Novomatic AG v Fedorov Vladimir

WIPO Case No. D2025-1336

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Novomatic AG v. Fedorov Vladimir

Case No. D2025-1336

1. The Parties

The Complainant is Novomatic AG, Austria, represented by Salomonowitz Attorneys-at-Law, Austria.

The Respondent is Fedorov Vladimir, Kazakhstan.

2. The Domain Names and Registrar

The disputed domain names <bookofra-austria.com>, <bookofra-croatia.com>, <bookofra-germany.com>,

<bookofra-italy.com>, <bookofra-latvia.com>, <bookofra-poland.com>, <bookofra-romania.com>,

<bookofra-serbia.com> are registered with Nicenic International Group Co., Limited. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2025. On

April 2, 2025, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain names. On April 3, 2025, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the disputed domain names

which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint.

The Center sent an email communication to the Complainant on April 4, 2025, 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 amendment to the Complaint on April 4, 2025.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on April 10, 2025. In accordance with the Rules, paragraph 5,

the due date for Response was April 30, 2025. The Respondent did not submit any formal response.

However, the Respondent sent an email communication to the Center on April 4, 2025. Accordingly, the

Center notified the Commencement of Panel Appointment Process on May 2, 2025.

The Center appointed Meera Chature Sankhari as the sole panelist in this matter on May 13, 2025. The

Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant owns a large portfolio of trademark BOOK OF RA and its logo in various jurisdictions

including the European Union bearing registration nos. 004451431, registered on May 24, 2006, and

012456828, registered on April 23, 2014; as well as the International Registration no. 1257376, registered

on March 4, 2015.

The Complainant Novomatic AG made the aforementioned registrations under class 9, which includes

“casino games”. It also claims to own and operate the website,

“ where its “BOOK OF RA” games and

trademarks can be seen.

All the eight disputed domain names were registered on December 16, 2024

.

The Registrar confirmed that all the disputed domain names were registered by the same registrant. The

disputed domain names were active, had similar structures, and offered identical services - i.e. online casino

game/slot - at the time of filing the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the disputed domain names.

Notably, the Complainant contends that eight identical disputed domain names have been registered by the

Respondent. The Complainant alleges that the disputed domain names are identical or at least confusingly

similar to the Complainant's trademarks BOOK OF RA and contains these marks in its entirety. The

Complainant states that the addition of countries does not avoid confusion, as they are merely descriptive for

the services offered under the disputed domain names.

The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed

domain names and nor is it known by the disputed domain names or the marks in question. The

Complainant further contends that the Respondent has no relationship with or permission from the

Complainant to use its trademarks BOOK OF RA, name or the sign “book of ra” nor has it acquired any

respective trademark rights. The disputed domain names are used by the Respondent in violation of the law

and those of the Complainant’s trademark rights.

The Complainant contends that the disputed domain names were registered and are being used in bad faith.

The Respondent registered the disputed domain names long after the Complainant had registered its

respective trademarks and the Complainant installed its website. The Complainant’s “Book-of-Ra” games

and trademark BOOK OF RA are so well known that the Respondent could not have registered the disputed

domain names without the knowledge of the Complainant’s well-known trademark BOOK OF RA. The

Complainant alleges that the Respondent failed to check trademark registries and registered the disputed

domain names to host illegal copies of the Complainant’s slot games, facilitating illegal gambling and

misleading the Complainant’s customers.

According to the Complainant, the Respondent uses the disputed domain names to attract users for

commercial gain by creating confusion with the Complainant’s trademarks regarding the source, affiliation, or

endorsement of its websites and products. This creates confusion for commercial gain and prevents the

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Complainant from using its trademark in relevant domain names. The Complainant further alleges that the

Respondent uses the infringing disputed domain names to offer infringing slot games and to provide illegal

gambling, online casino game under the disputed domain names and that the web sites are identical in

structure and thus, they are infringing and violate the Complainant’s rights as well as the law.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. However, in the informal email

communication received on April 4, 2025, the Respondent had sought some clarifications regarding the

nature of the Complaint, the specific alleged violations concerning the disputed domain names, the actions

expected from the Respondent, and whether any updates or additional information are required.

6. Discussion and Findings

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that

the domain names are registered by the same domain name holder, which is the case here.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or

threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between

the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain names. Accordingly, the disputed

domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0,

section 1.7. The addition of geographical terms does not prevent a finding of confusing similarity between

the dispute domain names and the Complainant’s trademark.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized

that proving a Respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden

of proof always remains on the Complainant). If the Respondent fails to come forward with such relevant

evidence, the Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section

2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the

Policy or otherwise.

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Panels have held that the use of a domain name for purportedly illegal gambling activity or

impersonation/passing off can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

Moreover, the composition of the disputed domain names, incorporating the Complainant’s trademark along

with country names, being “austria”, “croatia”, “germany”, “italy”, “latvia”, “poland”, “romania”, and “serbia”

carry a risk of implied affiliation. UDRP panels have held that such composition cannot constitute fair use if it

effectively impersonates or suggests sponsorship or endorsement by the trademark owner.

WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent uses the disputed domain names to attract users

for commercial gain by creating confusion with the Complainant’s trademarks BOOK OF RA regarding the

source, affiliation, or endorsement of its websites and products. The Respondent uses the disputed domain

names to offer similar services as that of the Complainant, i.e. slot games and online casino games, while

using web sites that are similar in structure to the Complainant’s web sites and make use of the

Complainant’s trademarks without authorization. These activities amount to bad faith.

Furthermore, registering multiple disputed domain names using the Complainant’s trademark, not only

reflects an intent and pattern, but it also prevents the Complainant from using its trademark in relevant

domain names.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain

name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a

respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for purportedly illegal gambling activity and passing off

constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the

Respondent’s registration and use of the disputed domain names constitute bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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 names <bookofra-austria.com>, <bookofra-croatia.com>,

<bookofra-germany.com>, <bookofra-italy.com>, <bookofra-latvia.com>, <bookofra-poland.com>,

<bookofra-romania.com>, <bookofra-serbia.com> be transferred to the Complainant.

/Meera Chature Sankhari/

Meera Chature Sankhari

Sole Panelist

Date: May 28, 2025