WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Raha-automaattiyhdistys v. Matti Metsala
Case No. D2010-1686
1. The Parties
The Complainant is Raha-automaattiyhdistys of Espoo, Finland, represented by Benjon Oy, Finland.
The Respondent is Matti Metsala of Helsinki, Finland.
2. The Domain Name(s) and Registrar(s)
The disputed domain names <raynetticasino.info>, <raynetticasino.net>, <raynetticasino.org>, <raynettikasino.info>, <raynettikasino.net>, and <raynettikasino.org> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2010. On October 6, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 6, 2010, 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 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2010.
The Center appointed George R. F. Souter as the sole panelist in this matter on November 4, 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.
4. Factual Background
The Complainant, Raha-automaattiyhdistys (Finland’s Slot Machine Association), which is generally referred to as RAY, was established in the year 1938 to raise funds through gaming operations to support Finnish health and welfare organizations. RAY enjoys a Government monopoly in Finland to operate slot machines and casino table games, and to run a casino. The Government of Finland has validated an amendment to the Complainant’s gaming licence, which enables it to distribute slot machine and casino games on the Internet. The Complainant aims to launch its Internet gaming activities in October 2010. The Complainant’s Internet gaming activities will be a reliable domestic service controlled by the authorities. In addition, its games will not permit playing on credit, and a player’s identity will be strictly controlled from data supplied by the Finnish Population Register Centre, which will also ensure that a player is at least 18 years old.
The Complainant has shown the Panel evidence of wide registration in its name of trade marks either consisting of the word RAY, or containing it as a major element, in Finland, and on the European Community Trade Marks Register, in Classes 28, 36 and 41, among others.
On June 6, 2007, the National Board of Patents and Registration of Finland (NBPR) instituted a list (separate from the Trademark Register) of trade marks with a reputation in Finland. Entry on this list is by application, and the applicant must satisfy the NBPR that the trade mark has acquired sufficient reputation in Finland as would enable it to take benefit of Section 6(2) of the Finnish Trade Marks Act, which, in unofficial English translation, provides: “… the confusability of trade symbols may be judged in favor of a symbol that has a reputation in Finland where the use of another's trade symbol without due cause would constitute unfair exploitation of, or action detrimental to, the distinctive character or fame of the earlier trade symbol.” The Complainant applied for entry on this list of its trade mark RAY, in Classes 28, 36 and 41, on December 4, 2007. The trade mark RAY was duly approved for entry on this list on May 15, 2009. Entry of a trade mark on this list includes an annotation of the target group(s) in which the mark has proven reputation, which, in the case of the trade mark RAY, is given as “all consumers over the age of 15”.
The Complainant maintains websites under the domain name <ray.fi> and <raynettikasino.fi> in connection with its activities.
5. Parties’ Contentions
The Complainant contends that the trade mark RAY, through long use, enjoys a high level of reputation in Finland.
The Complainant further alleges:
“The contested domain names <raynettikasino.net>, <raynettikasino.org>, <raynettikasino.info>, <raynetticasino.net>, <raynetticasino.info> and <raynetticasino.org> consist of the distinctive trademark RAY and non-distinctive words ‘netti’, ‘kasino’ and ‘casino’. The word ‘netti’ means ‘net’ in English and is the abbreviation of the word ‘Internet’. The word ‘kasino’ means ‘casino’ in English. The domain names incorporate as such the distinctive mark RAY meaning ‘Ray Internet Casino’ in English. The only distinctive element in the beginning of the domain name is identical so the similarity between the trademark and the domain names is clear.
The trademark RAY of the Complainant has been registered amongst others in classes 9, 28, 38 and 41 and the Complainant is offering slot machine and casino game services for consumers. The domain names <raynettikasino.net>, <raynettikasino.org>, <raynettikasino.info>, <raynetticasino.net>, <raynetticasino.info> and <raynetticasino.org> relate to Internet casino game services that belong mainly to class 41 so the similarity of the services is obvious.
