WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
adp Gauselmann GmbH v. Whoisguard Protected, Whoisguard Inc. / Chrisper Economy APS, Christian Dam Rasmussen
Case No. D2015-0632
1. The Parties
The Complainant is adp Gauselmann GmbH of Espelkamp, Germany, represented by Wildanger Kehrwald Graf v. Schwerin & Partner, Germany.
The Respondents are Whoisguard Protected, Whoisguard Inc. of Panama, Panama / Chrisper Economy APS, Christian Dam Rasmussen of Frederiksberg C, Denmark represented by Muscovitch Law P.C., Canada.
2. The Domain Name and Registrar
The disputed domain name <merkurautomaten.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2015. On April 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 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 April 13, 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 April 15, 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 April 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2015. At the request of the Respondent and with consent of the Complainant, the due date for response was extended until May 20, 2015. The Response was filed with the Center on May 20, 2015.
The Center appointed Alfred Meijboom as the sole panelist in this matter on May 26, 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 belongs to the Gauselmann Group and develops, produces and sells, inter alia, amusement and gambling machines. An affiliate company in the Gauselmann Group operates more than 200 entertainment centers in Germany, which all use the Complainant’s gambling machines. The Complainant owns the following trademarks:
- German trademark no. 1014030 MERKUR of February 12, 1981, for goods in class 28 for gambling machines operated by coins and banknotes;
- German trademark no. 30148560 MERKUR of February 18, 2002, for goods and service in classes 6, 9, 28, 35, 37, 41, 42 and 43 for, inter alia, gambling and entertainment machines and betting machines;
- Community trademark no. 4352019 MERKUR of October 30, 2006 for goods and service in classes 6, 9, 28, 35, 37, 41 and 42 for, inter alia, gambling and entertainment machines and betting machines.
Such MERKUR trademarks shall be referred to as the “Trademarks”.
The Respondent registered the disputed domain name on December 17, 2009.
5. Parties’ Contentions
The disputed domain name resolves to a website that evaluates and explains different online games under the Trademarks. It does that by presenting the different games and gives tips how to play them. The Respondent also gives an overview which games one can play online and evaluates the online casino “sunmaker.com”. Additionally it offers a forum for Internet users to comment on the various games. It also places advertisement for the “sunmaker casino” and places links to this casino on its website. All parts of the website are in German.
According to the Complainant the disputed domain name reproduces the Trademarks in its entirety. The only difference is the addition of the term “automaten”, which means “machines” in English and which term 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 Trademarks. On the contrary, the word “automaten” corresponds to the goods for which the Trademarks are registered.
Further, the Complainant alleged that the Respondent has no right in respect of the disputed domain name for different reasons. Firstly, the Respondent has neither received a license or consent from the Complainant or any other company of the Gauselmann Group to use the Trademarks in a domain name or in any other manner, nor has the Complainant acquiesced in any way to such use or application of the Trademarks by the Respondent. Further, the Trademarks were registered long before the disputed domain name, and the Respondent has not been commonly known by the Trademarks. The Complainant also claimed that the Respondent, despite using a disclaimer stating “the unofficial Merkur Fan Page” on the website under the disputed domain name, has not used the disputed domain name for bona fide offering of goods or services because the Respondent’s rather recent addition of a disclaimer is not a part of the disputed domain name, while Internet users frequently associate a domain name comprised of a trademark with the particular company that produces or offers goods and/or services under that mark, so that the Respondent’s disclaimer will not prevent a likelihood of confusion. According to the Complainant the result might have been different if the Respondent had registered a domain name which clearly indicated the fan appreciation nature of the site such as “merkurautomatenfans.com”. Finally the Complainant maintains that by using the disputed domain name the Respondent prevents the Complainant from exercising his rights to its Trademarks as the Complainant is not able to operate a website under the disputed domain name itself
The Complainant continued to argue that the disputed domain name was registered and is being used in bad faith as the Respondent does not have any connection to the Trademarks. The disputed domain name indicates a connection between the Respondent and the Complainant. Internet users may incorrectly believe that the Respondent was authorized to write about and evaluate the Complainant’s products under the disputed domain name. Additionally, the Complainant asserted that its Trademarks are well-known in Germany and that there is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that trademark is itself sufficient evidence of bad faith registration and use. Moreover the Respondent places links to and advertisement for an online casino on its website. Therefore the Respondent also 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 games under the Trademarks. By placing these links and advertisement the Respondent uses the disputed domain name for commercial gain. And finally, the Complainant argued that the Respondent’s place of business in Panama, which may also be a hint that the disputed domain name was registered and is used in bad faith. The language of the website is German and the website clearly addresses German Internet users. According to the Complainant 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.
