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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microgaming Software Systems Limited v.

WhoisGuard

Case No. D2008-0613

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 WhoisGuard, Westchester, California, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <7microgaming.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2008. On April 21, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Disputed Domain Name. On April 21, 2008, eNom, Inc. transmitted by email to the Center its verification response stating that the Respondent is listed as the registrant and providing the contact details. On April 29, 2008 the Center notified the Complainant of the Complaint Deficiency and invited the Complainant to amend the Complaint. An amended Complaint was filed by the Complainant in April 30, 2008. On May 21, 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 May 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2008.

The Center appointed Alistair Payne as the sole panelist in this matter on June 20, 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.

The Complainant is seeking the transfer of the Disputed Domain Name.

The Respondent is Whoisguard, a company who provides a privacy protection service to domain name owners. In order to achieve maximum privacy for the domain name owner, Whoisguard places their own contact information on public “Whois” pages so the owners information is not available to the public. It is for this reason that Whoisguard is the Respondent and not any “underlying” or “beneficial” domain name owner who would, in that event, be the customer of Whoisguard.

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 generic numeral “7” 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 argues 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 contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant asserts that it has a long established reputation in the use of its MICROGAMING trade marks in relation to online gaming and casino services and 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 mark rights and its reputation when registering the Disputed Domain Name. The Complainant also states that the Disputed Domain 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 13 years after the Complainant’s first use of its MICROGAMING trade marks and contends that the Respondent is a passive holder of the Disputed Domain Name which can in certain circumstances be evidence of use in bad faith.

B. Respondent

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 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 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 is has developed a substantial reputation in relation to online casino and gaming related software.

The Disputed Domain Name wholly incorporates the Complainant’s trade mark MICROGAMING. The inclusion of the generic numeral “7” does not add distinctive matter in order to distinguish it from the Complainant’s trade mark. Panels have consistently found that a trade mark and a domain name are confusingly similar when there is just “a small variation which is not sufficient to distinguish the disputed domain name from the Complainant’s trade mark”. See FIT Bearings v. Zhangtuo, WIPO Case No. 2007-1488. For the foregoing reasons the Panel is satisfied 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), 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).

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 Disputed Domain Name incorporates the Complainant’s trade mark MICROGAMING entirely with the addition of the generic numeral “7”. There is nothing to suggest to the Panel that the Respondent is commonly known by the Disputed Domain Name. Furthermore, the Complainant started to use its MICROGAMING trade marks nearly 13 years before the registration of the Disputed Domain Name.

As the Respondent has not filed a Response the only evidence available to the Panel of the Respondent’s intentions is a series of emails between the Complainant’s legal representative and a third party web developer who claims to represent the Respondent. From this short series of emails it is not clear what the Respondent had planned to do with the Disputed Domain Name or the reasons for registering the Disputed Domain Name. It is also clear that the series of emails do not demonstrate any rights or legitimate interests in the Disputed Domain Name on the behalf of the Respondent.

The web page at the Disputed Domain Name itself is also of little help as it currently displays a standard “parked page” placed by Namecheap.com. The Panel notes that the proprietor of the Disputed Domain Name chose to avail of a privacy service in order to hide his identity. The Panel further notes that the Whoisguard service has often been used in relation with many bad-faith uses of domain names. See Latin Telecomunicaciones S.A. v. Whoisguard, WIPO Case No. D2005-0380.

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.

Therefore, the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

In view of the renown and reputation attaching to the Complainant’s trade marks since 1994, the Panel considers it likely that the Respondent was aware of the existence of the trade marks and the reputation of the Complainant when the Disputed Domain Name was registered some thirteen years after the Complainant’s first use of the MICROGAMING trade marks. The Panel is therefore prepared to infer that the registration of the Disputed Domain Name was in bad faith.

With regard to use in bad faith, the Complainant contends that the Respondent is a passive holder of the Disputed Domain Name which in certain circumstances can be evidence of use in bad faith

In EuroMarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. 2000-1195, the panel clearly stated that passive holding alone is not enough in all circumstances to demonstrate bad faith. The panel, in finding use in bad faith in that case, was swayed by the fact that the respondent did not reply to a cease and desist letter and used a privacy service to hide his identity.

In making judgment here, the Panel notes that paragraph 14(b) of the Rules does authorize a panel to draw such inferences from a respondent’s failure to respond “as it considers appropriate”. For the following reasons the Panel is prepared to infer that the Disputed Domain was intended to be used in bad faith.

1. The Complainant has adequately demonstrated that the Respondent is neither related to the Complainant nor authorised to use the Complainant’s trade marks in any way. In this case the Panel infers that the registration of a domain name containing such a well-known trade mark combined with the generic numeral “7” is evidence of intended use in bad faith.

2. The Disputed Domain Name has been registered for six months and the Respondent has not provided the Panel with any evidence that it has taken any preparatory steps towards any kind of bona fide use. Furthermore, 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.

3. The owner of the Disputed Domain Name has chosen to conceal his identity in circumstances where he registered a domain name remarkably similar to a well established trade mark. As already stated, the use of the Whoisguard service has often been a factor in finding bad-faith use of a domain name.

4. Finally, in the series of emails between the Complainant and somebody claiming to represent the Respondent, the Panel notes that the Respondent’s representative begins by seeking a small amount of compensation in relation to the transfer. This reasonable attitude suddenly changed and the representative began to seek USD $35,000 for the transfer of the Disputed Domain Name to the Complainant, an amount way beyond any reasonable out-of-pocket expenses. Although the Panel has not been presented with definite or corroborated evidence that this third party speaks for the Respondent, the Panel is willing to infer that in the absence of any evidence to the contrary put forth by the Respondent this demonstrates further evidence of bad faith use.

For the reasons stated above, the Panel is satisfied that the Disputed Domain Name was

registered and is being 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 <7microgaming.com> be transferred to the Complainant.

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Alistair Payne
Sole Panellist

Dated: July 7, 2008