WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bally Gaming, Inc. d/b/a bally technologies v. Dreamhost, LLC / Aaron Stein
Case No. D2015-0757
1. The Parties
Complainant is Bally Gaming, Inc. d/b/a bally technologies of Las Vegas, Nevada, United States of America, represented by Glaser Weil Fink Jacobs Howard Avchen & Shapiro LLP, United States of America.
Respondent is Dreamhost, LLC of Brea, California, United States of America / Aaron Stein of Los Angeles, California, United States of America, self-represented.
2. The Domain Names and Registrar
The disputed domain names <caribbean-stud-poker-online.com>, <crazy4pokeronline.com>, <let-it-ride-online.com>, <mississippi-stud.com>, <texas-holdem-bonus.com>, <ultimate-texas-holdem-online.com>, <3‑cardpokeronline.com>, <4-cardpokeronline.com> (the "Domain Names") are registered with New Dream Network, LLC dba DreamHost.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2015. On April 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 16, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 18, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 19, 2015.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on May 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2015. The Response was filed with the Center on June 9, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 16, 2015. 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.
On June 30, 2015, Complainant submitted an unsolicited reply with annexes. On July 2, 2015, the Panel issued Procedural Order No. 1, which allowed Respondent until July 6, 2015 to submit a response to Complainant's reply. Respondent did not submit anything in response to Procedural Order No. 1.
4. Factual Background
Complainant is a leading provider of gaming products and services, and has numerous trademarks registered with the United States Patent and Trademark Office to show for it. These marks include: CARIBBEAN STUD (registered March 2006; first use September 1999; word mark); MISSISSIPPI STUD (registered May 2011; first use November 2010; word mark); LET IT RIDE (registered June 1994; first use June 1993; word mark); ULTIMATE TEXAS HOLD 'EM (registered November 2007; first use November 2006; word mark); CRAZY 4 POKER (registered July 2003; first use September 2002; word mark); TEXAS HOLD 'EM BOINUS (registered August 2006; first use June 2004; word mark); THREE CARD POKER (registered August 2000; first use September 1995; stylized mark disclaiming rights in the words THREE CARD POKER apart from the mark as shown); and FOUR CARD POKER (registered March 2005; first use February 2002; stylized mark disclaiming rights in the words FOUR CARD POKER apart from the mark as shown).
In July 2013, Complainant acquired Shuffle Master, Inc., a provider of gaming products and services, in a USD 1.3 billion transaction.
Respondent registered the eight Domain Names at various points between September 2006 and March 2013. According to Respondent, he registered and began using the Domain Names "immediately after registration," in the wake of his vacation to Las Vegas, Nevada where he played these games. Respondent claims that he "had such a positive experience in playing the games" that he "immediately became a fan of the games, and wanted to develop his own means of continuing to play the games while away from Las Vegas." Through "trial and error," Respondent asserts, he "reconstructed the games as his own online versions, recreating his own versions of the games as his own online versions that he could play."
These online games are accessible at websites corresponding to each of the Domain Names. At each site, an Internet user may play the games, and each site cross-references Respondent's other websites where the other games may be played. According to Respondent, the websites are "free" and "for educational purposes, to learn, practice, and master." The stylized logos of Complainant's trademarks are featured on Respondent's sites, though there is a weak disclaimer of affiliation toward the bottom of each site.
Apart from a reference to Complainant (or Shuffle Master) as the owner of the trademark corresponding to the card game in question, and an invitation to "Like us on Facebook," there is no reference or link to any other commercial enterprise at Respondent's websites upon first viewing. Visitors are asked to log in to use the sites, but little else is known in the record about the login process or its implications.
In February 2011, more than two years before Complainant acquired Shuffle Master, one of Shuffle Master's officers, who was later to become an officer of Complainant, sent Respondent a message via a feedback mechanism at Respondent's site stating: "Glad you liked the game. The Inventor." A brief email exchange ensued, and at one point the Shuffle Master officer said: "Anyway, great site. Keep up the good work."
5. Parties' Contentions
Complainant alleges that it has satisfied all three elements required under the Policy for a transfer of each of the eight Domain Names. According to Complainant, it discovered in April 2015 that "Respondent was using [the Domain Names] to promote his own infringing material." Complainant states: "The websites, which allows [sic] users to play the eight previously mentioned casino games, directly infringe Bally's marks, and are likely to harm Bally's goodwill, as they divert traffic away from Bally's own website and potentially frustrates [sic] sales."
Respondent asserts that he has a legitimate interest in the Domain Names, and did not register them in bad faith. Respondent maintains that he is operating genuine, purely noncommercial "fan sites" where Internet users can learn about the eight card games featured at the sites. He claims that he "is not making any commercial gain" He also argues that the comments from the Shuffle Master officer should be imputed to Complainant under agency principles. (The Panel disagrees because these statements were made before Complainant had acquired Shuffle Master.)
