Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Hollywood Casino Corporation, Dallas, TX, USA ("Complainant") represented by Michael F. Snyder. The Respondent is Wallace Nakano Mike, San Jose, SJ, Costa Rica ("Respondent").

The domain name at issue is betathollywood.com registered with Register.com.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 1, 2000; the Forum received a hard copy of the Complaint on December 4, 2000.

On December 8, 2000, Register.com confirmed by e-mail to the Forum that the domain name betathollywood.com is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 2001 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@betathollywood.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 11, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

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

Complainant alleges the following with respect to the disputed domain name betathollywood.com:

Hollywood Casino is the owner of casinos which use the service mark and trade name HOLLYWOOD CASINO and which offer gaming, dining, bar services and entertainment. The HOLLYWOOD CASINO in Aurora is located at One New York Street Bridge, Aurora, Illinois. Hollywood Casino’s casino consists of two six-hundred (600) passenger-capacity floating casinos, called the City Lights I and City Lights II. Hollywood Casino’s casino in Aurora, Illinois has been open to the public and operational since on or about June 17, 1993.

Hollywood Casino is also the owner of another casino HOLLYWOOD CASINO in Robinsonville, Mississippi. This casino is located at Route 1, Commerce Road, Robinsonville, Mississippi 38664. This location is referred to as Tunica, Mississippi.

Hollywood Casino’s casino in Tunica, Mississippi has been open to the public and operational since on or about August 8, 1994, and has offered gaming, dining, bar services, and entertainment since that date. Hollywood Casino has conducted extensive publicity and public relations for its casinos, including the HOLLYWOOD CASINO service mark and trade name. In addition to Hollywood Casino’s own paid advertising and publicity, Hollywood Casino’s casinos have also received immense print and electronic media coverage. As a result of Hollywood Casino’s advertising and publicity efforts as well as the news coverage which Hollywood Casino's casinos have received, Hollywood Casino’s casinos, its HOLLYWOOD CASINO service mark, trade name and Hollywood motif, have become well-known not only within the geographic area surrounding Aurora, Illinois, and Tunica, Mississippi, but nationally as well.

Hollywood Casino’s use of HOLLYWOOD CASINO as adjacent words in connection with its casinos is unique to Hollywood Casino, and is arbitrary and has no recognized meaning in the gaming industry except as designating Hollywood Casino as the source of its casino services.

Hollywood Casino is expanding its usage of HOLLYWOOD CASINO. Hollywood Casino is currently building a casino in Shreveport, Louisiana.

Hollywood Casino is the owner of the domain names:

Respondent offers online gaming at the betathollywood.com domain name address. Respondent’s online gaming services are offered under the name HOLLYWOOD INTERNATIONAL CASINO & SPORTSBOOK. Respondent’s online HOLLYWOOD INTERNATIONAL CASINO gaming site at the domain name betathollywood.com offers casino games identical to those of Hollywood Casino, namely, black jack, baccarat, craps, slot machines, and roulette.

Respondent’s adoption and continued use of the betathollywood.com domain name alone, and to attract customers to a web site featuring the name HOLLYWOOD INTERNATIONAL CASINO, is in bad faith, and is a willful infringement of Hollywood Casino’s prior rights.

Respondent’s domain name betathollywood.com appropriates the dominant portion of Hollywood Casino’s HOLLYWOOD CASINO service marks and trade name, as well as Hollywood Casino’s domain names, and is likely to cause confusion, mistake or deception among the trade and public.

Respondent’s domain name betathollywood.com shares a similar overall commercial impression with Hollywood Casino’s HOLLYWOOD CASINO service marks and trade name, as well as Hollywood Casino’s domain names, and is likely to cause confusion, mistake or deception among the trade and public. Respondent's adoption and use of betathollywood.com would effectively appropriate Hollywood Casino's service mark, trade name, and domain name, and represent to clientele, to the trade and public, that Respondent's web site offered in connection with betathollywood.com is offered under the sponsorship of or in affiliation with Hollywood Casino.

