WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gamesys Limited v. Autodata GMBH
Case No. D2013-1179
1. The Parties
Complainant is Gamesys Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by DLA Piper UK LLP, United Kingdom.
Respondent is Autodata GMBH of Graz, Austria, represented internally.
2. The Domain Name and Registrar
The disputed domain name <gamesys.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2013. On July 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2013. The Response was filed with the Center on July 26, 2013.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 2, 2013. 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.
By email dated August 5, 2013, Complainant transmitted a supplemental filing styled “Comments in Relation to Response” to the Center and Respondent, which the Center made available to the Panel. Complainant indicated that it was responding to information provided by Respondent in its Response that was not reasonably available to Complainant at the time it filed its Complaint. By Administrative Panel Procedural Order No. 1 dated August 12, 2013, the Panel advised the parties that it had decided to accept and consider the supplemental filing, and the Panel provided Respondent a period of five calendar days in which to respond to the supplemental filing. Respondent transmitted its supplemental response by email dated August 18, 2013, indicating that its personnel had been on holiday during the period for response established by the Panel. The Panel accepts the late filing, which has not occasioned any delay in the completion of this administrative proceeding.
4. Factual Background
Complainant has not alleged ownership of a trademark registration, or provided evidence of such.
Complainant was incorporated under the name Gamesys Limited in the United Kingdom 2001.1 Complainant earned very modest revenues in 2002, announced receiving award of a development contract for a gaming website in July 2002, and announced use of a gaming software product on a website (“www.jackpotjoy.com”) in October 2003. As of the year ending March 31, 2004, Complainant had revenues of GBP 3,382,697. Complainant presently operates one of the United Kingdom’s higher turnover online gaming websites (with 5.5% market share as of July 2012).
Complainant has received industry recognition for its online gaming services.
Complainant registered the domain name <gamesys.co.uk> in May 2001 and the domain name <gamesyscorporate.co.uk> in July 2005. Since 2005, both domain names have resolved to <gamesyscorporate.co.uk>, at which address Complainant operates its commercial gaming website. Printouts of Complainant’s website homepages for the past several years include reference to “gamesys” along with a number of other identifiers of games, including “jackpotjoy”, “The Sun Bing”, “Ultimate Video Poker” and “Jungle Jump”.
According to the Registrar’s verification, Respondent is registrant of the disputed domain. According to detailed Network Solutions invoices provided by Respondent, the disputed domain name <gamesys.com> was registered by “[…] kollmann” on December 1, 1998, and transferred to Respondent on December 16, 1998.
Corporate records from the Landes – als Handelsgericht Graz (Austria) show that the firm “G.A.M.E. SYS” Geldspiel-Automaten-Miet-Elektronik-System Gesellschaft m.b.H. was formed in 1992. At its formation, Mag. G. Kollmann was listed as “Prokura”, which in English refers to an individual with general power of attorney to act on behalf of a company.2 According to Respondent, at the time of initial registration through Internic.net it was necessary to register through an individual person. Corporate records from Graz indicate that G.A.M.E. SYS remains in good standing in 2013.
Mag. G. Kollmann-Lebernegg indicates that she is the Chief Executive Officer and 100% shareholder of Respondent, Auto-Data GmbH. According to information posted on its website, since 1985 Respondent has developed gaming machine software, including since 2007 server-based games and netlinking (using the subheading “Casino Technologie” on its website). Respondent indicates that it does not offer online-gaming, either for amusement or money. Since 2003, the disputed domain name has been redirected to the website of Respondent at “www.autodata.at” although, in its supplemental response, Respondent indicates that it has removed this redirection.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
A. Complainant
Complainant alleges that it has rights in the trademark GAMESYS based on the volume of visitors to its websites; extensive advertising, promotion and development work carried out by Complainant, as well as its robust expansion strategies. Complainant argues that it “has acquired substantial goodwill in the Complainant’s Mark which has come to be and is recognized as an indicia of origin exclusively identified with the Complainant”.
