WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Microgaming Software Systems Limited v. Oded Keinan, Traffic Label Limited Case No. D2009-0261 1. The Parties
The Complainant is Microgaming Software Systems Limited of Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Oded Keinan, Traffic Label Limited of Ramat Gan, Israel. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2009 in hardcopy and on March 5 by email. On February 26, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On February 26, 2009, GoD, Inc. 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 March 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2009.
The Center appointed Philip N. Argy as the sole panelist in this matter on April 21, 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 following salient facts, taken from the Complaint, remain uncontested:
1. The Complainant is the exclusive licensee of a number of pending and registered trademarks consisting of or incorporating the word MICROGAMING (“the MICROGAMING trademark”) in various jurisdictions including the United States of America, the United Kingdom, the European Union, Canada and Australia, the proprietor of which is Microgaming Systems Anstalt. The trademark covers, in general, computer software for games of chance, gaming or casino style gaming, entertainment, gaming and online casino management services.
2. The Complainant provides online casino software and management systems under the MICROGAMING trademark. Under the terms of the exclusive licence agreement, all benefits arising out of the use of the MICROGAMING trademark by the Complainant inure to the Licensor. The licence agreement further contains quality control provisions regulating how the Complainant may use the trademarks.
3. The Complainant was founded in 1994 and developed and released the world's first true online casino software, which is currently utilised by more than 100 online casinos, including prominent casino groups such as the Carmen Media group. The websites of these online casinos collectively receive in excess of 3 million visitors each month.
4. On all the above mentioned online casino websites and gaming sites the Complainant's MICROGAMING trademark is prominently displayed as a service endorsement. The endorsement comprises a prominent caption on the homepage of these websites.
5. The Complainant's “” website alone receives in the region of 250,000 visitors per annum. Further evidence of the popularity of the Complainant's software can be seen in the fact that to date, the Complainant's Microgaming progressive jackpot network has since inception paid out $168 million dollars to players making it the largest online progressive network.
6. The Complainant also spends a considerable sum of money every year in advertising and promoting its online casino and gaming software by means of brochures, search engines, online casino and gaming sites, print ads, trade magazines, and industry expos.
7. As a result of the extensive use of the trademark and the specific relationship between the various parties in the gaming industry detailed above, the MICROGAMING trademark is very well known in relation to online casino and gaming related software. The word “Microgaming” serves as a unique and distinctive element, which element is a determinative and well-known designation of source for the Complainant's online casino and gaming related software. 5. Parties' Contentions A. Complainant
The Complainant invokes paragraph 4(a) of the Policy in asserting that the disputed domain name is confusingly similar to the registered and common law “MICROGAMING” trademark in respect of which the Complainant is exclusively licensed, that the Respondent lacks any rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Complainant puts its case under paragraph 4(a)(i) of the Policy in this way:
The inclusion of the generic word “casino” does not add distinctive matter so as to distinguish it from the Complainant's trademark [see Microgaming Software Systems Limited v. Sting Marketing Inc., Sting Marketing,WIPO Case No. D2008-0869; Stanworth Development Limited v. Dotster, Inc.,WIPO Case No. D2008-0367; Microgaming Software Systems Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-0013; Stanworth Development Limited v. Kaneoka Senuchi,WIPO Case No. D2005-0703, and Stanworth Development Limited v. 3748431 Canada Inc,WIPO Case No. D2005-0655.] Similarly the disputed domain name in this matter wholly incorporates the Complainant's MICROGAMING trademark. The Complainant submits that the inclusion of the generic word “Casino” in the disputed domain name is descriptive and does not add distinctive matter so as to distinguish it from the Complainant's trademark. Furthermore, the disputed domain name is confusingly similar to the Complainant's “” website address.
The combination of the word “Microgaming” with the word “Casino” therefore creates a domain name that cannot be anything but confusingly similar to the Complainant's well-known MICROGAMING trademark. As a result of the above, the Complainant respectfully submits 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. The Complainant therefore contends that the disputed domain name is confusingly similar to the Complainant's MICROGAMING trademark.
The Complainant's next ground is paragraph 4(a)(ii) of the Policy, which it argues as follows:
On December 11, 2008 the Complainant, through its legal counsel, informed the Respondent of the Complainant's extensive rights in and to the MICROGAMING trademark, alleged that the Respondent had no legitimate rights or interests in and to the disputed domain name, and demanded that it immediately be transferred to the Complainant. The Respondent has failed to provide the Complainant with any response to those allegations and demands.
The disputed domain name points to a website which purportedly promotes the Complainant's software and various online casinos which make use of the Complainant's software. The Respondent further claims on the website associated with the disputed domain name that “We work with them to power their profits - by creating products and networks that keep their players coming back for more”. In fact no relationship exists between the Complainant and the Respondent and this is a blatant misrepresentation on the part of the Respondent. The Complainant submits that this does not amount to a bona fide offering of goods and services.
