WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MAG Elettronica S.r.l. v. WholsGuard, Inc. / Mathew Baldwin
Case No. D2013-2246
1. The Parties
The Complainant is MAG Elettronica S.r.l. of Rubano, Italy, represented by Studio Legale Giove, Italy.
The Respondent is WholsGuard, Inc. of Panama City, Panama / Mathew Baldwin of Swieqi, Malta.
2. The Domain Name and Registrar
The disputed domain name <fowlplaygold.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2013. On December 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2013, 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 January 6, 2014 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 January 13, 2014.
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 amendment to the Complaint, and the proceedings commenced on January 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2014. Subsequently, the Respondent sent an email communication to the Center on February 5, 2014, asking for confirmation of the procedures it had to follow. The Center replied by email on February 6, 2014 advising that Written Notice of the Complaint and Notification of Commencement of the Administrative Proceeding had been sent to the Respondent on January 14, 2014, that the due date for filing a response had passed, and that no response had been received by the Center. The Center stated that the Respondent’s email and any subsequent case-related communications would be forwarded to the Panel on appointment, for the Panel to consider in its discretion.
The Center appointed Angela Fox as the sole panelist in this matter on February 10, 2014. 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 an Italian company manufacturing game cards for slot machines. One of the games developed by the Complainant is marketed under the name “Fowl Play”. The Fowl Play game has been sold by the Complainant for the past nine years. In 2008 the Complainant released a new version of the game marketed under the name “Fowl Play Gold”. Both Fowl Play and Fowl Play Gold games have enjoyed substantial commercial success, and more than 100,000 Fowl Play Gold game cards have been sold throughout Italy since launch of the variant six years ago.
The Complainant filed screenshots from its website at “www.magelettronica.com” showing use of Fowl Play and Fowl Play Gold in respect of casino-style slot machine games.
The Complainant contends that it enjoys unregistered trademark rights in FOWL PLAY or FOWL PLAY GOLD as a result of its use and promotion of the marks in Italy. The Complainant also states that it has applied to register FOWL PLAY as a Community Trademark, and that the application was granted on July 11, 2013 (the registration in question appears from the Office of Harmonization for the Internal Market (OHIM) database to be number 11652633 filed on March 13, 2013 in Classes 28, 41 and 42, which was indeed granted on July 11, 2013, as stated by the Complainant).
The disputed domain name was created on February 24, 2012. It is in use for an Italian-language website carrying imagery from the Fowl Play Gold game and providing information on the rules of the game, tactics and how to play. The website features multiple prominent banners for and links to an Italian online casino directory, ListaCasino (at “www.listacasino.it”).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to FOWL PLAY GOLD, an unregistered trademark in which the Complainant has rights.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant has not granted the Respondent any license or permission to use the FOWL PLAY GOLD mark.
Finally, the Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith to attract Internet users to its website and channel them to the “www.listacasino.it” website for commercial gain by generating a likelihood of confusion with the Complainant’s unregistered FOWL PLAY GOLD trademark.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. The Respondent’s email to the Center of February 5, 2014 did not attempt to explain the default, nor has any late response been filed for the Panel to consider, if appropriate, in its discretion.
Therefore, in accordance with paragraphs 14(a) and 14(b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The consensus view among UDRP panelists, as reflected in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), is that a complainant may rely on unregistered trademark rights in UDRP proceedings, but “must show that the name has become a distinctive identifier associated with the complainant or its goods or services.”
How a complainant does this will necessarily vary, but paragraph 1.7 of the WIPO Overview 2.0 notes that evidence of such “secondary meaning” may include information on the length and amount of sales under a mark, the nature and extent of advertising relating to the mark, consumer survey results and media recognition.
In this case, the Complainant indicated that it has been using the trademark FOWL PLAY for nine years and the trademark FOWL PLAY GOLD for six years in respect of a casino style slot machine game in Italy. It provided extracts from its website showing the nature of the game and the manner in which the FOWL PLAY and FOWL PLAY GOLD marks have been used. It indicated that the Fowl Play Gold games have sold over 100,000 copies in Italy since launch.
The Complainant submits that the Italian courts have recognised FOWL PLAY as an unregistered trademark in various infringement cases brought by the Complainant. Copies of court orders referring to the FOWL PLAY and FOWL PLAY GOLD marks were annexed to the Complaint, but as no English translations of the relevant portions were provided it is not possible to say what these documents prove. English is the language of these proceedings, and if the Complainant wished to rely on the content of the exhibit court orders it should have provided English translations of the relevant portions. Had the case turned on this, the Panel would have exercised its discretion to make a procedural order requesting translations.
