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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novomatic AG v. WhoisGuard, Inc. / Stefan Bieber, Organisation

Case No. D2020-0713

1. The Parties

The Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.

The Respondent is WhoisGuard, Inc., Panama / Stefan Bieber, Organisation, United States of America.

2. The Domain Name and Registrar

The disputed domain name <novocasinos.xyz> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2020. On March 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2020, 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 March 26, 2020, 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 March 26, 2020.

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 March 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2020.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on April 27, 2020. 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 in June, 1990 and is a gaming technology company. The Complainant operates 255,000 gaming terminals and video lottery terminals in 2,100 gaming operations around the world. It employs more than 3,000 employees and is active in all segments of the gaming industry, offering various products to its partners and clients worldwide. Products range from land based gaming products and services, management systems and cash management, online/mobile and social gaming platforms as well as lottery and sports betting services.

The Complainant owns numerous registrations for NOVO formative trademarks including the following:

Austrian Registration No. 145211 for NOVOMATIC registered on July 15, 1992;

European Union Trade Mark Registration No. 4135273 for NOVO registered on March 2, 2006;

European Union Trade Mark Registration No. 004684321 for NOVO UNITY registered on October 26, 2006;

European Union Trade Mark Registration No. 006024145 for NOVOCARD registered on May 29, 2008;

European Union Trade Mark Registration No. 006174577 for NOVOGAMING registered on July 7 2008;

European Union Trade Mark Registration No. 006267901 for NOVOPLAY registered on August 8, 2008;

European Union Trade Mark Registration No. 006413496 for NOVOLINO WIN & MORE registered on October 23, 2008; and

European Union Trade Mark Registration No. 006796346 for NOVO TEXAS HOLD’EM POKER registered on December 11, 2008.

The Complainant has also operated its casinos under the names Novo and Novomatic, such as Novomatic-Casinos and Novocasinos, and has used the abbreviation NOVO for many years.

The disputed domain name <novocasinos.xyz> was registered on November 20, 2015 and at the time the Complaint was filed reverted to a website which features links to online gaming sites.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <novocasinos.xyz> is confusingly similar to the Complainant’s NOVO and NOVOMATIC trademarks. The disputed domain name features the trademark NOVO as its first and dominant element, and the addition of the descriptive word “casinos” does not serve to distinguish the disputed domain name from the Complainant’s trademarks.

The Complainant contends that the Respondent is not commonly known by the mark NOVO and has no relationship with the Complainant. The Complainant has not authorized, licensed or permitted the Respondent to use the Complainant’s NOVO trademark.

The Complainant submits that the Respondent has registered and used the disputed domain name in bad faith. The disputed domain name is confusingly similar to the Complainant’s NOVO trademark and uses the word “casinos” which is descriptive of the Complainant’s products and services. Furthermore, the Respondent has directed the disputed domain name to a website which features links to direct competitors of the Complainant. This conduct is evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interest 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

The Panel finds that the Complainant does have trademark rights in the trademark NOVO by virtue of the registrations listed in section 4 of this Decision.

The Panel finds that the disputed domain name <novocasinos.xyz> is confusingly similar to the Complainant’s trademark as the disputed domain name features as its first and dominant element the Complainant’s NOVO trademark. The addition of the descriptive word “casinos” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights and legitimate interests. The Complainant clearly owns rights in the NOVO trademarks as noted in section 4 of this Decision. The Complainant has used its NOVO formative trademarks for many years before the Respondent registered the disputed domain name and has an established reputation in the gaming products and services in Europe and internationally. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was most likely aware of the Complainant’s trademark. The disputed domain name is a deliberate combination of Complainant’s distinctive NOVO mark and the descriptive word “casinos” which identifies Complainant’s principal business activity and field. The Respondent chose to use the disputed domain name to direct customers to a website which features links to direct competitors of the Complainant for purposes of monetary gain, which is not a bona fide offering of goods and services under the Policy.

In this situation, the burden shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.

Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent must have registered the disputed domain name with the Complainant in mind. The disputed domain name <novocasinos.xyz> contains as its first and dominant element the Complainant’s registered trademark. The addition of the word “casinos” supports the inference that the Respondent knew of the Complainant’s reputation in and connection to the gaming industry. The Respondent’s intention to capitalize on the Complainant’s reputation in its brand is made clear by the direction of the disputed domain name to a website which features links to direct competitors of the Complainant for purposes of monetary gain. This conduct support a finding of registration and use in bad faith.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <novocasinos.xyz> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: May 1, 2020

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