WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novomatic AG v. Aleksandr Eremeev
Case No. D2021-1190
1. The Parties
The Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.
The Respondent is Aleksandr Eremeev, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <gaminator.site> (the “Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2021. On April 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 20, 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 April 28, 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 amended Complaint on April 29, 2021.
On April 28, 2021, the Center transmitted an email in English and Russian regarding the language of the proceeding to the parties. On April 29, 2021, the Center received the Complainant’s response in which it confirmed its request for English to be the language of the proceedings, together with a Russian translation of the Complaint. The Respondent did not comment on the language of the proceeding.
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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2021.
The Center appointed Mariya Koval as the sole panelist in this matter on June 4, 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.
4. Factual Background
The Complainant is a part of the Novomatic Group of companies, one of the largest gaming technology companies in the world, which was founded in 1990. The Novomatic Group has locations in more than 50 countries, exports high-tech gaming equipment to around 90 countries, and employs more than 30,000 staff worldwide. The Novomatic Group operates around 255,000 gaming terminals and video lottery terminals in its some 2,100 plus gaming operations, as well as via rental concepts.
The Complainant is the owner of numerous GAMINATOR trademark registrations (the “GAMINATOR Trademark”) in many jurisdictions throughout the world, including Russian Federation, among which are:
- International Trademark Registration No. 918228, registered on October 2. 2006, in respect of goods and services in classes 9, 28, 41;
- European Union Trade Mark Registration No. 003602596, registered on June 22, 2005, in respect of goods and services in classes 28 and 41;
- European Union Trade Mark Registration No. 009655441, registered on May 25, 2011, in respect of goods and services in classes 9, 16, 38 and 42.
The Complainant operates the domain name <gaminator.com>, reflecting its GAMINATOR Trademark, for sale and promotion of its online casino services.
The Disputed Domain Name was registered on April 3, 2021. As at the date of this decision the Disputed Domain Name resolves to a page which has the following indication “403 Forbidden Access to this resource on the server is denied!”
5. Parties’ Contentions
The Complainant asserts that the Disputed Domain Name is identical with its GAMINATOR Trademark. The Complainant notes that its GAMINATOR Trademark is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favour of its meaning as a mark identifying the Complainant’s products and services.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the fact that the Respondent has no relationship with or permission from the Complainant to use the GAMINATOR Trademark. The Respondent has neither been commonly known by the Disputed Domain Name or the GAMINATOR Trademark, nor has acquired any trademark or service mark rights.
The Complainant also alleges that the Disputed Domain Name was registered in bad faith in view of the fact that the Respondent registered the Disputed Domain Name long after the Complainant had registered its GAMINATOR Trademark and long after the Complainant’s affiliate had launched a website under the domain name <gaminator.com>.
The Respondent registered the Disputed Domain Name in bad faith with full knowledge of the Complainant and its GAMINATOR Trademark for no other reason than the intention to lead the public to online games which may be counterfeits of the Complainant’s games.
The Complainant further contends that the Disputed Domain Name is also used in bad faith. Bad faith use is shown by the Respondent’s activities of passively holding the Disputed Domain Name. The Respondent is preventing the Complainant from reflecting its GAMINATOR Trademark in the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order for the complainant to succeed it must satisfy the panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 was registered and is being used in bad faith.
6.1. Preliminary Issue: Language of Proceedings
The Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Russian.
The Complainant has filed the Complaint in English, further presenting a Russian translation of the Complaint, and requests that English be the language of this proceeding in view of the correspondence with the Registrar in English, the fact that the Respondent is likely not to file a response, and the clear facts of the case in support of the Complainant.
In accordance with paragraph 11(a) of the Rules unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant and its representative are both Austrian companies. The Panel takes into account that neither the Complainant nor its representative are able to communicate in Russian.
The Disputed Domain Name and generic Top-Level Domain (“gTLD”), both are in Latin characters and not Cyrillic characters.
Furthermore, having received the Center’s communication regarding the language of the proceeding, both in English and Russian, the Respondent did not comment on the language of the proceeding, or otherwise participate in the present proceeding, despite being notified of the Complaint in both English and Russian and provided a Russian translation of the Complaint.
The Panel finds that the Respondent would not be disadvantaged by the language of the proceeding being English.
In light of the above, the Panel concludes in accordance with paragraph 11(a) of the Rules that English shall be the language of this proceeding.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel accepts that the Complainant demonstrated that it has the rights in the GAMINATOR Trademark in view of a number of registrations in different jurisdictions, including Russian Federation, and long use of its GAMINATOR Trademark.
The Disputed Domain Name completely reproduces the Complainant’s GAMINATOR Trademark in combination with the gTLD “.site”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11, the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Previous UDRP panels have recognized that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark; see bridport & cie S.A v. Privatewhois.net, Private Whois bridportadvisory.com, WIPO Case No. D2011-2262.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s Trademark pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no relationship with or permission from the Complainant for use of the GAMINATOR Trademark, the Respondent has neither been commonly known by the Disputed Domain Name or the GAMINATOR Trademark nor has acquired any trademark rights.
In accordance with section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidences demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element.
There is no evidence that the Respondent appears to own any GAMINATOR trademark, nor is the Respondent commonly known by the Disputed Domain Name. Furthermore, the Panel concludes that in view of the GAMINATOR Trademark being highly distinctive it is highly unlikely that anybody could legitimately adopt the Disputed Domain Name for commercial use other than for an intent to create confusion with the Complainant.
Also, taking into consideration the long use of the Complainant’s Trademark, it is impossible to assume that the Respondent was unaware of the Complainant's Trademark at the time of registration of the Disputed Domain Name.
Moreover, the website under the Disputed Domain Name is inactive from the registration date, which gives no grounds for considering the use the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Furthermore, in this case, the Respondent, having a possibility to mention any circumstances for demonstration of its rights or legitimate interests in the Disputed Domain Name, did not submit a response to the Complaint and accordingly did not contest the Complainant’s prima facie case.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the second element in paragraph 4(a) of the Policy has been satisfied by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely:
“(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”
The Complainant registered its GAMINATOR Trademark in 2005 and registered its domain name <gaminator.com> in 2001. Thus first use of GAMINATOR Trademark by the Complainant is more than 20 years before the Respondent registered the Disputed Domain Name. Moreover, the Complainant’s Trademark is original, highly distinctive, and it is most unlikely that the Respondent could have registered the Disputed Domain Name, which incorporates the GAMINATOR Trademark in its entirety, accidentally. In view of this, the Panel is of opinion that the Respondent was likely well aware of the Complainant's Trademark when he registered the Disputed Domain Name in 2021.
The website under the Disputed Domain Name is inactive since its registration date, which also is a factor indicating bad faith. According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The Panel considers it is obvious that the Respondent selected and is using the Disputed Domain Name in bad faith for creating a likelihood of confusion with the Complainant’s GAMINATOR Trademark and to disrupt the Complainant’s brand and business.
Finally, the Respondent, not participating in these proceedings, has failed to indicate any facts and/or evidences, which would show the fair registration and use of the Disputed Domain Name.
Therefore, having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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.site> be transferred to the Complainant.
Date: June 18, 2021