The Complainant is Novomatic AG, Austria, represented by Geistwert Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Henry Tapia, 20602890474, Peru. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 December 14, 2021, informing the Complainant that the Complaint was administratively deficient and providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amended Complaint on December 14, 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 December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. On January 4, 2021, the Respondent requested an extension to the Response due date. Pursuant to paragraph 5(b) of the Rules, on January 5, 2021, the Center informed the Parties that the due date for the Response was extended until January 8, 2021. On January 9, 2021, the Respondent submitted a document entitled “Response”, which effectively constituted an offer to settle the case. On January 12, 2021, the Complainant requested the suspension of the proceeding to pursue settlement negotiations with the Respondent. On the same day, the Center informed the Parties that the proceeding would be suspended until February 15, 2021, for the purposes of settlement negotiations. On February 16, 2021, as the Parties did not agree on a settlement, the Center informed the Parties that the proceeding had been re-instituted and that, since the Response due date had passed, the Center would proceed with the panel appointment process. The Center appointed Adam Taylor as the sole panelist in this matter on February 23, 2021. 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 was founded in 1990. With a turnover of some EUR 5 billion, the Complainant’s group is one of the largest gaming technology businesses in the world, employing some 30,000 staff worldwide and operating around 255,000 gambling-related terminals in 2,100 locations. The Complainant also operates online gaming platforms. The Complainant trades under the name “Novomatic”. It owns numerous registered trade marks for that term, including European Union trade mark no. 004135273 for NOVOMATIC, filed on November 22, 2004, registered on March 2, 2006, in classes 9, 16, 28, 36, 37, 41, 42, and 43. The Complainant also uses a range of brand names prefaced by the word “Novo”, such as “Novo Multigamer” and “Novo Optimus”. The Complainant owns some 39 registered trade marks beginning with the word “Novo”, including European Union trade mark no. 006174577 for NOVOGAMING, filed on August 7, 2007, registered on July 17, 2008, in classes 9, 28, and 41. The Complainant owns international trade mark no. 1181984 for the figurative letter “N”, registered on July 4, 2013, in classes 9, 28, and 41. The disputed domain name was registered on January 2, 2020. The Respondent has used the disputed domain name for a website branded “Novobets”, including a stylised letter “N”, similar to the Complainant’s own “N” logo. The website displays links to games of various online gaming providers, including those of the Complainant. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions. The Complainant has acquired a substantial reputation in the term “Novomatic” in connection with casinos and related services, as well as in the distinctive term “Novo”, which has become synonymous with the Complainant both as a long-standing abbreviation of its name and in connection with its series of “Novo…” trade marks. The use of the term “bets” within the disputed domain name underlines its similarity with the Complainant’s trade marks. The Complainant has acquired unregistered rights in the term “Novo” under Austrian law and for the purposes of the UDRP. In any case the disputed domain name is confusingly similar to the Complainant’s registered trade marks for NOVAMATIC and NOVO-formative marks, including for NOVOGAMING. The Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has not granted the Respondent permission to use its trade marks. The Respondent has not been commonly known by the disputed domain name. Nor has it acquired any relevant trade mark rights. The disputed domain name has been registered and used in bad faith. The Respondent has used the Complainant’s trade marks for the purpose of attracting and misleading consumers. The Respondent has also prevented the Complainant from reflecting its trade marks and name in a corresponding domain name. B. Respondent The following is a summary of the Respondent’s contentions. In order to avoid the need for an “extensive administrative procedure“, the Respondent wishes to seek an agreement with the Complainant to cancel the disputed domain name. The Respondent requests at least three months to implement such a settlement. The Respondent confirms that it wishes to comply with the Complainant’s claim. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing. Furthermore, as explained, in section 1.8 of WIPO Overview 3.0 , the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element. In this case, the term “Novo” is the dominant feature of the Complainant’s many registered trade marks that begin with that term, e.g., NOVOGAMING as well as of the Complainant’s series of Novo-formative trading names such as “Novo Multigamer”. The term “Novo” is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive word “bets” does not avert a finding of confusing similarity. The Panel would add that, in accordance with section 1.7 and 1.15 of WIPO Overview 3.0, the overall facts and circumstances of a case, including relevant website content, may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant. The Panel considers that that applies here given that, as explained in section 6.C. below, the Respondent has used the disputed domain name for a website that sets out to impersonate, or at least imply a close relationship with, the Complainant. For the above reasons, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests As explained in section 2.1 of WIPO Overview 3.0, the consensus view of panels is that, 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 to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests. As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse, and profit from Internet users seeking the Complainant’s products and services. See in particular as regards the use of the “N” logo. Such use of the disputed domain name could not be said to be bona fide. In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, the panel stated that: “… use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case. The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith It is obvious that the Respondent registered the disputed domain name with the Complainant’s trade marks in mind, not only because the disputed domain name and website branding combine the Complainant’s distinctive “Novo” mark with “bets” a descriptive gambling term, but also the Respondent has incorporated into its logo a stylised letter “N” similar to the Complainant’s own “N” logo trade mark. Also, the Respondent’s website includes links to the Complainant and its games. The Panel notes that, in its Response, the Respondent does not dispute the Complainant’s assertions regarding bad faith. The Respondent simply offers to cancel the disputed domain name and to “comply with the Complainant’s claim”. The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark. The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 Adam Taylor
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: March 9, 2021
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