WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Microgaming Software Systems Limited v. Hosting Hosting Case No. D2009-1423 1. The Parties
The Complainant is Microgaming Software Systems Limited of the Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc. of Johannesburg, South Africa.
The Respondent is Hosting Hosting of Chicago, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is (the “Domain Name”), registered with GoD. 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the”Center”) on November 3, 2009 electronically and on October 22, 2009 in hardcopy. On October 23, 2009 the Center transmitted to the Registrar a request for registrar verification in connection with the Domain Name. On October 23, 2009, the Registrar 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”), 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”).
3.2 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 November 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 26, 2009.
3.3. The Complaint has been submitted in English, which was the language of the proceeding.
3.4 The Center appointed Dr. Colin Yee Cheng Ong to act as sole panelist in this matter on December 16, 2009. The Panel finds that it was properly constituted. It 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. Due to exceptional circumstances, the Panel extended the due date for the Decision to January 10, 2010. 4. Factual Background
The following uncontested statements are excerpted from the Complaint and, in the absence of any Response from the Respondent, will be accepted by the Panel as fact.
4.1 The Complainant 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, the United Kingdom, the European Union, Canada and Australia, the proprietor of which is Microgaming Systems Anstalt.
4.2 The Complainant has provided copies of the trade marks which cover, in general, computer software for games of chance, gaming or casino style gaming, entertainment, gaming and online casino management services. In addition to the certificates of the trade marks, the Complainant has also annexed to its Complaint details of the trade marks which have been set out in its portfolio report spreadsheet.
The Complainant's counsel has claimed that the Complainant is authorised to provide and does provide online casino software and management systems under the MICROGAMING trade marks. The Complainant has contended that in terms of an exclusive licence agreement, all the benefits that arise out of the use of the MICROGAMING trade marks by the Complainant inures to the benefit of the licensor.
The Complainant was founded in 1994 and released the world's first true online casino software, which is currently used by more than 100 online casinos, and the websites of these online casinos collectively receive in excess of 3 million visitors each month. The Complainant submits that on all the 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 Complainant contends that its website alone receives in the region of 250,000 visitors per annum. It claims that the Complainant's Microgaming Progressive Jackpot Network has since inception paid out USD 168 million to players, making it the largest online progressive network.
The Complainant 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 expositions. It had annexed several examples of such advertising in its Complaint. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:
(i) As a result of the extensive use of the trade mark and the specific relationship between the various parties in the gaming industry, the MICROGAMING trade mark is very well known in relation to online casino and gaming related software. The Complainant contends that the word “microgaming” is a unique and distinctive element, which is a determinative and well-known designation of source for the Complainant's online casino and gaming related software.
(ii) That the inclusion of the generic words “casinos” and “list” in the Domain Name does not add distinctive matter so as to distinguish it from the Complainant's trade mark. In this respect it relies upon the decisions of 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. The Complainant has pointed out that the Domain Name in this matter wholly incorporates the Complainant's MICROGAMING trade mark.
(iii) That the inclusion of the generic words “casinos” and “list” in the Domain Name are descriptive and do not add distinctive matter so as to distinguish it from the Complainant's trade mark. In addition, the Complainant contends that the Domain Name is confusingly similar to the Complainant's “www.” website.
(iv) That the combination of the word “microgaming” with the words “casinos” and “list” creates a domain name that is confusingly similar to the Complainant's well-known MICROGAMING trade mark. 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, no such relationship exists.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
(i) The Complainant had on August 7, 2009, through its legal counsel, sent a letter of demand to the Respondent by email and registered post. The letter informed the Respondent of the Complainant's extensive rights in and to its MICROGAMING trade mark and stated that the Respondent had no rights or legitimate interests in and to the Domain Name, and demanded that the Domain Name immediately be transferred to the Complainant. The Respondent failed to respond to the Complainant's allegations and demands.
(ii) As at the date of the submission of the Complaint, the Domain Name pointed to a parking page. The Complainant states that the Respondent is not using the Domain Name at all and has not made any demonstrable preparations to use the Domain Name, and therefore such use does not amount to a bona fide offering of goods and services.