The Complainant owns and operates a website under the domain name <ray.fi>. Internet users are therefore likely to assume that also the domain names <raynettikasino.net>, <raynettikasino.org>, <raynettikasino.info>, <raynetticasino.net>, <raynetticasino.info> and <raynetticasino.org> belong to the Complainant, particularly after having seen the news that the Government of Finland has granted for the Complainant a license to distribute slot machine and casino games on the Internet exclusively. The trademark RAY is so well-known in Finland that consumers will automatically presume that the disputed domain names are either owned by the Complainant or they have some other connection to it.”
The Complainant states that, according to its information and belief, the Respondent does not have rights or legitimate interests in the disputed domain names and has not registered them as trade marks, service marks or company names anywhere in the world, nor has the Respondent used the marks for the offering of goods or services, nor is the Respondent commonly known by the name RAY. The Complainant further states that it has not licensed or otherwise permitted the Respondent to use the trade mark RAY, nor is there any relationship between the Complainant and the Respondent.
In connection with registration in bad faith, the Complainant points out that the Respondent is a Finnish individual having an address in Finland, and contends that, due to the well-known status of the Finnish Complainant and the trade mark RAY, the Respondent has acted in bad faith because he was surely aware of the well-known and extensively used trade mark RAY at the time of registration of the disputed domain names, particularly after public news regarding the license to operate slot machine and casino game services granted by the Government of Finland to the Complainant.
In connection with use in bad faith, the Complainant states that all the disputed domain names against which the Complaint has been filed are passive and not in use, but relies on the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and subsequent decisions agreeing therewith, in supporting its allegation that, in the circumstances of this case, passive holding of the disputed domain names in this case, should be regarded as use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark (“mark”) in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that indicators (<.com>, <.info>, <.net>, <.org>) are legally irrelevant to the consideration of confusing similarity between a trade mark and a domain name. It is also well established that the mere addition of generic words to a trade mark is not sufficient to avoid a finding of confusing similarity. In these circumstances the Panel considers the Complainant’s arguments (above) in relation to confusing similarity to be compelling, and, therefore, finds that the Complainant has satisfied the provisions of paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to the consensus view among UDRP panels, it is sufficient that a complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the domain name, in order to shift the burden of proof on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the domain name, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel draws the appropriate conclusion. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Panel has no hesitation in finding that the Complainant’s trade mark RAY is well-known in Finland.
The Panel is of the view that, in the case of a well-known mark, the finding that the respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the domain name was registered in bad faith. The Panel considers that the circumstances of this case as outlined by the Complainant, in which, in his view, the Respondent’s registration of the disputed domain names was “opportunistic” following publicity as to amendment of the Finnish Lotteries Act to extend the Complainant’s licence to cover Internet gaming, are such as to justify a finding that the disputed domain names were registered in bad faith.
The wording of paragraph 4(a)(iii) of the Policy requires, in the Panel’s opinion, a consideration as to whether the disputed domain names are being used in bad faith.
In Telstra Corporation Limited v. Nuclear Marshmallows (supra), the panel considered whether circumstances could exist in which the passive holding of a domain name by the Respondent could amount to the respondent acting in bad faith, and concluded that such circumstances could exist. He considered four circumstances applying to that case, two of which are non-applicable to the present case, and two which are, namely that the complainant’s trade mark has a strong reputation and is widely-known, and that the respondent has provided no evidence whatsoever of any actual or contemplated good-faith use by it of the domain name. After examination of the specific circumstances of that case, he considered whether it would be possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trade mark law. Unable to conceive of such circumstances, he concluded that the respondent’s passive holding of the domain name in that particular case satisfied the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the respondent.
Subsequent panels have generally followed the logic of the decision in Telstra.
In the present case, the Panel is unable to conceive of any plausible actual or contemplated active use of the disputed domain names that would not be illegitimate in view of the Complainant’s trade mark rights, or would not be a violation of the Finnish Lotteries Act, which confers a monopoly on the Complainant in Internet gaming. In any event, the Panel considers, under the circumstances, the Respondent’s passive holding of the disputed domain names to be use in bad faith consistent with the Telstra decision.
The Panel, accordingly, finds that the Complainant has satisfied the bad faith requirements of Paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <raynetticasino.info>, <raynetticasino.net>, <raynetticasino.org>, <raynettikasino.info>, <raynettikasino.net>, and <raynettikasino.org> be transferred to the Complainant.
George R. F. Souter
Dated: November 17, 2010