According to the Respondent it commenced use of the disputed domain name by publishing a website about “Merkur” machines on or about February 21, 2010. Originally this website was entirely informational in nature and contained information about the types of “Merkur” machines that are available and did not contain any advertisements or other commercial content. Over the years, the website was expanded and improved upon, to feature more detailed information about “Merkur” machines and more detailed information about where to play “Merkur” slot machines, including at online casinos which the Respondent promoted with some advertisements. The Respondent further alleged that it placed the disclaimer as mentioned by the Complainant on the website under the disputed domain name on or about September 5, 2011. Originally, when the website was entirely noncommercial, the Respondent believed that a disclaimer was not necessary, but as the website grew the Respondent wanted there to be no doubt in the minds of visitors, that the website was an unofficial website, and accordingly, the Respondent placed the disclaimer, which is very prominent, at the top of the website. Also erected at the bottom of the website, a second disclaimer was placed, which stated in English translation “Caution: This is not an official Merkur Page”.
The Respondent claimed that, in addition to robust and useful information about “Merkur” slot machines, the website also includes links and advertisements for online casinos that feature “Merkur” slot machines. The website has always exclusively linked to and advertised online casinos which feature genuine “Merkur” slot machines and/or that use “Merkur” software platforms under license from the Complainant. In fact, the Respondent conscientiously avoided promoting any slot machines or casinos that were not associated with the Complainant. The Respondent did of course receive compensation for promoting online casinos such as Sunmaker, which features “Merkur” slot machines. In fact, the Respondent was and is an official affiliate of Sunmaker Casino pursuant to its marketing affiliate program, and receives commissions from Sunmaker. Sunmaker, as a licensee of the Complainant’s software platform, pays the Complainant commissions, which are believed to be a percentage of all wagers placed at online casinos that use the Complainant’s software platform. Therefore the Respondent argued that the Complainant itself is remunerated through the Respondent’s efforts in promoting the Complainant’s licensee’s online casinos via the website under the disputed domain name. Moreover, as an official marketing affiliate of Sunmaker Casino, the Respondent is licensed to promote and market “Merkur” online slot machines to players. In that manner, the Respondent is essentially acting under a sub-license arrangement wherein it helps to sell the Complainant’s products and services to the public, and the Complainant has not voiced any complaint about this in the past six years.
The Respondent claimed that it used the disputed domain name to properly and aptly describe, in a nominative sense, the topic that the website was about, namely “Merkur” machines. By fairly setting out the disclaimers so prominently, combined with fair use of the disputed domain name in conjunction with a bona fide website providing information on “Merkur” machines and to promote “Merkur” slot machines and related casino services under an affiliate marketing license, the Respondent was using the disputed domain name in good faith, and has a legitimate interest in it, as understood by the UDRP.
First and foremost the Respondent believes that the dispute is outside the scope of the UDRP as the Respondent’s actions constitute nominative fair use of the Trademarks since the Trademarks were used to actually describe the subject matter of the website, namely the Complainant’s products and services, which the Respondent was promoting as an authorized affiliate marketer. The Respondent alleged that nominative fair use or fair use is an established legal principle both in the United States and in Europe, where the parties reside in this case. In this respect the Respondent refers to the decision of the Court of Justice of the European Union Case in Case C-228/03 (The Gillette Company and Gilette Group Finland Oy v. LA-Laboratories Ltd Oy). The Respondent asserts that it was entitled to use the Trademarks to fairly describe the fact that it was providing information about “Merkur” slot machines, and furthermore, that the disclaimer demonstrates that there was no misrepresentation of sponsorship or endorsement by the Complainant. The Complainant’s contention that there will inevitably be confusion between the disputed domain name and the Trademarks is at odds with the doctrine of nominative use, and that the disclaimer serves to directly avert any such possible confusion. The Respondent concluded that the dispute is beyond the scope of the UDRP, which was not intended to resolve legitimate disputes of this nature.
