SimSlots Inc. v. Mark Peterson
Claim Number: FA0612000864682
Complainant is SimSlots Inc. (“Complainant”), represented by John
W. Dozier Jr., of Dozier Internet Law P.C., 301 Concourse
Blvd, West Shore III, Suite 300, Glen Allen,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simslots.tv>, registered with Network Solutions.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2006.
On December 12, 2006, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <simslots.tv> domain name is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <simslots.tv> domain name is confusingly similar to Complainant’s SIMSLOTS mark.
2. Respondent does not have any rights or legitimate interests in the <simslots.tv> domain name.
3. Respondent registered and used the <simslots.tv> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SimSlots, Inc., has been doing business under the SIMSLOTS mark since March 1, 2000 and uses the mark in connection with the sale of online slot machine and gambling games to consumers. Complainant registered the domain name <simslots.com> on August 3, 1999. Complainant registered its SIMSLOTS mark with the United States Patent and Trademark Office (“USPTO”) on April 27, 2004 (Reg. No. 2,836,417) and has used this mark in commerce via its <simslots.com> domain name.
Respondent’s <simslots.tv> domain name was registered on December 30, 2003 and resolves to a site that forwards visitors to an online gambling site.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has established rights in the SIMSLOTS mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s mere addition of the generic top-level domain “.tv” to Complainant’s entire SIMSLOTS mark is insufficient for purposes of avoiding a finding of confusing similarity under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
In light of the foregoing analysis, the Panel finds that Complainant has satisfied Policy 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <simslots.tv> domain name. Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Thus, the Panel finds that Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name constitutes a prima facie case pursuant to the Policy.
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, despite the presumptive effect of Respondent’s inaction, the Panel chooses to analyze the relevant factors under Policy ¶ 4(c).
In connection with registering the disputed <simslots.tv> domain name, Respondent simply listed himself as the registrant. While the record clearly indicates that Respondent performed this mandatory and perfunctory task, the record is void of any other attempt by Respondent to establish that he is commonly known by the disputed domain name. Indeed, given the well-established nature of Complainant’s SIMSLOTS mark, Respondent must put forth strong evidence to prevail on this argument. (Complainant’s <simslots.com> web site was listed as number 79, 762 in the Alexa.com database of the world’s most visited web site at the time this complaint was filed.) See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”). This has simply not been done here. As such, Respondent has failed to establish rights or legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Similarly, the record is void of any attempt by Respondent to use the <simslots.tv> domain name in a legitimate noncommercial or fair manner under Policy ¶ 4(c)(iii), or in connection with a bona fide offering of goods or services persuant to Policy ¶ 4(c)(i). Respondent’s site does nothing more than resolve to a page that automatically forwards visitors to one of Complainant’s competitors, <pokerstars.com>. Without any evidence to the contrary, it can be reasonably inferred that Respondent intentionally used a confusingly similar version of Complainant’s SIMSLOTS mark in its <simslots.tv> domain name purely for commercial gain, presumably in the form of click-through fees. A blatant commercial use such as this tends to negate any arguments that Respondent’s use of the SIMSLOTS mark was a bona fide offering of goods or services and likewise nullifies any fair use arguments. See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
In light of the foregoing analysis, the Panel finds that Respondent has failed to show any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). As such, Complainant has satisfied policy ¶ 4(a)(ii).
The record indicates that Respondent sought to redirect consumers who attempted to reach Complainant’s <simslots.com> site by registering the disputed <simslots.tv> domain name and resolving that name to a site that automatically forwarded visitors to Complainant’s competitor, <pokerstars.com>. Respondent’s incorporation of a name that is confusingly similar to Complainant’s SIMSLOTS mark into its <simslots.tv> domain name is indicative of bad faith pursuant to Policy ¶ 4(b)(iv). The presumed commercial gain (as the Panel outlined in the “Rights and Legitimate Interests” section) only furthers this finding. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Taking into account all of the facts and circumstances presented by the record, the Panel finds that Complainant has shown that Respondent’s conduct falls within Policy ¶ 4(b) and thus has satisfied the requirements of 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 <simslots.tv> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 29, 2007
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