The Complainant is the exclusive licensee of the MICROGAMING trademark in relation to gaming and casino services. 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, or trademarks confusingly similar to this trademark, in the disputed domain name and has not received any license or consent, express or implied, to do so [see Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360]. The Complainant is unaware of any legitimate right the Respondent could have in the disputed domain name, which is confusingly similar to the Complainant's well-known MICROGAMING trademark. It is therefore submitted that the Respondent has no legitimate interest in the disputed domain name and has made no good faith or fair use of the domain name at all.
The Respondent has not been commonly known by the disputed domain name, and the Respondent has not acquired any trademark or service mark rights in and to 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. Mr. Keinan, the named contact for the Respondent in the WhoIs record for the disputed domain name, was very well aware of the Complainant and its operations since he was an employee of a casino which uses the Complainant's software between January 10, 2005 and 14 September 2005. In light of this knowledge, whether actual and/or inferred (partly due to the distinctiveness associated with the MICROGAMING trademark; partly due to the lack of any apparent explanation or justification for adopting such a distinctive mark; and partly due to Mr. Keinan's employment history with a casino which uses the Complainant's software), the disputed domain names could never have been put to legitimate use by the Respondent. [See SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092].
Finally, the Complainant argues its case under paragraph 4(a)(iii) of the Policy on multiple bases:
The Complainant has a long established reputation in the use of the MICROGAMING trademark in relation to online gaming and casino services, especially if one considers that the Complainant has been using this trademark in the course of trade since its inception in 1994. 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.
Indeed, due to Mr. Keinan's previous employment with a casino which uses the Complainant's software, it is highly improbable that the Respondent was not fully aware of the Complainant's MICROGAMING trademark rights and its reputation in the gaming and casino industry when registering the disputed domain name. The fact that the Respondent has associated the disputed domain names with a website making false claims about its relationship with the Complainant and the fact that Mr. Keinan was an employee of a casino which uses the Complainant's software suggests that the disputed domain name could never be used in good faith by the Respondents. Taking this into account, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would be legitimate.
Furthermore, the registration of the disputed domain name occurred nearly 14 years after the Complainant first commenced use of its MICROGAMING trademark [see Sanofi-Aventis v. Ashima Kapoor,WIPO Case No. D2005-0770].
In Deutsche Post AG v. MailMij LLC,WIPO Case No. D2003-0128, the honourable panelist noted that when the respondent in that case selected the domain name in question, the panelist believed that he was very well aware of the fame of that particular complainant's trademark and intended to benefit from the ‘coincidence' that his chosen name was the same as that complainant's trademark. The panelist was of the view that the respondent in that case would have known that there was a very real likelihood that Internet users would assume that the services under that domain name would in some way be associated with the complainant in that case and that he would derive a substantial commercial advantage from that misapprehension. In this case, the fact that the disputed domain name incorporates “Casino”, coupled with the website associated with the disputed domain name and the Respondent's previous employment history, suggests that the Registrant is aware of the Complainant and the Complainant's goods and services associated with the MICROGAMING trademark.
Bearing in mind reasons contemplated by the panelists in Oki Data Americas, Inc. v. MTI, Steven Orrange, WIPO Case No. D2001-0790] and Gerd Petrik v. Johnny Carpela ,WIPO Case No. D2004-1043 decisions, the Complainant asserts that the Respondent's registration and use of the disputed domain name cannot constitute a bona fide offering of goods and services and consequently also constitutes a bad faith registration and use of the disputed domain name for, inter alia, the following combination of reasons:
- No relationship exists between the Complainant and Respondent. The Respondent is not a licensee or affiliate of Complainant's trademarked goods and/or services;
- The Respondent registered the disputed domain name on 26 March 2008, which is nearly:
- 12 years after the Complainant's domain name registration on 18 August 1996;
- 14 years after the Complainant first used the MICROGAMING trademark in commerce in 1994; and
- 9 years after the Complainant's licensor had registered the trademark in several countries, including the United States of America and Australia in September 1999.
- The Complainant has not acquiesced in the use of its trademark [see Draw-Tite, Inc. v. Plattsburgh Spring Inc.,WIPO Case No. D2000-0017], but has instead diligently sought to enforce its trademark rights against the Respondent [see DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160];
- The disputed domain name is not the only name which the Respondent can use to describe its business and the Respondent could have used any number of other domain names to describe its business [see Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481];
- The Respondent has not responded in any detail to the allegations in the Complainant's letter of demand thus adopting by silence the material allegations made by the Complainant regarding the Respondent's bad faith registration and use of the domain name [see Euromarket Designs, Inc. v. Domain For Sale VMI,WIPO Case No. D2000-1195].
