DECISION

Communications Services Inc. v. Bum Don Shin

Claim Number: FA0308000190646

PARTIES

Complainant is Communications Services Inc., Apia, Samoa (“Complainant”) represented by Judith Silver, of Silver Law Inc.  Respondent is Bum Don Shin, Kyonggi-Do, Korea (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ipoker.com>, registered with Gabia, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Hong Oo Baak as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 28, 2003; the Forum received a hard copy of the Complaint on the same day.

On September 1, 2003, Gabia, Inc. confirmed by e-mail to the Forum that the Disputed Domain Name <ipoker.com> is registered with Gabia, Inc. and that Respondent is the current registrant of the name.  Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 25, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@ipoker.com by e-mail.

A timely Response was received and determined to be complete on September 24, 2003.

On October 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hong Oo Baak as Panelist.

RELIEF SOUGHT

Complainant requests transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

First, the Comlainant contends that the Disputed Domain Name <ipoker.com> (hereinafter, “Disputed Domain Name”) is confusingly similar to the mark it owns, i.e., POKER.COM (hereinafter, “Mark”).  Complainant points out that the Disputed Disputed Domain Name <ipoker.com> has only one letter variation from the its Mark  POKER.COM and is confusing similar to the Mark since the minor variation of the Mark through the addition of one letter is not enough to dispel consumer confusion as to the source of goods or services.  

Second, Complainant contends that Respondent’s use of the Disputed Domain Name <ipoker.com> was and is not in connection with a bona fide offering of goods or services, and that Respondent has not used the Disputed Domain Name in commerce, as trade or service mark, or as a trade name, and has not accrued any rights in the mark or domain name through fair use or otherwise, and that Respondent has not been commonly known by the domain name. Thus, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name.

Thirdly, Complainant asserts that the registrant received the name from the prior registrant primarily for the purpose of selling the name, with full knowledge of the Mark and Complainant’s rights and that Respondent has registered and used the domain name in bad faith. B.S. Hong, the prior registrant of the Disputed Domain Name (hereinafter, “Prior Registrant”), had the domain name listed for sale since his initial registration in August, 2001 on the site and on Afternic.com, and requested US$54,000 for the Disputed Domain Name. Complainant asserts that the Disputed Domain Name remains listed for sale on Afternic.com and both the Prior Registrant and the Respondent registered the Disputed Domain Name with bad faith as defined by the Policy.

B. Respondent

Respondent contends that the Mark POKER.COM owned by Complainant is generic since it is using a generic term “poker” and thus is not entitled to trademark protection, and that even if it is entitled to protection the protection cannot extends to domain names other than <poker.com> itself.

Respondent also contends that Prior Registrant registered the Disputed Domain Name <ipoker.com> to use it for the purpose of opening a website to introduce internet poker games or linking it to portal sites he operates such as <82.net>.

Respondent also contends that, for several reasons, failure of Respondent to utilize the contested domain name for an extended period of time does not constitute bad faith.

FINDINGS

It appears that the Mark POKER.COM and the Disputed Domain Name <ipoker.com> have been used since June 1999. A company, poker.com, inc., filed for the registration of word mark POKER.COM with USPTO on November 15, 1999 and the Mark POKER.COM was registered with USPTO as registration Number 2470729 (“Mark”). Then the mark was assigned to Complainant in 2002 together with the domain name <poker.com>.

In August, 2001, the Disputed Domain Name <ipoker.com> was registered in the name of the Prior Registrant, B. S. Hong. The Prior Registrant had the domain name listed for sale since his initial registration on the site and on Afternic.com, and he requested Complainant to pay US$54,000 for the Disputed Domain Name when he was contacted by the attorney of Complainant.  After receipt of Complainant’s Cease and Desist letter sent via email on August 19, 2003, the Prior Registrant transferred the name to Respondent. The Prior Registrant and Respondent share common interest, which is admitted by Respondent. The Domain Name remains listed for sale on Afternic.com.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Mark

For a trademark to be valid, a trademark must be distinctive, that is, capable of identifying one firm’s goods or services and distinguishing them from those of another. Marks which merely describe the product or services they cover are not protected. Some of such marks will be protected only after they have become distinctive or have achieved secondary meaning through use for a long period of time, and others will never be given such protection.

