The Complainant is Novomatic AG, Austria, represented by Sayenko Kharenko Attorney Office, Ukraine.
The Respondent is Internet Invest Ltd, Ukraine / Alexander Vadimovich Tunic, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2021, 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. On May 27, 2021, the Center transmitted another email communication to the Parties in English and Russian regarding the language of the proceeding. On May 31, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center sent an email communication in English and Russian to the Complainant on June 2, 2021, 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 in English on June 7, 2021. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”). In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent in English and Russian of the Complaint, and the proceedings commenced on June 7, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was June 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2021. The Center appointed Ganna Prokhorova as the sole panelist in this matter on June 14, 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 .UA Rules, paragraph 7. The Center received two email communications from the Respondent on July 16, 2021. 4. Factual Background The Complainant is an Austrian company, one of the largest high-tech gaming technology companies worldwide. 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 152,000 gaming terminals and video lottery terminals (VLTs) in more than 2,100 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 trademark BOOK OF RA to denote its products and the brand has acquired reputation among relevant consumers. The Complainant owns numerous trademark registrations for BOOK OF RA, including: - European Union trademark registration No. 4451431 for BOOK OF RA, filed on May 23, 2005, and registered on May 24, 2006, for goods and services in International classes 9, 28, and 41; and - Ukrainian trademark registration No. 165474 for BOOK OF RA, filed on November 14, 2011, and registered on January 10, 2013, for goods and services in International classes 9, 28, and 41, to name a few. The disputed domain name was registered on July 19, 2020, and for the moment of issuance of this decision does not resolve to an active web page. However, the Panel notes that the Complainant added evidence to the Complaint reflecting that earlier the website under the disputed domain name provided access to allegedly counterfeited versions of the complainant’s online game “Book of Ra” (that appears to be the content of the website). 5. Parties’ Contentions A. Complainant The Complainant asserts that its BOOK OF RA trademark has obtained a reputation and has been exclusively used by the Complainant in such a way that users of the Complainant’s products associate it exclusively with the Complainant, having acquired a secondary meaning and become a unique identifier of the Complainant’s products and services. According to the Complainant, the disputed domain name reproduces its registered trademark and is therefore confusingly similar therewith. As to the absence of rights or legitimate interests, the Complainant argues that: (i) the Respondent has no relationship with or permission from the Complainant to use the BOOK OF RA trademark; and (ii) there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; and (iii) the Respondent is using the disputed domain name in connection with the website which appears to be providing links to the affiliated website “www.elslotswin.com”, where counterfeits of the Complainant’s online game “Book of Ra” are offered; and (iv) the Respondent has not been commonly known by the disputed domain name, nor has it acquired any trademark or service mark rights. In relation to bad faith registration and/or use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark and offering counterfeit versions of the Complainant’s goods is evident given the reproduction of its trademark on the website and clear intention to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement with the disputed domain name, in addition to also infringing the Complainant’s copyright. The Complainant seeks a decision that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, on July 16, 2021 the Respondent sent two email communications to the Center stating that the Respondent would not renew the disputed domain name and that the disputed domain name would then become available for registration. 6. Discussion and Findings 6.1. Preliminary Issue: Language of Proceedings Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement for the disputed domain name is Russian. The Panel is proficient in both Russian and English. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. The Complainant has filed the Complaint in English and requested English to be the language of this proceeding. The Complainant believes that the Respondent has sufficient command of English to participate in the proceedings, understands relevant documentation and communication, which is supported by the following: - the website linked to the disputed domain name provides access to the allegedly counterfeited versions of the Complainant’s online game “Book of Ra” (that appears to be the content of the website). Access is provided to the games with English gameplay as described in the Complaint. Given that the games being content of the website are in English, the Respondent likely has sufficient command of English; - the website linked to the disputed domain name has “ИГРАТЬ НА РЕАЛЬНЫЕ ДЕНЬГИ” [in English “PLAY FOR REAL MONEY”] button as one of the central elements of its user interface. The respective button embeds redirect functionality resolving to the website “www.elslotswin.com” allegedly related to the Respondent. The legal documentation on “www.elslotswin.com” is posted in English as evidenced by the materials of the Complaint; - the legal documentation of the allegedly affiliated “www.elslotswin.com” (where the website linked to the disputed domain name redirects to) refers to the Curacao license they operate under. Therefore, the Respondent was able to apply for the gaming license with English as the language of the application, which evidences the Respondent’s knowledge of English; - the disputed domain name is in Latin script which presumes that the Respondent has an understanding of the English language; - “bookofra” words combination, which is the only composition of the disputed domain name, does not carry any specific meaning in the Russian language while the respective is available in English. Given this, the Respondent likely has the understanding of the