Complainant contends that the disputed domain name is confusingly similar to its trademark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, because: (1) Respondent is not an authorized selling agent of Complainant, nor can it demonstrate rights or legitimate interests within the meaning of paragraph 4(c) of the Policy; (2) Respondent is not making legitimate noncommercial or fair use of the disputed domain name because it is intending for commercial gain to misleadingly divert consumers to its own website at “www.autodata.at”; (3) before notice of this dispute, Respondent has not used or made demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services, and; (4) Respondent as an individual, business or other organization has not been commonly known by the disputed domain name.
Complainant contends that Respondent registered and used the disputed domain name in bad faith because: (1) from the Wayback Machine archive it appears that Respondent acquired the disputed domain name in early 2004, which is the first time that there is a link to the autodata website; (2) that this constitutes a new registration and Respondent registered the disputed domain name after Complainant acquired rights in its trademark; (3) Respondent is using the disputed domain name to redirect Internet users to Respondent’s website,3 where Respondent offers services that are in the same line of business as Complainant; (4) Respondent uses a pair of dice as a symbol on its webpage which is confusingly similar to a dice logo used by Complainant since 2006; (5) Respondent is intentionally attempting for commercial gain to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
In its supplemental filing, Complainant provides a private service company report showing that G. Kollmann is not presently a director or shareholder of G.A.M.E. SYS. Complainant further indicates that Respondent did not use the disputed domain name until 2003, which is after Complainant was incorporated. Complainant refers to Respondent’s indication that it does not presently make use of G.A.M.E. SYS in connection with an active website under that name, and states “we question why it does not have a website using this brand”. Complainant indicates this demonstrates that Respondent is using the disputed domain name merely to divert Internet users to Respondent’s “www.autodata.at” website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
B. Respondent
Respondent indicates that in 1992 Mag. G. Kollmann, was a shareholder and the general manager of a company named GAME SYS Gesellschaft m.b.H., incorporated in Graz, Austria on January 15, 1992.
Respondent indicates that it registered the disputed domain name through Mag. G. Kollmann, an individual, in December 1998, three years before Complainant was incorporated. The corporate entity GAME SYS continues to do business in Austria working in the operation of gambling machines in Vienna. Because GAME SYS does not require a homepage, it has linked the disputed domain name to the homepage of Respondent since 2003.
Respondent alleges that before any notice of this dispute it used the disputed domain name in connection with a bona fide offering of goods or services. Respondent contends it became aware of Complainant only on receipt of the Complaint.
Respondent rejects the allegation that it registered and used the disputed domain name in bad faith. Mag. G. Kollmann-Lebernegg as CEO and 100% shareholder of Respondent, and as a shareholder of the company GAME SYS, registered the disputed domain name in December 1998, three years before Complainant was incorporated. While Respondent offers for sale server-based games and netlinking to satellite gambling machines, it does not offer gambling services. Respondent has also offered land-based gambling machines since 1985. Respondent indicates that the pair of dice symbol has been displayed on its website since 2003.
In its supplemental response filing, Respondent indicates that it has owned the disputed domain name since 1998, and that it was necessary for a physical person to register the name through Internic.net. Respondent reiterates that it does not target the same type of customer with the same services as Complainant, and that it was not aware of Complainant until it received the Complaint. Respondent questions why Complainant did not contact it before filing its Complaint.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to the Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified the Complaint to Respondent and Respondent filed its Response in a timely manner. The Panel is satisfied that Respondent was notified of the Complaint and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief.
These elements are that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has alleged that it owns rights in the trademark GAMESYS based on use in commerce in the United Kingdom in connection with a gaming website and related services. Complainant has not provided evidence of registration of the term “gamesys” as a trademark, and it does not enjoy a statutory presumption of rights in the term as a trademark.
The term “gamesys” appears to be comprised of the term “game” and a short form for the term “system”. The term “gamesys” is substantially descriptive of gaming system services. Establishing unregistered trademark rights in a descriptive term typically requires a demonstration of secondary meaning or Internet user association.
