WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playtika Ltd. v. Baki Billah
Case No. D2011-1423
1. The Parties
The Complainant is Playtika Ltd. of Las Vegas, Nevada, United States of America, represented by Alston & Bird, LLP, United States of America.
The Respondent is Baki Billah of Dhaka, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <slotomania.info> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2011. On August 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2011.
The Center appointed David Perkins as the sole panelist in this matter on October 20, 2011. 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
4.1 The Complainant
The “Slotomania” game
4.1.1 The Complainant offers multi-platform online games to users worldwide. One of its most popular games is “Slotomania”. This is an online slot machine game which is played through various social networks, including Facebook. It is played using virtual coins, which the players can receive in a number of ways. Players are provided with a limited number of such coins without payment, but they can also (1) win more coins through playing the game, (2) receive coins as gifts from other players, and (3) purchase coins from the Complainant.
4.1.2 The Complainant sells Slotomania Application coins in various increments, including 5,250 coins for USD 5.00 and 36,000 coins for USD 20.00.
4.1.3 Players select a slot machine of their choice, choose their bet and number of play lines, and spin for the opportunity to earn extra coins, unlock new levels and play bonus games.
4.1.4 Access to the Slotomania Facebook Application can be made through the URL “http://www.facebook.com/apps/application.php?id = 1695456139744270”. Exhibited to the Complaint are screenshots from that Application. Those screenshots include the name “Slotomania” in stylized script. The Complainant’s homepage states that the game was “introduced to the world of social gaming in October 2010”. That homepage can be accessed at “www.playtika.com/slotomania.html”. Since that introduction, the Complaint states that more than 5 million users have been recorded at the Slotomania Facebook Application, of whom 1 million are active, daily users.
The SLOTOMANIA trademark
4.1.5 The Complainant states that the service mark SLOTOMANIA has been used in commerce in the United States (“U.S.”) and worldwide to identify its Facebook Application since December 16, 2010. The Complainant asserts that the SLOTOMANIA mark is inherently distinctive and is neither generic to nor descriptive of the game. Accordingly, on the basis of its use of the SLOTOMANIA mark, the Complainant asserts common law service mark rights in that mark.
4.1.6 The Complainant states that it has pending trademark applications for SLOTOMANIA in Australia, Canada, Israel and the United States. The U.S. applications (Nos 85320362 and 85320368) were filed in Classes 9 and 41 on May 13, 2011 asserting first use in commerce on December 16, 2010.
4.2 The Respondent
4.2.1 In the absence of a Response, what is known about the Respondent is that which is set out in the Complaint.
4.2.2 The disputed domain <slotomania.info> was created on August 6, 2011.
4.2.3 That domain name resolves to a website, the homepage of which is identical to the Complainant’s homepage, reproducing both the SLOTOMANIA mark in the same stylized script with the same image of 4 slot machines and female cartoon-type figure. The only differences are that in the screenshot of the Complainant’s homepage the figure holds a card bearing the words “Play now!” whereas the card held by the same figure on the Respondent’s homepage bears the words “Get Now!”. Also the words at the foot of the Complainant’s homepage reads “Vegas meets Facebook” whereas those at the foot of the Respondent’s homepage read “30,000$ Free Coins”. However, visually the two are to all intents and purposes identical.
4.2.4 The Complaint says that through its website, the Respondent is loading computer viruses to Facebook user accounts and thereby accessing Facebook user data. The Respondent’s website includes the following message:
“Hey Friends, visit the site below to get 30,000 coins for Free! Hurry up and claim yours before the giveaway is over”
4.2.5 This, the Complainant says, is designed to direct Internet users to the Respondent’s website. Once at that website, users are provided with links to third party websites. Many of those websites - an example of which is exhibited to the Complaint - contain promotional offers. The example exhibited at WinningSurveys.com offers the Internet User a chance to enter a sweepstake for a USD 1,500.00 target gift card, in return for providing personal information. Also exhibited to the Complaint is a print out of the website of “WinningSurveys.com”. That website explains that the user information is then sold by WinningSurveys.com to third parties as marketing information. WinningSurveys.com is described as one of the family of websites owned and operated by Vente, Inc. a part of Qinterative.
4.2.6 The Respondent is, the Complaint says, compensated each time a visitor to its website - to which the disputed domain name resolves by the means explained above - is redirected to WinningSurveys or the other third party websites linked to the Respondent’s website.
4.2.7 Furthermore, the Complaint explains that the Respondent’s website also contains means for loading a virus to the visitor’s Facebook page that posts unwanted messages and solicitations on the visitor’s Facebook wall. In turn, those direct the user to other third party websites similar to that operated by WinningSurveys.com, hence also generating revenue for the Respondent.
4.2.8 Exhibited to the Complaint are messages from users of the Slotomania Facebook Application reporting having been affected by that virus.