In the Respondent’s subsequent discussion of the three elements of paragraph 4(a) of the Policy, the Respondent acknowledged that the Trademarks are wholly incorporated in the disputed domain name together with a descriptive term. As such, the Respondent does not contest that the disputed domain name is identical or confusingly similar to the Trademarks. But the reason that the Respondent selected the disputed domain name, is that it aptly describes and refers to the Complainant’s products and services, in a nominative manner, which the Respondent was marketing as an authorized affiliate of a licensee of the Complainant.
The Respondent further alleged that it has a legitimate interest in the disputed domain name pursuant to the doctrine of nominative use. In addition, the Respondent stated that it has a legitimate interest because prior to any notice of the dispute the Respondent was using the disputed domain name in connection with a bona fide offering of goods and services; namely promoting and marketing the Complainant’s “Merkur” slot machines and online casinos featuring the Complainant’s slot machines and software platform. The Respondent’s website under the disputed domain name is more than just a fan site, as it rather an informational and marketing website, wherein the Respondent markets and promotes the sale of Complainant’s products and services, which are available through licensees of the Complainant, as an authorized marketing affiliate of the online casinos. As such, the Respondent claimed that it is essentially engaged in assisting in the distribution and resale of Complainant’s products and services. The Respondent is assisting in the sale of genuine “Merkur” related products or services and is paid by a licensee of the Complainant for doing so. In this respect the Respondent considers itself as a distributor of the Complainant’s products so that the tests as set forth in Oki Data Americas Inc v. ASD Inc., WIPO Case No. D2001-0903 should be met, which the Respondent argues is the case. Furthermore, the Oki Data principles may even be applied to unauthorized resellers. And at the very least, the Respondent is an unauthorized “reseller” or marketer and promoter of “Merkur” products and services. However, at most, the Respondent is also an authorized affiliate of online casinos which are licensees of the Complainant, thereby conferring an even higher degree of legitimacy. In either case, it is respectfully submitted that the Oki Data principles are applicable to this situation and if applied, result in the Respondent having a legitimate interest in the disputed domain name as a result of promoting and marketing “Merkur” goods and services in a bona fide manner prior to notice of the dispute.
The Respondent claimed that, since it has a legitimate interest in the disputed domain name, the Panel need not consider the issue whether the disputed domain name was registered and is being used in bad faith. The Respondent further argued that, in any event, it did not register and use the disputed domain name in bad faith because it registered the disputed domain name in good faith as it wanted to use the disputed domain name to inform the public about “Merkur” slot machines, and also wanted to promote “Merkur” slot machines. The fact that the Respondent erected the disclaimer long prior to any complaint or objection by the Complainant, demonstrates that there was no intention to misrepresent the website as anything other than an unofficial website. The Respondent also believed that it was fairly using the Trademarks in the disputed domain name for promoting the Complainant’s products and services and was ultimately doing it for the mutual benefit of the Complainant and the Respondent. Moreover, as an authorized affiliate marketer of Sunmaker Casino, a licensee of the Complainant who receives fees from Sunmaker, the Respondent further reasonably believed that its registration and use of the disputed domain name was entirely appropriate and lawful.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service 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 that the generic Top-Level Domains (“gTLDs”) may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Respondent acknowledged that the disputed domain name is confusingly similar to the Trademarks, but claimed that the dispute is outside the scope of the UDRP as the Respondent’s actions constitute nominative fair use of the Trademarks, which shall be discussed in paragraph 6.B below.
In the meantime the Panel finds that the disputed domain name is confusingly similar to the Trademarks. The Respondent has taken the Trademarks mark in its entirety and merely added the generic German word “automaten”. The added word is insufficient to differentiate the disputed domain name and Trademarks, and actually enhances the connection given the goods for which the marks are registered and used, and the nature of the Complainants’ business.
