Wsop.com

The timeline behind wsop.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Harrah's License Company, LLC v. Federico Schiavio Claim Number: FA0605000720792 PARTIES Complainant is Harrah's License Company, LLC (“Complainant”), represented by David J. Stewart, of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA 30309. Respondent is Federico Schiavio (“Respondent”), represented by Darren S. Rimer, of Rimer & Mathewson LLP, 28202 Cabot Road, Suite 300, Laguna Niguel, CA 92677. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <wsop.com>, registered with Encirca Inc. PANEL The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding. Hon. Ralph Yachnin (Ret.), Paul M. DeCicco, Esq., and James A. Carmody, Esq., as Panelists. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2006. On June 6, 2006, Encirca Inc confirmed by e-mail to the National Arbitration Forum that the <wsop.com> domain name is registered with Encirca Inc and that the Respondent is the current registrant of the name. Encirca Inc has verified that Respondent is bound by the Encirca 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 June 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 3, 2006 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@wsop.com by e-mail. On June 19, 2006, Respondent requested additional time to submit a Response to the Complaint and submitted information in support of this request. The National Arbitration Forum found extenuating circumstances to exist and extended the Response deadline to July 24, 2006. A timely Response was received and determined to be complete on July 24, 2006. On August 3, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Ralph Yachnin (Ret.), Paul M. DeCicco, Esq. and James A. Carmody, Esq. (Chair) as Panelists. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <wsop.com> domain name (the sole “domain name at issue”) is confusingly similar to Complainant’s registered WORLD SERIES OF POKER mark and to Complainant’s WSOP mark in which common law rights are asserted. 2. Respondent does not have any rights or legitimate interests in the above described marks or in the domain name at issue. 3. Respondent registered and has used the domain name at issue in bad faith. 4. Counsel for Complainant specifically represented, in para. IX. OTHER LEGAL PROCEEDINGS, that, “No other legal proceedings have been commenced or terminated in connection with or relating to the Domain Names.” [sic] B. Respondent 1. Respondent defends on the grounds that the domain name at issue is not identical or deceptively similar to Complainant’s WORLD SERIES OF POKER mark and that, if Complainant has any common law rights in the WSOP mark, they are not exclusive and, in any event, are inferior to Respondent’s rights. 2. Respondent, accordingly, asserts that its use of the domain name at issue is legitimate and not in bad faith. In particular, Respondent points out that Complainant acquired the WORLD SERIES OF POKER mark in March of 2004 by assignment in a transaction with Horseshoe Club Operating Company. The assignment conveyed numerous registered marks and many applications for registrations of marks, including the WORLD SERIES OF POKER mark but did not make any reference to the WSOP mark in which Complainant asserts common law rights by virtue of that assignment. 3. Finally, Respondent notes that, in January of 2004, he applied for registration of the WSOP mark with the U.S. Patent & Trademark Office and that such legal proceeding has involved office actions of the examiner and the active participation of the Complainant who filed an Opposition to the Respondent’s application using the same law firm which represented to this Panel that “no other legal proceedings” were afoot. C. Additional Submissions Each of the parties submitted very extensive Additional Submissions which essentially provided more factual data with respect to the controversy and which were taken into consideration by the Panel. D. Correspondence from counsel Following the time allotted for additional submissions, the Forum and the Panel were advised by counsel for both parties that the Respondent had filed suit against Complainant in the U.S. District Court for the Central District of California, seeking a declaratory judgment to the effect that its registration and use of the domain name at issue is not unlawful and involving other issues closely related to the controversy before this Panel. FINDINGS The Panel is unanimous in finding that it would be inappropriate for it to render a decision on the merits in this UDRP controversy in light of the pending proceeding before the U.S. Patent & Trademark Office in which the Respondent seeks to register the mark WSOP, and is opposed in such proceeding by the Complainant. The outcome in the USPTO might well be determinative with respect to rights in the WSOP mark and any UDRP consideration of the <wsop.com> domain name at issue. Further, the litigation brought by Respondent in the U.S. District Court for the Central District of California involves the domain name at issue and stands as another strong reason for this panel to decline to issue a decision on the merits of the controversy. This action of the Panel is authorized by Rule 18 of the Policy which provides in pertinent part: Effect of Court Proceedings (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. Other UDRP panels have responded in similar fashion. See AmeriPlan Corp. v. Gilbert, FA 105737 (Nat. Arb. Forum Apr. 22, 2002) (holding that it was appropriate for the panel to dismiss the UDRP action because civil litigation was pending against the complainant involving ownership of the domain name at issue); see also Life Extension Found., Inc. v. Vitacost.com, FA 288377 (Nat. Arb. Forum Sept. 2, 2004) (holding that it was appropriate to dismiss the UDRP case involving <lef.com> without prejudice due to the pending and opposed application to register the mark LEF with the USPTO by respondent). DECISION Accordingly, the Panel orders that the Complaint be and hereby is DISMISSED. Hon. Ralph Yachnin (Ret.), Paul M. DeCicco, Esq., James A. Carmody, Esq. (Chair) For the Panel Dated: August 22, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.