Microgaming Software Systems Limited v. Sting Marketing Inc., Sting Marketing
Case No. D2008-0869
1. The Parties
The Complainant is Microgaming Software Systems Limited, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Bowman Gilfillan John & Kernick Inc., Johannesburg, South Africa.
The Respondent is Sting Marketing Inc., Sting Marketing, Trinity, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <casinos-microgaming.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed by email with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2008. The hardcopy of the Complaint was filed on June 5, 2008. On June 6, 2008 the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On June 6, 2008, eNom, Inc. transmitted by email to the Center its verification response stating that the registrant was Sting Marketing Inc., Sting Marketing. On June 9, 2008, the Center invited the Complainant to amend the Complaint in order to include the First and Last names of the Registrant. On June 11, 2008, the Center acknowledged the receipt of the Amended Complaint. On June 12, 2008, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2008. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on July 3, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on July 8, 2008. 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 Microgaming Software Systems Limited, a company duly incorporated in accordance with the laws of the Isle of Man. The Complainant asserts that it is the exclusive licensee of a number of pending and registered trade marks consisting of or incorporating the word “microgaming” in various jurisdictions including the United States of America (“US”), United Kingdom of Great Britain and Northern Ireland (“UK”), European Union (“EU”), Canada and Australia. The proprietor of the trade marks is Microgaming Systems Anstalt. The trade marks cover, in general, computer software for games of chance, casino style gaming, entertainment, gaming and online casino management services.
By a letter dated February 13, 2008, the Complainant’s legal counsel wrote to the Respondent setting out the Complainant’s concerns in relation to the Disputed Domain Name. On February 26, 2008, in the absence of a response from the Respondent, the Complainant’s legal counsel addressed a follow-up letter to the Respondent.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
A. Complainant
The Complainant states that it was founded in 1994 and developed and released the world’s first true online casino software. Its software is currently utilised by more than 100 online casinos. The websites of these online casinos collectively receive in excess of 3 million visitors each month. The Complainant asserts that the MICROGAMING trade marks are very well-known in relation to online casinos and gaming related software.
The Complainant asserts that the Disputed Domain Name wholly incorporates the Complainant’s trade mark MICROGAMING and that inclusion of the descriptive word “casinos” does not add distinctive matter so as to distinguish it from the Complainant’s trade mark. The Complainant therefore contends that the Disputed Domain Name is confusingly similar to the Complainant’s MICROGAMING trade mark.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant contends that the Respondent has never been known by the Disputed Domain Name and that it has not used the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. The Complainant further asserts that it has a long established reputation in the use of its MICROGAMING trade marks in relation to online gaming and casino services, it has been using these trade marks in the course of trade since its inception in 1994. The Complainant believes it likely that the Respondent was fully aware of the Complainant’s trade marks rights and its reputation when registering the Disputed Domain Name. The Complainant also states that the Disputed Domain Name is not the only name which the Respondent can use to describe its business.
Furthermore, the Complainant states that the registration of the Disputed Domain Name occurred nearly ten years after the Complainant first use of its MICROGAMING trade marks and contends that the Respondent is creating confusion with the Complainant’s trade marks by associating the Disputed Domain Name with a website promoting goods and services of competitors of the Complainant.
B. Respondents
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. UDRP Elements
The Respondent has not filed a Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent.
Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainant, if it is to succeed, to prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
i. the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the 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 has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy. The Panel also notes that pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a response from the Respondent.
B. Identical or Confusingly Similar
The Complainant asserts that it is the exclusive licensee of a number of pending and registered trade marks containing the word “microgaming” in various jurisdictions including the US, UK, EU, Canada and Australia. Although the Complainant failed to admit in evidence a copy of the exclusive license agreement or details of the relevant trade mark registers, the Panel is prepared to accept the Complainant’s submission. The Complainant has demonstrated an extensive use of the trade marks and that it has developed a substantial reputation in relation to online casino and gaming related software
In the Panel’s opinion the Disputed Domain Name wholly incorporates the Complainant’s trade mark MICROGAMING. In Microgaming Software Systems Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-0013, the Disputed Domain Name was <microgamingcasinos.com>. The panel’s view in this case was:
“The inclusion of the generic word “casinos” does not add distinctive matter so as to distinguish it from the Complainant’s trademark. The Panel finds that the combination of the Complainant’s trademark name and a second term which indicates the business for which the trademark was registered is a confusingly similar use of the Complainant’s trademark.”
In the Panel’s opinion, the position of the word “casinos” in the domain name, although slightly different to the aforementioned case, is irrelevant such as to distinguish it from the Complainant’s trade mark. The Panel therefore agrees with the above statement of the panel in the aforementioned case. Therefore, the Panel is convinced that the Disputed Domain Name is confusingly similar to the Complainant’s MICROGAMING trade mark.
Therefore, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name. Once a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel, after considering all the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case.
As already stated the Panel is prepared to accept the Complainant’s assertions that it is the exclusive licensee for the word mark MICROGAMING. The Panel also accepts the Complainant’s assertion that the Complainant is not affiliated with the Respondent and has never licensed or otherwise permitted the Respondent to use the MICROGAMING trade marks.
The Complainant has shown in evidence that the Disputed Domain Name points to a generic search engine website providing information about casino and gaming services and that competing and/or related goods and services to those of the Complainant can be accessed through this website.
There is no other evidence that the Respondent has a bona fide interest in the Disputed Domain Name and the Panel also views the Respondent’s failure to respond as further evidence that it has no rights or legitimate interests in the Disputed Domain Name. See Sallie Mae, Inc. v. Martin Marketing,
WIPO Case No. D2004-0357; Geocities v. Geociities.com,
WIPO Case No. D2000-0326.
In the Panel’s opinion, the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name which the Respondent has failed to rebut in any way.
For the foregoing reasons, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Therefore, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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:
(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.
It is clear from the evidence that the website to which the Disputed Domain Name resolves is a directory site which contains links to competitors of the Complainant and other third party websites. In general the purpose of these “directory sites” is to earn revenue for the domain owner in the form of commission based on the number of clicks each link receives. As a number of these links contain links to competitors of the Complainant and the Respondent has offered no explanation to the contrary, the Panel infers that the Respondent is using the reputation of the Complainant’s mark to profit from the obvious association with the Disputed Domain Name. The Complainant has therefore satisfied the requirements of paragraph 4(b)(iv) of the Policy.
In reaching it’s decision, the Panel notes that paragraph 14(b) of the Rules authorizes a panel to draw such inferences from a respondent’s failure to respond “as it considers appropriate”. In the Panel’s view inferences of bad faith can be drawn from the following facts:
1. The Complainant has demonstrated that the Respondent is neither related to the Complainant nor authorised to use the Complainant’s trade marks in any way. As the Respondent’s registration occurred nearly ten years after the Complainant’s first use of the MICROGAMING trademark, the Panel considers that the registration of a domain name containing such a well-known trade mark in the area of online casinos and gaming related software combined with the descriptive and industry related word “casinos” is evidence of intended use in bad faith; and
2. The Respondent has failed to explain on two occasions the reasons why he registered the Disputed Domain Name. Firstly in failing to respond to the Complainant’s cease and desist letter and secondly by failing to file a Response in this administrative proceeding. In these circumstances, the Panel infers that the Respondent never intended any bona fide use for the Disputed Domain Name beyond the directory web site that is currently displayed.
For the reasons stated above, the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith. As such, paragraph 4(a)(iii) of the Policy is satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <casinos-microgaming.com> be transferred to the Complainant.
Alistair Payne Sole Panelist
Dated: July 22, 2008
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