(iii) That the Complainant is the exclusive licensee of the MICROGAMING trade marks in relation to gaming and casino services and that the Respondent is neither an agent nor licensee of the Complainant. The Respondent has no connection or affiliation with the Complainant and therefore has no right to the use of the MICROGAMING trade marks, or trade marks confusingly similar to these trade marks, in the Domain Name and has not received any license or consent, express or implied, to do so.
(iv) That the Respondent has not been commonly known by the Domain Name and has not acquired any trade mark or service mark rights in and to the Domain Name. The fact that the Complainant's MICROGAMING trade mark is so well-known in relation to casino and gaming services means that the only conclusion that can be arrived at is that the Respondent knew, or at least should have reasonably known, of the Complainant's prior rights before registering the Domain Name.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) The Complainant has a long established reputation in the use of its MICROGAMING trade marks in relation to online gaming and casino services, and has been using this trade mark in the course of trade since its inception in 1994. It is highly unlikely that the Respondent simply and inadvertently selected the Complainant's distinctive MICROGAMING trade mark and incorporated it into its selected Domain Name. The Respondent was very likely to be fully aware of the Complainant's MICROGAMING trade mark rights and its reputation in the gaming and casino industry when registering the Domain Name.
(ii) The registration of the Domain Name occurred nearly 9 years after the Complainant first commenced use of its MICROGAMING trade mark.
(iii) That the Respondent's failure to respond to the Complainant's “cease-and-desist” letter must be viewed as significant, and the Complainant argues that the Panel should subsequently interpret such failure as an adoption by silence of the material allegations made by the Complainant regarding the Respondent's lack of any rights or legitimate interests in the Domain Name and bad faith in its registration and use. The Complainant relied upon the reasons provided by the panel in Euromarket Designs, Inc. v. Domain For Sale VMI,WIPO Case No. D2000-1195.
(iv) The fact that the Domain Name incorporates the generic words “casinos” and “list” suggests that the Respondent is aware of the Complainant and the Complainant's goods and services associated with its MICROGAMING trade mark.
(v) The Complainant asserts that the Respondent's registration and use of the Domain Name cannot constitute a bona fide offering of goods and services and, consequently, also constitutes a bad faith registration as absolutely no relationship exists between the Complainant and Respondent. The Respondent registered the Domain Name seven years after the Complainant's domain name registration on August 18, 1996 and nine years after the Complainant first used the MICROGAMING trade mark in commerce in 1994.
The Complainant requests a decision that the Domain Name be transferred to the Complainant. B. Respondent
5.4 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy and that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.2 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.3 This Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response
6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
6.5 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent's default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Where the Respondent chooses not to present any such evidence to dispute the claims of the Complainant, an inference may be made that such evidence would not have been favorable to the Respondent, or that it accepts the factual claims of the Complainant, or even that it does not wish to respond or defend its perceived interest in the disputed domain name. See Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc.,/Titan Net / NOLDC, Inc,WIPO Case No. D2006-0808. A. Identical or Confusingly Similar
6.6 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.7 In line with such provision, the Complainant must prove two limbs, i.e. it enjoys trademark rights, and the Domain Name is identical or confusingly similar to its trade mark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the Domain Name and the trade mark alone, independent of the products for which the Domain Name is used or other marketing and use factors, usually considered in trade mark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.8 The Complainant has appended to the Complaint a long list of trade marks as well as details of its trade marks as set out in the portfolio report spreadsheet. The Panel finds that it is not disputable that the Complainant has rights in a significant number of trade marks in the United States, as well as various other jurisdictions, that simply comprise the word “microgaming”. Two of these have already been listed in this decision. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to a number of trade marks in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the generic words “casinos” and “list” in the Domain Name does not add distinctive matter so as to distinguish it from the Complainant's trade mark and that the Domain Name is confusingly similar to the Complainant's MICROGAMING trade mark.
