WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Microgaming Software Systems Limited v. Contact Type Registrant, Organization Name: -, First Name: none, Last Name: none / Whois Privacy Protection Service, Inc. Case No. D2010-0265 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 Inc., South Africa.
The Respondent is Contact Type Registrant, Organization Name: -, First Name: none, Last Name: none of Antigua and Barbuda; Whois Privacy Protection Service, Inc., C/O , Washington, United States of America 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 22, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 22, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 24, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 2, 2010. The Center verified that the Complaint together with the amendment to 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 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 31, 2010.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 12, 2010. 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 April 28, 2010, the Panel issued Administrative Panel Procedural Order No. 1 (the “Procedural Order”) requiring the Complainant to provide evidence of its rights in the asserted trademark, within five (5) calendar days, for purposes of paragraph 4(a)(i) of the Policy; and, immediately after, giving the Respondent additional five (5) calendar days to respond to the Complainant's anticipated submission.
The Complainant answered on May 3, 2010, providing a partial copy of an exclusive Licence Agreement between Microgaming Systems Anstalt and Microgaming Software Systems Limited. The Respondent did not submit any response to this additional submission. The due date of decision was extended to may 20, 2010. 4. Factual Background
The Complainant was founded in 1994 and provides online casino software and management systems under the MICROGAMING trademark. The Complainant`s online casino software is currently utilized by more than 100 online casinos, including casino groups such as the Carmen Media group.
The Complainant is the exclusive licensee of a number of pending and registered trademarks consisting of or incorporating the word MICROGAMING in various jurisdictions including the USA, the United Kingdom, the European Union, Canada and Australia. The trademarks cover mainly computer software for games of chance, gaming or casino style gaming (Annexes C and D to the Complaint).
The disputed domain name was registered on November 27, 2007.
On December 17, 2009 the Complainant sent a cease and desist letter to the Respondent by email, fax and registered post, referring to its rights concerning the disputed domain name.
The Panel tried to access the disputed domain name on May 10, 2010, when no webpage was published there. Research made using the Internet Archive Wayback Machine (*/) showed that the disputed domain name has been used to advertise online casinos. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) The domain name is confusingly similar to the trademark. The MICROGAMING trademark is well known in relation to online casino and gaming related software. The inclusion of the generic word “club” in the disputed domain name does not serve to distinguish it from the MICROGAMING trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent has failed to provide any response to Complainant's cease and desist letter, where the Respondent's lack of rights was formally warned. The Respondent is not using the domain name. The Respondent is not offering the Complainant's trademarked goods or services. The Respondent is not taking any steps to prevent confusion by making clear in its use of the domain name that it is not the Complainant. The Respondent is neither an agent nor a licensee of the Complainant and has no connection or affiliation with the Complainant. 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 or to the disputed domain name.
(iii) The domain name was registered and is being use in bad faith. The Complainant has a long established reputation in the use of its MICROGAMING trademarks 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. The registration of the disputed domain name occurred 13 years after the Complainant first commenced use of the MICROGAMING trademark, 11 years after the Complainant's domain name was registered and 8 years after the Complainant's licensor registration of the trademark MICROGAMING in several countries. The Respondent's failure to respond to the Complainant's cease and desist letter also characterizes bad faith in the registration and use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Regardless of the fact the Respondent failed to submit a formal reply, the Panel shall consider whether the requirements of the Policy have been met. A. Identical or Confusingly Similar
Annexes C and D to the Complaint demonstrates registrations of the MICROGAMING trademark since 1999 made by Microgaming Systems Anstalt.
The Complainant`s rights on the asserted trademark were demonstrated with the providing of a partial copy of a contract where all marks accompanying the Microgaming Systems Anstalt`s proprietary software suite - used to run and administer online casinos - were exclusively licensed to the Complainant.
In 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 the Panel stressed that “Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the domain name be identical or confusingly similar to a trademark or service mark in which Complainant has rights. These words do not require that Complainant be the owner of the mark and would include, for example, a licensee of the mark. It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark”.
The trademark MICROGAMING is wholly encompassed within the disputed domain name, which also includes the expression “club”. It is now well-established for purposes of the Policy that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is confusingly similar to the trademark in question (F. Hoffmann-La Roche AG v. sysadmin admin, ltd.,WIPO Case No. D2008-0954).
Moreover, previous cases have shown that the addition as a prefix or suffix of the specific word “club” is not sufficient to establish that the disputed domain name is not identical or confusingly similar to a registered trademark (AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains LLC,WIPO Case No. D2008-1470; Kirkbi AG v. Michele Dinoia,WIPO Case No. D2003-0038; Orix Kabushiki Kaisha v. Noldc Inc.,WIPO Case No. D2006-0422).
The Complainant has therefore met the burden of proving that the domain name at issue is confusingly similar to the Complainant's trademark, pursuant to the Policy, Paragraph 4(a)(i). B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
As it is often very difficult for a complainant to prove that a respondent has no rights or legitimate interests in a domain name (as this can involve the complainant being required to prove a negative), it is considered enough that the complainant establishes a prima facie case which evidences that. In a previous WIPO UDRP case, the panel stressed that “once Complainant makes a prima facie showing, Respondent must submit concrete evidence of at least demonstrable preparations in order to rebut Complainant's showing that Respondent has not used, nor does it plan to use, the domain name in connection with the bona fide sale of goods or services” (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
Based on the Respondent's default and on the prima facie evidence in the Complaint as set out above, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not currently using the domain name at all. No preparations to use the domain name in connection with a bona fide offering of goods or services were shown.
The Respondent is not commonly known by the word “microgaming”. The Complainant has not licensed the trademark to the Respondent.
No legitimate noncommercial or fair use of the disputed domain name was verified. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
Currently, there is no webpage published on the disputed domain name. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (item 3.2) informs that “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”.
The Panel acknowledges that MICROGAMING is a trademark directly connected with the Complainant's activities as an online casino software provider.
The registration of the disputed domain name occurred in 2007, when the Complainant's trademark MICROGAMING was already well known in the specific field of online casinos and gaming. Therefore, it is not feasible that the Respondent could ignore the Complainant's reputation and business when it registered the disputed domain name, mainly considering that the former pages published on the contested domain name used to show advertises of different online casino websites.
The Panel is convinced that the addition of the expression “club” to the trademark MICROGAMING was intentionally done in order to convince consumers that the website was related to the Complainant's own business, creating a likelihood of confusion as to the source of the services offered under the disputed domain name. This clearly constitutes bad faith in the view of this Panel.
Finally, no response was sent to the Complaint and also to the previous cease and desist letter concerning the disputed domain name.
The Panel therefore concludes that the third condition required to be satisfied under paragraph 4(iii) has also been fulfilled. 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.
Rodrigo Azevedo
Sole Panelist
Dated: May 20, 2010
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