- The Respondent is making false claims about its (non-existent) relationship with the Complainant on the website to which the disputed domain name resolves. B. Respondent
The Respondent did not file a Response nor respond in any other fashion to the Complainant's contentions. 6. Discussion and Findings Preliminary
The Complaint named the Respondent as “Oded Keinan, Traffic Label Limited”. The registration agreement with GoDaddy contains the following provision in a section containing terms specific to the .asia ccTLD:
You, acting as Registrant Contact, represent and warrant that You have made known to the Charter Eligibility Declaration Contact (the “CED Contact”), and the CED Contact has agreed, that the Registrant Contact and the CED Contact will be jointly defined as the Registered Name Holder, and that it [sic] shall be jointly responsible for the domain name in the event of a dispute or a challenge over Your legal entitlement to or ownership of the domain name.
The WhoIs Record shows the Registrant Name as “Oded Keinan” and the Registrant Organization as “Traffic Label limited”. The Registrant ID is shown as “GODA-045416677”. The Administrative, Technical, Billing and Operational contact sections of the WhoIs record contain identical information. The CED section on the other hand contains no name or organisation information but gives the CED ID as “GODA-045416677”, shows the status of that contact as a “Natural Person” and shows the means of identification as “Passport or Citizenship ID”.
The Panel has therefore treated both Mr. Keinan and Traffic Label Limited as properly named as the Respondent in these proceedings. A. Identical or Confusingly Similar
The Complainant has asserted that it is the exclusive licensee of both registered and common law trademark rights to the word “microgaming”. Whilst the Panel is satisfied that Microgaming Systems Anstalt of Vaduz, Liechtenstein, as the owner of the trademark “MICROGAMING” has rights in that mark, the licence agreement to the Complainant has not been provided. Had the Respondent challenged the Complainant's rights the Panel would not have been able to take the bald assertion at face value. There have been a number of panel decisions to have recognised licence or authorised user rights as sufficient rights for the purposes of paragraph 4(a)(i) of the Policy. Although rights as a non-exclusive licensee have been queried (NBA Properties, Inc. v. Adirondack Software Corporation,WIPO Case No. D2000-1211) the majority view is that a trademark licensee has rights “in” the licensed trademark sufficient for the purposes of paragraph 4(a)(i) of the Policy: Telcel, C.A. v. jerm and Jhonattan Ramírez,WIPO Case No. D2002-0309, Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions,WIPO Case No. D2003-0624, Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796 and Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc.,WIPO Case No. D2003-1027.
Absent any response from the Respondent, the Panel accepts the Complainant's assertion of its exclusive licensee status as evidence of it having rights in the MICROGAMING trademark in various jurisdictions. References hereafter to the “Complainant's mark” should be read as a shorthand reference to the MICROGAMING trademark in which the Panel has found that the Complainant has rights.
The next inquiry under the first element of the Policy is simply whether a trademark and the disputed domain name, when directly compared, are identical or confusingly similar. The contents of any website to which a disputed domain name resolves is not relevant to this ground of a complaint: Wal-Mart Stores, Inc. v. xc2,WIPO Case No. D2006-0811 and Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 and Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr.,WIPO Case No. D2000-1525.
It is also accepted that, due to the technical idiosyncrasies of domain name syntax, the use of lower case characters, the omission of blank spaces between words, and the suffixing of a domain level signifier such as “.com” or “.org” or “.asia”, may be ignored for the purposes of the comparison. In this case, a comparison between “microgaming” and reveals that the disputed domain name and the Complainant's mark differ only by the suffixed words “casino”.
Since the Complainant's mark is embedded in the disputed domain name, it is hard to say there is no similarity, but finding that the disputed domain name is similar to the Complainant's marks is not sufficient. The critical question on this aspect of the Policy is whether the similarity is “confusing”. See e.g., SAP AG v. Reffael Caspi,WIPO Case No. D2009-0060.
As discussed in America Online, Inc v. Jonathan Investments Inc, and AOLNEWS.COM,WIPO Case No. D2001-0918, in order to establish confusing similarity the panel in that case was of the view that one must show that the public will be confused as to trade origin. In America Online the question of confusing similarity was stated as:
“Is it likely therefore that, because of the similarity between the Domain Name on the one hand and the Complainant's trademark on the other hand, people will believe that the Domain name is associated in some way with the Complainant.”
This Panel regards this as the appropriate test to be applied when considering confusing similarity. In this Panel's view, not only must a Complainant establish similarity between the disputed domain name and its trademarks, but it must also establish that, on a direct (objective) comparison between the two, people seeing the disputed domain name will likely be confused by that similarity as to the trade origin of the products, services or proprietorship of the site to which the disputed domain resolves. See Stanworth Development Limited v. Susana Gonzales, Smart Answer S.A.,WIPO Case No. D2009-0260.