Respondent’s adoption and use of the domain name betathollywood.com dilutes the distinctive quality of Hollywood Casino's service mark and trade name.

Respondent has no legitimate rights in the domain name betathollywood.com other than to trade upon the established good will of Hollywood Casino.

B. Respondent

Respondent did not submit a response in this matter.

Complainant bases its claim on the following federal trademark and service mark registrations:

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

The Panel must first determine whether Complainant has sufficient rights in a mark to bring a claim under the ICANN Policy. The Panel finds that it does. Complainant, by providing evidence of at least eight federal trademark registrations, has sufficiently demonstrated its rights in its HOLLYWOOD CASINO marks. See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place).

Having established that Complainant may enforce its HOLLYWOOD CASINO mark in a UDRP proceeding, the Panel must next determine whether the contested domain name is identical or confusingly similar to any of Complainant’s marks. The Panel finds that the betathollywood.com is confusingly similar to Complainant’s HOLLYWOOD CASINO mark. The word Hollywood could itself be descriptive and not confusingly similar to Complainant’s marks. However, when used in connection with casinos, or gambling, the word Hollywood is more likely associated with Complainant’s products and services. The contested domain name, because it uses the words ‘bet’ and ‘hollywood’ is more likely to result in confusion than use of the word ‘hollywood’ alone. See Caterpillar Inc. v. Matthew Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names of caterpillarparts.com and caterpillarspares.com were confusingly similar to the registered trademarks of "Caterpillar" and "Caterpillar Design" because "the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors").

Therefore, the panel finds that the domain name betathollywood.com is confusingly similar to Complainant’s HOLLYWOOD CASINO mark. See also Treeforms, Inc. v. Cayne Industrial Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist); Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU marks to form the domain name pokemonpikachu.com).

The Panel may find rights or a legitimate interest if it believes that one of the following has bee demonstrated:

The panel inquires into Respondents rights even in the absence of a response. However, an examination of the evidence presented does not indicate that Respondent has any rights or legitimate interests in the contested domain name.

First, although Respondent is using the domain name to offer goods or services, the Panel finds that Respondent’s use is not bona fide, because Respondent’s use trades off Complainant’s goodwill. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) ("[I]t 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").

Second, Respondent appears to be known as Hollywood International Casino & Sportsbook, not as betathollywood.com. Nothing in the evidence presented indicates that Respondent is, or seeks to be commonly known by the domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Third, Respondent’s use of the contested domain name is commercial, and was likely chosen specifically because it would misleadingly divert consumers or tarnish Complainant’s mark. See Kosmea Pty Limited v. Carmel Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where the Respondent has an intention to divert consumers of the Complainant’s products to the Respondent’s site by using the Complainant’s mark).

Therefore, the Panel finds that the evidence fails to demonstrate Respondent’s rights or legitimate interest in the domain name under the ICANN Policy.

Registration and Use in Bad Faith

In order to warrant transfer of the domain name, the panel must find that Respondent registered and used the domain name in bad faith. The following circumstances, without limitation, indicate bad faith:

The panel finds that Respondent’s conduct indicates bad faith in registration and use under section (iv), above. By registering and using the contested domain name, without differentiating its web site and business from that of Complainant, Respondent has created a likelihood of confusion with the Complainant’s mark. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding is that the Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his web-site as the Complainant).

At the time Respondent registered its domain name Claimant held several trademark registrations for its various HOLLYWOOD marks, for use in connection with casinos and casino services. In choosing a domain name that also associates HOLLYWOOD with casinos and gambling, Respondent created a likelihood of confusion with its legitimate owner.

Here, Respondent registered and is using a domain name confusingly similar to Complainants to offer substantially similar services. It is quite likely that Internet users who access Respondent’s web site will be confused as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or its products or services. Specifically, Internet users may believe that the site or services are in some way affiliated with Complainant. See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant); Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Sufficient bad faith is present to warrant transfer of the domain name.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name betathollywood.com be transferred from the Respondent to the Complainant.