meaning of the disputed domain name. The Panel also notes that two informal emails received from the Respondent were in English. As it was earlier found by other panels, while applying the provision on the language of the proceeding the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (See Facebook Inc. v. Private Registration / Denis Khakimov,WIPO Case No. DUA2019-0002). The Respondent has not provided any arguments or supporting materials as to why the proceedings should not be conducted in English. This was despite the Center notifying the Respondent in Russian and English that the Respondent was invited to present his objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known his preference but did not do so. While there is a language requirement in paragraph 11(a) of the .UA Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see Michael Kors (Switzerland) International GmbH. v. Minakova Maria,WIPO Case No. DUA2020-0002 ; Chewy Inc. v. Rostislav Karyi/Ростислав Карый,WIPO Case No. DUA2020-0007). Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. 6.2. Substantive Issues In accordance with paragraph 4(a) of the .UA Policy, the Complainant must prove: (i) that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered or is being used in bad faith. The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint. However, even if the Respondent has not replied to the Complainant’s contentions, the Complainant still bears the burden of proving that all these requirements are fulfilled. Concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that due to the similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. A. Identical or Confusingly Similar According to paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. The Complainant has proved that it has established rights in the BOOK OF RA trademark well before the disputed domain name was registered. The Panel finds that the disputed domain name Therefore, the disputed domain name is identical to the registered trademark BOOK OF RA in which the Complainant has rights. Therefore, the Panel finds that the Complainant has satisfied the first element of the .UA Policy. B. Rights or Legitimate Interests In accordance with the paragraph 4(a)(ii) of the .UA Policy the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. 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.” See WIPO Overview 3.0, section 2.1. The burden of proof, however, always remains on the Complainant. The Complainant has asserted sufficient allegations to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has made clear that it has not given the Respondent any permission to use its trademark in the disputed 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 disputed domain name, has been commonly known by the disputed domain name, or is making a legitimate noncommercial or fair use of the disputed domain name. In fact, on the website under the disputed domain name, counterfeits of the Complainant’s online game “Book of Ra” are offered. The Respondent has not submitted any formal response. The disputed domain name is identical to the Complainant’s trademark and as such carries a high risk of implied affiliation. As such, the Panel also finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the element under paragraph 4(a)(ii) of the Policy has been established. C. Registered or Used in Bad Faith The third element of paragraph 4(a) refers to the question of whether the disputed domain name has been registered or is being used in bad faith by the Respondent. Given the nature of the disputed domain name being identical to the Complainant’s trademark, and distinctiveness of the Complainant’s trademark, the Panel finds that the Respondent should have known the Complainant’s trademark at the time of registering the disputed domain name. This conclusion is also confirmed by the fact that on the website which opens under the disputed domain name, counterfeits of the Complainant’s online game “Book of Ra” are offered. The Panel also agrees with the Complainant that the disputed domain name is used in bad faith. The evidence shows that the website at the disputed domain name explicitly refers to the Complainant’s BOOK OF RA trademarks. By using the disputed domain name, the Respondent intentionally attracted, for commercial gain, Internet users to the Respondent’s website or other on-line location (e.g. elslotswin.com), by creating a likelihood of confusion with the Complainant’s trademarks 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. Using the disputed domain name for such purposes shows the Respondent’s bad faith under paragraph 4(b)(iv) of the .UA Policy. The Panel finds that the Complainant’s first registration for the BOOK OF RA trademark predates the registration of the disputed domain name by almost 15 years. The BOOK OF RA trademark has been in commercial use from its first registration until now. Past .UA panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see Google LLC v. Aлександр Дмитрович Бутенко,WIPO Case No. DUA2020-0009). In this case, the disputed domain name is identical to the Complainant’s well-known BOOK OF RA trademark and was likely registered with the primary intention to disrupt the Complainant’s business or confuse consumers. The disputed domain name, identically reproducing the Complainant’s trademark, is obviously deceptive for the consumers: entering the website under the disputed domain name the Internet users will most likely believe that they are entering a website related to the Complaint’s business in Ukraine. Accordingly, the disputed domain name has been used to mislead and poach the Complainant’s clients. It therefore becomes very clear that the disputed domain name was registered and is used in bad faith. The Respondent should have known about the Complainant’s rights, due to the fact that the Complainant’s mark had reputation when the disputed domain name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to the Complainant’s wide use of BOOK OF RA trademark on the Internet. This also in view of the nature of the Complainant’s services under BOOK OF RA, namely, inter alia, online gaming. Under these circumstances and on this record, the Panel finds no good-faith basis for the Respondent’s conduct vis-à-vis the disputed domain name. The Respondent ignored its possibility to comment to the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name. Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the .UA Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name Ganna Prokhorova
Sole Panelist
Date: July 27, 2021
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