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January 21, 2011 / Nate Harris

Owner of pokerstrategy.com wins UDRP on pokerstrategy.co

Summary of Anachusa Ltd. v. Prasad Jason, advertoglobe

(WIPO Case No. DCO2010-0041)

Filed: November 19, 2010; Decided: January 5, 2011 (Panelist: Alistair Payne)

Disputed domain name: <pokerstrategy.co>

pokerstrategy.co

The Parties

Complainant Swerford Holdings Ltd. (“Swerford”) has operated a website at <pokerstrategy.co> since 2002. The website provides poker strategy lessons and features advertisements and links to poker-playing sites. Swerford owns several trademark registrations, including a German registration filed in 2006 for the word mark POKERSTRATEGY.

The Respondent Prasad Jason claims to have “been in the gaming industry” since 2003. He owns several keyword domain names targeted to poker, including the domain name <winner.com>. Mr. Jason registered the disputed domain on July 20, 2010. According to Swerford, Mr. Jason is hosting a website at the disputed domain that “attempt[s] to replicate the Complainant’s business model” through the use of incentive programs such as signing bonuses.

Prior to filing the complaint, Swerford apparently made an offer to buy the disputed domain from Mr. Jason, who made a counteroffer in the range of $20,000 to $25,000.

Identical or Confusingly Similar

The Panel finds that Swerford has demonstrated that “it owns a German word mark registration for POKER STRATEGY as noted above which fulfils this requirement.” [Actually, the registration is for POKERSTRATEGY (no space).]

The Panel finds that the disputed domain name is identical to Swerford’s mark.

Rights or Legitimate Interest

The Panel points out that “where a domain name is purely descriptive, even where it is part of a registered trademark, the a respondent will have a right or legitimate interest, unless there is evidence that the respondent is targeting the complainant.” Here, the fact that Mr. Jason sought to capitalize on Swerford’s business model is, in the Panel’s view, evidence that he lacks rights or legitimate interest in the disputed domain name.

Registered and Used in Bad Faith

“[T]he 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 ‘winner.com’.” Furthermore, while it is not dispositive, the Panel finds that Mr. Jason’s counteroffer to sell the domain for $20-25k reinforces the idea that he registered the disputed domain in bad faith, presumably for the purpose of reselling it at an excessive price to Swerford.

Decision

The Panel orders that the disputed domain name be transferred to Swerford.

Commentary

I’m no trademark expert, but “poker strategy” sure seems generic to me. Where is the evidence to support the Panel’s claim that “the Complainant’s domain name has most likely developed some degree of source identifying significance”? Of course, if “poker strategy” is generic, then the complaint fails on the zeroth prong; the complainant has no trademark rights, making it unnecessary to even consider whether the disputed domain name is identical or confusingly similar to the alleged mark. The idea of bad faith would also be irrelevant.

In the same vein, I don’t think $20,000-25,000 is excessive for a domain name made up of generic terms that refer to a very lucrative online industry.

As thedomains.com says, “[t]his 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.” It’s notable that this Panel didn’t cite New Dream Network, LLC v. Yuanjin Wu (WIPO Case No. DCO2010-0013) [blogged here], which seemed to hold that a “.co” domain is typosquatting of its “.com” counterpart.

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