WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novomatic Netherlands B.V. v. Peter Giesbers, Netvista Media SL ESB54981352
Case No. D2021-0818
1. The Parties
The Complainant is Novomatic Netherlands B.V., Netherlands, represented by Bird & Bird (Netherlands) LLP, Netherlands.
The Respondent is Peter Giesbers, Netvista Media SL ESB54981352, Spain (self represented).
2. The Domain Name and Registrar
The disputed domain name <random-runner.com> (the “Disputed Domain Name”) is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2021. On March 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 22, 2021, 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 23, 2021 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 amendment to the Complaint on March 24, 2021.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on March 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. The Response was filed with the Center on April 17, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 5, 2021. 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.
On May 7, 2021 the Panel issued a procedural order (the “Procedural Order”) providing as follows:
“The Panel has reviewed the material filed by the parties. The Panel notes that a significant proportion of the material relied upon by the Respondent is in Dutch which is not a language the Panel reads. The Panel also notes the following statement in the Response: 'EuroCazino was aware that for this purpose I registered several domain names containing the names of the games they offered, including RANDOM RUNNER. During the registration for their affiliate program I had to specify which domain names I was going to use, the fact that they accepted me as an affiliate proves that they agreed to the use of these domain names.'
The Panel requests that the Respondent provide a supplemental filing by May 14, 2021 which (1) provides copies (not hyperlinks) of the material referred to in the Response which the Respondent relies upon, together with translations into English as appropriate; and (2) provides documentary evidence if available of the matters referred to in the statement concerning EuroCazino quoted above.
The Complainant shall be entitled if it wishes to provide a supplementary filing by May 21, 2021 such filing to be limited to commenting upon any matters raised by the Respondent in its supplemental filing.”
The filings made by the Parties in response to the Procedural Order are discussed below.
4. Factual Background
The Complainant is part of the Novomatic Group, a Netherlands corporation which is one of the world's major participants in the gaming industry. The Novomatic Group operates over 232,000 gaming machines in casinos worldwide, and had a revenue of 2.6 billion EUR in 2019.
The Complainant owns two trademarks for “RANDOM RUNNER” as follows – Benelux trademark registration number 548369, registered on February 22, 1994 (for slot machines and gaming machines in class 9); EUTM registration number 14861819, registered on December 2, 2015 (for a range of goods and services in classes 9, 28, 35, 38, 41, 42). These are referred to as the “RANDOM RUNNER trademark” in this decision. In addition, the Complainant’s parent company owns a trademark for the words “Random Runner” in stylised form – EUTM registration number 006593602 registered on November 22 2013 (this is referred to as the “RANDOM RUNNER device mark” in this decision).
The term “Random Runner” was originally used as the name of a particular type of physical slot machine apparently introduced in the Netherlands in about 1988. The subsequent history of this usage is discussed further below.
The Disputed Domain Name was registered by the Respondent on October 18, 2007. It is linked to a website (the “Respondent’s Website”) which provides an online virtual replication of a mechanical “Random Runner” slot machine and invites visitors to the site to gamble on the machine. Visitors who accept that invitation are then “clicked through” to a third party gambling site where various virtual slot machine games are available. The third party site has changed on occasion over the time period since 2007 but the principle remains the same. The Respondent earns referral revenue as a result.
An important point is that as far as the Panel can see there is no evidence before the Panel that the Complainant has used the term “Random Runner” in any way since 1988 when (according to the Respondent and not disputed by the Complainant) the physical Random Runner slot machines were apparently banned. The Complainant or its parent company have obtained further trade marks for the term Random Runner (above).
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Complainant says the Disputed Domain Name is identical or confusingly similar to the RANDOM RUNNER Trademark. It says the RANDOM RUNNER trademark is entirely incorporated in the domain name with a dash sign as connector and that “Random Runner” forms the dominant, most significant and distinctive element of the domain name. It cites various UDRP decisions relevant to this issue.