Complainant has provided evidence of use of the term “gamesys” in connection with a gaming software business that was launched in 2001. Complainant has provided screenshot printouts of use of the term “gamesys” in connection with a gaming website. However, the screenshots provided by Complainant show a substantial number of identifiers of individual games, such as Jackpot Joy and Jungle Jump, as well as “gamesys”. It is not clear to the Panel based on the evidence before it that Internet users associate “gamesys” as the provider of the Complainant’s gaming services as compared with the other individual game identifiers on Complainant’s website. Complainant has provided evidence that the business Gamesys Limited has a significant financial turnover and is recognized as a gaming services provider within its industry group.
Because of the disposition of this proceeding on the basis of a finding that Respondent did not register the disputed domain name in bad faith, it is not necessary for the Panel to make a determination regarding whether Complainant has established unregistered trademark rights in the term “gamesys”.
B. Rights or Legitimate Interests
Because of the disposition of this proceeding under the heading of bad faith, the Panel need not make a determination regarding whether Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. As a matter of administrative panel efficiency, the Panel declines to make such a determination.
C. Registered and Used in Bad Faith
In order to be found to have engaged in abusive domain name registration and use, a registrant must have registered and used the disputed domain name to take unfair advantage of a trademark owner’s rights in its trademark. A registrant’s bad faith intention could be evidenced in a number of ways as illustrated in paragraph 4(b) of the Policy, which provides a non-exhaustive list of bad faith conduct.4
As a matter of general principle under the Policy, Respondent could not have acted to take unfair advantage of Complainant’s rights in a trademark before those rights arose. A finding that Respondent registered and used the disputed domain name in bad faith presupposes that Complainant had trademark rights that could be unfairly exploited at the time of the domain name registration. See, e.g., Petrogas Group Ltd v. Kim Sooyong - (Arisu Tech), WIPO Case No. D2013-0749; Mariposa Ltd. v. Stonecutter, Don at Case No. D2010-0200; Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333; Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet, WIPO Case No. D2007-0875; Symbility Solutions, Inc. v. Darren Ritchie / Symbility, WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074.5
Complainant has sought to establish that Respondent registered the disputed domain name after Complainant established trademark rights. However, Respondent has provided persuasive evidence to the Panel that it registered the disputed domain name in December 1998. Whether or not Respondent is considered from a legal standpoint the same person as the initial individual registrant, Mag. G. Kollmann, who registered the disputed domain name on December 1, 1998, is not material in this regard. Respondent was transferee-registrant (from Mag. G. Kollmann) of the disputed domain name on December 16, 1998. There is no evidence on the record of this proceeding that any other party has been registrant of the disputed domain name since that date. Respondent was in 1998 and remains the registrant.
There is no evidence on the record of this proceeding that might be construed to establish that Complainant had rights in the trademark GAMESYS in 1998. Respondent could not in 1998 have registered the disputed domain name in bad faith in relation to Complainant. Complainant owned no relevant trademark right in 1998.
Because Respondent did not register the disputed domain name in bad faith, the Panel determines that it did not register and use the disputed domain name in bad faith.
Therefore, the Panel denies Complainant’s request to direct the Registrar to transfer the disputed domain name to Complainant.
7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: August 21, 2013
1 Complainant changed its name from Lofton Services Limited on July 13, 2001.
2 See, e.g., English - German Forums <leo.org>, “dict.leo.org/forum/viewUnsolvedquery.php?idThread=100730”, Panel visit of August 20, 2013.
3 At this point in the Complaint, Complainant has shifted to referring to Respondent’s website location as “www.auto-data.com”, but the evidence it provides refers to “www.autodata.at”. The Panel cannot reconcile this inconsistency, but assumes that Complainant intended to refer to Respondent's website at “www.autodata.at”.
4 Paragraph 4(b) of the Policy establishes the required demonstration of bad faith, providing:
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
5 There are certain limited situations in which an exception to this general principle may be found, see, e.g. Intelligen LLC v. Converg Media LLC, WIPO Case No. D2010-0246, but those are not in evidence here.