C. Complainant's Reply
Complainant's Reply is focused chiefly on Respondent's allegation in the Response that he "is not making any commercial gain from [his] free, educational and tutorial website." Complainant attaches as annexes several screen shots from Respondent's website which show advertisements by L'Occitane, Uber, Verizon, and an advertisement of first aid kits for sale. Complainant asserts that these "sponsored links" generate revenue for Respondent through the Google AdSense service.
As noted above, Respondent did not respond to Complainant's Reply despite being given permission to do so.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Names at issue in this case:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant clearly holds rights in various word trademarks, through registration and use predating each of the Domain Names in question, including CARIBBEAN STUD, MISSISSIPPI STUD, LET IT RIDE, ULTIMATE TEXAS HOLD 'EM, CRAZY 4 POKER, and TEXAS HOLD 'EM BONUS. Six of Respondent's Domain Names incorporate one of these registered marks in their entirety, and the Domain Names differ from the marks only inasmuch as sometimes a hyphen or two is inserted between words, and/or a descriptive word or two such as "poker online," or "online" is added. The Panel concludes that these minor differences between Complainant's registered word marks and the corresponding Domain Names do not overcome the confusing similarity between these six marks and these six Domain Names.
With respect to the last two Domain Names in question, Complainant holds no registered word trademark, but, rather, holds registered stylized marks comprised of words and a design (THREE CARD POKER and FOUR CARD POKER). In both instances, the entirety of the words is disclaimed in the trademark registration. As such, Complainant's registered trademark rights in THREE CARD POKER and FOUR CARD POKER are limited to the mark as shown, i.e., in its stylized format. The question thus arises whether Complainant can claim in this proceeding rights in these two marks for purposes of the Policy's "identical or confusingly similar" requirement.
This question has been addressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), under paragraph 1.11, entitled "Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?" The WIPO Overview 2.0 discussion of this issue is set forth below (with emphasis added):
Textual content which has been expressly disclaimed in a complainant's relevant trademark registration is generally disregarded by panels when assessing a domain name's identity or confusing similarity under the first element of the UDRP. Also, as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances – such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant's relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name's identity or confusing similarity with it.
Under the prevailing view as reflected in the WIPO Overview 2.0, Complainant has no registered rights in the words THREE CARD POKER and FOUR CARD POKER for purposes of the UDRP. Complainant's only recourse in this proceeding, therefore, is to establish unregistered, i.e., common law trademark rights in these marks. Complainant has not made a sufficient showing that these marks have acquired, through use in commerce, distinctiveness as source identifiers to identify and distinguish Complainant's goods and services.
Accordingly, the Panel concludes that Complainant has satisfied Policy paragraph 4(a)(i) for all of the Domain Names except <3-cardpokeronline.com> and <4-cardpokeronline.com>. As respects those two Domain Names, the Complaint is denied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to Respondent's argument that it has established legitimate noncommercial "fan sites," the Panel turns to the WIPO Overview 2.0 for initial guidance. Two sections of the WIPO Overview 2.0 are potentially relevant, because the second section incorporates part of the first section. Under paragraph 2.4, entitled "Can a criticism site generate rights and legitimate interests?" the WIPO Overview 2.0 states in relevant part (with internal case citations omitted):
This section only concerns sites that practice genuine, noncommercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage.
In the event that a domain name identical or confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there are two main views. In cases involving only US parties or the selection of a US mutual jurisdiction, panelists tend to adopt the reasoning in View 2 (though not universally).
View 1: The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. (…)
View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.
Additional considerations: Some panels have opted to assess questions of whether a respondent may have a legitimate interest in using a trademark as part of the domain name of a criticism site by reference to additional considerations, including whether: (i) the domain name has been registered and is used genuinely for the purpose of criticizing the mark owner; (ii) the registrant believes the criticism to be well-founded and lacks intent for commercial gain; (iii) it is immediately apparent to Internet users visiting the website at the domain name that it is not operated by the owner of the mark; (iv) the respondent has refrained from registering all or most of the obvious domain names reasonably suitable for the owner of the mark; (v) where appropriate, a prominent and appropriate link is provided to the relevant trademark owner's website; and (vi) where there is a likelihood that email intended for the complainant will use the domain name in issue, senders are alerted in an appropriate way that their emails have been misaddressed.
Paragraph 2.5 of the WIPO Overview 2.0, entitled "2.5 Can a fan site generate rights or legitimate interests in the disputed domain name?" makes reference to the discussion of paragraph 2.4 as set forth above. The discussion under paragraph 2.5, directly related to fan sites, states as follows (with internal case citations omitted):
Many of the considerations used by panels in relation to criticism sites, as discussed in paragraph 2.4 above, also are applied by panels in relation to fan or tribute sites. Moreover, this section only deals with fan sites that are clearly active and noncommercial. There are many UDRP cases in which the respondent claims to have an active noncommercial fan site but the panel finds that it is primarily a pretext for commercial advantage.