6.9 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.10 The Complainant has contended that the Domain Name points to a parking page and that the Respondent is not using the Domain Name at all. It apparently has not made any demonstrable preparations to use the Domain Name and the Complainant has argued that this does not amount to a bona fide offering of goods and services. The Panel accepts that such inactivity does not provide the Respondent with a right or legitimate interest in the Domain Name.
6.11 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interests in the Domain Name. However, it is the prevailing consensus view among UDRP panels that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, or other evidence of its rights or legitimate interests, then the respondent may lack a legitimate interest in the Domain Name.
6.12 As previously held by other WIPO UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001.
6.13 Further, as another panel had held in the case of Owens Corning v. NA,WIPO Case No. D2007-1143, if a respondent wants to argue that it has a right or legitimate interest in a domain name, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.21(ii) of that decision).
6.14 In addition, the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent has made a noncommercial or fair use of the name. The Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name, which is confusingly similar to the Complainant's mark.
6.15 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
6.16 The Panel accepts the Complainant's contention that the Respondent registered the Domain Name with knowledge of the Complainant's business and its use of the MICROGAMING mark. This is inherently probable given the fact that the Complainant is a leader in online gambling services worldwide.
6.17 Given this finding, the Panel also infers and accepts the Complainant's undisputed contention that the Respondent registered the Domain Name with the intent to divert Internet users with an interest in the Complainant or online gambling services to its website for its own commercial gain. Registration of a domain name which includes a well-known mark has, in certain circumstances (including in this Panel's view situations in which the domain name was apparently registered with the intent to profit from the Complainant's mark) been found by previous UDRP panels to constitute evidence of registration in bad faith. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaV,WIPO Case No. D2005-0615.
6.18 Although the Complainant did not provide any evidence to demonstrate the use of the Domain Name at the time the Complaint was filed, the Complainant indicated that the Domain Name resolved to a parking page, and that it believed the Respondent had not “made any demonstrable preparations to use the [Domain Name]”. The Panel notes that the screen shot provided by the Center as part of the case file appears to show identical content to that displayed on the website active at the Domain Name on the date of this decision, which states “This Web site is coming soon”. Accordingly, Panel finds that it is most likely that the Respondent has engaged in passive holding of the Domain Name.
6.19 Previous UDRP panels have held that, in certain circumstances, passive holding of a domain name may be indicative of bad faith use. Factors relevant to the question of bad faith use in passive holding cases include whether: (i) the complainant's trademark is well-known, (ii) the respondent apparently has not actively used the website to which the name resolves since the time of registration, (iii) the respondent has provided no evidence of any actual or contemplated good faith use of the domain name, (iv) the respondent did not reply to the complaint, and (5) the respondent did not reply to the complainant's communications before the proceedings. See Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In this case, all of the above factors are met. The Panel accepts the Complainant's contentions that its MICROGAMING trade mark is well-known. The Respondent does not appear to have ever displayed content on the website to which the Domain Name resolves, has not entered any Response, nor has it replied to the Complaint or the Complainant's “cease-and-desist” letter. Accordingly, the Panel finds that the Domain Name has been used in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. However, the Panel would also add two further points before drawing this decision to a close.
6.21 In coming to its decision, the Panel has not given much weight to the Complainant's contention that the failure on the part of the Respondent to respond to its “cease-and–desist” letter dated August 7, 2009 is also evidence of bad faith. The Panel accepts that some previous panels have taken the position (see Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269) that a failure to respond was one of a number of factors that may be taken into account on the issue of bad faith registration and use. Nevertheless, in the view of this Panel, this is something that a panel should only do with great care. There may, indeed, be occasions where a failure to respond to a factual allegation in such a letter may tell against a respondent. However, that will depend upon the exact nature of the allegation and all the circumstances of the case.
6.22 In this case, the panel will give some weight to this letter as the Complainant has properly put it before the Panel so that it can properly consider the same. The Panel will draw a limited adverse inference from a failure on the part of the Respondent to respond to the Complainant's “cease-and-desist” letter but nevertheless, the Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith without reliance on this material. 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.
Dr. Colin Yee Cheng Ong
Sole Panelist
Dated: January 10, 2010
Full & Egal Universal Law Academy