Hasbro, Inc. v. City of
Claim Number: FA1001001302591
PARTIES
Complainant is Hasbro, Inc. (“Complainant”), represented by Stephen
J. Jeffries, of Holland & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <monopolybingo.com>, registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that she has acted independently and impartially
and to the best of her knowledge has no known conflict in serving as Panelist
in this proceeding.
Linda M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 12, 2010. With its Complaint, Complainant also chose to
proceed entirely electronically under the new Rules for Uniform Domain Name
Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting
an “opt-in” form available on the Forum’s website.
On January 12, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <monopolybingo.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 January 14, 2010, a Written
Notice of the Complaint, setting a deadline of February 3, 2010 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 postmaster@monopolybingo.com by
e-mail.
A timely Response was received and determined to be complete on February 2, 2010. Respondent chose to opt-in to the electronic
process with its submission and submitted its Response in electronic copy only.
Complainant’s Additional Submission was received on February 8, 2010 in
compliance with Supplemental Rule 7.
On February 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Linda M. Byrne as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that Respondent’s domain name <monopolybingo.com> is confusingly
similar to its trademark MONOPOLY. The
Complainant argues that the addition of the descriptive word “bingo” to
MONOPOLY does not avoid likelihood of confusion between the MONOPOLY trademark
and the <monopolybingo.com>
domain name. Complainant also alleges that Respondent does not have any rights
or legitimate interests with respect to the domain name, and that Respondent’s
online bingo games, linked to <monopolybingo.com>, are “competitive with
Complainant’s MONOPOLY game in particular Complainant’s Vegas Casino Version of
its MONOPOLY game, and the online version thereof.”
The Complainant argues that Respondent has registered and used the <monopolybingo.com> domain name in bad
faith and that, “Respondent registered and is using the domain name in order to
generate revenue by unjustifiably capitalizing on misdirected customer’s [sic]
behavior.”
B. Respondent
Respondent asserts that its <monopolybingo.com>
domain name is not confusingly similar to the term “Monopoly,” because the word
“bingo” distinguishes the domain name from the MONOPOLY trademark, and because
the word “monopoly” is generic. Respondent alleges that its use and
registration of the domain name is legitimate because Respondent’s domain name “corresponds
to an online directory for online bingo sites.”
These online bingo sites “offer online playing of bingo games…” Respondent has spent a great deal of time
and money in marketing its online directory.
Respondent also maintains that its domain name is not aimed at
attracting or diverting Complainant’s business, and that it does not use the
term “Monopoly” on its website or on promotional materials except as part of
its domain name.
On April 29, 2009, Complainant sent a letter to Respondent about a
third party site that featured Complainant’s MONOPOLY trademark. The third party site was linked to the <monopolybingo.com> site. After receipt of this letter, Respondent
removed the third party advertisement.
Respondent alleged that Complainant’s failure to disclose the above in
its Complaint equated to withholding of “information and documents relevant to
this case… in order to portray an incomplete image of the events leading to
this complaint.” The Respondent argued
that the above situation was evidence of Complainant’s bad faith.
C. Additional Submissions
Complainant’s Additional Submission states that the word MONOPOLY is
not descriptive or generic with respect to games and computer software, and
that the U.S. Patent and Trademark Office has granted
several registrations for MONOPOLY. With
respect to Respondent’s bad faith, Complainant argued that Respondent intended
to “trade upon the reputation of Complainant’s globally famous MONOPOLY mark
for the benefit of its own online marketing business and the
FINDINGS
Complainant’s MONOPOLY game has been played
by approximately 750 million people, making it the most-played commercial board
game in the world.
Complainant owns registrations around the
world for the word mark “MONOPOLY” (and for word or design marks containing the
word “MONOPOLY) in association with board games, computer game programs and
other products. Complainant does
business worldwide under the MONOPOLY mark, and Complainant has used MONOPOLY
in the
Complainant distributes a MONOPOLY Vegas
Edition, which includes over 40 casino games, one of which is a MONOPOLY Bingo
version. Complainant does not sell or distribute
a separate product called “Monopoly Bingo,” but the MONOPOLY Vegas Edition contains
a bingo game. Some promotional
activities for the MONOPOLY Vegas Edition are online.
