The Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.
The Respondent is Peter Stark, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 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 October 13, 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 October 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2020. The Center appointed Flip Petillion as the sole panelist in this matter on December 21, 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, Novomatic AG, is an international gaming and gambling company founded in 1990 with headquarters in Austria. In 2018, the Complainant’s group generated a total revenue of around EUR 5 billion, had more than 30,000 employees worldwide, operated over 250,000 gaming terminals, had locations in more than 50 countries and exported high-tech electronic gaming equipment and solutions to more than 70 countries. The Complainant holds numerous trademarks with the prefix NOVO, including the following: - NOVO LINE, European Union word mark registered under No. 005839915 on March 26, 2008 in classes 9, 28, and 41; - NOVOLINE, European Union word mark registered under No. 011184272 on January 23, 2013 in classes 9, 28, and 41. The Complainant also holds trademarks for the sign BOOK OF RA, including the following: - BOOK OF RA, European Union word mark registered under No. 004451431 on May 24, 2006 in classes 9, 28, and 41. The Disputed Domain Name was registered on May 9, 2017. The Complainant provides screen prints of the website linked to the Disputed Domain Name. This website appeared to include forums and software modifications (”cheats”) for videogames. One of the software modifications offered on the website is named “HOOK OF RA CS:GO”’. 5. Parties’ Contentions A. Complainant The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant claims that the Respondent has registered the Disputed Domain Name to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out his case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that: (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 Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s NOVOLINE and NOVO LINE trademarks have been registered and used in various countries in connection to the Complainant’s gaming business. The Disputed Domain Name incorporates the Complainant’s NOVOLINE and NOVO LINE trademarks in their entirety, simply adding the term “hook”. Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Additionally, it is well established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s NOVOLINE and NOVO LINE trademarks. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “Peter Stark”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed. Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s NOVOLINE and NOVO LINE trademarks in their entirety and adds the term “hook”. Although this term does not seem to refer to the Complainant or its business, the Panel finds that the full incorporation of the Complainant’s trademarks in the Disputed Domain Name carries a risk of implied affiliation with the Complainant. Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0). The Complainant provides screen prints of the website linked to the Disputed Domain Name. This website appeared to include forums and software modifications (“cheats”) for videogames. The term “NOVOLINE HOOK” is mentioned multiple times on the website. One of the software modifications offered under “Products” on the website is named “HOOK OF RA CS:GO”. Although the term “CS:GO” refers to a videogame called “Counter-Strike: Global Offensive” which is not related to the Complainant, the term “HOOK OF RA” is almost identical to the Complainant’s BOOK OF RA trademark. As evidenced by the Complainant, BOOK OF RA appears to be a successful online slot game released by the Complainant in 2004. In the Panel’s view, the Respondent’s use of terms which are identical or similar to several different trademarks of the Complainant in the context of (online) gaming, which corresponds or is at least close to the Complainant’s business, does not constitute fair use of the Disputed Domain Name. The Respondent had the opportunity to demonstrate any rights or legitimate interests in the Disputed Domain Name but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted. Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location. In the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name: - the Disputed Domain Name includes the Complainant’s NOVOLINE and NOVO LINE trademarks in their entirety; - the website linked to the Disputed Domain Name mentioned the Complainant’s NOVOLINE trademark multiple times, as well as the term “HOOK OF RA” which is similar to the Complainant’s BOOK OF RA trademark; - the website linked to the Disputed Domain Name appeared to offer software modifications for videogames, which corresponds or is at least close to the Complainant’s gaming business. The Panel finds that these elements suggest that the Respondent knew of the Complainant and its trademarks when registering the Disputed Domain Name. In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks). Even though it is unclear whether the Respondent uses the Disputed Domain Name for direct commercial gain, the Panel finds that the Respondent’s use of terms which are either identical or similar to different trademarks of the Complainant suggests that the Respondent intends to profit from the reputation of the Complainant’s trademarks in some way. In any event, by using terms identical or similar to several trademarks of the Complainant in a context which is at least close to the Complainant’s gaming business, the Panel finds that the Respondent creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the website linked to the Disputed Domain Name or of a product or service on this website. By hiding behind a privacy/proxy service, the Respondent also took active steps to conceal his identity. In combination with the above, this supports even more the proof of bad faith registration and use of the Disputed Domain Name (see section 3.6 of the WIPO Overview 3.0). Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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 Flip Petillion
Sole Panelist
Date: January 4, 2021
Full & Egal Universal Law Academy