A one member UDRP panel awarded the generic domain name PokerStrategy.co was awarded to the holder of the .com despite the one member panel finding the term Poker Strategy was a “”Purely Descriptive, Commonly Used” term.
This decision should be particularly troubling to .Co domain owners as the language in the decision seems to indicate that any .Co maybe in jeopardy if the .Com domain holder files a UDRP.
In this case the domain was not parked but was directed to another one of its other gambling domains, winner.com
“”Previous UDRP panels have found that where a domain name is purely descriptive, even where it is part of a registered trademark, then a respondent will have a right or legitimate interest, unless there is evidence that the respondent is targeting the complainant.”
“In this case the term “poker strategy” is comprised of two common English words and the combined term is purely descriptive and based on the evidence before the Panel is commonly used in the industry. ”
“Without more this would be enough to find that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the Disputed Domain Name and to deny the Complaint. ”
“However as discussed below, there are supervening circumstances in this case which lead the Panel to infer, on the balance of probabilities, that the Respondent has in this case sought to target the Complainant and that therefore the Respondent has not acted in good faith.”
“Accordingly, the Panel finds that for the reasons set out below, the Complainant has made out its case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complaint succeeds under the second element of the Policy.”
“The Disputed Domain Name was registered by the Respondent quite recently on July 20, 2010, by which time the Complainant had been operating its website at “www.pokerstrategy.com” for a number of years and owned numerous trademark registrations or applications incorporating the “pokerstrategy” phrase or mark.”
“The Respondent admits being well aware of the Complainant’s site and acknowledged this in his email of September 15, 2010 when he said to the Complainant that he was familiar with the <pokerstrategy.com> website and thought that it was a great site and offered a good product.”
“In spite of his knowledge of the Complainant’s website and domain name, the Respondent proceeded not only to register the Disputed Domain Name but to use it to defer to his poker gaming website at “www.winner.com”.
“Based on the Respondent’s own acknowledgment of the success of the Complainant’s website at “www.pokerstrategy.com” and that the site had been in operation for a number of years prior to the Respondent’s registration of the Disputed Domain Name, the Panel infers that the Complainant’s domain name has most likely developed some degree of source identifying significance, at least amongst the Internet based poker playing community. ”
“In these circumstances the Panel infers that it is most likely that the Respondent took the opportunity to register the Disputed Domain Name with a view to using it to attract Internet users to the website at “www.winner.com”.”
“On the balance of probabilities, the Panel finds that the Respondent in so acting has intentionally sought to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of its website in terms of paragraph 4(b)(iv) of the Policy.”
So now we seem to have a new standard by which a domain name can be taken:
“the Panel infers that the Complainant’s domain name has most likely developed some degree of source identifying significance”
Well doesn’t every domain name by definition “develop some degree of source identifying significance”
Any domain name that has been in use, develops “some degree of source identifying significance”
Would seem so and this decision seems quite disturbing especially for .Co domain name holders.
Also quite troubling is that this decision seems to be based on an inference of the panel
“The panel infers.”
“a good guess”
I though the panel was suppose to look at the facts, apply the law and come to a decision.
I didn’t know they could just guess at it