WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GVC Holdings plc and PartyGaming IA Limited v. Lyu Jin Won
Case No. D2017-1116
1. The Parties
The Complainant is GVC Holdings plc of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") and PartyGaming IA Limited of Hamilton, Bermuda, Overseas Territory of the United Kingdom, represented by IPQ IP Specialists AB, Sweden.
The Respondent is Lyu Jin Won of Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <partypokerlive.com> is registered with Inames Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 8, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the registration agreement is Korean, confirming that the Respondent is listed as the registrant, and providing the Respondent's contact details.
On June 12, 2017, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On the same date, the Complainant requested for English to be the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint in both English and Korean, and the proceedings commenced on June 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 12, 2017.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on July 21, 2017. 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 in this administrative proceeding is involved in the online gaming and services industry. The Complainant is one of the world's largest online gaming companies and is listed on the London Stock Exchange and conducts businesses in several countries around the world. Among the Complainant's many registered trademarks worldwide, it holds the trademark PARTYPOKER in various jurisdictions, including the European Union (registered on May 14, 2008) and Canada (registered on December 22, 2003). Further, the Complainant registered the domain name <partypoker.com> on August 19, 1999, and launched its online services for its PartyPoker service in August 2001.
The Respondent, who has chosen not to participate in these proceedings, is Lyu Jin Won of Gwangju, Republic of Korea. The disputed domain name was registered on November 22, 2004. It previously resolved to a website displaying pay-per-click links relating to, inter alia, gaming, poker, and online poker; the disputed domain name currently resolves to an inactive site.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademarks in which the Complainant has rights, and that the disputed domain name is likely to generate a risk of confusion to the public.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has not authorized the Respondent to use its trademarks.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. As evidence of this bad faith, the Complainant notes that the disputed domain name does not in fact operate, but instead is only being passively held and offered for sale. The Complainant also submits evidence that the Respondent is offering the disputed domain name for sale using a domain name brokerage service and that the Respondent's asking price for the disputed domain name is USD 10,000.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and the Complainant submitted its Complaint in English.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise its discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
First, the Panel notes that, as evidenced on the record, the Respondent has numerous domain names using only the English language. The Panel additionally notes that the Respondent has chosen not to participate in this proceeding.
For the above-mentioned reasons, the Panel concludes that it will issue a decision in English.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 a complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(i) the domain name registered by the respondent is 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has demonstrated that it holds several trademark registrations for PARTYPOKER, which are closely associated with its business activities around the world.
The disputed domain name wholly incorporates the Complainant's existing trademarks. The disputed domain name incorporates the entirety of the Complainant's mark and is, in the Panel's view, confusingly similar to the Complainant's mark. The incorporation of the complainant's mark is itself sufficient to find establish the first element under paragraph 4(a)(i). Furthermore, the dominant feature of the disputed domain name is "partypoker", which comprises the entirety of the trademarks belonging to the Complainant. See Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging Corp., WIPO Case No. D2001-1464.
It is well established that the addition of the generic Top-Level Domain ("gTLD") ".com" is typically without legal significance when comparing the disputed domain name to the Complainant's trademark. See Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
For the reasons stated above, the Panel finds that pursuant to the Policy, paragraph 4(a)(i), the disputed domain name is confusingly similar to the Complainant's trademarks, and the first element has been established.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of production, several past UDRP decisions have held that "once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing" (see, among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
On the basis of the present record, and in light of the use of the disputed domain name as described under section 6.C, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent in the present case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(iv), includes "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location". The Complainant has submitted evidence showing that the disputed domain name previously resolved to a website displaying pay-per-click links relating to, inter alia, gaming, poker, and online poker. The Panel finds that the Complainant has thus adequately supported the inference that the Respondent's actions satisfy the requirement of paragraph 4(b)(iv) of the Policy. Moreover, the disputed domain name is not currently operable or being used for any apparent business purpose, but rather the Respondent appears to be holding the disputed domain name in an attempt to sell it for USD 10,000. The Panel finds that the Complainant has thus adequately supported the inference that the Respondent's actions satisfy the requirement of paragraph 4(b)(i) of the Policy.
The fact that the disputed domain name is currently not connected to an active website but rather passively held does not prevent a finding of bad faith (see, among others, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, stating that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.")
For the reasons given above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that the third and final element of the Policy has been established.
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 name <partypokerlive.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: August 3, 2017