DECISION

Harrah's Las Vegas, Inc. v. A.E. Engels and Associates

Claim Number: FA0205000114348

PARTIES

Complainant is Harrah's Las Vegas, Inc., Las Vegas, NV, USA (“Complainant”) represented by David J. Stewart, of Alston & Bird, LLP.  Respondent is A.E. Engels and Associates, Remscheid, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <harrahsportsbook.com>, <harrahsportsbook.net>, and <harrahssportsbook.net>, registered with Tucows, Inc.

PANEL

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 21, 2002.

On May 21, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <harrahsportsbook.com>, <harrahsportsbook.net>, and <harrahssportsbook.net> are registered with Tucows, Inc. and that Respondent is the current registrant of the names.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 11, 2002 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@harrahsportsbook.com, postmaster@harrahsportsbook.net>, and postmaster@harrahssportsbook.net 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 June 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain names are confusingly similar to Complainant’s HARRAH’S mark.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns numerous registrations with the United States Patent and Trademark Office for the HARRAH’s mark (Reg. Nos. 1,067,887, 1,237,716, 2,176,952, and 2,268,340).  Complainant also owns Reg. Nos. 2 025 360 and 397 27 476 issued by the German Patent and Trademark Office for the HARRAH’S mark. 

Complainant is one of the largest casino entertainment companies in the world.  Complainant offers services for wagering on a variety of sports events held around the world, including football, soccer, baseball, basketball, and other sports. 

Complainant has been using the HARRAH’S mark since 1937.  Complainant has heavily promoted the HARRAH’S mark nationally and internationally for its goods and services throughout the years.  As a result of Complainant’s promotions and longstanding use of the HARRAH’S mark, the mark is one of the most well respected and readily recognized marks in the casino entertainment industry. 

The disputed domain names were all registered on July 26, 2000.  On that date, Respondent registered <harrahsportsbook.net> and <harrahsportsbook.com>.  Complainant’s investigation revealed that <harrahssportsbook.net> was originally registered to Universal Internet Technologies, Inc.  However, on March 19, 2002, Respondent obtained possession of the <harrahssportsbook.net> domain name. 

Respondent uses the disputed domain names to divert Internet users to <worldwager.com>, which is a website offering online sportsbook services.  Respondent never requested or received a license or permission to use the HARRAH’S mark.

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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 has established its rights in the HARRAH’S mark through registration with the United States Patent and Trademark Office, the German Patent and Trademark Office and continuous use. 

Respondent’s <harrahsportsbook.net> and <harrahsportsbook.com> domain names contain Complainant’s HARRAH’S mark absent the possessive “s” along with addition of the generic term “sportsbook,” a term that has an obvious relation to Complainant’s business.  The omission of an “s” and the addition of a generic term that has an obvious relation to Complainant’s business does not defeat a “confusingly similar” claim.  Therefore, Respondent’s <harrahsportsbook.net> and <harrahsportsbook.com> domain names are confusingly similar to Complainant’s HARRAH’S mark.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Furthermore, Respondent’s <harrahssportsbook.net> contains Complainant’s entire mark without the apostrophe, with the addition of the generic term “sportsbook.”  Punctuation marks, such as an apostrophe, are not allowed in domain names, so Respondent’s omission of the apostrophe in the HARRAH’S mark does not create a distinct domain name.  As mentioned above, the addition of a generic term that has an obvious relation to complainant’s business does not defeat a “confusingly similar” claim.  Therefore, Respondent’s <harrahssportsbook.net> is confusingly similar to Complainant’s HARRAH’S mark.  See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and Respondent’s failure to respond, the Panel may presume Respondent has no such rights or legitimate interests in the disputed domain name.  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).  Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant.  See 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”).

Respondent uses the domain names to divert Internet traffic to a website, <worldwager.com>, that offers on-line gambling services.  Diverting Internet traffic to a website that offers similar services as Complainant, for Respondent’s commercial gain, does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  Therefore, Respondent has no rights or legitimate interests in the domain names.  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Respondent is not commonly known as HARRAHSPORTSBOOK, HARRAHSSPORTSBOOK, <harrahsportsbook.com>, <harrahsportsbook.net>, or <harrahssportsbook.net>; Respondent is only known to this Panel as A.E. Engels and Associates.  Furthermore, Complainant never granted Respondent a license or permission to use the HARRAH’S mark.  Hence, Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Due to the level of fame that Complainant’s HARRAH’S mark enjoys, Respondent was aware or should have been aware of Complainant’s rights in the mark.  Respondent’s registration, despite knowledge of Complainant’s rights, constitutes bad faith.  See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

Furthermore, it is evident Respondent knew of the goodwill Complainant’s mark had established because Respondent used the infringing domain names to divert Internet users to its gambling website, which is an industry Complainant is famous for.  Respondent’s use attracts Internet users, for commercial gain, by using domain names that are confusingly similar to Complainant’s HARRAH’S mark.  Respondent’s domain names fail to differentiate its gambling website from Complainant’s services.  Therefore, Respondent’s use of the domain names amounts to bad faith use under Policy ¶ 4(b)(iv).   See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <harrahsportsbook.com>, <harrahsportsbook.net>, and <harrahssportsbook.net> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: July 1, 2002

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