Zynga Inc. v. Slot Freebies
Claim Number: FA1809001804965
Complainant is Zynga Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Slot Freebies (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hititrichcoins.com>, registered with NameSilo, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 6, 2018; the Forum received payment on September 6, 2018.
On September 7, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <hititrichcoins.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 September 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2018 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@hititrichcoins.com. Also on September 10, 2018, the 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 October 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading developer of the world’s most popular online game services including card games, word games, board games, and casino games, all of which are provided through various device apps. More than one billion people worldwide have played Complainant’s games since 2007. Complainant has rights in the HIT IT RICH trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”), the European Union Intellectual Property Office (“EUTM”), and a number of other government trademark registration agencies around the world. The earliest of these registrations was issued in 2013. Respondent’s <hititrichcoins.com> domain name, registered in 2015, is confusingly similar to Complainant’s mark as it copies the mark and merely adds the generic/descriptive term “coins” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <hititrichcoins.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to its own website to commercially benefit from click-through revenue advertising competing products and services.
Respondent registered and uses the <hititrichcoins.com> domain name in bad faith. Respondent’s use of the domain name to commercially benefit from the goodwill associated with the mark disrupts Complainant’s business by offering pay-per-click links to competing products and services. The site also shows advertisements to third parties who are not related to the Complainant. Further, Respondent had actual knowledge of Complainant’s mark when it registered the infringing domain name as shown by Respondent’s reference to Complainant’s mark on the website of the infringing domain, and given Complainant’s longstanding use of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the HIT IT RICH trademark through its registration of the mark with the USPTO, the EUTM, and other government agencies. Registration of a mark with such government trademark agencies sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the HIT IT RICH mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <hititrichcoins.com> domain name is confusingly similar to Complainant’s mark as it copies the entirety of the mark and adds the generic/descriptive term “coins” and the “.com” gTLD. Similar additions to a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); Zynga Game Network Inc. v. Alexandru Mihalache, D2009-0716 (WIPO July 20, 2009) (use of “chips” reinforces the association of <buyzyngachips.net> and <cheapzyngachips.net> with Zynga). The Panel therefore finds that the <hititrichcoins.com> domain name is confusingly similar to the HIT IT RICH mark under Policy ¶4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <hititrichcoins.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS record for the <hititrichcoins.com> domain name identifies “Slot Freebies” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the HIT IT RICH name or trademark. Panels may use these assertions as evidence to support the absence of rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. No response has been filed to rebut these allegations. Accordingly, the Panel agrees that Respondent is not commonly known by the <hititrichcoins.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant also argues that Respondent uses the domain name to redirect users to its own website to commercially benefit from click-through revenue by promoting and advertising competing products and services. Using a domain name to offer links to services in direct competition with a complainant generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage, which appears to display links soliciting “free coins” in connection with various online games that include Complainant’s HIT IT RICH as well as games of its competitors. Such links are typically monetized and promoted for traffic and, in the absence of any submission from the Respondent, this Panel has no reason to conclude that Respondent’s links operate otherwise. In a very similar situation, another panel concluded the same thus lending further support to this Panel’s finding. See Zynga Game Network Inc. v. Hancu Bogdan, D2009-1536 (WIPO January 4, 2010) (bad faith found where respondent used the disputed domain name to disrupt Zynga’s business by offering virtual poker chips and pay-per-click advertising for competing products and services). Accordingly, the Panel finds that Respondent’s use of the <hititrichcoins.com> domain name in this manner is not a bona fide offering of goods or services nor a legitimate or fair use under Policy ¶¶ 4(c)(i) or (iii).
Finally, the Respondent’s website has a link to a disclaimer that states “This site is not endorsed by or affiliated by Zynga®. All intellectual rights over Hit It Rich! Casino Slots belong to Zynga®.” However, this notice does not provide the Respondent with any relief as its advertising and promotion of goods and services that compete with the Complainant fails the test set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001).
In light of the above, and with no response, evidence, or other submission by the Respondent, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the HIT IT RICH mark at the time of registering the <hititrichcoins.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith registration under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent had actual knowledge of Complainant’s mark when it registered the infringing domain name as shown by Respondent’s reference to Complainant’s games on the website of the infringing domain, and given Complainant’s longstanding use of the mark in commerce. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent registered and uses the <hititrichcoins.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering links to competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As noted above, Complainant provides a screenshot of the resolving webpage, which appears to display links soliciting “free coins” in connection with various online games including HIT IT RICH and its competitors. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit from confusion between the <hititrichcoins.com> domain name and Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Finally, the disclaimer at Respondent’s website states “All links are provided by 3rd parties. We have no control over the content of these pages. We take no responsibility for the content on any website which we link to, please use your own discretion while using the links.” Despite such claims, it is a well-settled principle of UDRP jurisprudence that domain registrants are entirely and solely responsible for the content of their websites and the functioning of their domain names. See, WIPO Overview 3.0, at par. 3.5 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name”); Disney Enterprises, Inc. v. ll, FA 1336979 (Forum August 31, 2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website).
For the foregoing reasons, and in the absence of any response, evidence, or other submission by the Respondent, the Panel finds that the disputed domain name was registered and used in bad faith under 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 <hititrichcoins.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Panelist
Dated: October 4, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page