The Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwaelte OG, Austria.
The Respondent is Aleksandr Kazmin, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 5, 2019. On September 6, 2019, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On September 9, 2019, the Complainant confirmed its request that English be the language of the proceedings and provided additional arguments in support of its request. The Respondent has not provided any response regarding the language of the Proceedings. 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”). The Respondent has not provided any response regarding the language of the Proceedings. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and Russian, and the proceedings commenced on September 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2019. The Center appointed Taras Kyslyy as the sole panelist in this matter on October 23, 2019. 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 company of Austria and provides gaming services, including online casino services. The Complainant owns ADMIRAL trademarks, including Austrian trademark registration No.145212, registered on December 17, 1992. The Complainant also owns ADMIRAL CLUB trademark registered in the European Union, registration No.006095129, registered on June 12, 2008. The Complainant provides online casino services at “www.admiral.ro.” The disputed domain name was registered on June 7, 2019 and resolves into a web site of an online casino in Russian language. Significant portion of the content of the web site is Russian translation of the Complainant’s respective web site, and which offers online gaming services that compete with the Complainant. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant’s trademark ADMIRAL and the disputed domain name are identical in their distinctive part and they are confusingly similar, since The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is used by the Respondent in violation of the law and in violation of the Complainant’s trademark rights. The Complainant’s rights out of the registered trademarks date back to 1980. The Respondent has no relationship with or permission from the Complainant for the use of the trademarks ADMIRAL and ADMIRAL CLUB. The Respondent has neither been commonly known by the disputed domain name or the sign ADMIRAL nor has acquired any respective trademark or Admiral Club service mark rights. The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name long after the Complainant had registered its respective trademarks and long after the Complainant had installed its web site, which then was copied by the Respondent. The Complainant’s Admiral-stores, ADMIRAL and ADMIRAL CLUB, trademarks and service marks are so well known, that the Respondent without any doubt was aware of, when registering the disputed domain name. The Respondent, when registering the disputed domain name had the duty to check the trademark registries. When opening the website under the disputed domain name the user finds an almost true copy of the Complainant’s respective web site misleading the Complainant’s clients. The Respondent registered the disputed domain name in bad faith with full knowledge of the Complainant and its trademarks because the Respondent used the disputed domain name to lead the public to the copied version of the Complainant’s website. The disputed domain name incorporates the Complainant’s trademark. The Respondent uses the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or products on the Respondent’s website. The disputed domain name is used to offer counterfeited versions of the Complainant’s goods. The Respondent is preventing the Complainant from reflecting its trademark in a corresponding domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) previous panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) parts of the Respondent’s respective web site are in English, (ii) the web site at the disputed domain name contains almost true translation of the English text of the respective Complainant’s web site, (iii) the Registrar’s website is in English, (iv) prior correspondence with the Registrar was made in English, (v) requiring the Complainant to translation the Complaint into Russian would be an unacceptable burden for Complainant and involve further cost and delay, which would interfere with the goal to conduct the proceedings in a timely and cost effective manner. The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Taking all these circumstances into account, rejecting however the above Complainant’s arguments (iii) and (iv), the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview 3.0 the applicable generic Top-Level Domain in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, in the present case the Panel disregards TLD “.com” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates ADMIRAL and ADMIRAL CLUB trademarks owned by the Complainant. According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case addition of hyphen, “x” and/or “club” to the disputed domain name do not prevent confusing similarity. Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. The Panel finds that the Complainant has rights in its registered trademarks. The Complainant also made an argument on its rights for its unregistered trademarks, which Panel finds not relevant for the present case. C. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). The disputed domain name redirects Internet users to a web site designed similar to the Complainant’s web site to make the Internet users believe that they actually access Russian version of the Complainant’s web site and offering competing online gaming services. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al.,WIPO Case No. D2000-0598; Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211). Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith According to section 3.2.2 of the WIPO Overview 3.0 further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. In the present case the Respondent shortly after registration of the disputed domain name incorporating the Complainant’s trademarks placed a web site being merely Russian copy of the respective Complainant’s web site. The Panel finds that the nature of the disputed domain name and its use confirms the Respondent knew or should have known of the Complainant’s prior trademark rights, which confirms bad faith registration. According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s 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 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 website 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 the respondent’s website or location or of a product or service on the respondent’s website or location. In this regard and noting the use of the web site described under Section 4, the Panel finds that the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith use. Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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 Taras Kyslyy
Sole Panelist
Date: November 6, 2019
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