Generic Top Level Domain Name (gTLD) Decisions

Complainant is Horseshoe License Company, Las Vegas, NV, USA ("Complainant") represented by Rachel L. St. Peter, of Ice Miller. Respondent is Mercedes Net A.V.V., Oranjestad, Aruba ("Respondent").

The domain name at issue is <casinohorseshoe.com> registered with BulkRegister.com.

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

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 12, 2001; the Forum received a hard copy of the Complaint on April 12, 2001.

On April 18, 2001, BulkRegister.com confirmed by e-mail to the Forum that the domain name <casinohorseshoe.com> is registered with BulkRegister.com and that Respondent is the current registrant of the name. BulkRegister.com has verified that Respondent is bound by the BulkRegister.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 April 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@casinohorseshoe.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 May 18, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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 Respondent.

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

A. Complainant

The <casinohorseshoe.com> domain name is confusingly similar to Complainant’s federally registered trademarks.

Respondent has no rights or legitimate interests in the <casinohorseshoe.com> domain name.

Respondent registered and used the <casinohorseshoe.com> domain name in bad faith.

B. Respondent

No response was received from Respondent.

Since 1951, Binion’s Horseshoe and the HORSESHOE marks have been synonymous with casino operations and services around the country. Complainants own and license the famous HORSESHOE marks to casino and gambling facilities and hotels throughout the country. Currently, the Horseshoe Gaming Holding Corporation (HGHC) is the largest privately held casino company in the nation. HGHC and its subsidiaries are expected to gross over one billion dollars in 2001.

Complainant registered the HORSESHOE marks on the Principal Register of the United States Patent and Trademark Office as Registration Nos. 1,839,688 and 1,839,764, on June 14, 1994 in connection with casino services and hotel, restaurant and bar services. Complainant has been in continuous use since the date of registration.

Respondent registered the <casinohorseshoe.com> domain name on December 22, 2000.

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 <casinohorseshoe.com> domain name contains the word HORSESHOE, which is identical to the federally registered trademark of the Complainant. The addition of the generic word "casino" to the HORSESHOE mark makes the <casinohorseshoe.com> domain name confusingly similar. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to Complainant’s mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim 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). Furthermore, the addition of "casino," a word commonly associated with the type of business the Complainant is engaged in, also makes the domain name confusingly similar to the Complainant’s marks. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s marks with a generic term that has an obvious relationship to the Complainant’s business).

The panel finds that the Policy 4(a)(i) has been satisfied.

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <casinohorseshoe.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that "In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names").

Respondent has failed to make any use of the <casinohorseshoe.com> domain name other than to offer to sell it to Complainants. Such non-use combined with an offer for sale does not constitute a bona fide offering of goods or services, consistent with the Policy 4(c)(i). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <casinohorseshoe.com> domain name, or has acquired any rights in it pursuant to the Policy 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

There is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <casinohorseshoe.com> domain name pursuant to the Policy 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <casinohorseshoe.com > domain name and that the Policy 4(a)(ii) has been satisfied.

The fact that Respondent has linked the <casinohorseshoe.com> domain name to websites that offer pornographic material constitutes use in bad faith. See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

Respondent’s offer to sell the domain name in dispute to the Complainant for $750 further evidences Respondent’s bad faith in violation of the Policy 4(b)(i). See MedicaLogic/Medscape, Inc v. The Domain Name You Have Entered Is For Sale, FA 94933 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent registered and used the domain name in bad faith when it offered to sell the domain name for $1,250); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

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