WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novomatic AG v. WhoisGuard, Inc. / Lukas Dolejs, Noveline minigames
Case No. D2020-1172
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 / Lukas Dolejs, Noveline minigames, Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <novoline.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 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 11, 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, notifying the Complainant that the Complaint was administratively deficient, 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 12, 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. On May 18, 2020, the Center received an email communication from the Respondent. Upon request of the Complainant, the proceeding was suspended on May 25, 2020, pursuant to paragraph 17 of the Rules. The proceeding was suspended until June 24, 2020.
Upon request of the Complainant, the proceeding was reinstituted on June 25, 2020, and the due date for the Response was set for July 2, 2020. No Response was received from the Respondent. On July 3, 2020, the Center informed the Parties that it would proceed to panel appointment, pursuant to paragraph 6 of the Rules.
The Center appointed Kaya Köklü as the sole panelist in this matter on July 7, 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 1990 and is active in the field of providing gaming and gambling terminals worldwide. Its product portfolio also includes online gaming platforms, as well as lottery and sports betting services.
The Complainant owns various trademark registrations, which begin with “NOVO”, inter alia, the European Union trademark registration no. 011184272 (registered on January 23, 2013) for the wordmark NOVOLINE. This trademark registration provides protection for various gaming products and services as covered in classes 9, 28, and 41.
The Respondent is an individual from Czech Republic.
The disputed domain name was registered on April 12, 2020.
The screenshot, as provided by the Complainant in Annex 13 to the Complaint, shows that the disputed domain name resolved to a Discord page referring to a “Novoline”-group and inviting users to register and join the group.
At the time of the decision, the disputed domain name does no longer resolve to an active website.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to its NOVOLINE trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link between the Complainant and the Respondent.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith, particularly by misleading and poaching the Complainant’s customers.
Except the informal and brief email communication sent to the Center on May 18, 2020, indicating the Respondent was no longer interested in maintaining the disputed domain name, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein.
A. Identical or Confusingly Similar
The disputed domain name is, in view of the Panel, identical to the Complainant’s NOVOLINE trademark as it incorporates the Complainant’s trademark in its entirety without any additions or amendments.
In the Panel’s view, the mere addition of the generic Top-Level Domain (“gTLD”) “.xyz” may, as a general principle, be disregarded when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within a domain name, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).
In view of the finding above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark NOVOLINE, especially as the disputed domain name is identical to the Complainant’s trademark (see section 2.5.1 of the WIPO Overview 3.0).
There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a Response, the Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name. At the date of registration of the disputed domain name, the Complainant’s NOVOLINE trademark was already registered and used for several years. The assessment of bad faith registration is further supported by the fact that the disputed domain name is identical to the non-dictionary trademark of the Complainant.
The Panel is also convinced that the Respondent is using the disputed domain name in bad faith. The Panel assesses the Complainant’s non-dictionary trademark NOVOLINE as sufficiently distinctive, so that any descriptive use of the Complainant’s trademark by the Respondent appears unlikely.
Furthermore, the Panel accepts the failure of the Respondent to submit a substantive response to the Complainant’s contentions as an additional indication for bad faith use.
Finally, as the disputed domain name is identical to the Complainant’s trademark, the Panel is of the opinion that the Respondent’s use of a Discord page linked to the disputed domain name (as evidenced in Annex 13 to the Complaint) likely causes the false impression that the website is operated or at least endorsed or authorized by the Complainant. As Internet users, who were trying to reach the disputed domain name, were also invited to register and join the alleged “Novoline”-group, there is even a valid risk that the Respondent is somehow involved in potential phishing activities.
Taking all circumstances of this case into consideration, the Panel concludes that there is sufficient indication to accept that the dispute domain name is used in bad faith by the Respondent.
The fact that the disputed domain name does currently not resolve to an active website does not change the Panel’s findings in this respect.
Consequently, the Panel is convinced that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 disputed domain name <novoline.xyz> be transferred to the Complainant.
Date: July 13, 2020