The Complainant says the Respondent has no rights or legitimate interests in the term “RANDOM RUNNER”. It says the Respondent registered the Disputed Domain Name many years after the Complainant registered its Benelux word mark “RANDOM RUNNER” (registration number 548369). The Complainant says it did not license or otherwise authorize the Respondent to use its trademarks in a domain name. It says the Respondent’s use of the Disputed Domain Name is not bona fide. In this regard it relies on the following matters. The header to the Respondent’s Website says that it is the “Officiële Random Runner gokkast” (in English: “Official Random Runner slot machine”). Further it says that text on the Respondent’s Website states in Dutch that visitors can play the “one and only real online version” of the Random Runner slot machine, and the website contains a big button to “start the game”. It also says that the Respondent’s Website prominently uses a copy of the Random Runner device mark. It also says the Respondent is not known by the RANDOM RUNNER name and he is not making legitimate noncommercial or fair use of the Disputed Domain Name.
In consequence, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. It says the Disputed Domain Name is confusing to customers and the Respondent’s Website is intended to divert business from the Complainant’s website. It says there are various links to other websites on the Respondent’s Website, with the most prominently displayed supposedly enabling the visitor to play the game Random Runner. However, if these links are clicked, they do not lead the visitor to Complainant’s website (nor to a website that is affiliated with Complainant), but to another third-party website. The Respondent therefore also uses the domain name in order to drive internet traffic to third party websites providing goods or services competitive with Complainant’s goods and services.
The Respondent makes a number of arguments, many of which seemed to be based upon his understanding of Benelux trademark law rather than issues directly applicable under the Policy. To the extent the Panel considers them relevant these arguments are discussed below. The Respondent’s principal point appears to be contained in the following passages from the Response:
“RANDOM RUNNER was a classic slot machine created by Steed Revote. In May 1988, the slot machine was first released by Revote Electronics, a company that later became known as Errel, and is now part of Eurocoin/ JVH Games/ Novomatic. This slot machine was banned in the Netherlands on January 1, 1995”.
“The very first online slot game was only launched in 1996 by the US company InterCasino. EuroCazino was the first to introduce an online game called ‘RANDOM RUNNER’ of the Simbat brand back in 2002 soon followed by several other providers including FruitKings.
I registered the domain name in 2007 because EuroCazino offered an affiliate program called Spinity which made it possible to promote their RANDOM RUNNER game in exchange for a commission. EuroCazino was aware that for this purpose I registered several domain names containing the names of the games they offered, including RANDOM RUNNER. During the registration for their affiliate program I had to specify which domain names I was going to use, the fact that they accepted me as an affiliate proves that they agreed to the use of these domain names.
EuroCazino was a popular online platform with hundreds of affiliates. After this platform stopped to exist at the end of 2016, I decided to continue with FruitkingsPartners who also had RANDOM RUNNER in their range of games. When they stopped as well, I switched to Omnislots because I couldn't find any more providers that offered RANDOM RUNNER.
I claim that since 2002 RANDOM RUNNER is a generic game name, that I own a certain right and that the registration and it ́s use was and is not in bad faith.”
In response to the Procedural Order (above) the Respondent stated “Regarding the mentioned quote about the registration and approval of ‘Spinity’, the affiliate program of Eurocazino,I don't have email communication that dates back 14 years. The only ‘proof’ I can send you is a screenshot of the registration screen from October 2007, the month that I did register random-runner.com and used during the registration proces. Included as attachment named: Source 8”. The attachment named Source 8 is a screen shot of an online page for registration with the Spinity affiliate program. It makes no reference to Random Runner.
However a further attachment the Respondent provided is a screen shot taken from the “wayback machine” archive of a page in the website at “www.spinity.com” taken on October 10, 2004 which contains a picture of a Random Runner display and under a date of “March 09” states “Due to numerous player requests Eurocazino has introduced its new and highly claimed hit: Random Runner slot machine. Your players would definitely recognise and enjoy this old timer classic machine in its virtual implementation offered by Eurocazino. Please head to the games section after this game”.
The Respondent also provided a further screenshot said to be taken from “www.archive.org” which shows an entry under a heading “News” dated “2004-01-14” which reads “Random Runner Slot Machine. Another great addition to the range of Eurocazino titles – the Random Runner. Its online version would surely remind you of the true old ‘runner’….”
