The Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwalte OG, Austria.
The Respondent is whuttaphop pimphachai, Thailand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2019. On September 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 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. 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 October 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2019. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 4, 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 in the high-tech gaming technology business. It is the owner, amongst others, of the European Union trademark registration No. 12456828 for BOOK OF RA (and device), filed on December 9, 2013 and registered on April 23, 2014 in classes 9, 28 and 41 (Annex 7 to the Complaint). The disputed domain name was registered on August 9, 2019. An active webpage resolves from the disputed domain name reproducing the Complainant’s trademark and logo, as well as providing information and tips on the Complainant’s product. 5. Parties’ Contentions A. Complainant The Complainant asserts to be one of the largest high-tech gaming technologies companies worldwide, having had a turnover of around EUR 5 billion in 2018, being present in more than 50 countries and exporting to more than 70 countries gaming products and services as well as a range of sophisticated ancillary products and services. The Complainant further asserts that its BOOK OF RA trademark has obtained a reputation and has been exclusively used by the Complainant in such a way that users of the Complainant’s products associate it exclusively with the Complainant, having acquired a secondary meaning and become a unique identifier of the Complainant’s products and services. According to the Complainant, the disputed domain name reproduces its registered trademark and is therefore confusingly similar therewith. As to the absence of rights or legitimate interests, the Complainant argues that: (i) the Respondent has no relationship with or permission from the Complainant to use the BOOK OF RA trademark; and (ii) the Respondent has not been commonly known by the disputed domain name, nor has it acquired any trademark or service mark rights. In relation to bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident given the reproduction of its trademark on the website and clear intention to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement with the disputed domain name, in addition to also infringing the Complainant’s copyright. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar The Complainant has established its rights in the BOOK OF RA trademark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7). The Complainant’s trademark is fully incorporated in the disputed domain name. For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent. In that sense, the absence of any indication that the Respondent has any registered trademarks corresponding to the disputed domain name or has been commonly known by the disputed domain name as well as the Complainant’s statement that it has no relationship with nor granted the Respondent permission to use the BOOK OF RA trademark corroborate with the indication of a lack of rights or legitimate interests in the disputed domain name. Furthermore, the website that resolves from the disputed domain name clearly reproduces the Complainant’s trademark, logo, characters and typical colors of the Complainant’s game and provides information and tips on the Complainant’s product, what leads this Panel to the conclusion that the Respondent was seeking to create a false impression of association with the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Moreover, the nature of the disputed domain name being identical to the Complainant’s trademark carries a high risk of implied application with the Complainant. See WIPO Overview 3.0, section 2.5.1. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant’s trademark in connection with the Complainant’s products and services on the website that resolves from the disputed domain name and the Respondent’s attempt to create a false impression of impersonation, endorsement or association with the Complainant. The Panel comes to this conclusion that the overall impression of the webpage leads Internet users into believing that such webpage was developed by the Complainant or endorsed by it. Thus the Respondent’s registration and use of the disputed domain name not only clearly indicates its full knowledge of the Complainant’s trademark but also shows an attempt to misleadingly divert consumers for its own commercial gain. Moreover, the Panel finds that the registration and use of the disputed domain name also disrupts the business of the Complainant. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name. 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 Wilson Pinheiro Jabur
Sole Panelist
Date: November 13, 2019
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