WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Microgaming Software Systems Limited v. Jumbo Domains Case No. D2008-1918 1. The Parties
The Complainant is Microgaming Software Systems Limited, of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Jumbo Domains, of Apopka, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Blue Razor Domains. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2008. On December 17, 2008, the Center transmitted by email to Blue Razor Domains a request for registrar verification in connection with the disputed domain name. On December 18, 2008, Blue Razor Domains transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 19, 2009.
The Center appointed Ross Wilson as the sole panelist in this matter on January 27, 2009. 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 was founded in 1994 and developed the world's first true online casino software, which is currently utilised by more than 100 online casinos, including prominent casino groups on the Internet such as L and the Carmen Media group. The websites of these online casinos collectively receive in excess of 3 million visitors each month. Microgaming software powers Ladbrokes Poker and The Prima Network, the latter being the largest poker network and is used by some of the world's top poker brands including Gaming Club, E, Nordic Bet Poker, Mr. Bookmaker, Stan James and Bet 365.
The Complainant's “” website receives in the region of 250,000 visitors per annum. Since its inception the Complainant's Microgaming progressive jackpot network has paid out $168 million dollars to players making it the largest online progressive network.
The Complainant regularly releases new games to its licensees' player base and continually advertises and promotes its online casino and gaming software by means of brochures, search engines, online casino and gaming sites, print ads, trade magazines, and industry expos.
In 2004 the Complainant officially launched its range of software for mobile devices. The Complainant's first mobile offerings included blackjack and a game called “Jacpot Deuces”. In 2005 the Complainant released further software for mobile devices with games entitled “Scratch Card”, “Treasure Nile” and “Jacks or Better”.
The earliest MICROGAMING trademark was registered in the United Kingdom (“U.K.”) in 1999. The 2005 United States (“U.S.”) registered trademark refers to first use in 1996.
On October 16, 2008, the Complainant, through its legal counsel, issued a letter of demand to the Respondent. The letter informed the Respondent of the Complainant's extensive rights in the MICROGAMING trademark; alleged that the Respondent has no rights or legitimate interests in the disputed domain name; and demanded that it be immediately transferred to the Complainant.
On October 21, 2008, the Respondent replied claiming that “I ‘park' all domain I register to monitor traffic”. The Respondent claimed that the term “microgaming” is generic and that it was unaware of the Complainant and its rights to the MICROGAMING trademark when it registered the disputed domain name. The Respondent stated that it would be prepared to sell the disputed domain name to the Complainant.
On October 29, 2008, the Complainant's attorney demanded that the Respondent transfer the disputed domain name to the Complainant by October 31, 2008, failing which the Complainant would launch a UDRP Complaint against the Respondent. The Complainant's legal counsel had not received any further correspondence from the Respondent prior to the submission of its Complaint. 5. Parties' Contentions A. Complainant
The Complainant claims it is the exclusive licensee of a number of pending and registered trademarks consisting of, or incorporating, the word MICROGAMING in various jurisdictions including the U.S., the U.K., the European Union, Canada and Australia, the proprietor of which is Microgaming Systems Anstalt.
As the exclusive licensee, the Complainant claims it is authorised to provide, amongst other things, online casino software and management systems under the MICROGAMING trademark. It claims in terms of an exclusive licence agreement, all benefits arising out of the use of the MICROGAMING trademarks by the Complainant inures to the benefit of its licensor.
The Complainant considers the disputed domain name incorporates the Complainant's MICROGAMING trademark in its entirety, without the addition or subtraction of any elements of the Complainant's well-known MICROGAMING trademark.
The Complainant contends that there is a substantial likelihood that Internet users and consumers will be confused into believing that there is some affiliation, connection, sponsorship, approval or association between the Complainant and the Respondent, when in fact there is no such relationship. As the Respondent is neither an agent nor a licensee of the Complainant and has no connection or affiliation with the Complainant, the Respondent therefore has no right to the use of the MICROGAMING trademark in the disputed domain name and has not received any license or consent, express or implied, to do so.
The Complainant is unaware of any right the Respondent could have in the disputed domain name and contends that the Respondent has no legitimate interest in the disputed domain name and has made no good faith or fair use of the disputed domain name at all.
