WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microgaming Software Systems Limited v. Navedyne Entertainment Inc.
Case No. D2010-1596
1. The Parties
Complainant is Microgaming Software Systems Limited of Isle of Man, the United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan Inc., South Africa.
Respondent is Navedyne Entertainment Inc. of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <microgaming-casinos.org> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2010. On September 23, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Tucows Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2010.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on October 29, 2010. 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.
On November 18, 2010 the Panel issued Procedural Order No. 1, requiring that within ten (10) days Complainant submit to the Panel a copy of the exclusive license agreement that it had allegedly executed with the company Microgaming Systems Anstalt, from Lichtenstein. Complainant timely submitted such copy, on November 22, 2010.
4. Factual Background
Complainant is a company that provides online casino software and management systems under the MICROGAMING trademark. Complainant was founded in 1994 and developed and released one of the world’s first online casino software which is currently used by more than 100 online casinos.
The trademark MICROGAMING is registered in several jurisdictions, such as the United States of America, the United Kingdom, the European Union, Canada and Australia. The earliest filing date of such registrations is October 6, 1999, for reg. No. TMA555,731, in Canada.
The registered owner of all registrations for the MICROGAMING mark is the company Microgaming Systems Anstalt, from Lichtenstein.
Respondent registered the disputed domain name on March 9, 2005.
5. Parties’ Contentions
Complainant informs that it is the exclusive licensee for the trademark MICROGAMING. According to Complainant, the terms of such exclusive license agreement executed with the trademark owner, the company Microgaming Systems Anstalt, set forth that all benefits arising out of the use of the MICROGAMING mark inure to the benefit of the Licensor. Complainant informed that the license agreement also contains quality control provisions regulating how Complainant may use the mark.
Complainant argues that the online casinos web sites operating Complainant’s software collectively receive over 3 million visitors each month; that in all such web sites the MICROGAMING trademark is prominently displayed, and Complainant indeed submitted samples of screenshots of such websites. Complainant furthermore argues that its own web site hosted at <microgaming.com> receives approximately 250,000 visitors each year.
Complainant alleges that its service called Microgaming Progressive Jackpot Network has since its inception paid out to players USD 168 million, making it the largest online progressive network.
Complainant claims to spend considerable amounts of money every year in 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 expositions. Samples of such advertisements were indeed submitted attached to the Complaint.
As a result of the extensive use of the trademark MICROGAMING, Complainant claims that it is a very well-known trademark in relation to online casino and gaming related software; that it is a unique and distinctive sign, a designation of source for Complainant’s services.
Complainant holds that the disputed domain name is confusingly similar to the trademark MICROGAMING, that Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar to a Mark in Which Complainant has Rights
The Panel is satisfied that Complainant showed that MICROGAMING is a distinctive trademark and that the disputed domain name is confusingly similar to such mark.
It is well-settled that when a respondent merely adds generic or descriptive terms to an otherwise distinctive trademark, the domain name is to be considered confusingly similar to the registered trademark. In this case, Respondent added to the MICROGAMING trademark the generic term “casinos”, which is actually descriptive of Complainant’s activities and, as such, only makes stronger the risk of confusion with the trademark used by Complainant.
There are numerous WIPO decisions where it was found that the addition of generic terms does not serve to distinguish the domain name from the trademark, but rather, would reinforce the association of the MICROGAMING trademark with the domain name (see e.g. Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275).
Another matter that it is up to the Panel to decide is whether Complainant has rights over the trademark MICROGAMING. It has been found in this proceeding that such trademark belongs to a company from Lichtenstein called Microgaming Systems Anstalt and, by complying with a Procedural Order from the Panel, Complainant has submitted a copy of the exclusive license to use the trademark, granted by such company in favor of Complainant.
The Panel notes that Complainant has already been successful in complaints pertaining to other “microgaming”-containing domain names, namely: Microgaming Software Systems Limited v. E Net Marketing Ltd., WIPO Case No. D2007-0013; Microgaming Software Systems Limited v. Sting Marketing Inc., Sting Marketing, WIPO Case No. D2008-0869; Microgaming Software Systems Limited v. Oded Keinan, Traffic Label Limited, WIPO Case No. D2009-0261; Microgaming Software Systems Limited v. Dave Green, WIPO Case No. D2009-0853; Microgaming Software Systems Limited v. Nikola Zugic, WIPO Case No. D2009-0855; and Microgaming Software Systems Limited v. Hosting Hosting, WIPO Case No. D2009-1423.
In Microgaming Software Systems Limited v. E Net Marketing Ltd., WIPO Case No. D2007-0013, Microgaming Software Systems Limited v. Sting Marketing Inc., Sting Marketing, WIPO Case No. D2008-0869 and Microgaming Software Systems Limited v. Hosting Hosting, WIPO Case No. D2009-1423 the matter of trademark ownership was apparently not addressed by the Panel.
