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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

adp Gauselmann GmbH v. Chrisper Economy APS, Christian Dam Rasmussen / Whoisguard Protected, Whoisguard

Case No. D2015-1264

1. The Parties

The Complainant is adp Gauselmann GmbH of Espelkamp, Germany, represented internally.

The Respondent is Chrisper Economy APS, Christian Dam Rasmussen of Fredericksberg C, Denmark / Whoisguard Protected, Whoisguard, of Panama.

2. The Domain Name and Registrar

The disputed domain name <merkurdownload.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2015. On July 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2015, 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. The Center sent an email communication to the Complainant on July 23, 2015 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 amendment to the Complaint on July 23, 2015.

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” 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 August 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 25, 2015.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 7, 2015. 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.

4. Factual Background

The Complainant is a German company engaged in the field of amusement and gambling machines, as well as money management systems. Furthermore, the Complainant is the holder of, inter alia, the German trademark registration for MERKUR (reg. no. 30148560) and the Community trademark registration for MERKUR (reg. no. 4352019). The former trademark was registered in 2002, and the latter in 2006.

The disputed domain name was registered on May 21, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant was founded more than four decades ago and is part of the Gauselmann Group, which is well-known in Europe and beyond. In 2013, the Gausalmann Goup had a business volume of approximately EUR 1.8 billion. The Complainant develops, produces, and sells amusement and gambling machines and money management systems. Another company belonging to the Gauselmann Group is Casino Merkur Spielothek GmbH. This company operates more than two hundred entertainment centers in Germany, in which the gambling machines produced by the Complainant are being used.

The Respondent registered the disputed domain name in 2009, and uses the website in question to evaluate and explain different Merkur online games by presenting the games and giving advice on how to play them. The Respondent also evaluates some online casinos, inter alia “www.sunmaker.com”. The Respondent further places an advertisement for this casino, and places links to it on the website in question. The websites are in German.

The disputed domain name reproduces entirely the Complainant’s trademarks. The only difference is the addition of the word “download”, which is not sufficient to prevent the likelihood of confusion as it is merely descriptive and will not prevent Internet users from getting the impression that there is a link between the Respondent and the Complainant’s trademarks. The idea suggested by the disputed domain name, in view of the Complainant’s registered trademarks and long-time use thereof, and the content of the website, is that any possible goods and services offered in association with the disputed domain name are authorized by the Complainant.

The Respondent has no rights in respect of the disputed domain name. The Respondent has never received any license or consent, expressed or implied, from the Complainant or any other company of the Gauselmann Group to use the Complainant’s trademarks in a domain name or in any other manner, nor has the Complainant acquiesced in any way to such use of the trademarks by the Respondent. Furthermore, the Respondent has not been commonly known by the MERKUR trademarks.

The Respondent is not using the disputed domain name in connection with a bona fide offering of services. The website linked to the disputed domain name contains information about various Merkur games and how to play them online. However, by using the disputed domain name, the Respondent prevents the Complainant from exercising its rights to the MERKUR trademarks, since the Complainant is not able to operate a website under the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Complainant’s registration of its trademarks predates the Respondent’s registration of the disputed domain name. The Respondent knows of the Complainant’s trademarks and business in Germany. All the information on the website is in German and is solely based on the Complainant’s products. It addresses the visitors on the assumption that they already have knowledge of the trademarks and the services offered by the Complainant. The disputed domain name indicates a connection between the Respondent and the Complainant. Internet users may think that the Respondent was authorized to write about and evaluate the Complainant’s products.

The registration of a domain name that is confusingly similar to a well-known trademark by an entity that has no relationship to that trademark is itself evidence of bad faith registration and use. As the Complainant is the market leader in Germany in the field of gambling machines, its trademarks are well-known. The notoriety of the trademarks is intensified by the more than two hundred entertainment centers all over Germany, operated by Casino Merkur Spielothek GmbH.

Moreover, the Respondent places links to an advertisement for the online casino “www.sunmaker.com” on its website. Thus, the Respondent uses the disputed domain name for commercial gain by redirecting Internet users to its website. It is irrelevant if the online casino has been licensed to offer a variety of Merkur games. Additionally, the Respondent’s place of business in Panama may also suggest that the disputed domain name was registered and is being used in bad faith. The language of the website is German and the website clearly addresses German Internet users. One may think that the main reason for the Respondent to have its place of business in Panama is to hinder legal proceedings in Germany.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service 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 and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the holder of the German and Community trademark registrations for MERKUR. The disputed domain name consists of the word “merkur” with the addition of the word “download” and the generic Top-Level Domain (gTLD) “.com”. According to the well-established consensus among UDRP panels, the gTLD is not distinguishing.

The Panel finds that the Complainant’s MERKUR trademark is the distinctive part of the disputed domain name, while the word “download” only seems to indicate that the Complainant’s goods and services are available for downloading on the Respondent’s website. Thus, the addition of the word “download” is in the Panel’s view not sufficient to avoid a finding of confusing similarity under the first element of the UDRP.

In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s MERKUR trademark within the meaning of Policy paragraph 4(a)(i), and the first element of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), paragraph 2.1., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

The Complainant has asserted that no permission to register the disputed domain name has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain name, which incorporates the Complainant’s trademark.

Having considered the submissions of the Complainant, and the absence of a formal Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use the Complainant’s MERKUR trademark in the disputed domain name.

Based on the evidence provided by the Complainant, the website linked to the disputed domain name seems to contain evaluations of casino games and online casinos, inter alia regarding the Complainant’s services and products. However, since there are also advertisements and links to certain online casinos at the website, the Panel finds that the website is commercially used and therefore the Respondent’s website is not such a clearly noncommercial site merely providing information on the Complainant’s products and services that might constitute a right or legitimate interest in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The disputed domain name was registered a bit less than three years after the registration of the Complainant’s Community trademark MERKUR and some seven years after the registration of the Complainant’s German trademark MERKUR (reg. no 30148560). Furthermore, the disputed domain name resolves to a website containing information about the Complainant’s services and products. Thus, it is apparent that the disputed domain name was registered with knowledge of the Complainant’s trademark rights. Moreover, the Panel finds that the online advertisements to other online casinos and the lack of clear indication on the (lack of any) relationship between the Complainant and Respondent suggest that the disputed domain name was registered and is being used with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same 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.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <merkurdownload.com> be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Date: September 29, 2015

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