The Complainant is Microgaming Software Systems Limited of Douglas, Isle of Man, Crown Dependency of the United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Louis Fabiano of Orlando, Florida, United States of America.
The disputed domain name <microgamingblackjack.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2009. On October 21, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 21, 2009, GoDaddy.com, Inc. 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 October 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 16, 2009.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on November 24, 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 was founded in 1994 and has developed and has released online casino software.
The mark MICROGAMING has been used by the Complainant for online gaming systems and software since December 21, 1996, for example on its website at “www.microgaming.com”.
The Complainant is the exclusive licensee of a number of registered trademarks consisting of or incorporating the word MICROGAMING in various jurisdictions (the “Trademarks”). The priority of some of the Trademarks dates back to the year 1999. The proprietor of the Trademarks is Microgaming Systems Anstalt (the “Trademark Holder”). The Trademarks cover, inter alia, computer software for games of chance, gaming or casino style gaming, entertainment, gaming and online casino management services.
The Complainant has been active in advertising and promoting its online casino and gaming software including MICROGAMING and its Trademarks by means of brochures, search engines, online casino and gaming sites, print ads, trade magazines, and industry expos.
The disputed domain name was registered on March 16, 2004.
The website under <microgamingblackjack.com> provides information about casinos and gaming services.
On July 27, 2009, and on August 20, 2009, the Complainant, through its legal counsel, dispatched letters of demand regarding <microgamingblackjack.com> to the Respondent by email, fax and registered post. The Respondent did not reply.
The Complainant contends that:
- the Trademarks are very well-known in relation to online casino and gaming related software. The word “MICROGAMING” serves as a unique and distinctive element, which element is a determinative and well-known designation of source for the Complainant's online casino and gaming related software.
- The disputed domain name wholly incorporates the Complainant's Trademarks.
- The Respondent has no rights or legitimate interests in respect of <microgamingblackjack.com>.
- The Respondent has not been commonly known by <microgamingblackjack.com> and the Respondent has not acquired any rights in and to <microgamingblackjack.com>. The Respondent is neither an agent nor a licensee of the Complainant or of the Trademark Holder and has no connection or affiliation with the Complainant or the Trademark Holder.
- The Respondent knew, or at least should have reasonably known, of the Complainant's prior rights before registering the disputed domain name.
- The Respondent had registered multiple domain names incorporating the Complainant's Trademarks.
- The domain name was registered and is being used in bad faith. It is most likely that the Respondent was fully aware of the Complainant's MICROGAMING trademark rights and its reputation in the gaming and casino industry when registering the disputed domain name.
- The Respondent's website includes a link to websites that compete and/or relate, whether directly or indirectly, with the Complainant.
- Internet users are likely to employ the disputed domain name when attempting to locate the Complainant's website, or websites sponsored or endorsed by, or affiliated with the Complainant.
The Respondent did not reply to the Complainant's contentions.
In view of the lack of a Response filed by the Respondent as permitted under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel may in its discretion decide this administrative proceeding on the basis of the Complainant's undisputed factual representations.
The Panel finds that <microgamingblackjack.com> is confusingly similar to the Trademarks.
Regarding the services: the Trademarks cover, inter alia, computer software for games of chance, gaming or casino style gaming, entertainment, gaming and online casino management services. The website under <microgamingblackjack.com> provides information about casinos and gaming services. Consequently, the services for which the signs are used are similar.
Regarding the signs: <microgamingblackjack.com> is incorporating (parts of) the Trademarks, namely MICROGAMING. The primary difference between the disputed domain name and the Trademarks is the appending of “blackjack”, secondarily, appending the gTLD (generic top level domain) “.com”. The last addition is irrelevant in assessing confusing similarity or identity under paragraph 4(a) of the Policy and thus ignored.
There is no doubt that “blackjack” is generic, and respectively a descriptive term regarding a (specific) game of chance. It is now very well-established in UDRP precedent that a minor variation, such as generic or highly descriptive words, is usually insufficient in and of itself, when used in forming a domain name that results from modifying a trademark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion.
Moreover, by including the generic term “blackjack” with the Complainant's trademark MICROGAMING to form the disputed domain name, the potential for user confusion is likely to be exacerbated, not reduced: by appending that term to the Complainant's Trademark, such an Internet user would likely be deceived into thinking that the Respondent's site, which offers (links to) games of chance, is somehow affiliated, related to or sponsored by the Complainant. Consequently, an Internet user may likely be deceived into thinking that the Respondent's site is the Complaint's “special website” regarding the game of chance named “Black Jack”.
Therefore, the Panel finds that <microgamingblackjack.com> is confusingly similar to the Trademarks as to cause confusion; hence, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
Based on the evidence of record, the Panel finds that no basis exists which would legitimise a claim by the Respondent regarding <microgamingblackjack.com> under paragraph 4(c) of the Policy.
The Complainant or the Trademark Holder has never authorised the Respondent to utilise the Trademarks, nor does the Complainant or the Trademark Holder apparently have any relationship or association whatsoever with the Respondent.
Furthermore, the Respondent could not legitimately acquire any public association between himself and the Trademarks respectively through the Complainant or the Trademark Holder.
Hence, based on the evidence before the Panel, the Respondent does not fall within paragraph 4(c)(i) to (iii) of the Policy.
The Panel finds that the Respondent's actions, with respect to <microgamingblackjack.com>, constitute bad faith registration and use.
The Panel finds that based on the evidence, the Respondent was well aware of the Complainant's Trademarks when he registered <microgamingblackjack.com> and used it for services for which the Trademarks were registered. The Respondent knew he was not authorised by the Complainant respectively the Trademark Holder to use the Trademarks for the said services. Yet, in spite of that knowledge, the Respondent intentionally registered the disputed domain name in an effort to opportunistically exploit the Complainant's reputation in the mark MICROGAMING in connection with the named services.
This is rather evident in the Respondent having actually used <microgamingblackjack.com> in conjunction with its website through which he offered services competing with the Complainant's services. Obviously, the Respondent did so to divert revenue from the Complainant and disrupt the Complainant's business and, by so doing, monetarily benefits from that exploitation to the detriment of the Complainant. Upon entering the website under <microgamingblackjack.com>, Internet users have in fact been “mousetrapped” on Respondent's website that advertises services that are not sponsored or endorsed by, or affiliated with the Complainant.
Hence, the Panel concludes that the Respondent has registered and has used the disputed domain name in bad faith. See paragraph 4(a)(iii) of the Policy including specifically paragraphs 4(b)(iii) and 4(b)(iv) thereof.
Therefore, the Panel concludes that the Complainant has provided sufficient proof of its allegations, with respect to <microgamingblackjack.com>, to establish a case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
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 <microgamingblackjack.com> shall be transferred to the Complainant.
Dated: December 14, 2009