WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bally Gaming, Inc. d/b/a Bally Technologies v. Hit Hit Slots
Case No. D2015-1104
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.
Respondent is Hit Hit Slots, United States of America of McKees Rocks, Pennsylvania, United States.
2. The Domain Name and Registrar
The disputed domain name <quickhitslots.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2015. On June 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 1, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 29, 2015.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 5, 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.
4. Factual Background
Complainant, Bally Gaming, is a global supplier of products and technologies for the gaming industry. Complainant owns a portfolio of proprietary casino table games, electronic table systems, slot machine games, electronic gaming machines, and website games, which feature online versions of Complainant’s table games, as well as online play-for-fun games, and the associated intellectual property rights.
Complainant created and/or acquired the rights in relation to its following games: Big Vegas, Cash Spin, Cash Wave, Chimney Stacks, China River, Cupid and Psyche, Havana Cubana, Hot Shot Progressive, Lady Robin Hood, Mayan Treasures, Midnight Diamonds, Pharaoh’s Dream, Quick Hit Black Gold Free Games Fever, Quick Hit, Quick Hit Platinum, Quick Hit Pro, Sumo Kitty, Tiger Treasures, Vegas Hits, and Wild Huskies. Complainant licenses its games and other intellectual property to casino operators located throughout California and the United Sates.
Complainant is the registered owner of a number of federally registered trademarks, which it has used in the United States in connection with entertainment services and games. In particular, Complainant is the owner of multiple design and word trademarks utilizing the term “Quick Hit”. These trademarks include:
- QUICK HIT PRO for which Complainant owns United Sates Trademark No. 4,231,129, registered on October 23, 2012; and
- QUICK HIT PLATINUM, for which Complainant owns United Sates Trademark No. 3,838,273, registered on August 24, 2010; and
- QUICK HIT DIAMOND, for which Complainant owns United Sates Trademark No. 4,128,861, registered on April 17, 2012.
Complainant has used these trademarks to advertise and promote casino games, and several of the marks are incontestable.
The Domain Name was registered on March 2, 2015. Respondent has used the website linked to the Domain Name at “www.quickhitslots.com” for a number of online slot machine games, which are identical to or nearly identical to Complainant’s games.
5. Parties’ Contentions
Complainant alleges that Respondent has been using the website linked to the Domain Name to promote a number of online games that infringe Complainant’s intellectual property. Complainant argues that the Domain Name is nearly identical to and directly infringes Complainant’s QUICK HIT trademarks and is likely to harm Complainant’s goodwill, as Respondent’s use diverts traffic away from Complainant’s own website and potentially frustrates sales.
(i) Identical or Confusingly Similar
Complainant submits that Respondent’s Domain Name is confusingly similar to its QUICK HIT trademarks. First, the Domain Name incorporates the QUICK HIT marks’ primary distinctive element in its entirety – the term “Quick Hit.” Furthermore, where the mark is essentially the same as the domain name, the marks are considered confusingly similar. Here, the Complainant states that its QUICK HIT marks are nearly identical to the Domain Name, and thus, they are confusingly similar.
Furthermore, Complainant contends that Respondent’s addition of the phrase “slots” to the QUICK HIT marks, linking to a website that simply restates Complainant’s QUICK HIT marks, does not distinguish the Domain Name from Complainant’s marks. Complainant urges that UDRP panels have found that the addition of descriptive words to a domain name does not alter the fact that the domain name is otherwise identical or confusingly similar to a trademark. Complainant claims this is particularly true here where Respondent has resorted to using the QUICK HIT marks, with the addition of the term “slots.” Given that the games at issue are slot machine games, as are the products advertised on Respondent’s website, the addition of the word “slots” is insufficient to avoid confusion. A finding of confusion is further strengthened by the fact that the descriptive words Respondent used have a direct connection to Complainant’s own services and its pre-existing website: Respondent’s website allows users to play games that are nearly identical to the Complainant’s Bally games, right down to the titles. Respondent has adopted the same titles, which makes it appear as if Complainant is sponsoring this website. Accordingly, for these reasons, the Domain Name is confusingly similar to Complainant’s registered QUICK HIT marks.
(ii) Rights or Legitimate Interests
Complainant states that Respondent has no rights or legitimate interests with respect to the Domain Name. Complainant registered its QUICK HIT marks well before Respondent began using them in the Domain Name. Complainant first registered QUICK HIT PRO in October 2012, QUICK HIT PLATINUM in August 2010, and QUICK HIT DIAMOND in April 2012. Complainant asserts that, by contrast, Respondent began using the Domain Name in March 2015, long after Complainant’s initial registrations of the QUICK HIT marks. Complainant is the exclusive owner of the QUICK HIT marks, as well as the website at “www.ballytech.com”.Thus, Complainant contends that Respondent at least had constructive knowledge of Complainant’s registered trademarks prior to registering the Domain Name. UDRP panels have held that a respondent cannot claim to have rights or a legitimate interests in a domain name where a respondent has notice that the domain name is identical or confusingly similar to complainant’s mark or where respondent registered or used the domain name in bad faith. Here, Complainant states that Respondent’s use is not legitimate: Complainant has provided evidence that Respondent is using the website to promote its own games, which are identical to Complainant’s games, and thus, appear to be sponsored by Complainant.
