The Complainant is Novomatic AG of Gumpoldskirchen, Austria, represented by Bird & Bird LLP, the Netherlands.
The Respondent is Molly Rita Roselie, Kofler Limited of Victoria, Seychelles / Roy Ervin Conrad Delcy, Regula Trading Limited of Victoria, Mahe, Seychelles. 2. The Domain Names and Registrar
The disputed domain names , and (the "Domain Names") are registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2017. On February 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 7, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On February 10, 2017, the Respondent submitted two informal email communications. The Complainant filed an amended Complaint on February 16, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2017. No formal response was submitted.
The Center appointed Olga Zalomiy as the sole panelist in this matter on March 27, 2017. 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. Preliminary Issue: Consolidation of Respondents
The Complainant submitted a request for consolidation of the Respondents Molly Rita Roselle, Kofler Limited and Roy Ervin Conrad Delcy, Regular Trading Limited in the same proceeding.
As stated in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), a single consolidated complaint may be brought against multiple respondents where "(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties."
The Panel accepts the Complainant's claim that the Domain Names are subject to common control because the layout of the websites to which the Domain Names resolve is almost identical. The evidence on file shows that the Domain Names and used to resolve to websites with an almost identical look and feel and the Domain Name used to redirect to the website "www.". The WhoIs information for the Domain Names shows that the Respondents are located at nearly identical addresses. In their February 10, 2017 emails both Respondents confirmed that the Domain Name was "transmitted" to the Respondent Molly Rita Roselle, Kofler Limited "two or three years ago". Under the circumstances, the Panel finds that the consolidation would be fair and equitable to all parties. Reference hereafter will be to the "Respondent" in singular form. 5. Factual Background
The Complainant is a part of the Novomatic Group, which is active in the gaming industry. The Complainant owns several trademark registration for the word mark ADMIRAL, such as International Registration number 474965 registered on January 24, 1983; International Registration number 598347 registered on December 17, 1992; European Union Trade Mark ("EUTM") trademark registration number 004134433 registered on November 22, 2004; and United States Patent and Trademark Office ("USPTO") trademark registration number 2317415, registered on February 15, 2000. The Complainant also owns several registrations in permutations of its ADMIRAL mark, such as the word mark ADMIRAL CLUB, EUTM trademark registration number 006095129, registered on June 12, 2008; German trademark for ADMIRAL CASINO, registration number 302008021361, registered on August 7, 2008; and a Polish combined trademark ADMIRAL CLUB, registration number 096221.
The Respondent registered the Domain Name on June 25, 2013. The Respondent registered the Domain Name on June 4, 2013 and the Domain Name on June 10, 2016.
On December 28, 2016, the Complainant sent a cease-and-desist letter to the Respondent stating that the Complainant was an owner of the various trademarks and that the "www." website offers counterfeit versions of over 40 of the Complainant's games. The letter also states that the Respondent violated the Complainant's rights in the NOVOMATIC trademark and that the Domain Names infringe on the Complainant's ADMIRAL trademark. The Respondent did not reply to the letter.
On January 3, 2017, the Complainant sent a letter to host of the "www." website informing it about the infringement of the Complainant's copyrights, requesting removal of access to the allegedly counterfeit versions of the Complainant's games and requesting the host to reveal identity of the registrants (at the time protected by a privacy service).
Currently, the Domain Names do not resolve to any active websites.
The Domain Name and used to resolve to websites with an almost identical look and feel to the Complainant's website. The Domain Name used to redirect to the "www." website. 6. Parties' Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to its ADMIRAL trademark. The Complainant claims that the Domain Names incorporate the ADMIRAL trademark in its entirety. The Complainant argues that addition of non-distinctive elements, such as the combinations of the letters "cc" or generic words "casinoclub" to its trademark in the Domain Names does not affect the confusing similarity. The Complainant alleges that the Domain Name is also identical or confusingly similar to the Complainant's ADMIRAL CLUB and ADMIRAL CASINO marks, all of which include a combination of the words "admiral" and "casino" or "club". The Complainant claims that the Domain Name consists of the entire textual components of the above-mentioned marks. The Complainant contends that the addition of the generic Top-Level Domain ("gTLD") ".com" and of the country-code Top-Level Domain ("ccTLD") ".cc" "does not affect the confusing similarity.
The Complainant claims that the Respondent registered the Domain Names after the Complainant had registered its ADMIRAL trademarks and the Respondent is not licensed or otherwise authorized by the Complainant to use the ADMIRAL trademarks. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Names because the Respondent's use of the Domain Names (and the websites connected to the Domain Names) deliberately creates the false impression that the Respondent is either a part of the Complainant's organization or is in some other way authorized by the Complainant when this is not the case. The Complainant argues that the Respondent knew about the Complainant's mark when it registered the Domain Names because the Respondent offers counterfeit version of the Complainant's games on the websites connected to the Domain Names. The Complainant alleges that such use of the Domain Names is not a use in connection with bona fide offering or goods of services. The Complainant claims that the Respondent is not commonly known by the Domain Names because it has no trademark rights or trademarks applications for the registration of the ADMIRAL or similar mark, nor is it identified by the ADMIRAL name.
The Complainant argues that the Domain Names were registered and are being used in bad faith because they were registered and are being used by the Respondent without permission from the Complainant, for commercial gain, by creating a likelihood of confusion with the Complainant's trademarks as to the source of sponsorship, affiliation or endorsement of the website. The Complainant alleges that it sent a cease-and-desist letter to the Respondent explaining the infringing activity, but received no response to the letter. The Complainant claims that it also sent a letter to a host of the website "www." and that the host removed the infringing content from that website, but did not disclose the identity of the owner of the corresponding domain name. The Complainant's claims that the Respondent's offering of counterfeit goods on the websites connected to the Domain Names is one of the strongest examples of registration and use in bad faith and is paradigmatic bad faith. B. Respondent
The Respondent did not submit a formal response to the Complainant's contentions.
On February 10, 2017, the Respondent Roy Ervin Conrad Delcy, Regula Trading Limited sent the Center an email that reads:
"Hello, Regarding to the domain "", it was transmitted to Kofler Limited company 2-3 years ago and we don't have access to it.
We asked them to investigate situation [sic] and check why this domain have our contact information, they will contact you asap.
Thank you."
Later the same day, the Respondent Molly Rita Roselle, Kofler Limited sent the Center an email that reads:
"We received this email from our old partners.
We can't change contact information in domains because they blocked . This is our domains." 7. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
To prove the first UDRP element, the Complainant must show that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. Here, the evidence submitted by the Complainant shows that the Complainant has trademark rights in the word mark ADMIRAL by virtue of its registrations in many countries and jurisdictions.
The Domain Name consists of the word mark ADMIRAL and the ccTLD ".cc". The Domain Name consists of the word mark ADMIRAL, a hyphen, letters "cc" and the gTLD ".com". The Domain Name consists of the word mark ADMIRAL, the words "casino" and "club" and the gTLD ".com". The Domain Names are confusingly similar to the Complainant's trademark because they incorporate the ADMIRAL trademark in its entirety. It is well established that the gTLD or ccTLD is generally disregarded under the confusing similarity test for purposes of the UDRP.1 In cases, where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only deviation from this is the inclusion of letters or a dictionary term as a prefix or a suffix, does not negate the confusing similarity between the disputed domain name and the mark. In this case, the letters "cc", the hyphen or the words "casino" and "club", do nothing to distinguish or to negate the confusing similarity between the Domain Names from the Complainant's registered ADMIRAL trademark. The confusion is exacerbated by the fact that the Complainant owns the ADMIRAL CLUB and the ADMIRAL CASINO trademarks.
The Complainant has satisfied first element of the UDRP. B. Rights or Legitimate Interests
To prove the second UDRP element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in respect of the domain name and, once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence it has rights or legitimate interests in the domain name.2 Where the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the UDRP.3
Paragraph 4(c) of the UDRP enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names because the Respondent has not been commonly known by the Domain Names and the Complainant has not authorized the Respondent to use its ADMIRAL trademark in connection with the Domain Names. In fact, the Respondent's websites used to create impression of the Respondent's affiliation with the Complainant or sought to impersonate the Complainant. The evidence shows that the following text used to be displayed at the top of the "www." and "www." websites: "Novomatic (Новоматик4) играть в игровые автоматы онлайн", which means "Novomatic, play gaming machines online".
The evidence also shows that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names, nor is the Respondent using the Domain Names in connection with a bona fide offering of goods or services. The Domain Name used to to redirect to the website "www.". The Domain Names and the used to resolve to the websites "www." and the "www.", which offered purportedly counterfeit versions of the Complainant's games. Also, the "www." and the "www." websites used to display the following text in Russian:
"Today, casino "Admiral" offers gaming machines for any, even the most demanding taste. Captivating storylines, colorful design, joyful melodies, explosive doses of adrenalin, and, of course, generous monetary prizes, are expecting you."
The use of the Domain Names, which are confusingly similar to the Complainant's trademark, to offer what appear to be counterfeit versions of the Complainant's games is neither bona fide, nor legitimate. Because the Respondent failed to rebut the Complainant's allegations or to submit evidence showing its rights or legitimate interests in the Domain Names, the second element of the UDRP has been met. C. Registered and Used in Bad Faith
Under the third UDRP element, paragraph 4(a)(iii), the Complainant is required to prove that the Domain Names were registered and are being used in bad faith.
The Panel finds that the Domain Names were registered and are being used in bad faith. The Panel accepts that the Respondent registered the Domain Names in bad faith with full knowledge of the Complainant and its trademarks because the Respondent used the Domain Names to resolve to the websites, which offered what appear to be counterfeit versions of the Complainant's games. In addition, the evidence shows that the following text used to be displayed at the top of each of the "www." and the "www." websites: "Novomatic (Новоматик) играть в игровые автоматы онлайн", which means "Novomatic, play gaming machines online". Furthermore, the "www." and the "www." websites also specifically referred to the Complainant's casino by displaying the following text in Russian:
"Today, casino "Admiral" offers gaming machines for any, even the most demanding taste. Captivating storylines, colorful design, joyful melodies, explosive doses of adrenalin, and, of course, generous monetary prizes, are expecting you."
The Panel also accepts that the Domain Names are being used in bad faith. The evidence on file shows that the Respondent used to use the Domain Names incorporating the Complainant's mark to direct to websites, which offered purportedly counterfeit versions of more than 40 of the Complainant's games. The Panel accepts that the Respondent used the Domain Names "to attract, for commercial gain, Internet users to [the Respondent's websites], by creating a likelihood of confusion with the [C]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of" the Respondent's websites or products on the Respondent's websites. Using the Domain Names for such purposes shows Respondent's bad faith under paragraph 4(b)(iv) of the Policy. Previous UDRP panels found use of the Domain Names in connection with websites offering counterfeit versions of Complainant's goods to be in bad faith. See, e.g., Jean Cassegrain S.A.S. v. Abel Magee,WIPO Case No. D2011-1572 (finding bad faith where the domain names in question redirected users to websites where counterfeit versions of the complainant's goods were offered for sale); Wellquest International, Inc. v. Nicholas Clark,WIPO Case No. D2005-0552 (holding that sale of unauthorized copies of the complainant's goods is paradigmatic bad faith).
The Panel notes that currently the Domain Names do not resolve to any active websites. However, it is a consensus view among UDRP panelists that passive holding of domain names does not "prevent finding of bad faith."5 Taking into account how the Respondent used the Domain Names in the past, it is hard to imagine that it could use the Domain Names for a bona fide purpose. As the panel held in Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564: "the presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use".
Therefore, the Panel finds that the third element of the UDRP has been met. 8. 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 names , and be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: April 7, 2017
1 Paragraph 1.2., WIPO Overview 2.0.
2 Id, paragraph 2.1.
3 Id.
4 This is a Cyrillic transliteration of the word "Novomatic".
5 Paragraph 3.2., WIPO Overview 2.0.
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