National Arbitration Forum




Hasbro, Inc. v. City of Media

Claim Number: FA1001001302591



Complainant is Hasbro, Inc. (“Complainant”), represented by Stephen J. Jeffries, of Holland & Knight LLP, Washington, D.C., USA.  Respondent is City of Media (“Respondent”), represented by Ben Naftali, Israel.



The domain name at issue is <>, registered with, Inc.



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.



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,, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with, Inc. and that the Respondent is the current registrant of the name., Inc. has verified that Respondent is bound by the, 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 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.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant


Complainant contends that Respondent’s domain name <> 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 <> 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 <>, 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 <> 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 <> 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 <> 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 UK online bingo industry.”



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 United States since 1935.  During the past few years, Complainant has promoted an online version of its MONOPOLY game under the domain name <>, which permits anyone in the world to participate via the internet. 


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 <>.  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 <> 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 <> website “advertises an online bingo game ‘Bingo Café UK’ using [Hasbro’s] trade mark MONOPOLY.  Such use constitutes trade mark infringement.  The advertisement of ‘Bingo Café UK’ … reproduces the Monopoly logo and Mr. Monopoly man.  The use of the Monopoly logo and Mr Monopoly man…in conjunction with the domain name and also the advert for the online game constitutes passing off as the public is likely to believe that [Hasbro] licensed the use of [its] intellectual property to you or have somehow endorsed your website.”


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.



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.


Identical and/or Confusingly Similar


Complainant owns trademark registrations for the MONOPOLY mark in the United States (e.g., Reg. No. 326,723 issued July 30, 1935) and in other countries.  The Panel concludes that Complainant has established rights in the MONOPOLY mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the U.S. Patent and Trademark Office); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)).


Complainant argues that Respondent’s <> 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).


Rights or Legitimate Interests


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 Media.” See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).


Respondent’s <> 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 <> 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. Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s assertion of rights and legitimate interests in the <> domain name, where respondent’s website linked to competing commercial websites, which was not a bona fide offering of goods or services).


In summary, this Panel concludes that Respondent does not have legitimate rights or interest in the <> domain name pursuant to Policy ¶ 4(a)(ii).


Registration and Use in Bad Faith


The <> 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <> domain name constituted disruption under Policy ¶ 4(b)(iii)); Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).


In summary, this Panel concludes that Respondent has registered and used the <> domain name in bad faith as defined by Policy ¶ 4(a)(ii i).



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.



Linda M. Byrne, Panelist
Dated:  February 25, 2010



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