The Mark consists of two parts, POKER and .COM. The word “poker” is generic because it directly describes a poker game. The word “.com” is also descriptive because it is a well-known top level domain and currently it also indicates to most people a company on the internet. The separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound and the common descriptive aspect of mark is not lost in the combined form. If a term is generic for a particular product or service, it cannot receive trademark protection. Proof of secondary meaning cannot transform a generic term into a subject for trademark. Thus, it is questionable whether the Mark is entitled to trademark protection.

Even if this panel assumes the word in the Mark is not generic, it is still descriptive. Considering the fact that domain names are used throughout the world, it will be reasonable to decide whether a mark made up of a popular descriptive term and using a format of domain name has become distinctive by a test of whether it has become distinctive throughout world users. It is especially so, because a mark consisting of generic terms may be registered as a trade mark in several countries, and thus there may exist a problem of conflicting trade mark registrations.

Complainant has not clearly proved that the Mark has achieved secondary meaning. Since the words poker and .com are generic terms, the fact that the Mark has achieved secondary meaning has to be proved by clear and convincing evidence. Although Complainant asserts that the website using domain name <poker.com> has an average 250,000 visitors each month and that it spends at least US$60,000 on promotion, it is not enough to establish that the Mark has become distinctive and has achieved secondary meaning, unless it is supported by clear evidence and is accompanied by other evidence such as comparison of them with those of similar domain names.

Accordingly, the Panel finds that Policy  ¶ 4(a)(i) has not been satisfied.

Identical and/or Confusingly Similar

The Disputed Domain Name <ipoker.com> is not identical to the Mark POKER.COM. Therefore whether the Disputed Domain Name  <ipoker.com> is confusingly similar to the mark must be decided.

Since the Mark is not a made up word and thus not distinctive initially, the test for whether or not it is confusingly similar should be different from that for a made up word mark. For a word mark that was coined to be used as a trade mark, a different word made up by addition of one letter is not enough to dispel consumer confusion as to the source of goods or services, since for most consumers addition of one letter will be associated with the original word as long as the original word is distinctive.

However, for a mark using a format of domain name and using a popular descriptive term, it cannot be easily said that most internet users will associate a word of one letter variation with the original word. Most internet-using consumers understand that different users create different domain names by adding one or two letters to a popular term and the owners of them are different respectively.

In the present case, it cannot be determined that consumers will believe that the owner and source of service of the Disputed Domain Name <ipoker.com> is the same as those of the Mark POKER.COM.

Therefore, for this reason, the Panel also finds that Policy ¶ 4(a)(i) has not been satisfied.

Rights or Legitimate Interests

Complainant has failed to establish that Respondent has no rights or legitimate interests in the Disputed Domain Name <ipoker.com>. Although it is true that Respondent and the Prior Registrant have not opened a website using the Disputed Domain Name <ipoker.com> and offered it for sale, it is not enough for this Panel to decide that Respondent has no rights or legitimate interests in the domain name <ipoker.com>, since Respondent asserts that he has been contemplating using it for the purpose of opening a website to introduce internet poker games or linking it to portal sites he operates and there is no evidence to the contrary.

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.

Registration and Use in Bad Faith

Even if the Mark has achieved secondary meaning, Complainant has failed to establish that the mark has become distinctive before Respondent’s predecessor, the Prior Registrant, registered the Disputed Domain Name <ipoker.com>. Complainant has not sufficiently shown that Respondent or Prior Registrant, at the time the Disputed Domain Name was registered, registered that name in bad faith. There is no evidence that Prior Registrant knew the existence of the Mark at the time of registration of the Disputed Domain Name. Although Complainant argues that Respondent's actions in offering the Disputed Domain Name for sale over a long period of time constitute bad faith registration, it is not enough.

Accordingly, the Panel finds that Complainant has failed to show the element of bad faith as required under paragraph 4(a)(iii) of the Policy.

DECISION

For the reasons set forth above, Complainant, having failed to satisfy elements stated in 4(a) of the Policy, has not established its prima facie case sufficient to warrant transfer of the contested domain name.

Therefore, the Panel concludes that relief shall be denied.

Accordingly, Complainant’s request for relief is dismissed.

Hong Oo Baak, Panelist
Dated:  October 17, 2003

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