Aristocrat Technologies Australia Pty Ltd v. Grina Merlinda
Claim Number: FA2010001917335
Complainant is Aristocrat Technologies Australia Pty Ltd (“Complainant”), represented by Jeffrey A. Nelson of Davis Wright Tremaine LLP, Washington. Respondent is Grina Merlinda (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lightninglinkpokies.com>, registered with Registrar of Domain Names REG.RU LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 16, 2020; the Forum received payment on October 16, 2020.
On October 20, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <lightninglinkpokies.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 26, 2020, the Forum served the Complaint and all Annexes, including a Russian Written Notice of the Complaint, setting a deadline of November 16, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lightninglinkpokies.com. Also on October 26, 2020, the Russian Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. The Panel may weigh the relative time and expense in enforcing the Russian language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Respondent understands English and is comfortable operating in the English language, as the website resolving from the Domain is entirely in English. Moreover, the Domain name itself contains two English words “LIGHTNING” and “LINK” with the word “POKIES” which, Complainant explains, is the Australian slang term for gambling machines. Further, the translation of the proceedings from Russian to English would create a substantial burden and cause significant delay and costs for Complainant, as opposed to the Respondent who has a clear understanding of the English language given the content on the website of the Domain and the Domain itself. Thus, Respondent would not suffer prejudice in having the proceeding conducted in English.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and distributes gaming machines throughout the world. Complainant has rights in the LIGHTNING LINK mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 4,848,832, registered Nov. 10, 2015; Reg. 5,898,537, registered Oct. 29, 2019). Respondent’s <lighninglinkpokies.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the descriptive word “pokies”, as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <lightninglinkpokies.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its LIGHTNING LINK mark in the disputed domain name. Complainant does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent passes off as Complainant and offers competing onling gambling and casino games.
Respondent registered and uses the <lightninglinkpokies.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by diverting internet users seeking Complainant’s services to the disputed domain names resolving website, where Respondent passes off as Complainant and offers competing online gambling and casino games. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the LIGHTNING LINK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <lightninglinkpokies.com> domain name was registered on Sept. 18, 2019.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant argues that Respondent’s <lightninglinkpokies.com> domain name is identical or confusingly similar to Complainant’s LIGHTNING LINK mark. Adding a descriptive word and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from a mark is incorporates under Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 1680755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”). The disputed domain name incorporates Complainant’s LIGHTNING LINKS mark in its entirety, and adds the word “pokies”, which Complainant argues is an Australian slang term for electronic gambling machines. The disputed domain name also adds the “.com” gTLD to the end of the mark. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent is not commonly known by the <lightninglinkpokies.com> domain name, nor has Respondent authorized or licensed Respondent to use its LIGHTNING LINK mark in the disputed domain name. Where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS of record identifies Respondent as “Grina Merlinda”, and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use its LIGHTNING LINK mark in the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <lightninglinkpokies.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Attempting to divert internet users seeking Complainant’s services to a disputed domain name’s resolving website, where Respondent passes of as Complainant and offers competing services or products on the disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving website, which features Complainant’s mark as well as advertisements for an online casino game whose name is also registered to Complainant, while the link to the online game resolves to a third party casino website that is currently unavailable. Therefore, the Panel finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Therefore, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <lightninglinkpokies.com> domain name in bad faith, as it had actual knowledge of Complainant’s rights in the LIGHTNING LINK mark at the time of registration. Actual knowledge is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(iii). The Panel notes that the disputed domain name contains Complainant’s mark in its entirety, and that Complainant’s screenshots of the disputed domain name’s resolving website feature Complainant’s mark, as well as advertisements for online gambling and casino games. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy
¶ 4(a)(iii).
Therefore, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lightninglinkpokies.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 3, 2020
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