The Complainant contends that the Respondent has not been commonly known by the disputed domain name and has not acquired any trademark or service mark rights in the disputed domain name. In fact, the Complainant's MICROGAMING trademark is so well-known in relation to casino and gaming services that the only conclusion can be that the Respondent knew, or at least should have reasonably known, of the Complainant's prior rights before registering the disputed domain name. It is therefore inconceivable that the Respondent was not aware of the Complainant's prior rights before registering the disputed domain name, which was registered nearly one year after the launch of the Complainant's GameWire product and nearly two years after the launch of the Complainant's first software for mobile devices launched in 2004.
In light of the above and the lack of any apparent explanation or justification for adopting a domain name incorporating such a distinctive mark, the Complainant submits that the disputed domain name could never have been put to legitimate use by the Respondent. It is therefore highly unlikely that the Respondent just happened to inadvertently select the Complainant's distinctive MICROGAMING trademark and incorporate it into its selected domain name.
The Complainant contends that it is most likely that the Respondent was fully aware of the Complainant's MICROGAMING trademark rights and its reputation in the gaming and casino industry when registering the disputed domain name. This is evident from the fact that the website that was associated with the disputed domain name prior to the lodging of this Complaint linked to a casino and other gaming products or sevices.
According to the Complainant, prior to the lodging of this Complaint, Internet users were likely to employ the disputed domain name when attempting to locate the Complainant's website, or websites sponsored or endorsed by, or affiliated with the Complainant. The Complainant contends that upon entering the disputed domain name, Internet users have in fact been “mousetrapped” to a website whose services are not sponsored or endorsed by, or affiliated with the Complainant, thus creating a likelihood of confusion. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant asserts that it is the exclusive licensee of the MICROGAMING trademark. The trademark registration documentary evidence clearly shows that Microgaming Systems Anstalt is the holder of each of the registered trademarks. The majority view of UDRP panels as described in the WIPO Overview of WIPO Panel Views on Selected URDP Questions confirms that in most circumstances a licensee of a trademark […] is considered to have rights in a trademark under the UDRP. Previous cases have considered it sufficient if the complainant has rights in the trademark, even if such rights fall short of actual ownership. Such a right will often arise from a licence granted by the legal owner of the trademark to another party so that the latter may use the mark. Moreover, as such rights are well recognized, there is no reason why they should not constitute rights within the meaning of paragraph 4(a)(i) of the Policy (see Miele, Inc. v. Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756 and Evolution USA, Inc. v. Alexei Doicev,WIPO Case No. Case No. D2006-0086).
The Complainant's relationship to the trademark owner and claim to being the exclusive licensee is not supported by a copy of the exclusive license agreement. In similar circumstances, in The Joy of Cooking Trust, Simon & Schuster Inc. (S & S) v. Volcano Internet Project,WIPO Case No. D2008-1071 where the complainant failed to submit in evidence a copy of the exclusive licensee agreement, the panel was prepared to accept the complainant's submission, based on the fact that the complainant's evidence demonstrated extensive use of the trademark and a substantial reputation in relation to the class of goods and services of the registered trademark. In this case the Panel recognises the common use of MICROGAMING in the owner's name, the trademarks and the Complainant's name. As in The Joy of Cooking Trust, Simon & Schuster Inc. (S & S) v. Volcano Internet Project, supra the evidence provided by the Complainant does demonstrate extensive use of the trademark and a substantial reputation in relation to online gaming. In addition, there is evidence of a history of the Complainant's use of the trademark dating back to 1994.
In similar circumstances where there was an assertion of an exclusive license relationship without documentary support, the panel in Hanover Communications Limited v. Maison Tropicale S.A., WIPO Case No. D2007-1456 regarded it as highly unlikely that a long term association could have occurred without proper consent. Also, in that case the panel took into account that the complaint certification was signed by a lawyer acting on behalf of the complainant.
In the light of the above and noting that the Respondent provided no information to dispute the assertion and that the Complaint certification was signed by a lawyer acting on behalf of the Complainant, the Panel is prepared to accept the Complainant's submission that it has rights to the trademark MICROGAMING through an exclusive license.
