WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microgaming Software Systems Limited v. Stefan Molleman
Case No. D2008-0157
1. The Parties
The Complainant is Microgaming Software Systems Limited, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Stefan Molleman of Zoetermeer, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <mobilemicrogaming.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2008. On February 1, 2008, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On February 1, 2008, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 9, 2008. 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”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 6, 2008. The Response was filed with the Center on March 6, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on March 17, 2008. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant was founded in 1994 and is doing business in the field of developing and releasing online casino software currently used by more than 100 online casinos, including prominent casino groups. The Complainant has been producing such software also for mobile devices since 2004.
The Complainant is the exclusive licensee of a number of pending or registered trademarks (the proprietor of which is Microgaming Systems Anstalt of Vaduz, Liechtenstein) in various jurisdictions worldwide consisting of or including the word MICROGAMING, inter alia, a service mark for MICROGAMING with an additional stylized letter “M” in the United States of America, registration no. 3,006,898, first used in commerce on December 21, 1996, and Community Trademark no. 002789063 MICROGAMING with a priority of July 25, 2002, both in international classes 9, 35 and 41 (the “MICROGAMING Marks”).
Furthermore, the Complainant is the registered owner of the domain name <microgaming.com>, and the website at such domain name receives about 250,000 visitors per annum.
The disputed domain name was first registered on June 15, 2005, and is not actively used. The Complainant sent a cease and desist letter to the Respondent on November 6, 2007. In its response the Respondent’s ISP stated that the Respondent registered the disputed domain name for “the visionary use of mobile devices on which gaming software which we develop can be played”, offering the transfer of the disputed domain name to the Complainant and requesting an offer. Later on, again through his ISP, the Respondent offered to sell the disputed domain name to the Complainant for € 2,500.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the MICROGAMING Marks in which the Complainant has exclusive rights because the additional word “mobile” in the domain name does not prevent users from accidentally mistaking the domain name as being the Complainant’s or from expecting a relationship between the Complainant and the Respondent.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as he has no right granted by the Complainant to use the MICROGAMING Marks in the disputed domain name. Furthermore, the Respondent’s non-use of the domain name does not amount to a bona fide offering of goods and services, the Respondent is not commonly known by the disputed domain name, and the domain name could never have been legitimately used by the Respondent.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith.
With regard to bad faith registration, the Complainant contends that it is inconceivable that the Respondent was unaware of the Complainant and its well known MICROGAMING Marks at the time he registered the domain name.
With regard to bad faith use, the Complainant contends that there is no relationship between the parties, that the Respondent registered the domain name years after the Complainant first used its trademarks in commerce and that Internet users, who are likely to employ the disputed domain name when attempting to locate the Complainant’s website, are mousetrapped to a website unrelated to the Complainant, thereby being exposed to a likelihood of confusion.
The Respondent replied to the statements and allegations in the Complaint. He contends that:
(1) the trademarks on which the Complaint is based do not cover mobile devices and that therefore the Respondent does not infringe the Complainant’s trademarks;
(2) the disputed domain name is merely a combination of the generic words “mobile”, “micro” and “gaming”;
(3) the domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name;
(4) the domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct;
(5) the Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent primarily to disrupt the Complainant’s business;
(6) the domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark 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.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; 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 disputed domain name fully incorporates the Complainant’s MICROGAMING Marks in which the Complainant has rights.
The mere addition of the generic word “mobile” preceding the trademark does not eliminate the similarity between the Complainant’s marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. The fact that the Complainant’s MICROGAMING Marks do not explicitly cover mobile devices is irrelevant in this regard.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that the complainant has to make a prima facie case to fulfill the requirements of paragraph 4(c) of the Policy. The burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then lie with the respondent.
The Complainant has asserted that the Respondent has neither been granted a license nor any other permission to use the MICROGAMING Marks and has therefore fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent has not denied these assertions in its Response in any way but only provided a list with different meanings of the words “mobile”, “micro” and “gaming”.
The Panel thus finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
For many years, the Complainant has been producing online casino software used by more than 100 online casinos. Although the mark MICROGAMING per se consists of the generic terms “MICRO” and “GAMING” which could each be used by third parties descriptively nearly without limitation, the Panel is convinced that the Respondent knew of the MICROGAMING Marks at the time of the registration of the disputed domain name as the combination of the generic words “MICRO” and “GAMING” itself has no generic meaning and therefore enjoys a certain distinctiveness. Furthermore, the Respondent allegedly registered the disputed domain name in connection with the development of gaming software for mobile devices, which is identical to the products and services of the Complainant. It is hardly unlikely that the Respondent did not know the MICROGAMING Marks of a direct competitor whose software is widely used by online casinos.
The Panel is also convinced that the Respondent registered the domain name primarily for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name based on the Respondent’s offer to sell the domain name to the Complainant at a price of € 2,500.
The Panel is therefore satisfied that the Respondent registered and used the disputed domain name with full knowledge of the Complainant’s marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mobilemicrogaming.com> be transferred to the Complainant.
Dated: March 31, 2008