In the event, however, it is apparent from the Complaint and the supporting materials that the Complainant has been using the FOWL PLAY and FOWL PLAY GOLD marks in respect of slot machine games in Italy for six and nine years respectively and that it has enjoyed commercial success in respect of them. That its games are known to players in Italy is clear from the fact that the Respondent’s own Italian-language website linked to the disputed domain name uses imagery from, and refers extensively to, the Fowl Play Gold game. While the Complainant could have done more to demonstrate and quantify the use and promotion of the FOWL PLAY and FOWL PLAY GOLD marks in Italy, on balance the Panel is satisfied from the information and evidence provided that the FOWL PLAY and FOWL PLAY GOLD marks have come to denote the Complainant’s games in Italy and that the Complainant is therefore entitled to rely on unregistered trademark rights in these marks for the purpose of this administrative proceeding.
The disputed domain name is identical to the Complainant’s unregistered FOWL PLAY GOLD mark, differing only in the non-distinctive generic Top-Level Domain (gTLD) suffix “.com”. It is moreover confusingly similar to the Complainant’s unregistered FOWL PLAY mark, differing only in the omission of the generic and laudatory word, “gold” and the presence of the non-distinctive gTLD suffix “.com”.
The Complainant did not rely on its Community Trademark registration no. 11652633 for FOWL PLAY, presumably because the application for that mark was filed after the disputed domain name was registered. That does not matter in relation to the first element of the test, however (although it can be relevant to bad faith), and if the Complainant had relied on its Community Trademark registration the Panel would also have concluded that the disputed domain name is confusingly similar to a registered trademark in which the Complainant has rights.
The Panel finds that the disputed domain name is identical and confusingly similar to unregistered trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademarks FOWL PLAY and FOWL PLAY GOLD, and the Respondent has made no effort to refute the allegation that it has no rights or legitimate interests in the disputed domain name.
There is nothing on the facts of this case to suggest that the Respondent could invoke any of the circumstances listed in paragraph 4(c) of the Policy in order to demonstrate a right or legitimate interest.
Although the Respondent appears to be using the disputed domain name to offer tips and information on playing the Complainant’s Fowl Play Gold game, such use does not appear to be use in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy.
Moreover, the Respondent’s use does not appear to be a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks. The Respondent’s use of prominent Fowl Play Gold game imagery on its website appears calculated to convey the false impression that the Respondent is the Complainant or is in some way associated with or authorised by the Complainant when in fact it has no connection with the Complainant at all. Moreover, the use does not appear to be noncommercial in nature, since the advertising links to third-party websites including to the ListaCasino website strongly indicate that the Respondent is earning click-through revenue from Internet users who are diverted to the Respondent’s website by the disputed domain name’s identity and confusing similarity with the Complainant’s unregistered FOWL PLAY and FOWL PLAY GOLD trademarks.
The Panel finds that the Complainant has made out a prima facie case under this heading, and the Respondent has done nothing to refute it. The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has proved that it enjoys rights in the unregistered trademarks FOWL PLAY and FOWL PLAY GOLD in respect of slot machine games in Italy, and that it had been using the marks for four and seven years respectively before the disputed domain name was registered.
Given the Respondent’s use of the Complainant’s FOWL PLAY and FOWL PLAY GOLD trademarks on the website linked to the disputed domain name it cannot plausibly be suggested that the Respondent was unaware of the Complainant and its trademarks when it registered the disputed domain name. Indeed, it appears that the Respondent registered the disputed domain name with the intention, for commercial gain through pay-per-click income, of attracting Internet traffic seeking the website of the Complainant or an entity authorised or related to it.
There is, moreover, evidence that the disputed domain name has been used in bad faith. As indicated above, the Respondent has used the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant, on a website which appears calculated to misrepresent to Internet users that it is that of the Complainant, or is in some way associated with or authorised by the Complainant. Such free-riding on the Complainant’s goodwill is disruptive to the Complainant’s business because it diverts and misleads consumers. While it is unclear whether the Respondent itself directly competes with the Complainant, ListaCasino and other providers of gaming services to which the Respondent seeks to channel visitors do compete with the Complainant by providing online games, and therefore have the potential to siphon off customers from the Complainant. Such conduct is clearly disruptive to the Complainant’s business and constitutes evidence of bad faith.
The Panel is satisfied that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iii) and (iv) of the Policy.
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 <fowlplaygold.com> be transferred to the Complainant.
Date: February 24, 2014