WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Freki Corporation N.V. v. danaka tarou / Kim soo-chul, chun-nam

Case No. D2013-2189

1. The Parties

The Complainant is Freki Corporation N.V. of Willemstad, Curaçao, Netherlands, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

The Respondent is danaka tarou of Tokyo, Japan / Kim soo-chul, chun-nam of Cheonan-si, Chungcheongnam-do, Republic of Korea.

2. The Domain Names and Registrars

The disputed domain names <pinnacle-korea.com> and <pinna-589.com> are registered with YesNIC and the disputed domain name <pinnaclesports-korea.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2013. On December 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent Kim soo-chul, chun-nam is listed as the registrant for the disputed domain name <pinnaclesports-korea.com> and providing the contact details. On December 19, 2013, YesNIC transmitted by email to the Center its verification response confirming that the Respondent danaka tarou is listed as the registrant for the disputed domain names <pinnacle-korea.com> and <pinna-589.com> and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2014. On January 17, 2014, due to problems identified in the previous Notification, the Center re-notified the Respondent of the Complaint and in accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2014.

The Center appointed Andrew J. Park as the sole panelist in this matter on February 12, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant trades under the name of Pinnacle Sports (also known as “Pinny” or “Pinnacle” to their online community), is incorporated under the laws of the Netherlands, with a principal place of business located in Willemstad, Curaçao, and provides one of the world’s leading sports e-betting platforms. The Complainant is the owner of several service marks and trademarks that include the word “Pinnacle”, including PINNACLE, PINNACLE SPORTS, PINNACLE SPORTS BOOK and PINNACLE SPORTS AFFILIATES as well as the domain name <pinnaclesportsaffiliates.com>. The dates of registration of these trademarks are different for each mark, but the trademark PINNACLE has been registered since at least March 6, 2011.

The Complainant was established in 1998 and has become one of the world’s largest, fully licensed, online sports books. The Complainant has customers in more than one hundred (100) countries worldwide and operates across eighteen (18) different languages, including Korean. The Complainant operates a Korean language website whereby bets are taken for Korean sports.

The trademark PINNACLE is among the best-known trademarks in the gambling industry, and is prominently depicted in publications throughout the industry.

The Respondent registered the disputed domain names: <pinnacle-korea.com> on March 3, 2013; <pinna‑589.com> on September 24, 2013; and <pinnaclesports-korea.com> on October 21, 2013. According to the WhoIs database, <pinnacle-korea.com> and <pinna-589.com> are registered by danaka tarou, while <pinnaclesports-korea.com> is registered by Kim soo-chul, chun-nam. When the Panel searched the disputed domain names on February 26, 2014,1 the disputed domain names <pinnacle-korea.com> and <pinnaclesports-korea.com> were not active. Indeed, the disputed domain name <pinnaclesports-korea.com> simply redirected to the inactive disputed domain name <pinnacle-korea.com>. The website associated with the disputed domain name <pinna-589.com> included the title tag <Pinnacle SportsTM> alongside the disputed domain name. Further, the evidence provided by the Complainant shows that all the websites under the disputed domain names were previously all active, and “virtually a mirror image to that of the Complainants website.”

The Respondent did not respond to the Complainant’s contentions.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain names are confusingly similar to its trademarks. The Complainant contends that two of the disputed domain names <pinnacle-korea.com> and <pinnaclesports‑korea.com>, include the Complainant’s trademarks PINNACLE and PINNACLE SPORTS in their entirety, while the third disputed domain name <pinna-589.com> includes the Complainant’s trademark in its origin form, i.e., “pinna” is the origin for “pinnacle”. The Complainant contends that any unsuspecting Internet user would find the disputed domain name <pinna-589.com> confusingly similar to its trademarks. The Complainant further contends that the geographic word “Korea” or the numeric value “589” does not take away from the fact that its trademark is being used alongside descriptive terms associated with the Complainant’s business activity. The Complainant states that it operates a Korean language website and the numeric value of 589 is a common number in the betting industry.

