WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

adp Gauselmann GmbH, BEIT GmbH and Merkur Casino GmbH v. Privacy Protection / Nikolay Berlyaev

Case No. D2019-2993

1. The Parties

The Complainants are adp Gauselmann GmbH, BEIT GmbH and Merkur Casino GmbH, Germany, represented by BrandIT GmbH, Switzerland.

The Respondent is Privacy Protection, Russian Federation / Nikolay Berlyaev, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <merkur.site> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 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 Complainants on December 13, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 16, 2019.

The Complaint was filed in English. The Registrar confirmed that the language of the Registration Agreement is Russian. On December 13, 2019, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on December 16, 2019. The Respondents did not comment on the language of the proceeding.

The Center verified that 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 in Russian and English, and the proceedings commenced on December 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 21, 2020. 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 Complainants are part of the Gauselmann Group, whose origins may be tracked to 1957. The group is active in the entertainment and leisure-time industry, especially in casino gaming, sport betting, online gaming and the online casino solutions segment, and has operations in Germany and in eight other European countries. The group operates the MERKUR Casino arcade chain which has nearly 400 arcades in Germany and over 350 in other European countries. In 2019, the revenues of all group entities were of EUR 3,603 million.

The Complainant adp Gauselmann GmbH is the owner of the following trademark registrations for the sign MERKUR (the “MERKUR trademark”):

- the trademark MERKUR with registration No.1014030, registered in Germany on February 12, 1981 for goods in International Class 28;

- the International trademark MERKUR No.1313554, registered on March 29, 2016 for goods in International Classes 6, 9 and 28; and

- the trademark MERKUR with registration No.337292, registered in the Russian Federation on November 13, 2007 for goods and services in International Classes 9, 37 and 41.

The Complainants have registered the domain name <merkur-casino.com>, registered on February 23, 2005, which resolves to their official website.

The disputed domain name was registered on August 15, 2019. At the time of filing of the Complaint, it resolved to a default webpage.

5. Parties’ Contentions

A. Complainant

According to the Complainants, the disputed domain name is identical to the Complainant’s MERKUR trademark, as it incorporates the trademark in its entirety.

The Complainants submit that the Respondent does not have rights or legitimate interests in respect of the disputed domain name, which was registered many years after the MERKUR trademark. They point out that they have not authorized the Respondent to use the MERKUR trademark or to register or use the disputed domain name, and that the Respondent is not commonly known by the disputed domain name. The Complainants highlight that until the end of October 2019 the disputed domain name resolved to a gambling website that offered online money games and featured the MERKUR trademark in its top left corner.

The Complainants contend that the Respondent has registered and is using the disputed domain name in bad faith. According to them, the Respondent must have known the MERKUR trademark when it registered the disputed domain name, as the trademark was registered in the Russian Federation more than eleven years before the disputed domain name, and is widely known. They point out that an online search of the term “Merkur” in the field of gaming produces the Complainant’s website or social medias accounts as top first results. According to the Complainants, the composition of the elements of the disputed domain name shows the Respondent’s intention to create an association and a likelihood of confusion with the Complainant’s MERKUR trademark in Internet users, and the purpose of the registration of the disputed domain name was to lead Internet users to believe that it is official or authorized by the Complainants, which is further evident from the use of the disputed domain name for a gambling website offering online money games in competition with the Complainants. The Complainants also state that it is very likely that the Respondent has received commercial benefit from the money games offered on the website associated to the disputed domain name.

The Complainants add that in September 2019 they sent a cease and desist letter to the Respondent, followed by reminders in October 2019. They did not receive a response, but the disputed domain name was redirected to a default page.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural issue – Consolidation of the proceeding

The Complainants request the Panel to allow the consolidation of their Complaints for the purpose of the present proceeding. They submit that since they have joint rights and a shared interest in the MERKUR trademark and are part of the same group of companies, they have a common grievance against the Respondent. The Complainants also point out that they are represented by the same counsel in this proceeding.

Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. As discussed in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple Complainants may be brought against a single respondent, panels look at whether the Complainants have a specific common grievance against the Respondent, or the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation.

