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Generic Top Level Domain Name (gTLD) Decisions |
Harrah's Las Vegas, Inc. v. Grand Slam
Co.
Claim Number: FA0205000114339
PARTIES
Complainant
is Harrah's Las Vegas, Inc., Las
Vegas, NV, USA (“Complainant”) represented by David J. Stewart, of Alston
& Bird, LLP. Respondent is Grand Slam Co., Chopsticks Town,
THAILAND.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwharrahs.com>,
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.
Judge
Harold Kalina (Ret.) 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
name <wwwharrahs.com> is
registered with Tucows, Inc. and that Respondent is the current registrant of
the name. 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@wwwharrahs.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
June 30, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-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 Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<wwwharrahs.com> domain name
is confusingly similar to Complainant’s HARRAH’S mark.
Respondent
has no rights or legitimate interests in the <wwwharrahs.com> domain name.
Respondent
registered and used the <wwwharrahs.com>
domain name 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. SM5424, SM1004, 160317 and 160792
issued by the Trademark Board of Thailand 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 games and
sporting 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
extensively 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.
Respondent registered the <wwwharrahs.com> domain name on
March 27, 2000. Respondent uses the
domain name to re-direct Internet users to <worldwidegamble.com>, which
offers casino gaming and sportsbook
services.
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 to
the HARRAH’S mark through registration with the United States Patent and
Trademark Office
and the Trademark Board of Thailand.
Respondent’s <wwwharrahs.com> domain name contains Complainant’s entire
HARRAH’S mark with the addition of three consecutive “w’s.” When attempting to access a website,
Internet users type in “www,” which stands for World Wide Web, followed by a
period prior to
typing in a domain name.
If an Internet user forgets to type the period between the “www” and the
domain name, which is a common mistake, they will be re-routed
to Respondent’s
gambling website. Because of the potential of a common mistake, Respondent’s
domain name is confusingly similar to
Complainant’s mark. See
Bank of Am. Corp. v. InterMos, FA
95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar
to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between
the www and the domain name) that users
commonly make when searching on the Internet”).
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 <wwwharrahs.com> domain name to re-direct Internet users
searching for Complainant to another website, <worldwidegamble.com>. The website Respondent re-directs users to
offers gambling services similar to those services offered by Complainant. Due to Respondent’s use of the <wwwharrahs.com> domain name,
Respondent does not have rights and legitimate interests in the domain name
pursuant to Policy ¶¶ 4(c)(i) and (c)(iii).
See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting
the domain names was to cause confusion with the
Complainant's website and
marks, it's use of the names was not in connection with the offering of goods
or services or any other
fair use); 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 Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that
Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods).
Respondent is not commonly known as
WWWHARRAHS or <wwwharrahs.com>;
Respondent is only known to this Panel as Grand Slam Co. Complainant never authorized or licensed
Respondent to use the HARRAH’S mark.
Hence, Respondent has no rights or legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark
and never applied for a license or permission from
Complainant to use the trademarked name); see
also 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the disputed domain name,
thus, Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
In light of the fame and notoriety that
Complainant’s HARRAH’S mark enjoys, it is inconceivable that Respondent could
have registered
<wwwharrahs.com>
without knowledge of Complainant’s rights in the HARRAH’S mark. Therefore, Respondent’s registration
constitutes bad faith. See 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); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001)
("Given the uniqueness and the extreme international popularity of the
[ODIE] mark,
the Respondent knew or should have known that registering the
domain name in question would infringe upon the Complainant's goodwill").
Furthermore, it is evident Respondent
knew of the goodwill Complainant’s mark had established because Respondent used
the infringing
domain name to divert Internet users to its gambling website,
which is an industry Complainant is famous for. Respondent’s use attracts Internet users who mistakenly forget
the period after the “www,” for commercial gain, by using a domain
name that is
confusingly similar to Complainant’s HARRAH’S mark. Respondent’s domain name fails to distinguish its gambling
website services from Complainant’s services.
Therefore, Respondent’s use of the domain name amounts to bad faith use
under Policy ¶ 4(b)(iv). See 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); see also 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 <wwwharrahs.com> domain name be TRANSFERRED from Respondent to
Complainant.
Judge Harold Kalina (Ret.)
Dated:
July 8, 2002
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