Complainant is Novomatic AG of Gumpoldskirchen, Austria, represented by Bird & Bird LLP, Netherlands.
Respondents are Whoisguard Protected, Whoisguard Inc. of Panama / Molly Rita Roselie, Kofler Limited of Victoria, Seychelles, and Private Whois, Global Domain Privacy Services Inc. of Panama / Gorbaz Akbar of Kharkivska, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with URL Solutions, Inc. The disputed domain names and are registered with eNom, Inc. (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2017. On October 9, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 9 and 10, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 11, 2017 providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 11, 2017.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2017. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2017.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 22, 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 Regarding the Request for Consolidation of Respondents
Complainant has submitted a request for consolidation of Respondents Molly Rita Roselie, Kofler Limited
and Gorbaz Akbar in the same proceeding. In determining whether a single consolidated complaint can be brought against multiple respondents, panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See section 4.11.2, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Based on the evidence submitted, which is not contested by Respondent, the Panel accepts Complainant’s contention that the disputed domain names are subject to common control. The websites at all three disputed domain names feature the same logo for “Casino Club Admiral” and promote the same type of online gaming under the name “Admiral Casino Club,” and all three disputed domain names have resolved to the same website at the disputed domain name. Moreover, in a prior UDRP proceeding initiated by Complainant against one of Respondents, Novomatic AG v. Molly Rita Roselie, Kofler Limited / Roy Ervin Conrad Delcy, Regula Trading Limited, WIPO Case No. D2017-0195 (the “Prior UDRP Proceeding”), the websites appearing at the disputed domain names in that proceeding were nearly identical to the websites that have appeared at the disputed domain names at issue in this proceeding. Under the circumstances, the Panel finds that consolidation would be fair and equitable to all Parties. (Respondents in this proceeding will hereinafter be referred to collectively as “Respondent” in the singular form.) 5. Factual Background
Complainant, Novomatic AG, is part of the Novomatic Group, an international gaming company. Complainant owns several trademark registration for the word mark ADMIRAL, including International Registration No. 474965, registered on January 24, 1983; International Registration No. 598347, registered on December 17, 1992; European Union Trade Mark (“EUTM”) Registration No. 004134433, registered on November 22, 2004; and United States federal trademark Registration No. 2317415, registered on February 15, 2000. Complainant also owns several registrations in Europe for ADMIRAL formative marks, such as an EUTM for ADMIRAL CLUB (Registration No. 006095129, registered on June 12, 2008); a German trademark for ADMIRAL CASINO (Registration No. 302008021361, registered on August 7, 2008); and a Polish trademark for ADMIRAL CLUB (Registration No. 096221, registered on June 13, 1997).
Respondent registered the disputed domain name on September 4, 2014, the disputed domain name on February 12, 2014, and the disputed domain name on August 8, 2016. The disputed domain names currently resolve or redirect to active websites promoting and/or offering online gaming.
Complainant initiated the Prior UDRP Proceeding against Respondent in early 2017. The panel in that proceeding ordered the domain names , and to be transferred to Complainant. 6. Parties’ Contentions A. Complainant
Complainant argues that Respondent is a repeat offender as Respondent lost the Prior UDRP Proceeding that involved domain names also based on Complainant’s ADMIRAL and ADMIRAL formative marks and which were used for nearly identical websites as those appearing at the disputed domain names in this proceeding.
Complainant contends that the disputed domain names are identical or at least confusingly similar to Complainant’s ADMIRAL mark because they contain the ADMIRAL mark in its entirety. Complainant also contends that the addition of non-distinctive elements such as the words “casino” or “promo” does not distinguish the disputed domain names. Complainant further argues that the and disputed domain names are also identical or confusingly similar to Complainant’s ADMIRAL CLUB and ADMIRAL CASINO marks, as they consist of the entire textual components of these trademarks. Lastly, Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) extension “.com” or “.club” does not affect the confusing similarity. Complainant also asserts that the use of the gTLD “.club” extension for two of the disputed domain names adds to the confusion as the combination of the extension with Complainant’s ADMIRAL mark plays upon Complainant’s ADMIRAL CLUB trademark.