On November 10, 2008, Respondent registered
the domain name <monopolybingo.com>. The site states, “When you need to find out
about nodeposit bingo it’s always good to come visit us at monopoly bingo. Whether you are looking for free bingo, bingo
jackpots, slots games, nodeposit bingo, bingo or even new bingo friends, we are
always happy to welcome you with online bingo…”
The site’s Terms and Conditions states that “non-personally identifiable
visitor information may be provided to other parties for marketing, advertising
or other uses.” The
<monopolybingo.com> site links to third party sites that are unrelated to
Complainant or Complainant’s activities, and some of these third party sites include
a page featuring Complainant’s MONOPOLY trademark.
On April 29, 2009, Complainant’s counsel sent
a letter to Respondent, stating that the <monopolybingo.com> website
“advertises an online bingo game ‘Bingo Café
Respondent did not communicate with
Complainant in reply to Complainant’s letter, but promptly removed the
infringing Monopoly logo and the Monopoly man from its site. Complainant initiated this UDRP proceeding
about eight months after the above correspondence.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 owns trademark
registrations for the MONOPOLY mark in the
Complainant argues that Respondent’s <monopolybingo.com> domain name is confusingly similar to Complainant’s MONOPOLY mark pursuant to Policy ¶ 4(a)(i). The Respondent’s disputed domain name contains Complainant’s MONOPOLY mark in its entirety, adding only the generic term “bingo,” as well as the generic top-level domain (“gTLD”) “com.” The addition of a generic or descriptive term such as “bingo” to a registered mark in a disputed domain name creates a confusing similarity between the disputed domain name and the registered mark. See 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); 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). Moreover, the the addition of the “.com” gTLD is irrelevant in distinguishing a disputed domain name from an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The confusing similarity is exacerbated by the fact that Complainant offers a bingo game in association with its MONOPOLY Vegas Edition product.
In summary, this Panel concludes
that Respondent’s disputed domain name is confusingly
similar to Complainant’s MONOPOLY mark pursuant to Policy ¶ 4(a)(i).
Respondent is not commonly known by
“Monopoly Bingo” or by “Monopoly” or by the disputed domain name. Respondent’s WHOIS information identifies the
registrant as “City of
Respondent’s <monopolybingo.com> domain name resolves to a website featuring advertisements and links to third parties that offer online bingo games. These third parties provide services that compete with Complainant’s products and/or services, such as the MONOPOLY Vegas edition, which features a bingo game.
Respondent profits
through the generation of click-through fees from the links to third parties,
at least some of which offer games that compete with Complainant’s games. Therefore,
the Panel concludes that Respondent’s use of <monopolybingo.com> is not in connection with a bona fide
offering of goods or services or a legitimate noncommercial or fair use of the
disputed domain name. See 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For
In summary, this Panel concludes
that Respondent does not have legitimate rights or interest in the <monopolybingo.com> domain name
pursuant to Policy ¶ 4(a)(ii).
The <monopolybingo.com> domain name resolves to a website that promotes third party, online bingo providers through click-through links. At least some of these third parties have web pages featuring Complainant’s MONOPOLY trademark, as illustrated by the situation described in Complainant’s letter of April 29, 2009, and as illustrated by at least one of the exhibits to the Complaint. Some of these third parties provide gaming services that compete with Complainant’s goods and/or services. These activities disrupt Complainant’s business, as Internet users seeking Complainant’s products may be redirected to Complainant’s competitors.
The Panel concludes that the above
situation qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See
In summary, this Panel concludes
that Respondent has registered and used the <monopolybingo.com> domain name in bad faith as defined by Policy
¶ 4(a)(ii i).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <monopolybingo.com> domain name be TRANSFERRED
from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: February 25, 2010
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