Aristocrat Technologies Australia Pty Ltd v. Theresa Stratton / Preston Hart / Oswaldo Wall / Darius Nelson / Gloria Jones / PrivacyYes.com
Claim Number: FA2010001917337
Complainant is Aristocrat Technologies Australia Pty Ltd (“Complainant”), represented by Jeffrey A. Nelson of Davis Wright Tremaine LLP, Washington. Respondent is Theresa Stratton / Preston Hart / Oswaldo Wall / Darius Nelson / Gloria Jones / PrivacyYes.com (“Respondent”), Virginia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com>, registered with Key-Systems GmbH.
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.
The Honourable Neil Anthony Brown QC 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, Key-Systems GmbH confirmed by e-mail to the Forum that the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 27, 2020, the Forum served the Complaint and all Annexes, including a 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@fa-fa-fa-slot.com, postmaster@fa-fa-fa-slot-online.com, postmaster@lightning-link-slot.com, postmaster@5-dragons-slot.com, postmaster@indian-dreaming-slot.com. Also on October 27, 2020, 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 November 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the multiple Respondents are, in fact, one Respondent with multiple aliases because the Respondents have the same address, phone number, and email addresses ending in <privacyyes.com>. Moreover, the disputed domain names were created on the same date, use the same registrar, and resolve to websites with the same format, layout and gaming content. See Compl. Annex 4 and 5.
Having reviewed the applicable Rules and the evidence, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward in its present form.
A. Complainant
Complainant made the following contentions.
Complainant is a leading global distributor of gaming products, and the second largest manufacturer of gaming machines in the world. Complainant has rights in the FA FA FA mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,078,649, registered on March 4, 2008). See Compl. Annex 8. Complainant has rights in the LIGHTNING LINK mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 4,848,832, registered on November 10, 2015). See id. Complainant has rights in the 5 DRAGONS mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 3,246,198, registered on May 29, 2007). See id. Complainant has rights in the INDIAN DREAMING mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 5,336,617, registered on November 14, 2017). See id. Respondent’s <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names are identical or confusingly similar to Complainant’s marks as each disputed domain name fully incorporates one of Complainant’s marks and simply adds one or more descriptive terms to each of Complainant’s marks with the “.com” generic top level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use any of Complainant’s marks. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses the disputed domain names to pass off as Complainant and offer goods competing with Complainant.
Respondent registered and uses the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names in bad faith. Respondent attempts to pass off as Complainant and offer competing goods. Additionally, Respondent attempts to attract internet traffic through the goodwill and popularity of Complainant’s marks. Finally, Respondent had actual notice of Complainant’s rights in the marks prior to registering the disputed domain names, evidenced by Respondent’s attempts to pass itself off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an Australian company that is a leading global distributor of gaming products and the second largest manufacturer of gaming machines in the world.
2. Complainant has established its trademark rights in the FA FA FA mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,078,649, registered on March 4, 2008). Complainant has established its trademark rights in the LIGHTNING LINK mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 4,848,832, registered on November 10, 2015).Complainant has established its trademark rights in the 5 DRAGONS mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 3,246,198, registered on May 29, 2007). Complainant has established its trademark rights in the INDIAN DREAMING mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 5,336,617, registered on November 14, 2017).
3. Respondent registered the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names on March 16, 2018.
4. Respondent uses the disputed domain names to pass itself off as Complainant and to offer goods competing with Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the FA FA FA mark through its registration of the mark with the USPTO (e.g. Reg. No. 5,078,649, registered on March 4, 2008). See Compl. Annex 8. Complainant submits that it has rights in the LIGHTNING LINK mark through its registration of the mark with the USPTO (e.g. Reg. No. 4,848,832, registered on November 10, 2015). See id. Complainant submits that it has rights in the 5 DRAGONS mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,246,198, registered on May 29, 2007). See id. Complainant submits that it has rights in the INDIAN DREAMING mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 5,336,617, registered on November 14, 2017). See id. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated rights in the FA FA FA, LIGHTNING LINK, 5 DRAGONS, and INDIAN DREAMING marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FA FA FA, LIGHTNING LINK, 5 DRAGONS, and INDIAN DREAMING marks. Complainant argues Respondent’s<fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names are identical or confusingly similar to Complainant’s marks as each disputed domain name fully incorporates one of Complainant’s marks and simply adds one or more descriptive terms with the “.com” gTLD. The addition of generic or descriptive terms and a gTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain as the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FA FA FA, LIGHTNING LINK, 5 DRAGONS and INDIAN DREAMING trademarks and to use them in its domain names, with each disputed domain name fully incorporating one of Complainant’s marks and adding one or more descriptive terms which does not negate the confusing similarity between the domain names and the trademarks;
(b) Respondent registered the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names on March 16, 2018;
(c) Respondent uses the disputed domain names to pass itself off as Complainant and to offer goods competing with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use any of Complainant’s marks. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Theresa Stratton / Preston Hart / Oswaldo Wall / Darius Nelson / Gloria Jones / PrivacyYes.com,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use Complainant’s marks. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names to pass itself off as Complainant and offer goods competing with Complainant. Using a disputed domain name to pass off as a complainant and offer competing goods may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant provides screenshots of the resolving websites and argues Respondent is passing itself off as Complainant because Respondent uses Complainant’s marks prominently at the top and throughout the websites. See Compl. Annex 5. Complainant also argues Respondent’s resolving websites compete with Complainant because the resolving websites redirect internet users to a third-party casino game website. See Compl. Annex 12. As the Panel agrees, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and have been used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names in bad faith because Respondent uses them to pass itself off as Complainant and offer competing goods. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant and offering competing goods can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel recalls Complainant provides screenshots of the resolving websites in which Respondent uses Complainant’s marks and directs internet users to a third-party casino game website. See Compl. Annex 5 and 12. The Panel therefore finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant contends Respondent registered and uses the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com>domain names in bad faith because Respondent attempts to attract internet traffic through the goodwill and popularity of Complainant’s marks. Using a disputed domain name to divert internet users can evidence bad faith per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant argues that Respondent is intentionally attempting to divert internet traffic from Complainant to Respondent’s own resolving websites. As the Panel agrees, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues Respondent registered the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names with actual knowledge of Complainant’s rights in Complainant’s marks based on Respondent’s attempts to pass itself off as Complainant. Using a mark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant argues that Respondent’s use of Complainant’s marks to pass itself off as Complainant demonstrates Respondent’s actual knowledge of Complainant’s rights in the marks prior to registering the disputed domain names. As the Panel agrees, the Panel finds Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the FA FA FA, LIGHTNING LINK, 5 DRAGONS, and INDIAN DREAMING marks and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fa-fa-fa-slot.com>, <fa-fa-fa-slot-online.com>, <lightning-link-slot.com>, <5-dragons-slot.com>, and <indian-dreaming-slot.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 26, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page