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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novomatic AG v. Benjamin Kang

Case No. D2020-1165

1. The Parties

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

The Respondent is Benjamin Kang, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <novomatic.live> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12 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 May 12, 2020, noting that the Complaint was administratively deficient and 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 May 13, 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 May 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2020.

The Center appointed Brigitte Joppich as the sole panelist in this matter on June 5, 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 belongs to the Novomatic Group of companies, a high-tech gaming technology company which was founded in 1990 and employs more than 20,000 people worldwide. In 2018, the Novomatic Group had an annual turnover of EUR 5 billion.

The Complainant is the registered owner of inter alia European Union Trade Mark registration No. 4135273 for NOVOMATIC in International classes 9, 16, 28, 36, 37, 41, 42, and 43 with a priority of November 22, 2004 and registered on March 2, 2006 (the “NOVOMATIC Mark”), and the domain name <novomatic.com>.

The disputed domain name was registered on April 10, 2020. The website available at the disputed domain name only shows the registrar’s standard landing page stating that the disputed domain name has recently been registered and that the owner has not yet put up a website.

5. Parties’ Contentions

A. Complainant

With regard to the three elements specified in the Policy, paragraph 4(a), the Complainant contends that each of the three conditions is given in the present case.

(i) The disputed domain name is identical to the NOVOMATIC Mark, as it fully includes such mark.

(ii) The disputed domain name has not been used by the Respondent so far. The Respondent has no relationship with or permission from the Complainant to use the NOVOMATIC Mark and has neither been commonly known by the disputed domain name or the name “Novomatic” nor has acquired any trademark or service mark rights.

(iii) The Complainant claims that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the Complainant had registered its trademarks. Furthermore, the Respondent had the duty to check the trademark registries before registering the disputed domain name and should have found the NOVOMATIC Mark. In addition, the Complaint states that “the Respondent announces to use the Domain to lead the public to online games which may be counterfeits of Complainant’s games”. With regard to bad faith use, the Complainant contends that the Respondent’s use of the disputed domain name in connection with the registrar’s website misleads and poaches the Complainant’s clients. Furthermore, the Complainant asserts that “the Respondent explicitly refers to Complainant's NOVOMATIC trademark” and that previous “UDRP panels found use of the Domain Names in connection with websites offering counterfeit versions of the Complainant's goods to be in bad faith”. Finally, the Complainant claims that the Respondent is preventing the Complainant from reflecting its trademark in a corresponding domain name.

B. Respondent

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

6. Discussion and Findings

Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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.

A. Applicability of national law

The Complainant refers extensively to Austrian law and requests that it be taken into account in the decision in the present case.

It is well established that the UDRP system is designed to operate in a global context; while rooted in general trademark law principles, in its own terms UDRP jurisprudence generally would not require resorting to particular national laws. National law can only be applied in very limited cases, for example where the parties share a common nationality and the import of a specific national law concept is particularly germane to an issue in dispute. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.15. These conditions are not met in the present case. The Panel therefore will not apply national law.

B. Identical or Confusingly Similar

The second level domain of the disputed domain name fully contains the NOVOMATIC Mark and therefore is identical to such mark.

The Panel finds that the Complainant satisfied the requirements of the Policy, paragraph 4(a)(i).

C. Rights or Legitimate Interests

Even though the Policy requires a complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panels that a complainant has to make only a prima facie case to fulfill the requirements of the Policy, paragraph 4(a)(ii). As a result, once a prima facie case is made, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the burden of production has been shifted to the Respondent.

The Respondent did not deny these assertions in any way and therefore failed to come forward with any allegations or evidence demonstrating any rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In fact, the Respondent is not actively using the disputed domain name, but the nature of the disputed domain name carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under the Policy, paragraphs 4(a)(ii) and 4(c).

D. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent registered and is using the disputed domain name in bad faith.

The Panel considers that the nature of the disputed domain name is such that it was registered with knowledge of the Complainant and with a view to target the Complainant. The Panel is aware that the Respondent did not only register the disputed domain name but also the domain name <novomatic.vip> (see Novomatic AG v. Benjamin Kang, WIPO Case No. D2020-1167). Such factors, coupled with the absence of rights or legitimate interests are sufficient to establish bad faith registration, the Respondent’s knowledge of the Complainant and its trademarks. See WIPO Overview 3.0, section 3.2.

With regard to bad faith use, the Panel notes that the disputed domain name does not resolve to an active website. The Respondent’s nonuse of the disputed domain name could equal to bad faith use under the passive holding doctrine, first set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and confirmed ever since. Based on the overall circumstances of the present proceeding, the Panel finds that the Respondent in all likelihood registered the disputed domain name (just as the domain name <novomatic.vip>) to take commercial advantage of the Complainant’s NOVOMATIC Mark and therefore used it in bad faith.

Consequently, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that the Complainant satisfied the requirements of 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 <novomatic.live> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: June 19, 2020

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