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainants must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances, which may demonstrate a respondent’s rights or legitimate interests to the disputed domain name as follows:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent’s first defense is that it makes fair use of the disputed domain name since it used the Trademarks only to actually describe the subject matter of the website under the disputed domain name, which have been labeled as nominative fair use by previous panels (e.g., Tacitica International, Inc. v. YouCanSave.com, Inc., WIPO Case No. D2002-0018; Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399; Miss Universe L.P., LLLP v. The Marketing Model / Steven Roddy, WIPO Case No. D2010-1939). The Panel does not agree with the Respondent’s view that the Respondent’s use of the disputed domain name constitutes such nominative fair use. First, in cases under the UDRP where panels found nominative fair use of the trademarks of complainants, the parties were typically established in the United States of America (“United States”) and the panels in such cases typically referred to United States case law. In this dispute the parties are, however, established in Germany and Denmark, the website is in German and evidently directed to a German speaking public in Germany, and possibly also Austria and Switzerland. The Respondent did not explain why United States case law would be relevant in this matter. It is not without meaning that the panel in Miss Universe L.P., LLLP v. The Marketing Model / Steven Roddy, supra, which was listed by the Respondent in its defense,decided “[B]ecause both parties are from the United States, it is appropriate to consider United States Lanham Act jurisprudence”. The Respondent also referred to Case C-228/03 of the Court of Justice of the European Union (the “ECJ”) in The Gillette Company and Gilette Group Finland Oy v. LA-Laboratories Ltd Oy, which case law would be appropriate to consider as both parties are established in the European Union. However, unlike the Respondent asserts, neither European Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks (the “Trademark Directive), nor European Regulation (EC) 207/2009 on the Community trade mark recognizes a general “fair use” defense. And also, as the Panel sees it, the ECJ has never accepted a general fair use doctrine. In its Gillette Case C-228/03, the ECJ ruled, inter alia, “[t]he lawfulness or otherwise of the use of the trade mark under Article 6(1)(c) of the [Trademark Directive] depends on whether that use is necessary to indicate the intended purpose of a product. Use of the trade mark by a third party who is not its owner is necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constitutes the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product.” It is obvious that the ECJ imposed a strict rule for accepting that a third party uses another party’s trademark, as the ECJ requires that there must be a necessity to use the mark and such third party has no alternative than to use the mark. The Panel finds that this is not the case in the dispute at hand, as the Respondent has not shown that it had no other option than using the Trademarks as part of the disputed domain name.
The Respondent also argued that it had used the disputed domain name in connection with a bona fide offering of goods and service, before it was notified of the dispute as it promotes and markets the Complainant’s slot machines under the Trademarks and online casinos featuring the Complainant’s slot machines and software platform. In this respect the Respondent claims to be a (possibly unauthorized) reseller of the Complainant’s products and services under the Trademarks, and not just merely a fan site, so that the Oki Data principles apply. This defense does not hold as the Respondent’s website under the disputed domain name purports to indicate that it is “the unofficial Merkur Fan Page” at the very top of the home page – when it is not; at the same time it does not clearly and legitimately – as would be required under such Oki Data principles distribute the Complainant’s goods or services. The disputed domain name resolves to a website with a descriptive text about Merkur machines on its website and, in the last paragraph of the homepage as well as on the top side bar, advertises the possibility to play “Merkur” games online at Sunmaker casino, with a link to enable the visitor to play. Even if the Panel assumes that Sunmaker casino exclusively deploys “Merkur” products, the advertisements for such casino on the website under the disputed domain name is still not primarily for products and services of the Complainant, but rather for the services of Sunmaker casino. The Panel considers it irrelevant if the promotion of Sunmaker casino would also benefit the Complainant as this is neither evident from the Respondent’s website nor immediately clear for the Complainant.
What is more, because of the prominent and unambiguous disclaimer at the top of the Respondent’s website that the website is “the unofficial Merkur Fan Page”, a visitor of the website shall reasonably believe that the website is just that, the Panel considers the website under the disputed domain name a fan site. The Respondent’s fan site has an undisputed commercial character, which, given the Respondent’s admission that it is an authorized marketing affiliate of the online casino, seems to be the primary purpose of the Respondent’s website. This does not constitute legitimate noncommercial fair use as was the case in, e.g., Estate of Francis Newton Souza v. ZWYX.org Ltd., WIPO Case No. D2007-0221.
For the reasons explained above the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
It is not in dispute that at the time the disputed domain name was registered the Respondent had the Trademarks in mind. Further, as explained in paragraph 6.B above, the Panel is of the opinion that the disputed domain name was intentionally used by the Respondent to attract visitors to the website under the disputed domain name incorporating the Trademarks for its own commercial gain, namely to receive payment as an authorized marketing affiliate from the online casino.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.
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 <merkurautomaten.com> be transferred to the Complainant.
Date: June 9, 2015