WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novomatic AG v. Andrey Bezklinskiy

Case No. DUA2021-0011

1. The Parties

The Complainant is Novomatic AG, of Austria, represented by Sayenko Kharenko Attorney's Office, Ukraine.

The Respondent is Andrey Bezklinskiy, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <book-of-ra.com.ua> is registered with Internet Invest, Ltd. dba Imena.ua (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 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 June 16, 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 June 21, 2021.

On June 16, 2021, the Center sent an email communication regarding the language of the proceeding in both Russian and English. On June 18, 2021, the Complainant confirmed its request to proceed in English, and the Respondent did not submit any comments.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Russian and English, and the proceedings commenced on June 23, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2021.

The Center appointed Kateryna Oliinyk as the sole panelist in this matter on July 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 .UA Rules, paragraph 7.

4. Factual Background

The Complainant is the high-tech gaming technology company, established in 1980 and headquartered in Austria. The Complainant has the global footprint with leading market position in Austria, Germany, United Kingdom, Italy, Spain, and the Netherlands.

The Complainant is one of the biggest international producers and operators of gaming technologies and employs more than 22,053 staff worldwide.

The Complainant has locations in more than 50 countries and exports high-tech electronic gaming equipment and solutions to more than 75 countries. The Complainant operates around 230,000 NOVOMATIC gaming terminals leased and in proprietary casinos as well as electronic casinos. The Complainant operates about 2,100 gaming facilities worldwide. The Complainant has 14 production facilities in 11 countries and 25 technology centers in 25 countries.

The Complainant is the holder of the registered rights to the BOOK OF RA trademark:

The trademark BOOK OF RA is used by the Complainant as the name for the slot machine game released in 2004.

The disputed domain name was registered on August 7, 2020 and resolves to the parking page with the disclaimer “The domain name book-of-ra.com.ua has been registered on behalf of a client." in English, Ukrainian and Russian. The Respondent is apparently an individual resident in Ukraine.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark BOOK OF RA; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and 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

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the .UA Rules provides that "Unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." In particular, it is established practice to take paragraphs 10(b) and (c) of the .UA Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding. (See, e.g., Chewy Inc v. Rostislav Karyi / Ростислав Карый, WIPO Case No. DUA2020-0003; Crocs, Inc. v. Матвеева Анжела Геннадьевна / Matveeva Angela, WIPO Case No. DUA2020-0015).

The Complainant has requested that the language of the proceeding be English, for several reasons, including the fact the disputed domain name contain English language; and the parking page to which the disputed domain name resolves has text in English.

The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel notes that the relevant case related communications were sent in both English and Russian. The Respondent has been given an opportunity to object to the language of the proceedings being English through the submission of the response to the Complainant’s request, but has chosen not to respond. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the .UA Rules that the language of the proceeding shall be English.

6.2. Substantive Elements of the .UA Policy

The Complainant must prove each of the three elements in paragraph 4(a) of the .UA Policy in order to prevail.

A. Identical or Confusingly Similar

The first element of paragraph 4(a) of the .UA Policy requires a complainant to establish first, that it has rights in a trademark, and secondly, that the disputed domain name is identical or confusingly similar to that trademark.

Where the Complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing.

Thus, the Panel finds that the Complainant has rights in the trademark BOOK OF RA acquired through national and international registrations, and that the trademark is in active use.

The disputed domain name incorporates the trademark BOOK OF RA in its entirety and introduces, for technical reasons, the dashes between the words. Thus, the Complainant’s trademark BOOK OF RA is clearly recognizable within the disputed domain name. (See, e.g., Facebook Inc. v. Private Registration / Denis Khakimov, WIPO Case No. DUA2019-0002).

Country-code Top Level domains (“ccTLDs”) are viewed as a standard registration requirement and as such are disregarded under the first element confusing similarity test. Therefore, the Panel disregards the element “.com.ua" for the purposes of this comparison. (See, e.g., Facebook Inc. v. Private Registration / Denis Khakimov, WIPO Case No. DUA2019-0002).

Therefore, the Panel finds that the disputed domain name is identical to the trademark BOOK OF RA in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the .UA Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the .UA Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. While the overall burden of proof in the administrative proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See, e.g., AB Electrolux v. Захаров Евгений, WIPO Case No. DUA2020-0006; Хармен Інтернешенл індастріз, Інк. (Harman International Industries, Inc.) v. Александра Колегаева, WIPO Case No. DUA2020-0005).

The Panel established based on uncontested contentions of the Complainant, that the Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark BOOK OF RA. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. (See, e.g., Володимир Михальчук v. Олександра Шев’якова, WIPO Case No. DUA2020-0008).

The Respondent has failed to show that he has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services.

Passive holding of the disputed domain name does not count on the legitimate noncommercial or fair use of the disputed domain name.

There is no evidence on record to show that the Respondent has been commonly known by the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, section 3.3)¹ . While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of the Complainant’s mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the disputed domain name may be put.

The Complainant contends, and the Respondent has not challenged this contention, that the trademark BOOK OF RA has been exclusively used by the Complainant as trademark for its products in a way that BOOK OF RA has acquired a meaning in that trade and to the particular branch of the related fields that the products and services derive from the Complainant. Users of the Complainant’s products associate the trademark BOOK OF RA with the Complainant's business and games. The trademark BOOK OF RA 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 favor of its meaning as a sign identifying the Complainant’s products and services.

At the same time the Respondent failed to submit any explanation as why he has chosen the name “Book of Ra” for the disputed domain name, which is identical to the Complainant's trademark.

The Panel finally holds that the disputed domain name was registered and is being used by the Respondent in bad faith. The particular circumstances of this case which lead to this conclusion are:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial and long-lasting worldwide use,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity in the WhoIs service,

(iv) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, or an infringement of the Complainant’s rights under trademark law.

In light of these particular circumstances, the Panel concludes that the Complainant has also satisfied the third element under the .UA Policy as set forth by paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name <book-of-ra.com.ua> be transferred to the Complainant.

Kateryna Oliinyk
Sole Panelist
Date: August 10, 2021

¹ Given the similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy, the Panel will refer to the UDRP and the WIPO Overview 3.0 when relevant.