WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Novomatic AG v. Oleh Desiatov

Case No. D2019-2947

1. The Parties

The Complainant is Novomatic AG, Austria, represented by Geistwert Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.

The Respondent is Oleh Desiatov, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <novomatic-casinos.org> (the “Disputed Domain Name”) is registered with 101domain GRS Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2019. On December 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 3, 2019, 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 December 4, 2019 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 December 5, 2019.

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 December 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2019.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 15, 2019. 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 Novomatic AG, is part of the Novomatic Group, which is one of the largest high-tech gaming technology companies worldwide. The Complainant is fully active in all segments of the gaming industry.

In addition, the Complainant is the owner of numerous trademarks including the term “Novomatic”, inter alia,

- NOVOMATIC, Austrian Trademark Registration, Registration No. 145211, registered on December 17, 1992;
- NOVOMATIC, European Union Trade Mark, Registration No. 4135273, registered on
March 2, 2006.

Moreover, the Complainant is the owner of the domain name <novomatic.com>.

The Respondent registered the Disputed Domain Name <novomatic-casinos.org> on September 15, 2017.

The Dispute Domain Name resolves to a website which advertises games of other companies.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant contends that the Disputed Domain Name is identical to the Complainant’s NOVOMATIC trademark. The word “casinos” is purely descriptive and not qualified to exclude responsibility.

Rights or legitimate interests

The Complainant states that the Respondent uses the Disputed Domain Name to attract Internet users to its website. In addition, the Respondent is not commonly known by the Disputed Domain Name nor has acquired any trademarks or service rights.

Registration and use in bad faith

The Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant further contends that the Respondent is using the Disputed Domain Name in order to attract attention to its website by using the Complainant’s trademark.

In addition, the Respondent registered the Disputed Domain Name in bad faith with full knowledge of the Complainant and its NOVOMATIC trademark since the Respondent uses the Disputed Domain Name to lead the public to other companies’ games.

Finally, the Disputed Domain Name is used in bad faith, since the Respondent explicitly refers to the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:

“(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights;

(ii) the 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.”

A. Identical or Confusingly Similar

Based on the evidence submitted, this Panel finds that the Disputed Domain Name <novomatic-casinos.org> is confusingly similar to the Complainant’s trademark NOVOMATIC. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element. Furthermore, the Disputed Domain Name contains the Complainant’s NOVOMATIC trademark in its entirety.

The Disputed Domain Name only differs from the Complainant’s trademark with the addition of the term “casino” and a hyphen. The addition of such a dictionary term and a hyphen does not eliminate the confusing similarity with the trademark

Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.”

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the NOVOMATIC trademark.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered in the year 2017, that is 25 years after the Complainant obtained its NOVOMATIC Austrian Trademark registration No. 145211. The fact that the Respondent incorporated in the Disputed Domain Name the term “casino”, which is a descriptive term of the Complainant’s services and the fact that in the website of the Disputed Domain Name, uses the trademark NOVOMATIC clearly demonstrates that the Respondent was aware of the Complainant’s NOVOMATIC trademark when registering the Disputed Domain Name.

Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its NOVOMATIC trademark.

The Panel is of the view that the Respondent has created a website to attract Internet users, most likely for commercial gain, by creating a likelihood of confusion with the NOVOMATIC trademark, since users navigating to the Disputed Domain Name are redirected to the website of others companies’ games. As such, the Disputed Domain Name is being used in bad faith.

The Respondent failed to prove otherwise.

Therefore, taking all circumstances into account and for all above reasons, this Panel concludes that the Respondent has registered and using the Disputed Domain Name in bad faith.

7. Decision

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 <novomatic-casinos.org> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: January 21, 2020.