Andrew Robl v. 82 LLC
Claim Number: FA1492145
Complainant is Andrew Robl (“Complainant”), represented by Joanna Ardalan of Kulik Gottesman & Siegel LLP, California, USA. Respondent is 82 LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name at issue is <shipitholla.net>, registered with FABULOUS.COM PTY LTD (“the FABULOUS Company”).
The undersigned Mr. David H Tatham 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 28, 2013; the Forum received payment on March 28, 2013.
On April 1, 2013, the FABULOUS company confirmed by e-mail to the Forum that the <shipitholla.net> domain name was registered with it and that Respondent is the current registrant of the name. The FABULOUS company has also verified that Respondent is bound by its registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shipitholla.net. Also on April 5, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 22, 2013.
A timely additional submission from Complainant was received by the Forum and determined to be complete on April 25, 2013, and an Additional Submission from Respondent was received by the Forum on April 30, 2013. Both were deemed to be complete and in accordance with the Forum’s Supplemental Rule 7.
On May 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for the Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainants are two individuals who are professional poker players, playing in high stakes tournaments throughout the world. When they, and others, gained some recognition for their victories, they began to identify themselves under the name ‘Ship It Holla Ballas’ and, in 2006, they registered the domain name <www.shipitholla.com>. On the website at this domain name they provide news, post pictures, and give poker advice. They also sell merchandise such as t-shirts, all bearing the marks SHIP IT HOLLA or SHIP IT HOLLA BALLAS. In January 2013 a non-fiction book was published entitled “Ship it Holla Ballas!” which described how a bunch of 19-year old college dropouts used the Internet to become Poker’s Loudest, Craziest, and Richest Crew. A reviewer described it thus: There would be no book – or for that matter, a Ship It Holla Crew – without our brilliant and fearless tour guide, Andrew Robl”.
Complainants maintain that people recognize that SHIP IT HOLLA BALLAS refers to the Complainants and their other associates. They have now filed a trademark application at the USPTO for “Ship It Holla” under No. 85889159.
Complainants maintain that the disputed domain name <shipitholla.net> is identical to their mark SHIP IT HOLLA and confusingly similar to their mark SHIP IT HOLLA BALLAS.
Complainants further maintain that Respondent has no rights in the disputed domain name because not only was he aware of the marks when, on their behalf, he registered their domain name, but also because he uses it to host a copycat website which, when this was created, contained blog entries, articles, colours, layout, “about” text, and pictures which were identical to those on Complainants’ website.
Complainants claim that Respondent was working for them before he registered the disputed domain name and that he must therefore have been well aware of Complainants’ name and marks.
Complainants also claim that Respondent, having created a copycat website, used it to post opinions attributed to Andrew Robl, one of the Complainants, which he does not share, and Complainants maintain that this was done in order to gain leverage for the sale of the website to Complainants for at least $15,000. Furthermore, Respondent has threatened Complainants with bodily harm if they do not purchase the disputed domain name.
All of this is, in the opinion of Complainants, clear evidence that Respondent lacks any rights or legitimate interest in the disputed domain name.
Complainants also maintain that Respondent has acted in bad faith by:
· Offering to sell the disputed domain name. For example, in an e-mail to Andrew Robl, Respondent wrote, “If you’d like to pay the debt you owe me, I’d be glad to take the site down and turn over the domain to you.”
· Using a copycat website which contains fraudulent contact information and posts written by Respondent but falsely attributed to Andrew Robl. This has probably resulted in lost opportunities and advertising revenue for Complainants.
· Using the copycat website at the disputed domain name in order to attract users, to confuse them, and to gain advertising revenue
· Threatening physical harm to Complainants if they were to attend a particular poker tournament. For example, in an e-mail in April 2009, he wrote “I’m sure at least half of you will make the mistake of assuming this is just another of my baseless threats. If any of you will be attending EPT in Monte Carlo, you will be the first to find out that was a big mistake to assume. I’ll pick one of the entrats (sic) in Monaco at random to make my point loud and clear tot (sic) the rest of you. These debts need to be settled if you want to remain a living-and-breathing part of this industry.”
B. Respondent
Respondent replied in person, claiming that, although he had registered thousands of domain names this was the first to be challenged.
He claims that neither of the names ‘Ship It Holla’ or ‘Ship It Holla Ballas’ had been used since January 2008. Therefore any claims which Complainants might have to the marks have expired and in fact the only person with rights to the name is himself as he is the only one to have used it since 2008.
