WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microgaming Software Systems Limited v. DomainsByP and BB1Webs
Case No. D2008-0870
1. The Parties
The Complainant is Microgaming Software Systems Limited, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan John & Kernick Inc., Johannesburg, South Africa.
The Respondents are DomainsByP, Scottsdale, United States of America and BB1Webs, Kansas, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, Inc..
3. Procedural History
The Complaint was filed by email with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2008 identifying the Respondents as DomainsByP and BB1Webs. The hardcopy of the Complaint was filed on June 5, 2008. On June 6, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On June 6, 2008, GoD, Inc. transmitted by email to the Center its verification response stating that the registrant was not DomainsByP, but BB1Webs and gave its contact details. On June 10, 2008, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2008. On June 14, 2008, the Respondent sent an informal communication to the Center. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on July 1, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on July 4, 2008. 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 is Microgaming Software Systems Limited, a company duly incorporated in accordance with the laws of the Isle of Man. The Complainant asserts that it is the exclusive licensee of a number of pending and registered trade marks consisting of or incorporating the word “microgaming” in various jurisdictions including the United States of America (“US”), United Kingdom of Great Britain and Northern Ireland (“UK”), European Union (“EU”), Canada and Australia. The proprietor of the trade marks is Microgaming Systems Anstalt. The trade marks cover, in general, computer software for games of chance, casino style gaming, entertainment, gaming and online casino management services.
By a letter dated February 13, 2008, the Complainant’s legal counsel wrote to the Respondent setting out the Complainant’s concerns in relation to the Disputed Domain Name.
On June 14, 2008, the Respondent emailed the Center, telling them to “just delete the domain name and go on”.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
A. Complainant
The Complainant states that it was founded in 1994 and developed and released the world’s first true online casino software, currently utilised by more than 100 online casinos. The websites of these online casinos collectively receive in excess of 3 million visitors each month. The Complainant asserts that the MICROGAMING trade marks are very well-known in relation to online casinos and gaming related software.
The Complainant asserts that the Disputed Domain Name wholly incorporates the Complainant’s trade mark MICROGAMING and that the inclusion of the descriptive word “bonus” does not add distinctive matter so as to distinguish it from the Complainant’s trade mark. Furthermore, the word “slots” is a generic word associated with casinos and gaming and thus incapable of distinguishing the Disputed Domain Name from the Complainant’s trade marks. The Complainant therefore contends that the Disputed Domain Name is confusingly similar to the Complainant’s MICROGAMING trade mark.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant contends that the Respondent has never been known by the Disputed Domain Name and that it has not used the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. The Complainant further asserts that it has a long established reputation in the use of its MICROGAMING trade marks in relation to online gaming and casino services, it has been using these trade marks in the course of trade since its inception in 1994. The Complainant believes it likely that the Respondent was fully aware of the Complainant’s trade marks rights and its reputation when registering the Disputed Domain Name. The Complainant also states that the Disputed Domain Name is not the only name which the Respondent can use to describe its business.
Furthermore, the Complainant states that the registration of the Disputed Domain Name occurred nearly 13 years after the Complainant first use of its MICROGAMING trade marks and contends that the Respondent is creating confusion with the Complainant’s trade marks by associating the Disputed Domain Name with a website promoting the goods and services of the competitors to the Complainant.
B. Respondents
The Respondent did not submit any formal response to the Complaint.
6. Discussion and Findings
A. UDRP Elements
The Respondent has not filed a Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent.
Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainant, if it is to succeed, to prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
i. the Disputed Domain Name is identical or confusingly similar to a trade mark 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 Name; and
iii. the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy. The Panel also notes that pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a response from the Respondent.
B. Identical or Confusingly Similar
The Complainant asserts that it is the exclusive licensee of a number of pending and registered trade marks containing the word “microgaming” in various jurisdictions including the US, UK, EU, Canada and Australia. Although the Complainant failed to admit in evidence a copy of the exclusive license agreement or details of the relevant trade mark registers, the Panel is prepared to accept the Complainant’s submission. The Complainant has demonstrated its extensive use of the trade marks and has developed a substantial reputation in relation to online casino and gaming related software.
