WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novomatic AG v. Vinicius Almeida
Case No. D2021-1244
1. The Parties
The Complainant is Novomatic AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.
The Respondent is Vinicius Almeida, Brazil.
2. The Domain Names and Registrar
The disputed domain names <gaminator.club>, <gaminator.link>, and <gaminator.live> (together, the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 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 26, 2021.
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 April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on May 28, 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 an Austrian company founded in June 1990. It is an international manufacturer and operator of high-tech electronic gaming equipment. It operates around 255,000 gaming terminals and video lottery terminals in some 2,100 operations, exporting to more than 70 countries. The Complainant’s turnover was around EUR 5 billion in 2018. An affiliate of the Complainant operates a website featuring the Complainant’s GAMINATOR games at “www.gaminator.com”.
The Complainant is the registered proprietor of European Union trademark number 3602596 GAMINATOR registered on June 22, 2005 and European Union trademark number 9655441 GAMINATOR registered on May 25, 2011.
The Domain Names were all registered on March 24, 2021. None of them now resolves to an active web page. At the time of filing of the Complaint, the disputed domain name <gaminator.live> resolved to a website featuring what the Complainant claims to be counterfeit copies of the Complainant’s games, and the domain names <gaminator.club> and <gaminator.link> were resolving to inactive websites.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to its GAMINATOR trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Respondent registered and is using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in its GAMINATOR trademarks, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its widespread use of the mark over many years. Ignoring the generic Top-Level Domains (“gTLDs”) “.club”, “.link” and “.live”, the Domain Names are identical to the Complainant’s GAMINATOR word mark. Accordingly, the Panel finds that the Domain Names are identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Names. The disputed domain name <gaminator.live> was being used, at least until the time of filing the Complaint, for a website featuring copies of the Complainant’s GAMINATOR games, under the GAMINATOR trademark. The Respondent has never been licensed or otherwise authorized by the Complainant to use its GAMINATOR trademarks or to operate GAMINATOR games under the GAMINATOR mark. The Respondent appears to have been operating infringing copies of the Complainant’s games. As many UDRP panels have previously found, there can be no rights or legitimate interests in selling counterfeit products. The disputed domain names <gaminator.club> and <gaminator.link> were resolving to inactive websites.
Furthermore, the Panel cannot conceive of any legitimate use to which the Respondent could put any of the Domain Names.
The Respondent has chosen not to respond to the Complaint to explain its use of the Domain Names or to take any other steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
In light of the use to which the Respondent has put the disputed domain name <gaminator.live>, there is no doubt that the Respondent had the Complainant and its rights in the GAMINATOR mark in mind when it registered the Domain Names. The only legitimate inference is that the Respondent registered the disputed domain name <gaminator.live> for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the mark, both by confusing Internet users into believing that the domain name was being operated by or authorized by the Complainant for legitimate purposes related to the Complainant’s activities and to draw in Internet users to offer them unauthorized, apparently counterfeit copies of the Complainant’s products. In the Panel’s view, the fact that the website to which the disputed domain name <gaminator.live> resolved became inactive after the Complaint was filed, does not prevent a finding of bad faith use.
The Respondent has not apparently, made any use of the disputed domain names <gaminator.club> and <gaminator.link>. However, the fact that the Respondent registered the three Domain Names on the same date, all identical to the Complainant’s GAMINATOR mark, indicates that it did so with a similar intent. Furthermore, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) points out at section 3.3 that panelists have consistently found that non-use does not prevent a finding of bad faith. Factors that panelists take into account, whilst looking at all the circumstances, 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”.
In this case, the Mark is distinctive and well known; there has been no formal response by the Respondent; and the Panel has indicated that it is unable to conceive of any good faith use of any of the Domain Names by the Respondent.
Accordingly, the Panel finds that all the Domain Names have been registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <gaminator.live>, <gaminator.club> and <gaminator.link> be transferred to the Complainant.
Date: June 10, 2021