In this proceeding, the three Complainants are part of the same group of companies, active in the gaming and betting industry. One of the Complainants is the registered owner of the MERKUR trademark. As discussed in section 1.4.1 of the WIPO Overview 3.0, a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. The other two Complainants have therefore a common legal interest with the owner of the MERKUR trademark, which is used for the purposes of their business. The Complainants argue in the Complaint that the Respondent targets the MERKUR trademark with the registration and use of the disputed domain name. This satisfies the Panel that the Complainants have a specific common grievance against the Respondent. They have filed a joint Complaint in respect of the same disputed domain name and are represented by the same counsel in this proceeding, so it appears to the Panel that their consolidation would not lead to procedural complications, inefficiency or delays. The Respondent has not filed a Response and has not indicated that it would suffer any prejudice from the consolidation of the Complaints and no potential prejudice is apparent to the Panel.

Therefore, the Panel decides to allow the consolidation of the complaints of the three Complainants in a single proceeding against the Respondent.

6.2. Procedural issue - Language of the proceeding

According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainants request the language of the proceeding to be English. They submit that they are part of a German group of companies and are not familiar with the Russian language, so the translation of the Complaint in Russian would entail significant additional costs for them and would delay in the proceedings. The Complainants also point out that until very recently the disputed domain name resolved to a gambling website displaying English terms and expressions, which allegedly demonstrates that the Respondent can speak English.

The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not responded and has thus not objected to the Complainant’s request that the proceedings be held in English. The Panel also notes that the Center has notified Respondent that it would accept a Response in either English or Russian.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding would be fair to both Parties and would not be prejudicial to the right of any of the Parties to present its case on this proceeding. Therefore, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.3. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent has however not submitted a Response in this proceeding and has not disputed the arguments of the Complainants and the evidence that they have put forward.

A. Identical or Confusingly Similar

The Complainants have provided evidence that the Complainant adp Gauselmann GmbH is the registered owner of the MERKUR trademark. They also submit that the other two Complainants are part of the same corporate group as the Complainant adp Gauselmann GmbH. This is sufficient for the Panel to make a finding that the Complainants have established their rights in the MERKUR trademark for the purposes of the Policy.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.site” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the element “merkur”, which is identical to the MERKUR trademark. Therefore, the Panel finds that the disputed domain name is identical to the MERKUR trademark in which the Complainants have rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 section 2.1 of the WIPO Overview 3.0.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names, stating that it was registered many years after the MERKUR trademark and that they have not authorized the Respondent to use the MERKUR trademark or to register or use the disputed domain name. They point out that the Respondent is not commonly known by the disputed domain name and that until recently the disputed domain name resolved to a gambling website that featured the MERKUR trademark and was competing with the Complainants. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted any arguments in support of the existence of any rights and legitimate interests in the disputed domain name, and has not denied the allegations of the Complainants or disputed the evidence that they have brought forward.

The disputed domain name is identical to the MERKUR trademark. The undisputed evidence in the case file shows that it has been used for a gambling website with the title “merkur.site – online lottery” that featured the MERKUR trademark. In view of this, it appears likely to the Panel that by registering and using the disputed domain name, the Respondent has attempted to capitalize on the reputation and goodwill associated with the MERKUR trademark by attracting and confusing Internet users that the disputed domain name, the associated website and the gambling services offered on it are affiliated to or endorsed by the Complainants. In the Panel’s view, such conduct is not legitimate and cannot give rise to rights or legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The disputed domain name is identical to the MERKUR trademark. As discussed above, the undisputed evidence shows that it has been used for a gambling website that featured the MERKUR trademark and competed with the Complainants. This is sufficient to satisfy the Panel that it is more likely than not that the Respondent was well aware of the goodwill of the MERKUR trademark when it registered the disputed domain name and that its registration was made in view of this goodwill and in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the MERKUR trademark as to the affiliation or endorsement of the Respondent’s website and of the gambling services offered on it.

Taking the above into account, the Panel finds that the Respondent has registered and used 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 <merkur.site> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: February 6, 2020