The Disputed Domain Name wholly incorporates the Complainant’s trade mark MICROGAMING with the addition of the word “bonus” before the trade mark MICROGAMING and the word “slots” after the trade mark MICROGAMING. The Panel notes that the words “bonus” and “slots” are particularly relevant to the industry that the Complainant is involved in.
In Neteller Plc. v. Prostoprom,WIPO Case No. D2006-0874, the word “bonus” was found to be descriptive:
“The disputed domain names wholly incorporate Complainant’s trademark NETELLER, used in connection with payment services. The fact that the words “bonus” or “reviews” are added to Complainant’s unique, invented mark “Neteller” does not eliminate the similarity between Complainant’s trademark and the disputed domain names, as “bonus” and “reviews” are descriptive components of the disputed domain names. In numerous cases, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.”
In Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray,WIPO Case No. D2002-0624, the panel found that “slots” was a generic word associated with casinos and gaming.
In the Panel’s opinion, the trade mark MICROGAMING is the distinctive element of the Disputed Domain Name. The addition of generic or descriptive words (especially words that are in common usage in the Complainant’s industry) to the trade mark does not add distinctive matter so as to distinguish it from the Complainant’s trade mark. Therefore, in the Panel’s view, the Disputed Domain Name is confusingly similar to the Complainant’s MICROGAMING trade mark.
For the foregoing reasons, the Panel is satisfied that the Disputed Domain Name is confusingly similar to the Complainant’s MICROGAMING trade mark.
Therefore, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name. Once a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
As already stated the Panel is prepared to accept the Complainant’s assertions that it is the exclusive licensee for the word mark MICROGAMING. The Panel also accepts the Complainant’s assertion that the Complainant is not affiliated with the Respondent and has never licensed or otherwise permitted the Respondent to use the MICROGAMING trade marks.
The Complainant has shown in evidence that the Disputed Domain Name points to a generic search engine website providing information about casino and gaming services and through the same website competing and/or related goods and services to those of the Complainant can be accessed.
On June 14, 2008, the Respondent emailed the Center telling them to “just delete the domain name” and that by registering the Disputed Domain Name, the Respondent was “trying to describe what [he] was featuring on the website. The Panel considers that this short communication does nothing to assist the Respondent’s case and in fact supports the Complainant’s case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
In the Panel’s opinion, the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name which the Respondent has failed to rebut in any way.
For the foregoing reasons, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Therefore, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In view of the renown and reputation attaching to the Complainant’s trade marks since 1994, the Panel considers it most likely that the Respondent was aware of the existence of the trade marks and the reputation of the Complainant when the Disputed Domain Name was registered some thirteen years after the Complainant’s first use of the MICROGAMING trade marks. The Panel is therefore prepared to infer that the registration of the Disputed Domain Name was made in bad faith.
In making judgment here, the Panel notes that paragraph 14(b) of the Rules authorizes a panel to draw such inferences from a respondent’s failure to respond “as it considers appropriate”. For the following reasons the Panel is prepared to infer that the Disputed Domain was intended to be used in bad faith:
1. The Complainant has adequately demonstrated that the Respondent is neither related to the Complainant nor authorised to use the Complainant’s trade marks in any way. In this case, the Panel infers that the registration of a domain name containing such a well-known trade mark in the area of online casinos and gaming software combined with the generic word “bonus” and the industry related word “slots” is evidence of intended use in bad faith.
2. The Respondent has failed to explain on two occasions the reasons why he registered the Disputed Domain Name. Based on the Respondent’s informal communication of June 14, 2008 where he suggested that the Center should “delete the domain name”, the Panel infers that the Respondent never intended any bona fide use for the Disputed Domain Name beyond the parked web site that is currently displayed.
3. The Panel notes that the Disputed Domain Name contains links to competitors of the Complainant, which have been taken to be indicative of bad faith in numerous previous UDRP decisions.
For the reasons stated above, the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: July 18, 2008
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