In Microgaming Software Systems Limited v. Oded Keinan, Traffic Label Limited, WIPO Case No. D2009-0261 the panel accepted complainant’s assertion to be an exclusive licensee of the mark as a result of the lack of “any response from Respondent”.
In Microgaming Software Systems Limited v. Dave Green, WIPO Case No. D2009-0853 the panel accepted that complainant is an exclusive licensee of the trademark owner, but there is no mention in the decision as to whether a copy of the license was submitted.
Finally, in Microgaming Software Systems Limited v. Nikola Zugic, WIPO Case No. D2009-0855 the panel issued a Procedural Order to allow complainant to present evidence of its rights and complainant complied therewith accordingly.
The copy of the license agreement submitted by Complainant indeed corroborates that it is the exclusive licensee for the trademark MICROGAMING. It remains for the Panel to decide whether, in its capacity of a licensee of the trademark, Complainant is legitimated to claim the transfer of the domain name.
The Panel recognizes the precedent UDRP decision in which a complainant presented a copy of the license agreement and the panel found that a licensee had legitimacy to claim the transfer of a domain name (Telcel, C.A. v. jerm and Jonathan Ramirez, WIPO Case No. D2002-0309). Another precedent also acknowledged such legitimacy of a complainant that had “submitted evidence” supporting the finding that he, who was not the original trademark owner, also had protectable rights in the mark (Toyota Motor Sales U.S.A.Inc. v. J. Alexis Productions, WIPO Case No. D2003-0624).
The terms of the license obtained by Complainant from the trademark owner did not expressly give Complainant the right to obtain domain name registrations. The Panel understands that as a general rule a licensee’s rights to acquire domain name registrations should not be lightly presumed, but, in this case, (i) in the absence of a reply from Respondent, (ii) as Complainant has already secured several “microgaming”-containing domain names in UDRP cases without known opposition from the licensor and trademark owner Microgaming Systems Anstalt, and (iii) in light of the aforementioned UDRP precedents, taking all these aspects into consideration, the Panel recognizes that Complainant has satisfactorily shown to have rights over the trademark for the purpose of the Policy which give it legitimacy to claim the transfer of the disputed domain name.
Therefore, the Panel finds that the disputed domain name <microgaming-casinos.org> is confusingly similar to the trademark MICROGAMING to which Complainant has rights and, thus, the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The disputed domain name was registered on March 9, 2005, that is, several years after Complainant started to use the trademark MICROGAMING (in 1994) and the first application for registration of such trademark was filed (in 1999). Therefore, the prior rights over such trademark are clearly on Complainant’s side.
In addition, Respondent does not run any legitimate business activity in connection with the disputed domain name. On the contrary, on such website Respondent simply tries to pass-off itself as if it were Complainant itself. The following announcement appears prominently in Respondent’s web site:
“Throughout this site you will hear all about Microgaming Casinos, the games that are available, the bonuses and here you will find out all about the company and software itself. The company was established in 1994 which makes it the oldest and among the largest of casino software providers online today. There are several different principles that this company operates on and one of these is to bring all players absolute fairness while playing their favorite casino game. They know that safe and reliable gaming is the most important aspect of the software to their players which is why they depend on this software for all of their gaming needs.”
It is worth noticing that even the year in which Complainant started its activities (1994) is mentioned in Respondent’s web site, showing that Respondent went into details in order to try to create confusion with Complainant’s actual web site.
Thus, the Panel concludes that the disputed domain name is not rightfully used by Respondent in connection with any bona fide offering of goods and services.
Accordingly, Complainant established a prima facie case that Respondent does not have legitimate interests in the disputed domain name. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in Paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that Respondent has no right or legitimate interest in respect to the domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
The widespread use of the trademark MICROGAMING in gambling-related web services since 1994, the fact that Respondent only registered the disputed domain name nine(9) years later, in 2005, and the fact that in its web site Respondent tries to pass-off itself as Complainant, are all strong elements that allow the Panel to conclude that Respondent not only had actual knowledge of the trademark MICROGAMING before the registration of the disputed domain name, but also that Respondent registered and is until this date using the domain name <microgaming-casinos.com> with the intention of deceiving and diverting Complainant’s customers.
Thus, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the trademark MICROGAMING in which Complainant has rights and that Complainant has proven that Respondent’s registration and use of the disputed domain name was in bad faith, according to paragraph 4(a)(iii) under 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 <microgaming-casinos.org> be transferred to Complainant.
Gabriel F. Leonardos
Dated: November 25, 2010