View 1: The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate noncommercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site's subject).
View 2: A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet.
As the foregoing discussion should make clear, there is no uniform approach to so-called "fan sites" under the Policy, and even where two panels take similar approaches, they may be confronted with different facts in the record which tip the balance one way or the other.
On the one hand, there is evidence that Respondent is a genuine fan of the games which allegedly inspired his websites. Moreover, it appears that visitors to Respondent's websites are not charged a fee for playing the games at the sites. Finally, the sites contain fairly tepid and discreet statements that may pass as disclaimers. There are, thus, some indicia of a genuine fan site potentially giving rise to a finding of noncommercial or fair use.
On the other hand, and this point is the pivotal one, Respondent's websites appear to generate revenue via pay-per-click advertisements. In his Response, Respondent had denied deriving any commercial benefit from the websites to which the Domain Names resolve, claiming that they were purely "non-commercial" in nature. Complainant then came forward with evidence that Respondent's websites actually contained sponsored commercial links, and that Respondent was generating revenue through these links. Respondent did not rebut this evidence and this assertion.
The Panel finds Respondent's initial denial of deriving "any commercial gain" from the websites to have been false, and this point severely undermines Respondent's credibility. The Panel rejects Respondent's contention that he was making a legitimate noncommercial use of the Domain Names.
The Panel concludes that Policy paragraph 4(a)(ii) has been satisfied by Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of a Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
One of the cases cited in the WIPO Overview 2.0 discussion of paragraph 2.5 is Giochi Preziosi S.P.A. v. VGMD NetWeb S.L., WIPO Case No. D2009-0542, involving the domain name <gormiti.mobi>. The Panel finds the Giochi Preziosi decision instructive. In that case, the respondent had registered a domain name identical to the complainant's trademark GORMITI, and professed to set up a fan site accessible by cellular telephones. The panel in Giochi Preziosi was confronted with a problem similar to that confronting this Panel, viz., the lack of any evidence in the record to indicate that the respondent was using the domain name in any commercial manner. The panel in Giochi Preziosi wrote in relevant part:
The Panel would have no difficulty in concluding that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy if there was anything before the Panel to suggest that the Respondent's purpose was indeed commercial.
In the Complainant's response to the Panel's Second Procedural Order the Complainant cites two WIPO decisions where domain names, which were claimed by respondents to have been registered for use for fan sites, were found nonetheless to have been registered for commercial purposes.
The first of those cases was David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459. In that case the Respondent admitted that he intended to use the fan site to sell merchandise relating to the complainant. In the second case, (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726, the three member panel (of which the Panel was a member) found that the respondent's purpose in setting up the fan site was to gain business from the Complainant.
In this case, there is nothing before the Panel to demonstrate any commercial purpose on the part of the Respondent. The Respondent has produced some evidence (albeit not very satisfactory evidence) to demonstrate its plans for the Domain Name, namely a Gormiti fan site accessible by way of mobile telephones to complement its main Gormiti fan site, which is connected to its <gormiti.tv> domain name. This latter site appears to be a noncommercial enterprise. On visiting it the Panel could find no sign of any commercial endeavour. The Panel sought by way of the Second Procedural Order a submission from the Complainant dealing with this latter site. The Panel is entitled to assume that the Complainant will have conducted an investigation of the site, but the submission provides no details of any commercial activity on the site.
In the absence of any evidence of a commercial intent behind the Respondent's registration and use of the Domain Name it seems probable to the Panel that the Respondent will use the Domain Name for its claimed purpose. The Panel is unable to conclude that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
If new evidence subsequently comes to light to suggest that the Respondent's intent behind registration of the Domain Name was not as the Respondent claims, it may be that a re-filed complaint will be accepted.
Until Complainant submitted its Reply with annexes showing the commercial links on Respondent's websites (which probably could and should have been done with the initial Complaint), this Panel found itself in a posture similar to that of the Giochi Preziosi panel. Once the Reply and annexes were submitted, though, and no response thereto from Respondent was forthcoming, this became a much easier case. As noted above, the Panel finds Respondent's credibility wanting.
The Panel finds, on this record, that Respondent registered and is using the Domain Names primarily for commercial gain and in bad faith within the meaning of Policy paragraph 4(b)(iv).
The Panel concludes that Policy paragraph 4(a)(iii) has been satisfied.
With respect to the Domain Names <3-cardpokeronline.com> and <4-cardpokeronline.com>, the Complaint is denied.
With respect to the Domain Names <caribbean-stud-poker-online.com>, <mississippi-stud.com>, <let-it-ride-online.com>, <ultimate-texas-holdem-online.com>, <crazy4pokeronline.com>, and <texas-holdem-bonus.com>, the Panel orders that these Domain Names be transferred to Complainant.
Robert A. Badgley
Date: July 8, 2015