WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scandinavian Slots Limited v. Leon van Engelen, L&L Europe Limited
Case No. D2014-2055
1. The Parties
Complainant is Scandinavian Slots Limited of Ta’ Xbiex, Malta, represented by WH Partners, Malta.
Respondent is Leon van Engelen, L&L Europe Limited of Sliema, Malta, represented by Kneppelhout & Korthals N.V., Netherlands.
2. The Domain Name and Registrar
The disputed domain name <norskeautomater.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2014. On November 21, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. The same day, the Registrar transmitted by e-mail 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 November 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2014. The Response was filed with the Center December 17, 2014.
The Center appointed Robert A. Badgley, Isabelle Leroux and Jon Lang as panelists in this matter on January 20, 2015. The Panel finds that it was properly constituted. Each member of 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
Complainant’s main business is to provide gambling services over the Internet. Complainant owns the domain name <norgesautomaten.com> and Complainant uses that domain name to provide gambling and related services. Complainant registered this domain name on February 22, 2006, but it is not clear from the record when Complainant began to use this domain name for a website to offer gambling services.
On December 10, 2012, Complainant obtained Community Trade Mark registration no. 011072329 for NORGESAUTOMATEN in connection with “entertainment, gaming and gambling services provided via the Internet” and related services.
Complainant also states that it “is also in the process of registering the trademark NORGESAUTOMATEN with the Norwegian Industrial Property Office.” Complainant filed its application on May 19, 2014.
Respondent registered the Domain Name <norskeautomater.com> on September 8, 2011. The Domain Name resolves to a website at which gambling services are offered, including video slots and other virtual casino games.
Complainant sent Respondent a cease-and-desist letter on July 16, 2014. Respondent did not respond to Complainant’s letter.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. According to Complainant, Respondent is a direct competitor of Complainant and Respondent is improperly trading off of the renown of Complainant’s mark to siphon business toward Respondent.
According to Complainant, the words “norgesautomaten” (in Complainant’s mark) and “norskeautomater” (in Respondent’s Domain Name) yield the same meaning, viz., “Norwegian Slots.” Complainant alleges that the color scheme and other aspects of Respondent’s website resemble Complainant’s own website, thereby aggravating the consumer confusion.
Complainant also contends that it “has been active in promoting heavily its brand, in the territory of Norway, among other territories.” However, Complainant provides no evidence of such efforts, and Complainant does not indicate (or demonstrate) how extensive such promotional and branding efforts were at the time Respondent registered the Domain Name in September 2011.
Respondent asserts that the Complaint should be denied, and that Complainant should be found to have engaged in Reverse Domain Name Hijacking (“RDNH”), because this Complaint should not have been brought. According to Respondent, it registered the Domain Name in September 2011, more than a year before Complainant had any trademark rights.
Respondent also states that Complainant’s Community Trade Mark (“CTM”) is actually a figurative mark, not purely a word mark, and that Complainant lacks rights in the words “norgesautomaten” as such. According to Respondent, the words “norgesautomaten” are merely descriptive of “the Norwegian nation’s slot machine.” Respondent asserts, and offers the statement of a native Norwegian speaker who is a lawyer, that the term reflected in the Domain Name, “norskeautomater,” is not semantically identical to the CTM words. Rather, the term “norskeautomater” means “Norwegian slot machines.”
According to Respondent, it had been providing online gambling services at its website before receiving any cease-and-desist letter or other communication from Complainant. Respondent denies having registered or used the Domain Name in bad faith. Respondent also asserts that it is engaged in a legitimate business activity and therefore has rights in the Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(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.
Because each of the foregoing three elements must be established by Complainant in order to prevail, the failure to prove one element defeats the Complaint without regard to the merits of the other two elements. In the instant case, the Panel is unanimously of the view that Complainant has failed to carry its burden of proving that the Domain Name was registered in bad faith. Accordingly, the Panel will not address the “confusing similarity” and “legitimate interests” elements.
It is undisputed that Respondent registered the Domain Name 14 months before Complainant had any registered trademark. Hence, without having to address the fact that the CTM is stylized rather than a pure word mark, the Panel concludes that Complainant cannot establish bad faith registration of the Domain Name without showing that Complainant enjoyed unregistered trademark rights prior to September 2011. Complainant has made absolutely no such showing. Complainant states that it registered an arguably similar domain name, <norgesautomaten.com>, back in 2006, but Complainant does not assert, much less prove, that it was using that domain name prior to September 2011. Similarly, Complainant alleges that it has “heavily” promoted its NORGESAUTOMATEN brand, but offers no actual evidence of such efforts, much less evidence of such efforts prior to September 2011.
Accordingly, on this record, it is impossible for the Panel to conclude that Respondent had Complainant’s mark in mind at the time it registered the Domain Name in September 2011. As such, the “bad faith” element under the Policy has not been established. The Complaint fails.
The Panel also denies Respondent’s request for a finding of Reverse Domain Name Hijacking. Although the Complaint is weak, there is insufficient evidence that it was brought in bad faith.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: February 1, 2015