Furthermore, Complainant contends that Respondent has no legitimate interests in the use of the Domain Name. Respondent has no license or permission to use Complainant’s QUICK HIT marks in any fashion, and Respondent’s use of these marks on identical goods and services is infringing. Further, there is nothing to suggest Respondent has any ownership interest in the Domain Name, or the games themselves. Accordingly, Respondent fails to demonstrate any rights or legitimate interests in the Domain Name.
(iii) Registered and Used in Bad Faith
Complainant argues that Respondent’s registration of the Domain Name strongly implies bad faith. Where a complainant’s trademark registration pre-dates respondent’s registration of the domain name, and the domain name is obviously connected with the complainant, respondent’s actions suggest opportunistic bad faith. Here, Respondent has no legitimate interests in using the Domain Name, and is, instead, taking advantage of Complainant’s QUICK HIT marks to promote its own similar gaming products. The products available on Respondent’s website are identical to Complainant’s Bally games, and Respondent is simply attempting to capitalize on Complainant’s fame by making use of its trademarked names.
Based on the circumstances, Complainant contends the only logical conclusion is that Respondent registered Domain Name for at least one of the following purposes: (1) for the purpose of selling, renting, or otherwise transferring the Domain Name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name; and/or (2) to capitalize on the fame of Complainant’s marks. This is improper, proof of bad faith, and sufficient to order the Domain Name be transferred.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant owns registered trademark rights in its QUICK HIT trademarks by virtue of the trademark registrations listed in section 4 above. Complainant has also submitted evidence to support that its QUICK HIT marks, each of which uses the term “quick hit” as its dominant element, have been used for years in the gaming industry in the United States. The use of the mark QUICK HIT in relation to Complainant’s gaming services is distinctive.
The Panel concludes that the Domain Name is confusingly similar to the Complainant’s QUICK HIT marks. The Domain Name contains the “Quick Hit” element of Complainant’s marks in its entirety, along with the word “slots”. SeeAdaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (holding that a domain was “undoubtedly” confusingly similar because it incorporated the “primary, distinctive element of both of Complainant’s trademarks”). The inclusion of the word “slots” serves only to reinforce confusing similarity, rather than distinguish the Domain Name. In particular, Complainant’s QUICK HIT marks are used for gaming machines, including slot machines, and users viewing the Domain Name might easily be confused that it is meant to link to a website for Complainant’s gaming services.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s QUICK HIT marks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Panel finds that Complainant has presented a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. Complainant has demonstrated distinctive rights for its QUICK HIT trademarks in the gaming industry, which pre-date Respondent’s registration of the Domain Name. Complainant has not given Respondent permission to use the QUICK HIT marks in the Domain Name. The Domain Name is being used, not for a purpose unrelated to Complainant’s gaming services, but to link to a website that provides directly competing gaming services. In view of this use of the Domain Name, the Panel finds, on the balance of the probabilities, that Respondent was likely aware of Complainant and its QUICK HIT marks when it registered the Domain Name and used it for its own website in a competing business. It thus appears that Respondent targeted Complainant and its QUICK HIT trademarks. Such use, taking advantage of Complainant’s mark to attract users to Respondent’s own site does not give rise to any rights or legitimate interests on the part of Respondent in the Domain Name. See America Online, Inc. v. Xienfeng Fu, WIPO Case No. D2000-1374 (holding that it would be “unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business").
Respondent did not respond to Complainant’s prima facie showing, and the Panel does not otherwise find any convincing evidence of any right or legitimate interest of Respondent in the Domain Name. Accordingly, Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. The Panel determines that the Domain Name was registered and is being used in bad faith.
In line with the analysis above for the second element, the Panel concludes that Respondent targeted Complainant and its QUICK HIT marks when it registered the Domain Name. The Panel finds that the Domain Name was chosen by Respondent to capitalize on Complainant’s QUICK HIT marks, misleading Internet users searching for Complainant’s gaming services and diverting them to Respondent’s own site. The fact that Respondent is using the Domain Name to point to a website offering competing services to those offered by Complainant is further evidence that Respondent is deliberately seeking to cause confusion among Internet users.
The Panel finds that Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492 (finding bad faith where respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of his website).
Accordingly, Complainant has satisfied the third element of the Policy.
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 <quickhitslots.com> be transferred to Complainant.
Christopher S. Gibson
Date: August 19, 2015