WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novomatic AG v. Solly Kelion, Victory 777 N.V. / Mark Zelochivik
Case No. D2017-0347
1. The Parties
The Complainant is Novomatic AG of Gumpoldskirchen, Austria, represented by Bird & Bird LLP, the Netherlands.
The Respondent is Solly Kelion, Victory 777 N.V. of Willemstad, Cyprus / Mark Zelochivik of Romania.
2. The Domain Names and Registrar
The disputed domain names <admiral-x.com>, <admiral-x11.com>, <admiral-x12.com>, <admiral-x14.com>, <admiral-x15.com>, <1admiral-x.com>, <2admiral-x.com>, <3admiral-x.com>, <4admiral-x.com> and <5admiral-x.com> (the "Domain Names") are registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 20, 2017. On February 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 23, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2017. The Respondent submitted two informal communications on February 27, 2017. However, no formal response was submitted.
The Center appointed Olga Zalomiy as the sole panelist in this matter on March 27, 2017. 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. Preliminary Issue: Consolidation of Respondent
As stated in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), a single consolidated complaint may be brought against multiple respondents where "(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties."
The Panel finds that consolidation in this case is appropriate. It appears that the Domain Names and the websites to which they resolve are subject to common control. In its February 27, 2017 email, the Respondent Solly Kelion, Victory 777 N.V., who is the registered owner of the Domain Names <admiral-x11.com>, <admiral-x12.com>, <1admiral-x.com>, <2admiral-x.com>, <3admiral-x.com>, <4admiral-x.com>, <5admiral-x.com>, <admiral-x14.com> and <admiral-x15.com>, claims that the current owner of the Domain Names is Mark Zelochivik. The Respondent Mark Zelochivik, who is the registrant of the Domain Name <admiral-x.com>, did not dispute this contention. All of the Domain Names are registered with the same Registrar. All of the websites, to which the Domain Names resolve, have identical design and layout. Therefore, it would be fair and equitable to the Parties to permit the consolidation.
5. Factual Background
The Complainant is a part of the Novomatic Group, which is active in the gaming industry. The Complainant owns several trademark registration for the word mark ADMIRAL, such as International Registration number 474965 registered on January 24, 1983; International Registration number 598347 registered on December 17, 1992; European Union Trade Mark ("EUTM") trademark registration number 004134433 registered on November 22, 2004; and United States Patent and Trademark Office ("USPTO") trademark registration number 2317415, registered on February 15, 2000.
The Respondent registered the <admiral-x.com> Domain Name on November 21, 2013. On November 28, 2016, the Respondent registered <admiral-x11.com> and <admiral-x12.com>. On November 29, 2016, the Respondent registered <1admiral-x.com>, <2admiral-x.com>, <3admiral-x.com>, <4admiral-x.com>, <5admiral-x.com>, <admiral-x14.com> and <admiral-x15.com>. The Domain Names resolve to websites offering purportedly counterfeit versions of the Complainant's products, and products competing with those of the Complainant.
6. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to its ADMIRAL trademark. The Complainant claims that the Domain Names incorporate the ADMIRAL trademark in its entirety. The Complainant argues that addition of non-distinctive elements, such as the combinations of the letter "x", a hyphen and the numbers 1, 2, 3, 4, 5, 11, 12, 14 and 15 to its trademark in the Domain Name, does not affect the confusing similarity. The Complainant contends that the addition of the generic Top-Level Domain ("gTLD") ".com" does not affect the confusing similarity.
The Complainant claims that the Respondent registered the Domain Names after the Complainant had registered its ADMIRAL trademarks and the Respondent is not licensed or otherwise authorized by the Complainant to use the ADMIRAL trademarks. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Names because the Respondent's use of the Domain Names (and the websites connected to the Domain Names) deliberately creates the false impression that the Respondent is either a part of the Complainant's organization or are in some other way authorized by the Complainant when this is not the case. The Complainant argues that the Respondent was aware of the Complainant's mark when it registered the Domain Names because the Respondent offers counterfeit version of the Complainant's games on the websites connected to the Domain Names. The Complainant alleges that such use of the Domain Names is not a use in connection with bona fide offering or goods of services. The Complainant claims that the Respondent is not commonly known by the Domain Names because it has no trademark rights or trademarks applications for the registration of the ADMIRAL or similar mark, nor is it identified by the ADMIRAL name.
The Complainant argues that the Domain Names were registered and are being used in bad faith because they were registered and are being used by the Respondent without permission from the Complainant, for commercial gain, by creating a likelihood of confusion with the Complainant's trademarks as to the source of sponsorship, affiliation or endorsement of the website. The Complainant contends that the Respondent is offering a counterfeit version of the Complainant's game "Book of RA" on the websites connected to the Domain Names and is using the Complainant's BOOK OF RA and NOVOMATIC trademarks on the Respondent's websites.
B. Respondent
The Respondent did not submit a formal response to the Complainant's contentions.
