be considered to be descriptive but the Expert does not consider that "partygaming" is necessarily wholly descriptive of the Complainant's business. The Complainant has simply prefaced various of its activities with the word "party" and subsequently adopted the umbrella term of "partygaming". In the view of the Expert "partygaming" is a name in which Rights can be asserted by a Complainant. It is not necessary to demonstrate exclusive Rights in a name.

Does the Complainant have Rights in "partygaming"? The Complainant has not stated when it began to use the name but the Expert has the impression that this was quite recent, possibly as recent as 2004. The final outcome of the Complainant's trademark registrations is still pending. However, it does appear that the Complainant has quickly built up goodwill in the name, PartyGaming and that the majority of its customers would identify the name with the Complainant. It has often been confirmed in Expert Decisions that the requirement to demonstrate Rights under the Policy is not a particularly high threshold test. On balance the Expert considers that the Complainant has established Rights within the terms of the Policy.

The Domain Name is identical or similar to the name used by the Complainant. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix which is of no relevant significance and wholly generic. It is also appropriate to discount whether or not there is a hyphen between "party" and "gaming", which is immaterial and does not alter the identical or similar nature of the name.

The Expert finds that, for the purposes of the Policy, the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:

"i was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

ii has been used in a manner which took unfair advantage of or was detrimental to the Complainant's Rights."

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy.

The Complainant relies on paragraph 3 a i A, under which there may be evidence of Abusive Registration if circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily "for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name".

In the Complaint and the further information supplied to the Expert, the Complainant refers to the individual Party Time of partygamecentral.com, to which the Domain Name was diverted, as the Respondent and the registrant of the Domain Name. The Complainant has not submitted any evidence of a connection with the Respondent, who is Elsie Sorilla. It is clear from the e-mails of 10 June 2005 between the Complainant and Party Time that there had already been communications between them regarding the Domain Name but the Complainant has not supplied details despite the Expert's request that they provide copies of "all e-mails/correspondence with Party Time". It is possible that the Domain Name was diverted to partygamecentral.com without the Respondent's involvement. The Expert reminds all Complainants that it is for them to make out their complaints fully with all necessary supporting evidence.

The Expert has, however, considered all the circumstances of this case. The Expert is satisfied that Nominet have notified the Respondent of the Complaint and the further information supplied by the Complainant. The Respondent has had the opportunity to make representations regarding Party Time's offers to sell the Domain Name to the Complainant or its competitor Cassava but she has not responded. Party Time's web-site partygamecentral.com provides information regarding various party games for adults and children, which is different from the gambling or gaming services offered by the Complainant. The Domain Name was registered very shortly after the public announcement of the Complainant's proposed flotation on the London Stock Exchange and some time after the Complainant and its related companies started using the name PartyGaming. In the absence of any evidence to the contrary the Expert concludes that, on the balance of probabilities, the Complainant has been targeted primarily with the purpose of selling the Domain Name to the Complainant or a competitor at a substantial profit and that, at the least, the Respondent has acquiesced in the approaches made by Party Time to the Complainant. There is no evidence that either the Respondent of Party Time had any legitimate reason for making use of the Domain Name. In the opinion of the Expert this amounts to Abusive Registration under the Policy.

The Expert has considered paragraph 4 of the Policy headed "How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration". The Expert does not consider that paragraph 4 of the Policy would assist the Respondent in this case. The Expert finds that the Respondent's registration of the Domain Name is abusive within the terms of paragraph 3 a i A of the Policy.

8 Decision

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name www.party-gaming.co.uk be transferred to the Complainant.

David King

Date: 12 September 2005