Complainant is Novomatic AG, Austria, represented by Simmons & Simmons, Germany.
Respondent is Noel Vandamme, Malta.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2021. On October 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 27, 2021, 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 to Complainant on October 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 29, 2021.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Center received an email from Respondent on November 24, 2021. The Center notified the commencement of Panel appointment process on December 6, 2021.
The Center appointed Robert A. Badgley as sole panelist in this matter on December 8, 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 BackgroundComplainant, founded in 1990 and headquartered in Austria, is an international gaming and gambling company. Complainant has locations in more than 50 countries and generated revenue of EUR 5 billion in 2018. According to Complainant, the Novomatic Group is “one of the largest high-tech gaming technology companies worldwide and Europe’s market leader.”
Complainant holds various trademark registrations for NOVO and NOVO-formative terms, including European Union Reg. No. 005839915 for the word mark NOVO LINE (registered on March 26, 2008), and European Union Reg. No. 011184272 for the word mark NOVOLINE (registered on January 23, 2013), both of which marks are registered in connection with, among other things, hardware and software for gaming machines, slot machines, casinos, and the like, as well as operating physical or online gaming casinos and arcades.
The Domain Name was registered on September 11, 2012. The Domain Name currently does not resolve to a website. Until recently, however, the Domain Name resolved to a website which, according to Complainant, provided hyperlinks to sites offering unlicensed versions of various games developed by Complainant and various games developed by Complainant’s competitors.
Respondent did not file a Response or provide any documentary evidence. Respondent did, however, state as follows in his November 24, 2021 email to the Center:
“Now for the details.
As correctly stated in the document “UDRP Complaint.pdf”, the domain was registered towards the end of 2012, more than nine years ago. This was not done in bad faith. I was contacted by an affiliate manager of StarGames, a Greentube Ltd brand that is a subsidiary of Novomatic, to enter into cooperation. Moreover, the only intention was to work with Novomatic-related subsidiaries. To clarify this further: StarGames was listed as the only product on the domain for at least one and a half years. It was only in the summer of 2015 that another Greentube subsidiary brand was added.
I have always followed the guidelines of the subsidiary brands and was motivated to continue the cooperation.
I should point out that in all these years no one has objected to the domain name. I repeat, the domain has been around for over nine years and Greentube's subsidiaries have long been aware that the domain exists.
As the cooperation progressed, this became the norm and I invested a lot of resources in the project.
At the end of 2017, Novomatic/Greentube abruptly withdrew its services from the online market with little warning. Therefore, I had to realign my strategy to compensate for the losses. Since then, the stats have steadily decreased.
[…]
In summary, as a gesture of good faith and only with good intentions, I have taken down the domain. As a result, it will drop out of the search engine index over time.”
5. Parties’ Contentions A. ComplainantComplainant contends that it has proven all three elements required under the Policy for a transfer of the Domain Name.
B. RespondentRespondent did not formally reply to Complainant’s contentions, but the substantive entirety of his explanation for registering the Domain Name is quoted above in the Factual Background section.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel concludes that Complainant has rights in the trademark NOVOLINE through registration and use demonstrated in the record.
The Panel also concludes that the Domain Name is confusingly similar to the NOVOLINE mark. The Domain Name entirely incorporates the NOVOLINE trademark, and the additional words “online” and “spielthek” do not overcome the fact that NOVOLINE is clearly recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent’s account in his email to the Center indicates that he registered the Domain Name at the behest of one of Complainant’s subsidiaries. No evidence has been provided regarding this “cooperation”, and the Panel considers this communication is tantamount to an admission that Respondent’s ownership of the Domain Name was always as an agent for Complainant and never as a legitimate owner in his own right.
In addition, the Panel notes the composition of the Domain Name (reproducing Complainant’s trademark with the term “online”, and the German term “spielothek” meaning games library), and its use, which cannot give rise to rights or legitimate interests on the part of Respondent in the Domain Name.
The Panel concludes that Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 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 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 Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes, under the Policy and the record presented here, that Respondent has registered and used the Domain Name in bad faith. As noted in previous section, Respondent has essentially conceded that his registration of the Domain Name in 2012 was done at the behest of a subsidiary of Complainant and, as such, Respondent himself never had the right to own this Domain Name in his own right and for his own benefit. In addition, Respondent has not provided any reasonable explanation for the Domain Name being registered in its own name instead of using the name of Complainant’s subsidiary.
It appears that this agency arrangement was copacetic for several years, and in late 2017, Respondent had to “realign [his] strategy to compensate for the losses” he had apparently sustained when Complainant allegedly changed its business model. The Panel infers that Respondent’s “realignment” vis-à-vis the Domain Name was to monetize the website by offering links to sites offering unlicensed versions of Complainant’s products and offering products in competition with Complainant’s. Such conduct, not denied by Respondent and apparently captured by his euphemistic term “realign,” constitutes bad faith use within the meaning of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Robert A. Badgley
Sole Panelist
Date: December 20, 2021