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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novomatic AG v. WhoisGuard, Inc. / Alexey Ivanov

Case No. D2020-2043

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 / Alexey Ivanov, Ukraine.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 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 August 4, 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 August 6, 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 August 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2020.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on October 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 is a part of the Novomatic Group, a high-tech gaming technology company with a turnover of around EUR 5 billion in 2018. The Novomatic Group employs more than 30,000 staff worldwide. Founded by entrepreneur Professor Johann F. Graf in 1980, the Novomatic Group has locations in more than 50 countries and exports high-tech electronic gaming equipment and solutions to more than 70 countries. The Novomatic Group operates around 255,000 gaming terminals and video lottery terminals (VLTs) in its some 2,100-plus gaming operations as well as via rental concepts. Through its numerous international subsidiaries, the Novomatic Group is fully active in all segments of the gaming industry and thus offers a diversified omni-channel product portfolio to its partners and clients around the world.

The Complainant has proven to be the owner of the GAMINATOR mark.

The Complainant is inter alia the owner of:

European Union trade mark GAMINATOR (word) registration No. 3602596 registered on June 22, 2005;

European Union trade mark GAMINATOR (device) registration No. 9655441 registered on May 25, 2011.

The disputed domain name was registered on July 20, 2020.

The website at the disputed domain name resolves to a pay-per-click (“PPC”) page and displays the message: “This domain was recently registered at Namecheap. Please check back later!”

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the GAMINATOR trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain the transfer of the disputed domain name, paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant must demonstrate to the Panel that:

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

The Complainant has established rights in the GAMINATOR trademark.

The disputed domain name is clearly identical to the Complainant’s GAMINATOR trademark, save for the “.online” generic Top-Level Domain (“gTLD”).

Owing to the fact that the gTLD is generally disregarded under the test for confusing similarity for the purposes of the Policy, the Panel finds that the disputed domain name is identical to the GAMINATOR trademark in which the Complainant has rights.

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

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the name “Gaminator” or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.

The Complainant has submitted evidence that the disputed domain name used to resolve to a PPC website containing links that directly compete with the Complainant’s business (Annex 14 to the Complaint). Previous UDRP panels have found that the use of a domain name to host a PPC website does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s trademark or otherwise mislead Internet users (section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

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

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered in bad faith and has been used in bad faith.

Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts and partially reports below) that:

The Respondent could not be unaware of the existence of the Complainant’s trademarks when registering the disputed domain name.

In fact, the Respondent registered the disputed domain name long after the Complainant had registered its trademarks and long after the Complainant, through its affiliate, had operated a website under the domain names <gaminator.at> and <gaminator.com>.

The term “gaminator” is purely imaginative. It is therefore unlikely that the Respondent chose the disputed domain name without the intention of invoking a misleading association with the Complainant.

The Panel notes that at the time of issuing this Decision, the disputed domain name does not resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (section 3.3 of the WIPO Overview 3.0). Moreover, as noted under section 6B of this Decision, the disputed domain name has been used to host a PPC website containing links that directly compete with the Complainant’s business. This Panel finds that all the above qualifies as bad faith registration and use under paragraph 4(b)(iv) of the Policy.

The Respondent has used a privacy shield registration service for the disputed domain name. While the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, it is the Panel’s opinion that in the present case the use of a privacy shield, combined with the elements previously discussed, amounts to a further inference of bad faith registration and use.

Finally, the Respondent has not responded to (nor denied) the assertions made by the Complainant in this proceeding.

Accordingly, the Panel finds that the Complainant has satisfied 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 <gaminator.online> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: October 19, 2020

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