WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microgaming Software Systems Limited v. Franco Lippi
Case No. D2018-0790
1. The Parties
The Complainant is Microgaming Software Systems Limited of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by D. Young & Co., United Kingdom.
The Respondent is Franco Lippi, c/o Dynadot of San Mateo, California, United States of America ("United States").
2. The Domain Names and Registrar
The disputed domain names <mcirogaming.com>, <micorgaming.com>, <micorgamingsupport.com>, <microgaimng.com>, <microgaimngsupport.com>, <microgamign.com>, <microgamignsupport.com>, <microgamnig.com> and <microgmaingsupport.com> (the "Domain Names") are registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2018. On April 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 16, 2018, 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 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 April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 18, 2018. 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 a United Kingdom company, founded in 1994, involved in the supply of online casino software to various third party online gaming providers. It operates a website at "www.microgaming.co.uk" ("Complainant's Website") at which the Complainant's products are displayed. The Complainant's online casino software is used by more than 100 online casinos and the Complainant's Website receives approximately 250,000 visitors per month.
The Complainant is the exclusive licensee of a number of registered trademarks featuring the word "microgaming" (the "MICROGAMING Mark"), each of which is registered to Liechtenstein entity Neosoft Anstalt. In particular, Neosoft Anstalt is the owner and licensor (to the Complainant) of a European Union trademark registration for the MICROGAMING Mark, registered from January 8, 2004 (registration number 002789063) for goods and services in classes 9, 35 and 41.
Each of the Domain Names was registered on January 19, 2010. Each of the Domain Names resolves to an essentially identical website ("Respondent's Website") with the title "Coming Soon [domain name]" and below it a series of what appear to be pay-per-click links to various third party websites, some of which refer to casino and online gaming.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant's MICROGAMING Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the exclusive licensee of the MICROGAMING Mark, which is registered in various locations by Neosoft Anstalt (the licensor). The Domain Names each consist of misspellings of the MICROGAMING Mark with some including the descriptive word "support" and are likely to confuse consumers searching the Internet for the Complainant.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as the Domain Names nor does the Respondent have any authorization from the Complainant to register the Domain Names. The Respondent is not making a legitimate noncommercial or fair use of the Domain Names. Rather the Respondent uses the Domain Names to operate the Respondent's Website which consists of paid advertisements and sponsored links to casinos unconnected with the Complainant.
The Domain Names were registered and are being used in bad faith. Given the Complainant's reputation in online gaming software it is highly likely that the Respondent was aware of the Complainant at the time of registration. Furthermore the Respondent registered and uses the Domain Names to prevent the Complainant from reflecting its MICROGAMING marks in corresponding domain names and for the purpose of disrupting the business of the Complainant. Finally the Respondent also uses the Domain Names for commercial gain, by creating a likelihood of confusion with the Complainant's MICROGAMING Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.4.1, states, in answer to the question "Does a trademark owner's affiliate or licensee have standing to file a UDRP complaint?" that:
"A trademark owner's affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint."
While panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint. In this respect, absent clear authorization from the trademark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint.
In the present case the Panel is satisfied that the Complainant is the exclusive licensee of the MICROGAMING Mark, having been provided with a redacted copy of the license agreement entered into between Neosoft Anstalt (the licensor) and the Complainant. As such the Complainant has trademark rights in the MICROGAMING Mark for the purpose of the UDRP.
Each of the Domain Names consist of common and obvious misspellings of the MICROGAMING Mark amounting to typo-squatting, with four of the Domain Names also adding the descriptive term "support", which may indicate that a website reached from those Domain Names provides support to users of the Complainant's products. An individual viewing any of the Domain Names may be confused into thinking that the Domain Name would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names is confusingly similar to the Complainant's MICROGAMING Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant (or any other entity) to register or use the Domain Names or to seek the registration of any domain name incorporating the MICROGAMING Mark or a mark similar to the MICROGAMING Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use any of the Domain Names in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services; the use of the Domain Names for what appears to be a parking page with pay-per-click links including pay-per-click links referring to the services offered by the Complainant or its customers does not amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in any of the Domain Names under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant (or any predecessor in title or Neosoft Anstalt) and its reputation in the MICROGAMING Mark at the time the Respondent registered the Domain Names. While the Domain Names were registered over 8 years ago, the Panel notes that the Respondent's Website contains links referring to services provided by the Complainant's software. Furthermore, the Respondent has provided no explanation, and none is immediately obvious, why an entity would register nine domain names containing misspellings of the coined word "micrograming" unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its MICROGRAMING Mark. In these circumstances, the Respondent's conduct in registering the Domain Names when it was aware of the Complainant's rights and lacked rights or legitimate interests of its own amounts to registration in bad faith
The Respondent's Website offers what appear to be pay-per-click links to various websites, some of which are competitors with the Complainant and/or its customers. Given that the Respondent has offered no plausible explanation for the registration of the Domain Names (or their use in this manner for 8 years) the Panel finds that that the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the MICROGAMING Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website. As such the Panel finds that the Domain Names are being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under 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 Domain Names, <mcirogaming.com>, <micorgaming.com>, <micorgamingsupport.com>, <microgaimng.com>, <microgaimngsupport.com>, <microgamign.com>, <microgamignsupport.com>, <microgamnig.com> and <microgmaingsupport.com> be transferred to the Complainant.
Date: May 21, 2018