Complainant argues that Respondent has not made any bona fide use of the disputed domain names as Respondent registered the disputed domain names after Complainant had registered its ADMIRAL, ADMIRAL CASINO and ADMIRAL CLUB trademarks. Respondent further argues that Respondent’s lack of bona fide use is established because Respondent (i) is not licensed or otherwise authorized by Complainant to use Complainant’s trademarks, (ii) has used the disputed domain names (and the underlying websites) to deliberately create the false impression that Respondent is either a part of Complainant’s organization or is in some other way authorized by Complainant, when such is not the case, and (iii) knew about Complainant’s business and brand when Respondent registered the disputed domain names because Respondent has offered counterfeit versions of Complainant’s games on the websites associated with the disputed domain names.
Complainant also asserts that Respondent lacks rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and has used the disputed domain names to misleadingly divert consumers to Respondent’s websites to offer counterfeit versions of Complainant’s games.
Lastly, Complainant argues that the disputed domain names were registered and are being used in bad faith because Respondent registered and used the disputed domain names without permission from Complainant and for the purpose of intentionally attracting consumers to Respondent’s website for commercial gain. Complainant claims that bad faith is further established because Respondent is a repeat offender in light of the Prior UDRP Proceeding and because Respondent is offering counterfeit versions of Complainant’s games on the websites associated with the disputed domain names. B. Respondent
Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See WIPO Overview 3.0, section 4.3; seealso The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns trademark registrations for the ADMIRAL, ADMIRAL CASINO and ADMIRAL CLUB trademarks in many countries, and that such issued to registration well before Respondent registered the disputed domain names.
With Complainant’s rights in the ADMIRAL, ADMIRAL CASINO and ADMIRAL CLUB marks established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the gTLDs such as “.com” or “.club”) are identical or confusingly similar with Complainant’s marks. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain names are confusingly similar to Complainant’s ADMIRAL mark as they each incorporate the ADMIRAL mark in its entirety. The addition of common words such as “casino” or “promo” (an abbreviation for the word “promotion”) in the disputed domain names does not distinguish the disputed domain names from Complainant’s ADMIRAL mark, as the terms can be seen as related to Complainant’s gaming business. In addition, the and disputed domain names are also confusingly similar to Complainant’s ADMIRAL CLUB and ADMIRAL CASINO marks, as these disputed domain names essentially contain the elements of Complainant’s trademarks in the second-level portion of the domain names along with the “.club” gTLD. WIPO Overview 3.0, section 1.11.3. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s marks and in showing that the disputed domain names are identical or confusingly similar to those trademarks. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent,though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, and Respondent’s failure to file a response, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names. It is evident that Respondent was, and is, aware of Complainant and its ADMIRAL, ADMIRAL CASINO and ADMIRAL CLUB marks given that this is the second UDRP proceeding that Complainant has filed against Respondent concerning the registration of disputed domain names that are confusingly similar to Complainant’s trademarks and which have been used in connection with websites offering what appears to be counterfeit versions of Complainant’s games. The fact that Respondent’s websites at the disputed domain names essentially impersonate Complainant, or at least create an impression of affiliation with Complainant, in order to offer counterfeit versions of Complainant’s games further underscores and supports the conclusion that Respondent is not making a bona fide use of the disputed domain names and does not have any rights or legitimate interests in the disputed domain names.
Given that Complainant has established with sufficient evidence that it owns rights in the ADMIRAL, ADMIRAL CASINO and ADMIRAL CLUB marks, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 web site or other on-line 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.”
In the present case, Respondent was clearly aware of Complainant when Respondent registered the disputed domain names, given that Respondent has used each of the disputed domain names to attract Internet users to websites that impersonate Complainant or suggest a connection to or affiliation with Complainant. As the disputed domain names fully incorporate or play upon Complainant’s ADMIRAL, ADMIRAL CLUB or ADMIRAL CASINO marks, it is evident that Respondent opportunistically targeted Complainant and its trademarks for commercial gain. This is particularly so in view of Respondent’s use of the disputed domain names with websites that offer what appear to be counterfeit versions of Complainant’s games.
Lastly, as this is the second UDRP proceeding that Complainant has brought against Respondent involving disputed domain names based on the very same marks and concerning the same conduct by Respondent, it is evident that Respondent, who has failed to file a response in this matter, has been acting in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 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 Complainant.
Georges Nahitchevansky
Sole Panelist
Date: December 7, 2017
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