The Complainant is Microgaming Software Systems Limited of Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Dave Green of Nicosia, Cyprus.
The disputed domain names <microgamingcasinossite.com> and <microgamingcasinossites.com> are registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2009 by hardcopy and on July 6, 2009 by email. On June 29, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On that same day, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 5, 2009.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on August 18, 2009. 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.
The Complainant is the exclusive licensee of a number of pending and registered trademarks consisting of or incorporating the word MICROGAMING, the proprietor of which is Microgaming Systems Anstalt. The trademarks cover generally computer software for games of chance, gaming or casino style gaming, entertainment, gaming and online casino management services in classes 9, 35 and 41. The license agreement covers, in particular, the following registrations of the word mark MICROGAMING:
Australia: Registration no. 920607 of July 22, 2002
Canada: Registration no. 624367 of November 2, 2004
EU: CTM registration no. 002789063 of January 8, 2004 (filing date: July 25, 2002)
United States: registration no. 3077292 of April 4, 2006 (filing date: July 19, 2002).
The Complainant operates the online gaming site “www.microgaming.com”. It also provides, amongst others, online casino software and management systems under the MICROGAMING trademark.
The Respondent registered on October 31, 2008 the domain names <microgamingcasinossite.com> and <microgamingcasinossites.com>.
On March 5, 2009, the legal representatives of the Complainant sent by email “cease and desist” letters to the Respondent, and on March 17, 2009 a reminder was sent. The Respondent did not react to these letters.
The Complainant submits that it was founded in 1994 and developed and released the world's first online casino software, which is currently utilised by more than 100 online casinos, and that the respective websites receive in excess of 3 million visitors each month. The Complainant furthermore submits that on the respective online casino websites and gaming sites the MICROGAMING trademark is prominently displayed as a service endorsement. The Complainant also submits evidence of advertising and promoting its online casino and gaming software by means of brochures, search engines, online casino and gaming sites, print ads, trade magazines, and industry expos.
In conclusion, the Complainant submits that, as a result of the extensive use of the trademark MICROGAMING, it is well-known in relation to online casino and gaming related software. It considers that the word MICROGAMING serves as a unique and distinctive element, which is a determinative and well-known designation of source for the Complainant's online casino and gaming related services.
The Respondent did not reply to the Complainant's contentions. He has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of the Complaint's submissions, and all the inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).
The domain names in dispute consist of the three words “microgaming”, “casinos” and “site” respectively “sites”. Whilst the word “casinos” is purely descriptive for gambling services, and “site/sites” are generic terms, the word “microgaming” is clearly distinctive for such services. This view is confirmed by the above 4 listed trademark registrations for the word mark MICROGAMING, of which the Complainant is an exclusive licensee.
Consequently, the Respondent has chosen to register domain names, of which the only distinctive element is identical to the Complainant's trademark MICROGAMING. The addition of the terms “casinos” and “site” respectively “sites” cannot distinguish the domain names from the Complainant's trademark (the gtld “.com” cannot be taken into consideration, when judging confusing similarity).
In conclusion, the disputed domain names are, if not identical, at least confusingly similar to the trademark MICROGAMING, of which the Complainant is an exclusive licensee.
“Microgaming” is not a descriptive term, in which the Respondent might have a legitimate interest. It is identical to several prior trademark registrations in which the Complainant has exclusive rights, and also identical to the Complainant's website “www.microgaming.com”. The Respondent has no connection or affiliation with the Complainant or its Licensor, who have not consented to the Respondent's use of the domain names, which combine the term “microgaming” with the non-distinctive terms “casinos” and “site” respectively “sites”.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain names <microgamingcasinossite.com> and <microgamingcasinossites.com> for his own legitimate commercial or noncommercial business, if any, and he has not demonstrated any preparations for such use. Finally, for the same reason that the Respondent does not promote his own commercial activities with the help of these domain names, the Respondent has not been able to become commonly known under them.
In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain names <microgamingcasinossite.com> and <microgamingcasinossites.com>.
The Respondent has not offered the domain names to the Complainant for sale and he does not use them for his own noncommercial activity. It has therefore to be considered whether the simple registration and stockpiling of the domain names may, taking into account all circumstances of the case, be considered to be registration and use in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
In that context, it has been convincingly argued in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that inaction of the Respondent is within the concept of 4(a)(iii) of the Policy.
In view of the considerable use for a long period of time of the trademark MICROGAMING in relation to online gaming and casino services, it is highly unlikely that the Respondent happened to inadvertently select the identical term microgaming and to incorporate it into the selected domain names. This is the more unlikely as the Respondent combined this term with the descriptive term “casinos” which is typical for the Complainant's business. Absent any submission of the Respondent, the Panel therefore assumes that the Respondent was aware of the trademark MICROGAMING when he registered his domain names. Absent any submission of the Respondent it is also inconceivable that the Respondent could make any use of his domain names which would not infringe rights in the trademark MICROGAMING. It is therefore difficult to imagine that the Respondent had any good faith intention to use the domain names <microgamingcasinossite.com> and <microgamingcasionossites.com> when registering them.
These findings, together with the findings under section 6(B) that the Respondent has no rights or interests in the domain name, leads the Panelist to the conclusion that the domain names <microgamingcasionossite.com> and <microgamingcasinossites.com> have been registered in bad faith.
For the Complainant to succeed, he has to prove that the Respondent is using the domain name in bad faith.
The Administrative Panel in the Telstra case (paragraphs 7.8 to 7.10) has convincingly argued that the provisions of the Policy in paragraph 4(b) support the assumption that inaction is within the concept of a domain name being used in bad faith. It depends therefore on all circumstances of the case whether it can be said that the Respondent is acting in bad faith.
The question therefore arises in the present case, what circumstances of passive holding other than those identified in paragraphs 4(b)(i) – (iii) of the Policy can constitute that the domain names are being used by the Respondent in bad faith.
The Panel considers that the sum of the following circumstances justifies such conclusion:
- The trademark MICROGAMING is intensively used in the online gaming and casino business and enjoys at least a reputation, if it is not even to be considered well-known as submitted by the Complainant with considerable evidence.
- The Respondent has made no use what so ever of his domain names and has submitted no evidence of any good faith use of the domain names.
- Neither has the Respondent communicated to the Complainant any plan for a bona fide use of his domain names.
- By registering <microgamingcasinossite.com> and microgamingcasinossites.com> the Respondent has precluded the Complainant from using its mark in a corresponding domain name.
- At the same time, the existence of the domain names furnishes the Respondent with an instrument that allows him to activate a website in such a manner as to divert the Complainant's customers to his website.
- Absent any submission of the Respondent, it is difficult to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being trademark infringement or an infringement of consumer protection legislation.
- Respondent has chosen not to respond to the letters of the Complainant's representative, in which he requested to cease using the domain names and to transfer them to the Complainant, nor he responded to a reminder sent by the representative.
- Respondent has chosen not to respond to the Complaint and not to cooperate with the Complainant to resolve the dispute.
Taking into account these particular circumstances, the Panel concludes that the Respondent's passive holding of the domain names satisfies the requirements of paragraph 4(a)(iii) of the Policy that the domain name has been registered and is being used in bad faith.
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 names <microgamingcasinossite.com> and <microgamingcasinossites.com> be transferred to the Complainant.
Gerd F. Kunze
Dated: August 26, 2009