The nature of the Complainants' business may well be relevant when looking at the effect of characters in the disputed domain name that prefix or suffix the characters that comprise or resemble the trademark element. That is because the exercise is essentially an objective one which looks for confusion as to trade source on the face of the disputed domain name in light of the Complainants' trademark. Where, as here, the additional characters are descriptive or redolent of the Complainants' products or services, the likelihood that the additional matter might distinguish the disputed domain name from the trademark is destroyed. At the very least such additional matter is not capable of preventing the disputed domain name from being confusingly similar to the trademark which it embed. Generally, a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). Thus, the descriptive language added here, namely, “casino”, not only does not prevent the likelihood of confusion in this case; it increases the likelihood that the disputed domain name will be taken to be associated with the Complainant's gaming software business. B. Rights or Legitimate Interests
At one level the phrase “micro gaming casino” could be regarded as comprising ordinary English words describing either a very tiny gaming establishment or else one embodied in a microchip or micro computer. Had the Respondent been able to demonstrate that its line of business was of that kind, especially if it were located in Asia, and if there was no other evidence to the contrary, the Respondent could quite plausibly have claimed a legitimate interest in respect of the disputed domain name.
Here the evidence is strongly against the Respondent both objectively and by inference. The Respondent, having failed to respond either formally or informally to the Complaint or to the various pre-Complaint communications sent on behalf of the Complainant, leaves the Panel with little scope to consider exculpatory alternatives.
The disputed domain name points to a website which purportedly promotes the Complainant's software and various online casinos which make use of the Complainant's software. The Respondent further claims on the website associated with the disputed domain name that “We work with them to power their profits - by creating products and networks that keep their players coming back for more”. In fact no relationship exists between the Complainant and the Respondent. The Panel agrees with the Complainant's submission that this does not amount to a bona fide offering of goods and services.
The Respondent is neither an agent nor a licensee of the Complainant and has no connection or affiliation with the Complainant. Whilst the Complaint does not say so, and ideally ought to have, the Panel also infers from the Complainant's licence being exclusive that the Respondent also has no grant of rights from the trademark owner, the Complainant's licensor. The Respondent therefore has no right to the use of the MICROGAMING trademark, or trademark confusingly similar to this trademark, in the disputed domain name and has not received any license or consent, express or implied, to do so. The Panel accepts that the Respondent has no rights in respect of the disputed domain name so the next query is whether it has any legitimate interests.
The Respondent has not been commonly known by the disputed domain name, and the Respondent has not acquired any trademark or service mark rights in and to the disputed domain name. The evidence also suggests that Mr. Keinan was aware of the Complainant and its operations because between January 10 and September 14, 2005 he was an employee of a casino which uses the Complainant's software. Whilst the Complaint does not explain what role Mr. Keinan performed at that time, it certainly provides no legitimacy for the Respondent's use of the Complainant's mark.
The Panel formally finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Where a disputed domain name comprises ordinary English words used to convey something akin to their ordinary English meaning, then this Panel's view is that a finding of “bad faith” registration and use requires convincing evidence. But once sufficient evidence has been adduced to create a prima facie case, a complainant is entitled to succeed absent any response from a respondent.
As indicated in section B., the words “micro gaming casino” come close to conveying a small gaming establishment or a microcomputer hosted one. The Complainant therefore needs to make a strong showing for the Panel to conclude that someone using those words has chosen and used them in bad faith.
The Complainant has been using the MICROGAMING trademark in the course of trade since its inception in 1994 and Mr. Keinan was employed for some months by a casino that uses the Complainant's software. It is highly implausible that the Respondent selected the Complainant's mark, and suffixed “casino”, without knowing perfectly well that it was appropriating the Complainant's (or probably its licensor's) goodwill.
The fact that the Respondent has associated the disputed domain name with a website that makes false claims about its relationship with the Complainant demonstrates to the Panel that the disputed domain name is certainly being used in bad faith.
The registration of the disputed domain name occurred nearly 14 years after the Complainant's mark was first used. The use of the Complainant's mark followed by “casino”, coupled with the website's claimed association with the Complainant and Mr. Keinan's employment history makes it quite plain that the Respondent was well aware of the Complainant and the Complainant's goods and services at the time the disputed domain name was registered. The primary evidence leaves the Panel in no doubt that the disputed domain name was registered in bad faith. It is not necessary to canvas the Complainant's additional submissions under paragraph 4(b) of the Policy.
The Panel finds paragraph 4(a)(iii) of the Policy made out by the Complainant. 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 name be transferred to the Complainant.
Philip N. Argy
Sole Panelist
Dated: April 29, 2009
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