WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novomatic AG v. E-CloudSolutions
Case No. D2019-2627
1. The Parties
Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.
Respondent is E-CloudSolutions, Belize.
2. The Domain Name and Registrar
The disputed domain name <bookofra.website> (“Domain Name”)is registered with Key-Systems GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2019. On October 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 30, 2019, the Registrar transmitted by email 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2019. Respondent sent an email to the Center on November 22, 2019. The Center notified the Commencement of Panel Appointment Process on November 25, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on December 16, 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
Per Complaint, Complainant is an Austrian company, founded in 1990. Complainant’s group, with a turnover of around EUR 5 billion in 2018 is one of the largest high-tech gaming technology companies worldwide. The group was founded in 1980 and employs more than 30,000 staff worldwide. Complainant’s group has locations in more than 50 countries and exports high-tech electronic gaming equipment and solutions to more than 70 countries. It operates around 255,000 gaming terminals and video lottery terminals (“VLTs”) in more than 2,100 gaming operations as well as via rental. Per Complaint, Complainant has long used the name BOOK OF RA to denote its products and the brand has acquired reputation among relevant consumers.
Complainant owns trademark registrations for BOOK OF RA, including:
- European Union Trade Mark registration No. 4451431 for BOOK OF RA (word), filed on May 23, 2005 and registered on May 24, 2006, for goods and services in International classes 9, 28 and 41; and
- European Union Trade Mark registration No. 12456828 for BOOK OF RA (figurative), filed on December 9, 2013 and registered on April 24, 2014, for goods and services in International classes 9, 28 and 41.
The Domain Name was registered on October 16, 2019, and does not resolve to an active web page.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(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.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the BOOK OF RA mark.
The Panel finds that the Domain Name <bookofra.website> is identical to the BOOK OF RA trademark of Complainant.
The Domain Name incorporates the trademark of Complainant in its entirety. The generic Top-Level Domain (“gTLD”) “.website” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, the Domain Name leads to an inactive website.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s BOOK OF RA trademark has acquired reputation in the field of gaming and online gaming. Because the BOOK OF RA mark had been widely used and registered at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name.
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of BOOK OF RA mark on the Internet (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462). This also in view of the nature of Complainant’s services under BOOK OF RA, namely inter alia online gaming.
Respondent could have searched the European Union trademark registry and should have found Complainant’s prior registrations in respect of BOOK OF RA (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Furthermore, the Domain Name incorporates in whole Complainant’s mark. The Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. This also further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry.
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bookofra.website> be transferred to Complainant.
Date: December 30, 2019