WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
adp Gauselmann GmbH v. Domain Registration Service, Digital Gateway Networks A.S.
Case No. D2016-0813
1. The Parties
The Complainant is adp Gauselmann GmbH of Espelkamp, Germany, internally represented.
The Respondent is Domain Registration Service, Digital Gateway Networks A.S. of Mahe, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <merkur-spielautomaten.com> is registered with PSI-USA, Inc. dba Domain Robot (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2016. The Complainant filed an amended Complaint on April 27, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2016, 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 together with the amended 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 May 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 15, 2016.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on June 21, 2016. 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 was founded more than 40 years ago and is part of the Gauselmann Group, which operates entertainment centers in Germany and other countries and develops, produces and sells amusement and gambling machines as well as money management systems. Another subsidiary of the Gauselmann Group is Casino Merkur Spielothek GmbH. This company operates more than 200 entertainment centers in Germany.
The Complainant is the registered owner of inter alia the German trademark MERKUR (No. 1014030, registered on February 12, 1981) and the European Union Trade Mark MERKUR (No. 4352019, registered on October 30, 2006).
The disputed domain name was registered on May 12, 2011, and is redirected to the website "www.de.onlinecasinoblog.com". This website offers information on and links to various German online casinos, including those of the Complainant and the Complainant's competitors.
5. Parties' Contentions
In summary, the Complainant contends the following:
The disputed domain name incorporates the Complainant's trademarks entirely. The only difference is the addition of the term "spielautomaten". This term is not sufficient to prevent a likelihood of confusion as it is merely descriptive and will not prevent Internet users from gaining the impression that there is a link between the Respondent and the Complainant's trademarks.
Furthermore, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never received any license or consent, express or implied, from the Complainant or any other company of the Gauselmann Group to use the Complainant's trademarks in a domain name or in any other manner, nor has the Complainant acquiesced in any way to such use or application of its trademarks by the Respondent. The Respondent also has not been commonly known by the trademark and is not using the disputed domain name in connection with any bona fide offering of goods or services.
Finally, the disputed domain name was registered and is being used in bad faith. The Respondent is obviously aware of the Complainant's trademarks since it refers to the Complainant's products on its (German) website. The website linked to the disputed domain name also indicates a connection between the Respondent and the Complainant. Internet users may think that the Respondent was authorized to write about and evaluate the Complainant's products. Additionally, there is substantial authority to support the view that the 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 by itself sufficient evidence of bad faith registration. Since the Complainant is the market leader in Germany in the field of gambling machines, its trademarks are
well known. Moreover, the Respondent places links on its website to an advertisement for the online casino of one of the Complainant's competitors, and is thus using the disputed domain name for commercial gain.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's trademark MERKUR and the addition "spielautomaten", followed by the generic Top-Level Domain ("gTLD") ".com". According to the consensus view of UDRP panels, the addition of generic terms such as "spielautomaten" (which is the German word for "gambling machines" and thus descriptive of the Complainant's business) to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9).
The gTLD ".com" may further be disregarded when assessing identity or confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
Based on the Complainant's credible contentions, and further to the Panel's findings below, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
While the website at the disputed domain name appears to offer information about the Complainant's products by redirecting the disputed domain name to a website containing advertisements of the Complainant's competitors and product reviews of the Complainant's and its competitors' products, the Panel finds that the Respondent has used the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy. The unauthorized registration of a domain name, containing a clearly identifiable mark by a party with no connection to the mark is, in the circumstances of this case (including the Respondent's default), sufficiently redolent of bad faith.
Accordingly, the Complainant has also satisfied paragraph 4(a)(iii) 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 <merkur-spielautomaten.com> be transferred to the Complainant.
Date: June 29, 2016