The Complainant claims that the Respondent has no rights or legitimate interests in respect to the disputed domain names. The Complainant contends that the Respondent has never been and is not commonly known by the disputed domain names and is not authorized or licensed to use its trademarks, either expressly or implicitly. The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert Internet users. Indeed, the Complainant contends that the Respondent’s use of the disputed domain names amount to a phishing practice and that the websites associated with the disputed domain names are “virtually a mirror image to that of the Complainant[’]s website.”

The Complainant claims that the disputed domain names were registered and are being used in bad faith. The Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion leading to the likelihood of association with the Complainant’s trademarks PINNACLE and PINNACLE SPORTS. The Complainant further contends that the Respondent attempts to draw Internet customers away from the Complainant’s business website so as to compete with the Complainant. Furthermore, the Complainant contends that the Respondent has engaged in a pattern of bad faith conduct by registering well-known trademarks as domain names, i.e., LOUIS VUITTON, DOLCE & GABANNA, ADDIDAS, etc., which further demonstrates bad faith on the part of the Respondent in this proceeding.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Consolidation of Multiple Respondents into a Single Complaint

Paragraph 3(c) of the Rules appears, prima facie, to provide that a complaint may relate to more than one domain name only if the domain names are registered to the same domain name holder. In Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, the panel noted that:

“… the Policy would seem to require a complainant to initiate separate proceedings against each domain name registrant, absent either a showing that the relevant domain name registrants are in fact one singular domain name holder under paragraph 3(c) of the Rules or a successful request for consolidation of the multiple domain name disputes under paragraph 10(e) of the Rules.”

Here, the Panel agrees with the Complainant that the first and second Respondents are related to the extent that a sufficient unity of interest exists such that they may essentially be treated as a single domain name holder for the purposes of paragraph 3(c) of the Rules.

Based on the available evidence, the Panel also agrees with the Complainant that the Respondents are commonly controlled on the basis that the web content of the websites at the disputed domain names were at some point in the past substantially identical and related to the organization Freki Corporation N.V also known as Pinnacle Sports, that is, the Complainant. Indeed, all the disputed domain names resolved to three individual web pages, all of which were in the Korean language, and all of which had common features. Moreover, some of the disputed domain names subsequently redirected users to each other, i.e., the disputed domain name <pinnaclesports-korea.com> now redirects users to the disputed domain name <pinnacle-korea.com>. Additionally, the evidence (Annex 6 to the Complaint) reveals a pattern of registration by both Kim soo-chul, chun-nam and danaka tarou. See, e.g., Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345.

As noted by in Speedo Holding, supra:

“… the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve. As noted above, indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules.”

And

“… the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.”

In the Panel’s opinion, the circumstances of the redirections of the disputed domain names, the substantial similarity of the associated websites, and the failure of the Respondents to contest the Complainant’s submissions provide a strong indication that the disputed domain names are subject to common control. The Panel also finds it not only administratively efficient but also fair and equitable to deal with each of the disputed domain names in a single proceeding. The Panel therefore in the exercise of its powers under paragraphs 3(c) and 10(e) of the Rules to permit the Complainant’s request for consolidation.

6.2 Analysis of the Complaint

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain names to the Complainant. Those requirements are that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

In the present case, the Panel finds that the Complainant is the owner of the registered trademarks PINNACLE and PINNACLE SPORTS based on the evidence provided by the Complainant.

There are three disputed domain names. The first and second disputed domain names <pinnacle-korea.com> and <pinnaclesports-korea.com> entirely incorporate the Complainant’s trademarks. The hyphenated “Korea” is merely descriptive and does not distinguish the disputed domain names from the Complainant’s PINNACLE and PINNACLE SPORTS trademarks. The fact that a domain name wholly incorporates a complainant's registered mark is generally sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. E.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (<eautoparts.com> was found to be confusingly similar to the mark EAUTO).