Respondent alleges that he and Complainant were business partners for several years. He was an equity partner in the ‘Ship It Holla Ballas’ web presence and was responsible for the development and management of the domain. However in January 2008 he fell out with Andrew Robl and, although the latter agreed to reimburse him for the work he had done, no payment was ever made. Respondent claims that Complainant gave him possession of the site when he was an equity partner in charge of all website development tasks and he therefore believes he is within his rights to retain his ownership of the disputed domain name and to operate the website which it has hosted since 2008.
Given the above, and in reply to Complainant’s accusations, Respondent alleges that:
· Complainant was aware, and approved, of his registration of the disputed domain name which he did in his capacity as being responsible for the website and the management of the Ship It Holla Ballas domain.
· The website at the disputed domain name is not identical to that at <shipitholla.com>, he simply re-hosted its content to <shipitholla.net> when the former was re-directed to Andrew Robl.
· He only ever registered the disputed domain name for defensive purposes.
· He has never made any threats of bodily harm to anyone.
· He has never offered to sell the disputed domain name to anyone.
C. Additional Submissions
As noted above, both parties filed an additional submission.
Complainant
Complainants reject the allegation that they have abandoned the name SHIP IT HOLLA and challenge Respondent to provide proof thereof. The two Complainants play poker and have used the mark to indicate source continually since 2006. They have continually used the name Ship It Holla Ballas when booking card games, on poker news sites, in articles featuring Andrew Robl, on their website, and in connection with poker related services. They allege that the public understands the marks to indicate them as the source.
Furthermore, Respondent’s claim to have been a partner in the enterprise is false. An independent contractor does not acquire trademark rights when acting for their principals. In fact, Respondent was never hired but actually volunteered to design the website for free. Complainant points out that the copy invoice which Respondent supplied is evidence only of work done and is no proof of an existing partnership.
Complainants also assert that they did not approve of the registration of the disputed domain name. It was registered by Respondent after Complainants had ceased enlisting his services as a volunteer and, on the day that it was registered, there was no business relationship with him.
Respondent claims to have also registered the domain names <shipitholla.tv> and <shipitholla.org> but these registrations, like the one in the present dispute, have also been registered in bad faith. However, even if the disputed domain name had been approved by Complainants, they assert that bad faith use is sufficient to support a finding of bad faith under the Policy.
Complainants maintain that Respondent never actually created the content of SHIPITHOLLA.COM or <shipitholla.net>. This was in fact the work of another web designer. Also, Respondent does not own the copyright in the content of the disputed website. Furthermore, even if Respondent did re-host the content of Complainant’s website on the website at the disputed domain name, he still added his own contact information in an effort to intercept e-mails that would otherwise have gone to Complainants.
To compound Respondent’s bad faith he has, firstly, registered the domain name <AndrewRoblisaThief.com> and, secondly, posted a confession about cheating at cards.
With regard to the claim that Complainant should have paid Respondent for an unfinished unusable website, Complainant actually offered to pay all of his fees if Respondent were to submit receipts or invoices. However he never did
Respondent
In his Supplemental Response, Respondent maintains: that Respondent has abandoned his mark; that he was and remains an equity partner in the web presence for ‘Ship It Holla Ballas’; that a court of law might be a more appropriate venue to prove the point; that his registration of the disputed domain name was approved by Complainants and they have known about it for five years; that although some of the content at the website at the disputed domain name was done by another designer, he and his employees did the majority of the work; and that it strains credibility for Complainants to claim that they failed to pay because of a lack of invoices when he had told them to just pay him what they thought was fair.
One of the Complainants – Andrew Robl – is the prime mover in a small group of young men who are widely recognised as innovators in the art of playing poker for high stakes and who identify themselves by the names Ship It Holla or Ship It Holla Ballas. They claim to have rights in the names ShipItHolla and ShipItHollaBallas although there is only a pending US trademark application for the former. Nothing has been revealed to the Panel about the other Complainant – Peter Jetten.
Respondents are named as 82 LLC but Complainants believe this to be an alias for William Franceschine, and he has not denied that. Indeed both the Response and Respondent’s Additional Submission are couched in the first person.
Paragraph 15(a) of 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; and
(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.
Preliminary Remarks
This case is, in effect, a dispute between two individuals – Andrew Robl and William Franceschine. As noted above, the former is the prime mover behind a group of individuals who play poker under the group names Ship It Holla or Ship It Holla Ballas. The latter believes he is owed some money for work done on behalf of the group. He therefore registered the disputed domain name <shipitholla.net>, as well as other domain names such as < shipitholla.tv>, <shipitholla.org> and <andrewroblisathief.com>, in retaliation for this perceived non-payment of a debt.