On February 27, 2017, the Respondent sent an email to the Center that reads as follows:
"Hello WIPO team, We have receive dispute Case No. D2017-0347. And we regret to inform you that we are no longer own these domains, and we are surprised that the current owner abuses any kind of Novomatic AG interests. It seems that the new owners didn't change whois info. We have asked current owners for clarification. Please let me know what else could be done from our side. Thank you."
Later the same day, the Respondent sent another email to the Center, which reads as follows:
"Dear WIPO team, We've reached [sic] these domain owners current owner Mark Zelochvik, and he assured us that all questionable content was removed from the websites and he will make efforts to change the owners credentials in whois info ASAP so you have a relevant info regarding the current owner of the account. If we can assist any other way please let us know. Thank you"
7. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
To prove the first UDRP element, the Complainant must show that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. Here, the evidence submitted by the Complainant shows that the Complainant has trademark rights in the word mark ADMIRAL by virtue of its registrations in many countries and jurisdictions.
.The Domain Names consist of the word mark ADMIRAL, a hyphen, a letter "x" and the numbers 1,2 ,3, 4, 5, 11, 12, 14 and 15 and a gTLD ".com". The Domain Names are confusingly similar to the Complainant's trademark because they incorporate the ADMIRAL trademark in its entirety. It is well-established that the gTLD is generally disregarded under the confusing similarity test for purposes of the UDRP.1 In cases, where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only deviation from this is the inclusion of numbers, letters or a dictionary term as a prefix or a suffix, such prefix or suffix does not negate the confusing similarity between the disputed domain name and the mark. In this case, the numbers 1, 2, 3, 4, 5, 11, 12, 14 and 15, the letter "x" and the hyphen, do nothing to distinguish or to negate the confusing similarity between the Domain Names and the Complainant's registered ADMIRAL trademark.
The Complainant has proved the first UDRP element.
B. Rights or Legitimate Interests
To prove the second UDRP element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in respect of the domain name and, once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence it has rights or legitimate interests in the domain name.2 Where the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the UDRP.3
Paragraph 4(c) of the UDRP enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names because the Respondent has not been commonly known by the Domain Names and the Complainant has not authorized the Respondent to use its ADMIRAL trademark in connection with the Domain Names. The Respondent is not making a legitimate noncommercial or fair use of the Domain Names, nor is the Respondent using the Domain Names in connection with a bona fide offering of goods or services. Specifically, the Complainant claims and the Respondent does not dispute that the Respondent offers counterfeit version of the Complainant's games on the websites connected to the Domain Names. Such use of the Domain Names cannot be characterized as a legitimate noncommercial or fair use of the Domain Names or a use in connection with bona fide offering of goods or services. See, Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where use of the domain name <download-limewire-now.com> for offering of unauthorized downloads of the complainant's software was held as evidence of bad faith). The Respondent failed to rebut the Complainant's allegations.
The Complainant has satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
Under the third UDRP element, paragraph 4(a)(iii), the Complainant is required to prove that the Domain Names were registered and are being used in bad faith.
Paragraph 4(b) of the UDRP provides non-exhaustive list of the circumstances evidencing registration and use in bad faith. Pursuant to paragraph 4(b)(iv) of the UDRP, if Respondent "intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location", the Respondent may be deemed to have registered and used a domain name in bad faith.
Here, the Domain Names redirect to identical websites in English/Russian and Russian that offer a variety of online games that can be played through the Internet, including the Complainant's "Book of RA" game. The websites prominently display the Complainant's ADMIRAL and NOVOMATIC trademarks on the upper left corner of each website's front page. The Panel finds it inconceivable that the Respondent registered ten Domain Names incorporating the Complainant's ADMIRAL mark to resolve to websites that use two additional trademarks of the Complainant, including the Complainant's name, without any knowledge of the Complainant or its trademarks. The fact that the Respondent is offering unauthorized copies of the Complainant's games "is paradigmatic bad faith". Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552, citing Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019. As the panel in Wellquest International, Inc. v. Nicholas Clark, supra, put it: "This conduct supports the inference that Respondent registered this Domain Name with the bad faith intent to deceive consumers with its counterfeit products, and that it intentionally has used the Domain Name to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website and products. Courts, too, have severely punished counterfeiters who ply their wears on the Internet using deceptive domain names. The sale of such counterfeits via the Internet, where the goods cannot fully be examined by purchasers prior to shipment, makes consumer confusion virtually inevitable." Therefore, the Panel finds that the Domain Names were registered and are being used in bad faith.
Therefore, the Panel finds that the third element of the UDRP has been met.
8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <admiral-x.com>, <admiral-x11.com>, <admiral-x12.com>, <admiral-x14.com>, <admiral-x15.com>, <1admiral-x.com>, <2admiral-x.com>, <3admiral-x.com>, <4admiral-x.com> and <5admiral-x.com> be cancelled.
Olga Zalomiy
Sole Panelist
Date: April 6, 2017
1 Paragraph 1.2., WIPO Overview 2.0.
2 Id. paragraph 2.1.
3 Id.