4.2.9 The Complainant explains that a cease and desist notice was sent by its counsel to the ISP hosting the Respondent’s website. Thereupon, the host was changed to another ISP, Arvixe, LLC. After a further cease and desist notice to that ISP, the Respondent’s website was taken down on August 22, 2011.
4.2.10 Notwithstanding, at the foot of the Respondent’s homepage to which the disputed domain name resolves is a hypertext link to the Complainant’s website at <playtika.com>. Hence users continue to be misled in relation to the bogus offer of 30,000 free coins. Exhibited to the Complaint are numerous messages from angry users placed on the Complainant’s Slotomania Facebook wall over the period August 16-18, 2011.
5. Parties’ Contentions
Identical or Confusingly Similar
5.1.1. The Complainant asserts that it has rights in the SLOTOMANIA trademark and service mark on account of its widespread use of that mark since 2010 set out in paragraph 4.1 above.
5.1.2 The Complainant also submits that the disputed domain name is identical with its SLOTOMANIA trademark.
Rights or Legitimate Interests
5.1.3 The Complainant states that it has not licensed or otherwise authorized use by the Respondent of the SLOTOMANIA trademark.
5.1.4 Furthermore, the Complainant asserts that consumers seeing the disputed domain name will inevitably mistakenly associate it with its SLOTOMANIA trademark. The use being made of that domain name - which is summarized in Section 4.2 above - is, the Complainant says, neither bona fide nor is it a fair or legitimate use. On the contrary, it is a flagrant attempt to pass off the Respondent’s website as connected with the Complainant’s website by trading on the goodwill established by the Complainant in the SLOTOMANIA trademark.
5.1.5 In the circumstances, the Complainant’s case is that this use of the disputed domain name is neither noncommercial, nor fair. It is intended for commercial gain to the Respondent to mislead consumers.
Registered and Used in bad Faith
5.1.6 The Complainant says that the facts and matters summarized in Section 4.2 above demonstrate bad faith registration and use under paragraph 4(b)(iv) of the Policy and/or constitute circumstances evidencing bad faith of the type outlined in, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
5.1.7 In particular, the Complainant refers to (1) use by the Respondent of a domain name which is identical to its SLOTOMANIA trademark; (2) the Respondent operating through that domain name a website intentionally designed to appear to Internet users as if it is a bona fide Playtika website; (3) including use of a computer virus to practice that deception; and (4) thereby providing commercial gain to the Respondent. Furthermore, it is clear - the Complainant says - from the evidence summarized above that when registering the disputed domain name in August 2011 the Respondent was well aware of the Complainant’s rights in the SLOTOMANIA trademark and set out to derive financial reward by using the disputed domain name in contravention of those rights.
As noted, no Response has been filed.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 The disputed domain name and the Complainant’s SLOTOMANIA trademark are identical. Accordingly, the issue to be addressed is whether the Complainant has rights in that mark. As yet, the Complainant has no registration for SLOTOMANIA but only pending applications: See, paragraph 4.1.6. above. In that respect, the pending U.S. trademark applications were filed in May 2011 some 3 months before the disputed domain name was created.
6.6. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") sets out in paragraph 1.7 the criteria established by consensus view for establishing common law or unregistered trademark rights. The Complainant asserts such rights in Slotomania see paragraph 4.1.5 above. Here, the Complainant bases its rights on relevant use. Namely, extensive use since December 2010 and some 1 million active current users of the Slotomania Facebook Application. Evidence of such use is also presented in terms of the complaints from Facebook users of the Slotomania Application: see, paragraphs 4.2.8 and 4.2.10 above. Furthermore, the Complainant’s case is that the mark is neither generic to nor descriptive of that Application. It is, the Complainant says, an inherently distinctive mark.
6.7 While the Complainant could have produced additional evidence of the acquired “secondary meaning” of the SLOTOMANIA mark, the Panel is satisfied that it has met the requirement of demonstrating that the mark has become a distinctive identifier associated with the Complainant’s Application for purposes of the Policy.
6.8 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.9 In the Panel’s view, the facts summarized in Section 4.2 above speak for themselves. First, use by the Respondent of the SLOTOMANIA trademark is neither licensed nor authorized by the Complainant. Indeed, within days from registration of the disputed domain name, the Complainant’s counsel dispatched a cease and desist letter to the ISP hosting the website to which that domain name resolved: see, paragraph 4.2.9 above.
6.10 Second, on the evidence that domain name has been used for a website transparently designed to mislead Facebook users by diverting them from the Complainant’s website and thereby obtain commercial gain for the Respondent. Such use of the disputed domain name, facilitated by use of viruses loaded into the accounts of Facebook users, cannot be considered either bona fide or fair.
6.11 In the circumstances, the Respondent cannot establish rights to and legitimate interests in the disputed domain name and, accordingly, the Complaint satisfies paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.12 There is no need to repeat the facts and matter summarized in Section 4.2 above. Registration and bad faith use are abundantly clear on the evidence presented in the Complaint and the accompanying annexes.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <slotomania.info> be transferred to the Complainant.
Date: October 26, 2011