In the present case, the only issue is the question of a disputed domain name. It has nothing to do with any financial dealings between the parties, which are best dealt with in another forum.
In paragraph 4(k) of the Policy it is stated that there is nothing in the Policy to prevent the parties from “submitting the dispute to a court of competent jurisdiction for independent resolution”. And indeed, Respondent refers to this possibility in his Additional Submission. However, there are, as yet, no court proceedings in train – or if there are the Panel has not been informed thereof.
The Panel will therefore decide the matter solely under the Policy and its Rules.
It is well established that for the purposes of comparison under the Policy a gTLD such as .com or .net is to be ignored. See, for example, Rollerblade, Inc, v. Chris McCrady, D2000-0429 (WIPO June 25, 2000) in which the Panel found that a top level domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See also Bank of America Corporation v. Bill McCall, FA 135012 (NAF December 31, 2002) holding that attaching a gTLD to a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”.
On that basis therefore, the Panel finds that the disputed domain name – less the gTLD .net – is identical to the name Ship It Holla and very, if not confusingly, similar to the name Ship It Holla Ballas in both of which Complainants claim to have rights. But do they?
They currently only have a pending trademark application at the USPTO for Ship It Holla. It was filed on March 28, 2013, in the names of Andrew Robl and Peter Jetten for “Entertainment services, namely providing a web site featuring photographic and prose presentations featuring news, advice, tips, instruction, guidance, recommendations, coaching and information on playing cards, including poker, the culture of card playing, and the lifestyle of card playing”, in Class 41, under No. 85889159 and claiming May 20, 2006 as its date of first use.
The generally recognised rule is that a pending trademark application is probably insufficient to satisfy the requirements of the Policy. However there have been exceptions to this. The case law on whether a pending trademark application was sufficient for paragraph 4(a)(i) was extensively examined by the single member panel in the case of Fashiontv.com GmbH v. Mr. Chris Olic D2005-0994. In that case, Complainants had relied on two pending EU trademark applications both of which had been opposed, and the Panel’s eventual conclusion was that they could not be relied upon to satisfy the requirement of paragraph 4(a)(i) of the Policy. Out of the many cases examined by the Panel in that case, there is one that might be relevant to the present case namely Spencer Douglass MGA v. Absolute Bonding Corporation D2001-0904 in which it was said: “The mere fact that Spencer has filed an application to register one of its common law marks with the U.S. Patent and Trademark Office does not establish that Spencer has service mark rights therein until the application matures into a registration.”
In the Fashiontv case, the Panel eventually followed the approach adopted in Mk-Net-Work v. IVE Technologies D2004-0302 in which the following was stated: “As held consistently by Panels, a trademark application is not in itself sufficient evidence of a trademark or service mark in which the Complainant has rights, since applications are often opposed or may be refused for lack of distinctiveness. The only types of right that amount to trademark rights are, in addition to registered marks, unregistered or common law trademark rights.”
The above is confirmed in the WIPO Overview of WIPO Panel views on Selected UDRP Questions in which it is stated “The Complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.”
In the present case, Complainants do claim to have common law or user rights in the name Ship It Holla. However Respondent, on the other hand, claims that Complainants have not used either of the terms Ship It Holla or Ship It Holla Ballas since January 2008 and that therefore the names have been abandoned because they have not been used for more than five years.
In support of Complainants’ claim for having common law rights, there were filed a variety of evidence including –
A claim to have used the name since 2006, a fact which is repeated in their trademark application;
A copy of a page from an independent website PokerWorks which refers to Andrew ‘Good2CU’ Robl and his membership of the ‘Ship it holla ballas’ group;
A copy page from another unconnected site <www.latestpokerbonusis.com> which identifies Andrew Robl as “Member of the pro poker group called Ship It Holla Ballas”, and which refers to him as appearing on an NBC TV show ‘Poker After Dark’ in 2008 and 2009;
Pages from the SHIPITHOLLA STORE offering T-Shirts labelled with the name SHIPITHOLLA.COM, plus a picture of one of those T-Shirts, and a claim that these have been on sale since 2007;
Pages from the <shipitholla.com> website referring to the use of the name since 2007;
References to a book, published in early 2013 by two authors the full title of which is “Ship It Holla Ballas!: How a Bunch of 19-Year-Old College Dropouts Used the Internet to Become Poker’s Loudest, Craziest, and Richest Crew.”
In the light of the above evidence, and the continued use of the terms for the playing of poker up to the present day, the Panel is satisfied that it is Complainants who have rights in the names Ship It Holla and Ship It Hollas Ballas and not Respondent. In any case his argument relating to the 5 year non-use rule is relevant only in the case of a registered trademark.
In conclusion, the Panel finds that Complainants do have rights in the name Ship It Holla and that this is confusingly similar to the disputed domain name <shipitholla.net> and that therefore paragraph 4(a)(i) is proved.
It is well established that once a Complainant has made out a prima facie case that a Respondent has no rights or legitimate interests in a domain name, then the burden shifts to the Respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18, 2006) in which it was held that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
In the present case, the Panel is satisfied that Complainants have established a prima facie case under paragraph 4(a)(ii), namely that the Respondent has no rights or legitimate interest in the disputed domain name and it is up to Respondent to disprove it.
This will be a hard task, given that the disputed domain name is identical to a name under which the two Complainants and their friends have performed for several years in poker tournaments all over the world, and about whom a book has been written. However Respondent claims that the disputed domain name was registered by him in his capacity as being responsible for the original website at <shipitholla.com> and for its management. However there is no proof of this latter claim. Indeed, in an e-mail from Andrew Robl to William Franceschine dated March 2, 2008 the former states: “Nothing was achieved while you were in charge of the project ….. You promised the site would be done in a few days and then disappeared for weeks … I find it disrespectful that you try and charge me $15,000 for something that was never finished.”
Paragraph 4(c) of the Policy suggests three ways in which a Respondent might demonstrate that he has rights or a legitimate interest in a disputed domain. In the opinion of the Panel, the evidence clearly shows that Respondent is unable to prove any of them, especially 4(c)(iii) which calls for proof that Respondent is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” How can he say that he is not misleading or diverting consumers when he has copied the content of Complainants’ site on to that at the disputed domain name, erasing the Complainants’ contact and inserting his own?
It is true that Respondent claims that Complainants were not only aware of his registration of the disputed domain name but approved of it and he says, of the name Ship It Holla Ballas, that it “isn’t their mark. It was ours and now it is mine.” But this is not borne out by the evidence. In an e-mail to Andrew Robl dated March 3, 2008, in reply to the one quoted above, Respondent wrote: “Specifically, I have taken basically everything I wanted to do for your site and put it into a new site” (emphasis added by the Panel).
Complainant also filed a copy of an invoice from Respondent for work done, which clearly shows that he was indeed acting as an agent, not a principal.
All of this would appear to confirm Complainants’ assertion that the disputed domain name was actually registered after Complainants had ceased using the services of Respondent coupled with a flat denial that they had any knowledge of the registration of the disputed domain name and certainly did not approve it.
Whatever the actual facts, on the evidence before the Panel it would seem that this dispute has only arisen because Respondent believes that he became a partner of the other poker players in the group and that he has not been adequately rewarded for his work on their behalf. Complainants argue on the other hand that not only was he employed by them solely to create a website, but that his work thereon was unusable, unfinished and never used, and also that he was rewarded for such work as he did do.
In conclusion, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain name and that Policy ¶ 4(a)(ii) is therefore proved.
There is no agreement between the parties as to whether or not the website at the disputed domain name is or is not a copy of Complainants’ legitimate website at <shipitholla,com> although Respondent’s comment, which is referred to above, that he had taken everything from complainant’s site and put it into a new one would seem to bear out Complainant’s claim in this regard.
It seems to the Panel that Respondent is in breach of paragraph 4(b) of the Policy relating to Bad Faith, namely 4(b)(iii) “you have registered the domain name primarily for the purpose of disrupting the business of a competitor”.
There have been countless Decisions that define what is meant by ‘bad faith’. It was said, for example, in Microsoft Corporation v. Microsof.com aka Tarek Ahmed D2000-0548 that “By using a domain name and establishing a website deliberately designed to confuse internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services”. In the case of Red Bull GmbH v. Gutch, D2000-0766 (WIPO September 21, 2000) it was found that the Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the Complainant, and thus it was equivalent to bad faith use. Also, in Classic Metal Roofs, LLC v. Interlock Industries, Ltd. FA724554 (NAF August 1, 2006) it was found that Respondent had registered and used the domain name <classicmetalroofing,com> in bad faith by redirecting internet users to his own competing website.
In conclusion, the Panel finds that paragraph 4(a)(iii) is also proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shipitholla.net> domain name be TRANSFERRED from Respondent to Complainant.
David H Tatham, Panelist
Dated: May 13, 2013
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