The Panel is persuaded by the Complainant’s arguments concerning the third disputed domain name <pinna-589.com>, and finds that the disputed domain name is also confusingly similar to the Complainant’s trademarks. As provided, the Complainant is well known in the industry as “Pinny” to the relevant on-line community. “Pinna” and “Pinny” are spelled nearly identical, phonetically similar, and “pinna” is the origin for the word “pinnacle.” Like the hyphenated geographical term “Korea”, the number “589” does not take away from the dominant part of the mark – PINNA (or in this case PINNACLE). Indeed, as provided by the Complainant, which was unrebutted, the number “589” have a particular significance in the betting industry. Thus, the Panel considers that the addition of such number, especially given that it has significance in the betting industry, is not sufficient to avoid confusing similarity.

The Panel therefore finds, pursuant to the Policy, paragraph 4(a)(i), that the disputed domain names are confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

There is no evidence in this case to support a finding that the Respondent has rights or legitimate interests in the disputed domain names.

The general consensus of UDRP panel opinion on the issue of whether a respondent has rights or legitimate interests is set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). On this approach, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

In this case, the Complainant has established a strong prima facie case against the Respondent. The Respondent has failed to come forward with any allegations or evidence demonstrating rights or legitimate interests in the disputed domain names, and, further, there is no evidence in the case file that would demonstrate that the Respondent had such rights or legitimate interests.

The Panel finds that there has been no bona fide offering of goods or services in connection with the Respondent’s use of the disputed domain names. There is no evidence that the Respondent has ever been or is commonly known by the disputed domain names. The Complainant never authorized or licensed the Respondent to use its trademarks, either expressly or implicitly. See Audi AG v. Mike Gillespie, Gillespie Auto Group, WIPO Case No. D2007-1850. The evidence supports the Complainant’s allegations that the Respondent is using the disputed domain names containing the Complainant’s trademark to misleadingly divert Internet users to its websites, which relate to Internet gaming. Indeed, the Respondent’s websites associated with the disputed domain names were all at some point in the past “virtually a mirror image to that of the Complainants website.” This shows that the Respondent’s use of the disputed domain names is not fair use either because it confuses the Internet users as to the owner of the trademarks PINNACLE and PINNACLE SPORTS, and diverts the attraction the Complainant’s trademarks cause to its own commercial enterprises. See Volvo Trademark Holding AB v. e-motordealer Ltd, WIPO Case No. D2002-0036.

The Panel therefore finds, pursuant to the Policy, paragraph 4(a)(ii), that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith - any one of which may be sufficient to support a finding of bad faith.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain names. Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The evidence, which is not rebutted by the Respondent, shows that the Respondent had attempted to attract for commercial gain Internet users to the websites of the disputed domain names by creating a likelihood of confusion with the Complainant’s PINNACLE and PINNACLE SPORTS trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or a service on the Respondent’s websites. Accordingly, the Panel finds that the only credible explanation for the use of the disputed domain names is to take advantage of the similarity between the disputed domain names and the Complainant’s trademarks to draw Internet users to those websites for commercial advantage. No evidence has been presented showing the Respondent has any connection to the name “Pinnacle.”

Bad faith can be also inferred based on the fame of the Complainant’s marks in the online gambling industry, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto (particularly in view of the Complainant’s use of its mark on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the disputed domain names in association with the websites to provide a sports e-betting platform without having knowledge of the Complainant.

The registration of a domain name that is similar to a distinctive trademark by a respondent, when the respondent has no relationship to that mark, may also constitute in certain circumstances sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319). As mentioned above, it was shown that the Respondent has no legitimate relation whatsoever to the PINNACLE or PINNACLE SPORTS marks.

For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that the disputed domain names were registered and are being used in bad faith by the Respondent.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <pinnacle-korea.com>, <pinnaclesports-korea.com> and <pinna-589.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: March 3, 2014

1 As indicated in paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision.