The Complainant is Novomatic AG of Gumpoldskirchen, Austria, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is McHost Ltd of Moscow, Russian Federation, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint concerning the domain names and was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2017. On July 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 11, 2017, 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 Registrar also confirmed that the language of the registration agreement for the disputed domain name was English.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2017. The Center received email communications from the Respondent on July 31, August 1, August 3, August 6 and August 8, 2017. In its communication to the Center on August 6, 2017, the Respondent requested an extension of the due date for the Response. On August 7, 2017, the Center extended the due date for the Response until August 12, 2017, and on August 9, 2017, the Center extended the due date for the Response until August 15, 2017. The Response was filed with the Center on August 17, 2017.
On August 25, 2017, the Complainant requested a 30-day suspension of the proceeding in order to explore a possible settlement of the dispute with the Respondent. On the same date, the Center suspended the administrative proceeding until September 24, 2017. On September 24, 2017, the Complainant requested an extension of the suspension for a further period of two weeks. On the same date, the Center extended the suspension period until October 8, 2017.
On October 6, 2017, the Complainant informed the Center that it had reached a settlement with the Respondent in relation to the domain name , pursuant to which the Respondent has agreed to transfer this domain name to the Complainant. However, the Complainant and the Respondent had not been able to reach a settlement regarding the disputed domain name that is the subject of the present proceeding, so the Complainant requested the continuation of the administrative proceeding in respect of it.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 20, 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. Factual Background
The Complainant is a service provider active in all segments of the gaming industry, offering a comprehensive omni-channel portfolio of products including games, game cabinets, platforms, accessories, casino management systems, lottery solutions, online and mobile solutions, sports betting solutions and media technologies. It has developed games and game cabinets and machines, including the MultiGaminator machines and games, which it sells or rents worldwide since 2006, including in the Russian Federation. The Complainant was founded in 1980 and now has 29,000 employees in 50 countries including the Russian Federation. Its turnover exceeded EUR 4.4 billion in 2016.
The Complainant owns trademark registrations in the term GAMINATOR in many jurisdictions around the world, including in the Russian Federation, where the Respondent is based. This includes the international trademark GAMINATOR with registration No. 918228, registered on October 2, 2006 for goods and services in International Classes 9, 28 and 41, covering 28 countries, including the Russian Federation (the “GAMINATOR trademark”).
The Complainant also owns trademark registrations in the term MULTIGAMINATOR (the “MULTIGAMINATOR trademark”), including the following registrations:
- the trademark MULTIGAMINATOR with registration No. 302341133, registered in Hong Kong, China on August 9, 2012 for goods and services in International Classes 9, 28 and 41;
- the trademark MULTIGAMINATOR with registration No. 302341142, registered in Hong Kong, China on August 9, 2012 for goods and services in International Classes 9, 28 and 41;
- the trademark MULTIGAMINATOR with registration No. 11341452, registered in China on April 21, 2014 for goods in International Class 9;
- the trademark MULTIGAMINATOR with registration No. 11341451, registered in China on January 14, 2014 for goods in International Class 28;
- the trademark MULTIGAMINATOR with registration No. 11341450, registered in China on January 14, 2014 for services in International Class 41; and
- the trademark MULTIGAMINATOR with registration No. 11341455, registered in China on April 21, 2014 for goods in International Class 9.
The disputed domain name was registered on October 15, 2009. It does not currently point to an active website (it directs to a page stating “403 Forbidden”). 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to the GAMINATOR and MULTIGAMINATOR trademarks in which it has rights.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, has not been authorized or allowed by the Complainant to make any use of its GAMINATOR or MULTIGAMINATOR trademarks in a domain name or otherwise, and has not secured any trademark rights for MULTIGAMINATOR or GAMINATOR. The Respondent has not prior to any notice of this dispute used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent has linked the disputed domain name, since its registration in 2009 and until recently, to a website referring specifically to the Complainant and to its GAMINATOR and MULTIGAMINATOR products, brands and trademarks. Thus, the Respondent is trading on the Complainant’s goodwill and is misleading Internet users as to the source of the website and the source of the products available therein.
The Complainant asserts that the Domain Names were registered and are being used in bad faith. The Complainant’s GAMINATOR and MULTIGAMINATOR trademarks are distinctive and have acquired significant goodwill throughout the world, including the Russian Federation. These trademarks have been continuously and extensively used since 2006 in connection with gaming, video games and game cabinets, including in the Russian Federation where it was first used in 2006. The Respondent’s use of the disputed domain name straight after registering it to resolve to a website offering unauthorized and illegal versions of the Complainant’s games, referring specifically to the Complainant’s company and products, and displaying logos of the Complainant, shows that the Respondent was aware of the Complainant at the time of registration of the disputed domain name and that the Respondent registered it in order to create a false association with the Complainant and to take advantage of the Complainant’s goodwill.
The Complainant submits that the Respondent is intentionally using the disputed domain name seeking to deliberately mislead Internet users who would expect to find a website that is affiliated to or sponsored by the Complainant at a domain name incorporating the Complainant’s MULTIGAMINATOR trademark, and thus to attract traffic to its own website. The Complainant further submits that the confusion caused by the disputed domain name was compounded by the content of the website to which it used to resolve, which offered unauthorized versions of the Complainant’s video games and prominently displayed logos of the Complainant, without including any disclaimers indicating that the Respondent’s website or products are not affiliated to or sponsored by the Complainant.
The Complainant further submits that the Respondent’s use of the disputed domain name is intended for financial gain. The video games available at the Respondent’s website have been “modified and improved” (as stated by the Respondent), in other words created using and manipulating the Complainant’s games, including designs and software code, without authorization and by circumventing the technical measures that have been put in place by the Complainant to protect its technology, thus constituting counterfeits. The Complainant cannot guarantee the fitness for purpose, quality, integrity or safety of the illegal versions of its video games and thus the Complainant is not in a position to know whether its users are exposed to risks in terms of, for instance, data loss or virus dissemination. The products available for download on the Respondent’s website are detrimental to the Complainant’s reputation, rights, investments and business and potentially putting Internet users’ privacy and security at risk.
Finally, the Complainant stresses that it is the consensus view of previous UDRP panels that “the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself
prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. B. Respondent
The Respondent confirms that it understands the Complaint. It points out that the disputed domain name was registered in 2009, while the Complainant’s trademark was registered in 2014, so the registration of the disputed domain name was made five years earlier without an intention to engage in cybersquatting. The Respondent raises the question why no claims were put forward during the 9 years after the registration of the disputed domain name.
According to the Respondent, the word “multi” is descriptive, while “gaminator” is not used as such, but only in combination with the word “multi”.
The Respondent also points out that the disputed domain name is not important to the Respondent, and it is prepared to offer an amicable settlement to the Complainant, so that the latter takes the management of the disputed domain name.
The Respondent has not made any other statements on the substance of the dispute. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed 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 disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name […]”
In this proceeding, the Respondent has used the opportunity provided to it under the Rules and has submitted a Response.
To take its decision on the dispute, the Panel has carefully reviewed the submissions of the Parties and the evidence attached to them. A. Identical or Confusingly Similar
The Complainant has provided evidence for its rights in the GAMINATOR and MULTIGAMINATOR trademarks, the first of which is also registered in the Russian Federation, where the Respondent is located.
The Respondent has submitted that the disputed domain name was registered in 2009, while the Complainant’s trademark was registered in 2014, and that the word “multi” is descriptive, while “gaminator” was only used in combination with the word “multi”.
The Panel notes that there are valid registrations of the GAMINATOR and MULTIGAMINATOR trademarks in a number of jurisdictions, and that the GAMINATOR trademark was first registered in 2006. Also, as discussed in section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.
The Panel also notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) suffix of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.info” suffix in the disputed domain name.
Therefore, the relevant part of the disputed domain name that has to be examined is “multigaminator”, which is identical to the MULTIGAMINATOR trademark, and incorporates the distinctive “gaminator” element, which is identical to the GAMINATOR trademark, with the inclusion of the descriptive word “multi”.
Taking the above into account, the Panel finds that the disputed domain name is identical to the MULTIGAMINATOR trademark and confusingly similar to the GAMINATOR trademark, in which the Complainant has rights. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not a licensee of the Complainant, has not been authorized or allowed by the Complainant to make any use of its GAMINATOR or MULTIGAMINATOR trademarks in a domain name or otherwise, and has not secured any trademark rights for MULTIGAMINATOR or GAMINATOR. The Respondent has not prior to any notice of this dispute used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent has used the disputed domain name since its registration in 2009 and until recently, to an active website referring specifically to the Complainant and to its GAMINATOR and MULTIGAMINATOR products, brands and trademarks. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not alleged that it has rights or legitimate interests in the disputed domain name. Rather, it states that the disputed domain name is “not important” to it. The Respondent further points out that the disputed domain name was registered five years before the registration of the Complainant’s trademark. Notably, the Respondent does not dispute the way in which the disputed domain name has been used from the time of its registration and until recently.
The disputed domain name incorporates the MULTIGAMINATOR and GAMINATOR trademarks entirely. This makes it likely that Internet users may regard the disputed domain name as being the official online location for the Complainant’s products. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that refers to the Complainant and offers unauthorized and illegal versions of the Complainant’s products.
On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the business of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the Complainant and of its GAMINATOR and MULTIGAMINATOR trademarks, to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent official online locations of the Complainant where its genuine products are legitimately offered to the public. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests of the Respondent.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name fully incorporates the MULTIGAMINATOR and GAMINATOR trademarks and is identical or respectively confusingly similar to them. The Respondent does not deny that the disputed domain name has since its registration and until recently been linked to a website containing references to the Complainant and offering unauthorized versions of the Complainant’s products.
On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel finds that the Respondent is likely to have registered the disputed domain name targeting the GAMINATOR and the MULTIGAMINATOR trademarks in an attempt to attract traffic to the disputed domain name and to the associated website by confusing Internet users that they are reaching an official online location of the Complainant. On the basis of the above, the Panel accepts that this conduct of the Respondent represents a bad faith registration of the disputed domain name.
The Respondent has not denied that the disputed domain name has been used for a long period of time to refer to a website that refers to the Complainant and offers unauthorized versions of its products. Such use may confuse Internet users that they are offered legitimate versions of the Complainant’s products from an online location approved by it. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s GAMINATOR and MULTIGAMINATOR trademarks as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent’s website and of the products offered at the Respondent’s website. Therefore, the Panel finds that the disputed domain name has been used in bad faith.
The Respondent has pointed out that the present proceeding was initiated by the Complainant with an eight-year delay after the registration of the disputed domain name. In this regard, the Panel notes that as summarized in section 4.17 of the WIPO Overview 3.0, Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. In the present case, the Complainant has met its burden of proof and has established each of the three elements of the test under the Policy. Therefore, the delay in bringing of the Complaint in this proceeding (even if it is accepted that such has indeed taken place), is not a bar to the examination of the dispute and the issuance of a decision on it. 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.
Assen Alexiev
Sole Panelist
Date: November 13, 2017
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