The Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.
The Respondent is Jack Martin, NA. 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 29, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 2, 2020. 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2020. The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 4, 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 following facts are undisputed. The Complainant is part of the NOVOMATIC Group, a high-tech gaming technology company, operating worldwide, with a turnover of EUR 2.6 billion. The Complainant is active as a producer and operator in all segments of the gaming industry. The Complainant owns a large portfolio several trademarks containing NOVOMATIC and a series of trademarks that include the word element NOVO. The trademark registrations will hereinafter be referred to as the “Trademarks”. The Domain Name was registered on March 24, 2020. At the time of filing the Complaint, the Domain Name resolved to a Website that contains allegations concerning the Complainant (the “Website”). 5. Parties’ Contentions A. Complainant Insofar as relevant, the Complainant contends the following. The Domain Name is confusingly similar to the Trademarks. The Domain Name incorporates the main element of the Trademarks, “NOVO” together with the descriptive element “PATE” (German for godfather). The Complainant is under the Austrian Trademarks Act also entitled to protection for NOVO as the abbreviation of its name. The Domain Name is in particular confusing similar to certain specific European Union trademark registrations that were submitted as annexes, including NOVOPOT No. 006267926 and NOVO BAR No. 006650899. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. Furthermore, the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. By using the Domain Name, the Respondent primarily aims to weaken the social and economic standing of the Complainant, by accusing the Complainant of criminal conduct and/or participation therein. According to the Complainant, the Website contains defamatory and discrediting allegations concerning the Complainant. The Domain Name was registered and is being used in bad faith. The Domain Name was registered to attract users to the website by misleading consumers regarding the ownership of the Domain Name. Therefore, the Domain Name was registered in bad faith. By anonymously incriminating the Complainant, it is clear that the Domain Name is also used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (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 must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the trademark. The Complainant has shown that it has rights in its novo-formative family of trademarks such as NOVOMATIC containing the leading element “novo”, which is the key relevant element of the Trademarks. See Andreas Stihl AG & Co KG v. Rodrique Calasbo,WIPO Case No. D2010-005. In that sense the Complainant has proven that it has rights to the Trademarks. On the side, the Panel notes that the two specific European Union trademark registrations the Complainant referred to, being NOVOPOT and NOVO BAR, are no longer valid registrations. As the certificates in the annexes submitted show, the first was surrendered and the second was expired. It is to be expected from professional counsel, that a Complainant only bases it Complaint on valid registrations. In accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison. In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademarks. The Domain Name consists of the elements “novo” and “pate”. The element “novo” is recognizable and confusingly similar to the Trademarks, also in light of the fact that “novo” is the common leading element to all these Trademarks. “Pate” is either meaningless or could be the German word for godfather and in any event does not prevent a finding of confusing similarity under the first element . Normally the content of a website associated with a domain name is disregarded by panels when assessing confusing similarity under the first element, but here the content of the website confirms the confusing similarity as the Respondent clearly seeks to target the Complainant and its family of trademarks. See WIPO Overview 3.0, section 1.15. In addition, with regard to the suffix “.com” it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar. The suffix “.com” is a necessary component of a domain name and does not provide any distinctiveness. Thus, the Panel finds that the Domain Name is confusingly similar to the Trademarks. For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence. In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as: (i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or (ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or (iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “novopate” is the Respondent’s name or that the Respondent is commonly known as “novopate”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant’s Trademarks, or to apply for or use any domain name incorporating the Trademarks. The Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. Based on the evidence provided by the Complainant, the Panel understands that the Domain Name is used as a criticism site. As noted in WIPO Overview 3.0, section 2.6, UDRP decisions recognize that the use of a domain name for fair use such as noncommercial free speech, could in principle support a respondent’s claim to a legitimate interest under the Policy. However, in this case it is not clear whether the Respondent’s criticism are genuine and noncommercial and since the Respondent did not file a response, it is for this Panel impossible to make any assessments in this regard based on the evidence submitted in the case file. Furthermore, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name is inferred by the fact that no response was filed by the Respondent. According to previous UDRP decisions, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493). Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith The Panel refer to its consideration under section 6.B above. In light of the evidence filed by the Complainant, the Panel finds that the Respondent, also given the nature of the Website, clearly had the Complainant and its ultimate owner in mind when registering the Domain Name. The Complainant has submitted evidence making a substantiated allegation that the registration and use of the Domain Name is in bad faith. Although the lack of a formal response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith. In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used 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 Willem J. H. Leppink
Sole Panelist
Date: August 19, 2020
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