The Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.
The Respondent is Oleg Bakanach, 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 June 25, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2020, 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 June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2020. The Center appointed David H. Bernstein as the sole panelist in this matter on July 29, 2020. 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 an Austrian company, founded in 1990. The Complainant and its affiliates have locations in more than 50 countries and export high-tech electronic gaming equipment to more than 70 countries. The Complainant operates more than 150,000 gaming terminals and video lottery terminals (VLTs) in more than 2,000 locations. The Complainant offers products including physical gaming products and services, management systems and cash management, online/mobile and social gaming products, and lottery and sports betting services. The Complainant has used the name BOOK OF RA to denote its products and the brand has acquired reputation among relevant consumers. The Complainant owns trademark registrations for BOOK OF RA, including: European Union Trade Mark registration No. 4451431 for BOOK OF RA (word), filed on May 23, 2005, and registered on May 24, 2006, for goods and services in International classes 9, 28, and 41; and European Union Trade Mark registration No. 12456828 for BOOK OF RA (figurative), filed on December 9, 2013, and registered on April 24, 2014, for goods and services in International classes 9, 28, and 41. The Domain Name was registered on April 30, 2019, and does not resolve to an active web page. 5. Parties’ Contentions A. Complainant The Complainant contends that its use of the BOOK OF RA name and its ownership of the trademark registrations give it rights in the BOOK OF RA trademark, and that the Domain Name is identical to its trademark. The Complainant contends the Respondent has no relationship with or permission from the Complainant for the use of the trademark BOOK OF RA, and that the Respondent does not otherwise have any rights or legitimate interests in the Domain Name. The Complainant finally contends that the lack of content available at the website to which the Domain Name resolves, when considered in light of the distinctiveness of the BOOK OF RA trademark, makes it is clear that the Domain Name was registered and is used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions.1 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements that the Complainant must prove by a preponderance of the evidence in order to obtain transfer of the Domain Name: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has demonstrated trademark rights in BOOK OF RA through its registration and use of the BOOK OF RA mark. The Domain Name is identical to the Complainant’s BOOK OF RA trademark given that the Domain Name incorporates the trademark in its entirety. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (“in cases where a domain name incorporates the entirety of a trademark [...] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”). The spaces between the three words in the trademark are not relevant to a finding of identity or confusing similarity between the trademark and the Domain Name because such spaces cannot be reproduced in domain names. As such, underlined spaces, hypens, or eliminated spaces may be disregarded when considering identity or similarity. E.g., Living Spaces Furniture, LLC v. Ukrit Kaewprom,WIPO Case No. D2010-1751. The Panel therefore finds that the Complainant has established that the Domain Name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Demonstrating that a respondent has no rights or legitimate interests in a domain name requires the complainant to prove a negative, which can be challenging if only the respondent is aware of its intentions with respect to the domain name and its claim of rights or legitimate interests. For that reason, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production […] shifts to the respondent.” WIPO Overview 3.0, section 2.1. The burden of proof, however, always remains on the Complainant. Id. The Complainant has asserted sufficient allegations to make a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has made clear that it has not given the Respondent any permission to use its trademark in a domain name, and there is nothing on the website or in the WhoIs information that could support a finding that the Respondent is making a bona fide offering of goods or services under the Domain Name, has been commonly known by the Domain Name, or is making a legitimate noncommercial or fair use of the Domain Name. The Respondent has not submitted any Response. As such, the Complainant’s prima facie showing is unrebutted. The Panel therefore finds that the Complainant has established that the Respondent lacks rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that 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) that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Complainant’s arguments with respect to bad faith registration and use are a bit thin. The totality of the Complainant’s arguments are: “No website opens when browsing for the domain ’book-of-ra.club’. ‘Book of Ra’ is a very particular sign, with not [sic] descriptive aspects at all. It is evident that the Respondent registered and holds the domain for the only scope of selling it. “The Respondent is preventing the Complainant from reflecting its trademark in a corresponding domain name. “It therefore becomes very clear that the domain name was registered and is used in bad faith.” The fact that the Domain Name does not resolve to a website does not necessarily prove that the Complainant must have registered the Domain Name for the purpose of selling it. The Respondent might, for example, be using the website for email (though phishing emails would in any event not be legitimate), or the Respondent might be planning to use the website for a fan or criticism site related to Complainant’s services (though no demonstrable preparations in that regard have been shown by the Respondent, and in any event it would be impermissible impersonation to use this Domain Name for such a fan or criticism site, See WIPO Overview 3.0, Section 2.5.1; Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC,WIPO Case No. D2019-0633). The Complainant’s argument that the Respondent is preventing the Complainant from reflecting its trademark in a corresponding generic Top-Level Domain (“gTLD”) “.club” website may be correct, but under the Policy, that is not sufficient to establish bad faith in the absence of a showing that the “Respondent has engaged in a pattern of such conduct.” Policy, Paragraph 4(b)(ii). Nevertheless, the Panel has no hesitation in finding bad faith registration and use under the passive holding doctrine. As section 3.3 of the WIPO Overview 3.0 explains, “factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put” (emphasis added). Here, all four of the factors strongly support a finding that the Respondent’s passive holding of the Domain Name establishes that the Respondent registered and used the Domain Name in bad faith. First, the Complainant has properly pled that its BOOK OF RA trademark has acquired a reputation in the field of gaming and online gaming. Second, the Respondent has not submitted a Response, and there is no evidence in the record from which the Panel could conclude that the Respondent has any actual or contemplated good faith use. Third, the Respondent’s use of an undeliverable physical address suggests the possibility the Respondent is concealing his identity or using false contact details. Fourth, the BOOK OF RA trademark does not have any common meaning in any language that could suggest any good faith reason the Respondent might have selected that phrase for a Domain Name. Given these facts, it is more likely than not that the Respondent had Complainant’s mark in mind when he registered this Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Panel also finds bad faith based on the likelihood that the Respondent registered the Domain Name with the intention of causing a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of any website that the Respondent may have planned, or any emails that the Respondent may have sent or plans to send. The Domain Name incorporates in whole the Complainant’s mark and uses no other terms, which makes it likely that consumers seeing the Domain Name will confusedly associate it with that the Complainant or its mark. Because the Complainant uses the BOOK OF RA trademark in connection with its social casino game offerings, which can be accessed online via a web browser, the likelihood of confusion is exacerbated as consumers would expect to find Complainant’s services at a domain name similar or identical to the one chosen by the Respondent. Two panels considering similar facts and circumstances to those presented in this case reached the conclusion that domain names identical or confusingly similar to the Complainant’s BOOK OF RA trademark were registered in bad faith. Novomatic AG v. E-CloudSolutions,WIPO Case No. D2019-2627; Novomatic AG v. whuttaphop pimphachai,WIPO Case No. D2019-2302. The Panel reaches the same conclusion in this case. The presented evidence demonstrates that it is more likely than not that the Respondent registered and used the Domain Name in bad faith. 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 Domain Name, David H. Bernstein 1 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligations to give the Respondent fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415. In an attempt to provide notice to the Respondent, the Center sent notification of the Complaint to the Respondent via email and (DHL) courier (the Center did not attempt to send notice by fax because the Respondent did not provide any fax number in its WhoIs entry). The Center’s email appears to have been delivered but the Center did not receive any acknowledgment; the courier package could not be delivered because the address that the Respondent provided in the WhoIs entry was not a valid address. Although it is not clear whether the Respondent received actual notice, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent under paragraph 2(a) of the Rules. Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
Sole Panelist
Date: August 10, 2020
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