The Complainant submitted an additional filing commenting on this material. In this it stated as follows:
“However, as also stated on page 10 of the Complaint, Complainant did not, and nor did any Novomatic group company or legal predecessors, license or otherwise authorise Respondent to use its trademarks, let alone grant the right to register a domain name that is essentially identical to Complainants invoked trademark(s). In addition, Complainant, nor any Novomatic group company, nor any legal predecessor, has ever granted ‘EuroCazino’ or ‘Spinity’ any license (also not through sub-licenses), nor has it granted the right to register domain names containing trademarks of Complainant, let alone that these parties could grant such rights to third parties such as Respondent. Moreover, it indicates that such parties themselves infringed upon the Random Runner trademarks if they used these trademarks, and/or cooperated in the promotion of the domain name of Respondent.”
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that each of the following apply:
(i) the Disputed Domain Name is identical with 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the RANDOM RUNNER trademark. The Disputed Domain Name is confusingly similar to this trademark – it replicates the trademark in its entirety and simply substitutes a “-” for the space between the two words. Spaces in any event cannot form part of a domain name string for technical reasons.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has shown that he has been operating the Respondent’s Website since 2007. He has therefore used the Disputed Domain Name to offer services. Clearly paragraph 4(c)(i) is potentially applicable. The only issue then is as to the meaning of “bona fide”. It seems to the Panel that paragraph 4(c)(i) cannot simply apply if a business exists which has deliberately adopted another person’s trademark as its name, otherwise the Policy would be inapplicable to all cases in which a respondent was operating a business, which is clearly not its intention. The words “bona fide” must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the “bona fide” requirement is not met.
Is this such a case? The Panel has found resolving this issue to be difficult given the facts of this case. The events in question date back seventeen years ago or more and the evidence before the Panel is limited. As best the Panel can tell the Complainant or its predecessors used the term “Random Runner” for a mechanical slot machine introduced in the Netherlands in about 1988. It would appear to have enjoyed a degree of recognition. However, the Respondent says this machine was withdrawn in 1995 when this type of machine became unlawful in the Netherlands – though it is not clear to the Panel that this fact alone would assist the Respondent. The Complainant submitted a detailed filing pursuant to the Procedural Order – in this it does not challenge this statement so the Panel assumes it is correct. In fact if the Complaint is re-read with this knowledge it is then apparent the Complaint carries no information about how, if at all, the Complainant has used the term “Random Runner” since that date. The Panel knows that further trademarks have been obtained (see above) but has no evidence before it as to the manner of any goods or services the Complainant has offered under the Random Runner trademark since 1988. In particular there is no evidence before the Panel that the Complainant itself offers an online version of a “Random Runner” slot machine and nowhere in the Complaint does it say it does so. The Complaint alleges the Respondent’s Website diverts traffic from the Complainant’s website but no information at all is provided about any website of the Complainant.
Accordingly there is no evidence before the Panel of any use (whether by the Complainant or anyone else) of the term “Random Runner” from 1995 until 2004 when, according to the Respondent, a third party, EuroCazino, introduced a virtual version of the Random Runner slot machine into its on line offering of gambling games. It seems clear it did so without the consent of the Complainant. The Respondent signed up for an affinity program with EuroCazino to attract traffic and direct it to their web site. He indicated to EuroCazino that he was using the Disputed Domain Name to do so. EuroCazino was apparently content he should do so. The Complainant in its filing pursuant to the Procedural Order says that EuroCazino’s actions amounted to infringement of its Random Runner trademark. It does not however dispute that EuroCazino was offering an online virtual version of the Random Runner slot machine. The Panel has again re-read the Complaint carefully and nowhere does it suggest that the Complainant was itself offering an online virtual version of the Random Runner slot machine.