Having accepted that the Complainant has rights in the MICROGAMING trademark, it is necessary to determine whether the disputed domain name is identical or confusingly similar to the trademark.
The disputed domain name reflects the trademark in its entirety. The only difference is the “.mobi” gTLD suffix which has been well accepted may be excluded from consideration as being a generic or functional component of the domain name.
In view of all the above, the Panel considers the disputed domain name is identical to the Complainant's mark in which it has rights. The Panel therefore finds that the requirements of paragraph 4(a)(i) of the Policy have been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in the disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name . In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Complainant makes it clear that the Respondent is not a licensee of the Complainant, has no relationship or association with the Complainant and is not authorized to use the trademark in any way.
The evidence provided by the Complainant demonstrates that the Respondent is not using the disputed domain name with a bona fide offering of goods and services. The Respondent advised the Complainant in an email that it had registered the disputed domain name and parked it to monitor traffic. The website promoted, inter alia, goods and services in competition to those of the Complainant. In addition, the website indicated that the disputed domain name is for sale.
There is no evidence to indicate that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. The Complainant has exclusive rights to the use of the trademark MICROGAMING. The Respondent is not an agent or a licensee of the Complainant or has any connection or affiliation with the Complainant.
In Sybase, Inc. v. Analytical Systems,WIPO Case No. D2004-0360 similar circumstances to this case existed where the complainant had an exclusive license to a trademark which made up the disputed domain name in its entirety. In that case the panel considered it extremely unlikely the respondent could provide any basis to legitimise its claim to the domain name for the reason that the disputed domain name contained the complainant's trademark under which the complainant provided its goods and services.
The Respondent is not commonly known by the disputed domain name as it appears to operate under the names Jumbo Domains, and in other cases, John Martin and Mosspot. The last two names were obtained from domain name dispute decisions using the same address as that used by Jumbo Domains (see Verisign, Inc. v. jumbo domains,WIPO Case No. D2006-1582, Gamefly, Inc. v. James Martin,WIPO Case No. D2006-0236 and Google Inc. v. Mosspot, NAF Case No. FA547780).
Based on the above and without any available evidence of the Respondent's rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
In this case, the Complainant argues that bad faith exists because the Respondent is using the disputed domain name to redirect visitors to a website that offers products and services that are competitive with those offered by the Complainant. A printout of the website provided by the Complainant supports this argument. The evidence shows that the website provided links which included a “casino”, “PC's for gamers”, “gaming laptop” and “custom gaming PCs”, all of which have a strong connection to the way the Complainant uses the trademark, that is, for computer software for games of chance, gaming or casino style gaming, entertainment, gaming and online casino management services.
The Complainant has argued that bad faith exists on the grounds that it is highly unlikely that the Respondent just happened to inadvertently select the Complainant's trademark for its domain name. In the Respondent's reply to the Complainant's request to cease using the disputed domain name, the Respondent claimed that it registered the name as a generic term with no knowledge of the complainant or intention of selling it. The Respondent claims that it warehouses “over 1000 names with intention(s) of developing or using a generic term to forward traffic into specific genre of my developed sites”. The Respondent goes on to state that it has “registered and sold 20+ ‘micro' and ‘mini' terms as it is so commonly used across the internet”. The Complainant considers that the evidence in the Respondent's website demonstrates that the Respondent was fully aware of the Complainant's trademark. A case that supports the Complainant's position is Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128 where the panel was of the view that the respondent would have known that there was a very real likelihood the Internet users would assume that the services under the domain name would in some way be associated with the complainant and that he would derive a substantial commercial advantage from that misapprehension.
Based on the Respondent's own claims in its reply to the Complainant's request to cease using the disputed domain name, the Panel considers that the Respondent is in the business of using domain names to generate a commercial gain. In this particular case, the Respondent has chosen to register a domain name that is identical to the Complainant's trademark and has created a website that clearly attempts to trade on the Complainant's goodwill in the trademark in which it has rights.
On the basis of the above and the evidence provided by the Complainant, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith. 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.
Ross Wilson
Sole Panelist
Dated: February 10, 2009
Full & Egal Universal Law Academy