WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novomatic AG v. Sujitra Seatung
Case No. D2019-2301
1. The Parties
The Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwalte OG, Austria.
The Respondent is Sujitra Seatung, Cambodia.
2. The Domain Name and Registrar
The disputed domain name <bookofra.live> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2019. On September 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 September 27, 2019, 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 amended Complaint on September 27, 2019.
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 October 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 4, 2019. 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 in the high-tech gaming technology business. It is the owner, amongst others, of the European Union trademark registration No. 12456828 for BOOK OF RA (and device), filed on December 9, 2013 and registered on April 23, 2014, in classes 9, 28 and 41 (Annex 7 to the Complaint).
The disputed domain name was registered on August 17, 2019. No active webpage resolves from the disputed domain name.
5. Parties’ Contentions
The Complainant asserts to be one of the largest high-tech gaming technology companies worldwide, having had a turnover of around EUR 5 billion in 2018, being present in more than 50 countries and exporting to more than 70 countries gaming products and services as well as a range of sophisticated ancillary products and services.
The Complainant further asserts that its BOOK OF RA trademark has obtained a reputation and has been exclusively used by the Complainant in such a way that users of the Complainant’s products associate it exclusively with the Complainant, having acquired a secondary meaning and become a unique identifier of the Complainant’s products and services.
According to the Complainant, the disputed domain name reproduces its registered trademark and is therefore confusingly similar therewith.
As to the absence of rights or legitimate interests, the Complainant argues that:
(i) the Respondent is not using the disputed domain name;
(ii) the Respondent has no relationship with or permission from the Complainant to use the BOOK OF RA trademark; and
(ii) Respondent has not been commonly known by the disputed domain name, nor has it acquired any trademark or service mark rights.
In relation to bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent’s bad faith is evident in view of the distinctiveness of the Complainant’s trademark and the intention of the Respondent to sell the disputed domain name to the Complainant, given that the Respondent is preventing the Complainant from reflecting its trademark in a corresponding domain name, which is being passively held by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the BOOK OF RA trademark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7).
The Complainant’s trademark is fully incorporated in the disputed domain name.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the absence of any indication that the Respondent has any registered trademarks corresponding to the disputed domain name or has been commonly known by the disputed domain name as well as the Complainant’s statement that it has no relationship with nor granted the Respondent permission to use the BOOK OF RA trademark corroborate with the indication of a lack of rights or legitimate interests in the disputed domain name. Therefore, the Complainant has fulfilled its burden of making a prima facie case against the Respondent.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Given the nature of the disputed domain name being identical to the Complainant’s trademark, and distinctiveness of the Complainant’s trademark, the Panel finds that the Respondent should have known the Complainant’s trademark at the time of registering the disputed domain name.
In this case, no active use has been made of the disputed domain name. However, passive holding of a domain name can also constitute bad faith. Section 3.3 of the WIPO Overview 3.0 states that “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. The aforementioned factors are all present in this case.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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 <bookofra.live> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: November 15, 2019