The Panel is not convinced that in these circumstances the Complainant has discharged its burden. The Complaint says that Eurocazino was itself infringing the Random Runner trademark. The Panel does not know if that is correct – it would involve questions of trademark law but it seems to the Panel that issues such as the scope of the trademark and whether it remained valid given what may be a period of non-use might well be relevant. However in any event there is no evidence the Complainant took any action to stop this alleged infringement at the time, and it is not clear to the Panel that the Respondent would have had any reason to know that EuroCazino was (according to the Complainant) acting improperly. If EuroCazino was offering a virtual version of the “Random Runner” slot machine on its on line platform apparently without objection from anyone why should the Respondent not be entitled to take that at face value and join the affinity program? The Panel accepts that it seems likely that the Respondent was aware that the EuroCazino virtual “Random Runner” gambling machine replicated a traditional slot machine that had been withdrawn from the Dutch market. Both EuroCazino and the Respondent were using the term “Random Runner” as a reference to the earlier now discontinued physical machine and to indicate that what was being offered was a virtual representation of that machine – this as far as the evidence before the Panel is concerned, was true. If in doing so they were infringing trade mark (or other) rights held by the Complainant or its associated companies, that was something that could have been addressed at the time by the Complainant as a matter of trade mark law. The Panel is not convinced that the Respondent joining an affinity program in the way he did amounts to a lack of bona fides so far as the Policy is concerned. There is no evidence that he was diverting traffic from any Random Runner online game offered by the Complainant as there is no suggestion before the Panel that the Complainant offered such a game online.
In reaching this conclusion the Panel has had regard to other factors that are present and which the Complainant relies upon. The Complainant has pointed out that the header to the Respondent’s Website says that it is the “Officiële Random Runner gokkast” which translates to: “Official Random Runner slot machine”. The Respondent has not commented on this or explained why this is. The Panel is not sure what to make of this. Is it just marketing exaggeration? Or is it as the Complaint suggests an untrue claim that the Respondent’s Website has been approved by the manufacturer of the original physical machine. There is no evidence before the Panel of whether customers are interested in such an endorsement or whether it has any effect at all in terms of increasing the amount of traffic that visits the Respondent’s Website. Overall, and given the trademark issues noted above, the Panel is not persuaded this fact is enough to allow a conclusion in the Complainants favour.
The Complainant also draws attention to the fact that the Respondent’s Website uses the Random Runner Device Mark. However, it seems to the Panel it does so because the image contained on the Respondent’s Website is an image of a traditional physical Random Runner slot machine which bears that device mark. The Respondent says he is surprised the Complainant’s parent has been able to obtain a trademark for this term but he has changed the image on the Respondent’s Website to replace the wording in question with a different style.
The Complainant also says that the Respondent’s Website contains “information about the Complainant’s business”. The Panel has been unable to understand this allegation. The text of the Respondent’s Website is in Dutch and the Complainant has not explained to what it is referring – but the Panel cannot see any obvious references to the Complainant or its business apart from the Random Runner virtual machine itself.
The Complainant says there are regulatory reasons why it should control websites that use its trademarks as on line gambling is a highly regulated industry. That as a statement may well be correct but given the broader trademark issues noted herein, it is better addressed as part of the Parties broader dispute.
Finally the Panel has had regard to the Respondent’s offer to settle this Complaint for a substantial payment in return for which he would transfer the Disputed Domain Name and three other domain names. This offer was made subsequent to the Complaint so is not referred to by the Complainant. Clearly the sum concerned – EUR 10,000 – is substantial but the Panel has no knowledge of what the other three domain names are and the Panel does not feel it can safely reach a conclusion that his was not a genuine attempt to settle as opposed to evidence of bad faith.
Ultimately, it seems to the Panel that the matters the Complainant relies upon are much more suitably resolved in terms of the applicable trade mark rights and possible infringement of those rights – which should be determined by a court of law with appropriate jurisdiction. The Panel is also conscious that the Respondent alleges that the term “Random Runner” may have become generic; this too is a matter better addressed by an appropriate court.
The Panel therefore concludes that on balance, so far as the Policy is concerned, the Complainant has not discharged its burden of establishing that the Respondent lacked rights or a legitimate interest in the Disputed Domain Name.
C. Registered and Used in Bad Faith
In the light of the Panel’s finding above as to legitimate interests the Panel does not need to address this issue.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Date: June 5, 2021