WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Microgaming Software Systems Limited v. Fox Poker Tour Case No. D2009-0854 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 Fox Poker Tour of Westfield, Massachusetts, 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 with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2009. On June 29, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 29, 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 July 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 28, 2009.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on August 5, 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.
On August 11, 2009 the Panel issued Procedural Order No.1, in which the Complainant was requested to provide, by no later than August 14, 2009, an exhibit or statement evidencing its status as “the exclusive licensee” of the trademarks on which the Complaint is based. The Complainant provided to the Panel an exhibit in response to this request on August 11, 2009. 4. Factual Background
Microgaming Systems Anstalt is the proprietor of a number of pending and registered trademarks consisting of or incorporating the word MICROGAMING (“the MICROGAMING trademarks”) in various jurisdictions including the United States, the United Kingdom, the European Union, Canada and Australia. The trademarks cover, in general, computer software for games of chance, gaming or casino style gaming, entertainment, gaming and online casino management services. Details of the MICROGAMING trademarks were set out in Appendices to the Complaint. It appears that the earliest of these trademark registrations dates from 1999.
The Complainant is the exclusive licensee of the MICROGAMING trademarks. In response to the Procedural Order No. 1, the Complainant supplied the Panel with a copy (with redactions) of a written agreement executed in 2001, in which the Complainant is granted an exclusive licence to exploit, among other things, the trademarks of Microgaming Systems Anstalt.
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. On all the above mentioned online casino websites and gaming sites the Complainant's MICROGAMING trade mark is prominently displayed as a service endorsement. The endorsement comprises a prominent caption on the homepage of these websites.
The Respondent registered the disputed domain name on July 16, 2008. The Complainant, through its legal counsel, dispatched a letter of demand to the Respondent on March 9, 2009. The Complainant claims that, prior to issuing this letter of demand, the disputed domain name pointed a generic search engine website providing on-line games of chance, games of skill, casino-style gaming services and related services, which games and related services are in direct competition to the games and related services offered by the Complainant through its online gaming site. As at the date of the Complaint, the disputed domain name points to a generic website providing sponsored listings and an on-line search function. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the MICROGAMING trademarks of which it is the exclusive licensee. In particular, it contends that 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. It further contends that the inclusion of the generic word “best” in the disputed domain name does not add distinctive matter so as to distinguish it from the Complainant's MICROGAMING trademarks. The combination of the word “MICROGAMING” with the word “best” therefore creates a domain name that cannot be anything but confusingly similar to the Complainant's well-known MICROGAMING trademarks.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant contends that 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 trademarks in the disputed domain name and has not received any license or consent, express or implied, from the Complainant to do so. Further, 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. Thus, the Respondent has no legitimate interest in the disputed domain name.
The Complainant contends that the Respondent registered and is using the domain name in bad faith. In particular, the Complainant contends that because its MICROGAMING trademark is so well-known in relation to online gaming and casino services, it is highly unlikely that the Respondent just happened to inadvertently select the Complainant's distinctive MICROGAMING trademark and incorporate it into the disputed domain name. 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. It is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate. By using the disputed domain name to point to a website that, directly or indirectly, competes with or relates to the Complainant's services, the Respondent is trading on the goodwill and reputation of the Complainant's MICROGAMING trademarks to promote the products and services of other online casinos and casino software developers. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates fully the Complainant's MICROGAMING trademark, together with the letter “s” and the word “best”. The distinctive part of the domain name is MICROGAMING, the Complainant's trademark. The addition of the letter “s” and the word “best” does not dispel the confusing similarity with the Complainant's trademark. The word “best” is an adjective, the superlative of “good”. The addition of the letter “s” to the MICROGAMING trademark has a possessive effect. Thus, the effect of the inclusion of the letter “s” and the word “best” in the domain name is to suggest the best of MICROGAMING. These inclusions do not lessen the inevitable association of the domain name with the Complainant that results from the domain name's incorporation of the Complainant's MICROGAMING trademark. This Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent is not associated with the Complainant or any business conducted by the Complainant under its MICROGAMING trademarks, and has not been licensed by the Complainant to use the MICROGAMING trademarks. The Respondent has not asserted that it has any rights or legitimate interest in the disputed domain name, and given the confusing similarity of the disputed domain name to the Complainant's MICROGAMING trademarks it is difficult to conceive of any such rights or interests. This Panel is satisfied that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the substantial use of the Complainant's MICROGAMING trademarks since establishment of the Complainant's business in 1994, it is almost impossible to believe that the Respondent was unaware of the Complainant's trademarks when the disputed domain name was registered. The Complainant asserted, and the Respondent did not dispute, that prior to notice of this dispute the Respondent used the disputed domain name as the URL for a website providing access to on-line poker games and related services that are in competition with the on-line poker games and related services offered by the Complainant. This use of the domain name is an intentional attempt to attract, for commercial gain, Internet users to that web site by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site (that being evidence of the registration and use of a domain name in bad faith, pursuant to the paragraph 4(b)(iv) of the Policy). This Panel is satisfied that the Respondent registered and is using the disputed domain name 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.
Andrew Frederick Christie
Sole Panelist
Dated: August 18, 2009
Full & Egal Universal Law Academy