DECISION

Showboat, Inc. v. Azra Khan

Claim Number: FA0209000125227

PARTIES

Complainant is Showboat, Inc., Las Vegas, NV, USA (“Complainant”) represented by Andrew J. Wilson, of Alston & Bird LLP.  Respondent is Azra Khan, Rawalpindi, PAKISTAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <showboatcasino.com>, registered with iHoldings.com, 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 September 16, 2002; the Forum received a hard copy of the Complaint on September 20, 2002.

On September 24, 2002, iHoldings.com, Inc. confirmed by e-mail to the Forum that the domain name <showboatcasino.com> is registered with iHoldings.com, Inc. and that Respondent is the current registrant of the name.  iHoldings.com, Inc. has verified that Respondent is bound by the iHoldings.com, 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 September 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 14, 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@showboatcasino.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 November 1, 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The  <showboatcasino.com> domain name is confusingly similar to Complainant's SHOWBOAT mark.

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

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

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns SHOWBOAT, the “Mardi Gras Casino,” located in Atlantic City , New Jersey.  Complainant’s SHOWBOAT casino is one of the largest and most renowned casino entertainment facilities in the United States.  Complainant’s casino has been named “Best Casino” by the Atlantic City Courier-Post eight years in a row, and has also won the “Best Gourmet Restaurant” award from both Casino Player Magazine and Strictly Slots Magazine. 

Complainant owns six trademark registrations with the United States Patent and Trademark Office for its SHOWBOAT mark including Registration Numbers: 1,066,734; 1,078,615; 1,336,013; 1,658,559; 2,123,404; and 2,266,994.  Complainant opened the doors to its SHOWBOAT casino in 1954, and since that time it has continuously and exclusively used the mark SHOWBOAT to identify its casino entertainment services as well as its other products and services.

Respondent registered the disputed domain name <showboatcasino.com> on February 25, 2002.  Respondent is using the domain name to redirect Internet traffic to a series of websites that offer online casino gaming services.  These games include “Digital Betting Casino,” “Club Dice Casino,” and “Mango Casino.”  Respondent’s series of websites also include a site for a promotional sweepstakes for a free trip to Monte Carlo, and a site called “Casino Finder” which provides links to numerous other sites offering online casino and sportsbook services.  Respondent profits by directing Internet users to these websites through affiliate programs offered by the operators of the featured websites.  This is not the first time that Respondent has engaged in this type of conduct, nor the first time Respondent has had its rights in a domain name challenged in a UDRP proceeding. 

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 that it has rights in its SHOWBOAT mark through registration with the United States Patent and Trademark Office and continuous extensive use since 1954.

Respondent’s <showboatcasino.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely adds the term “casino.”  The addition of the word “casino” to Complainant’s mark does not create a distinctive domain name because it merely describes Complainant’s business.  Complainant’s SHOWBOAT mark is associated exclusively with Complainant’s casino in Atlantic City, New Jersey.  Internet users will be confused as to the source, sponsorship, and affiliation of Respondent’s <showboatcasino.com> domain name. Therefore, the domain name does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to 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). 

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

Rights or Legitimate Interests

Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is using the disputed domain name in order to divert Internet users to a series of websites that advertise numerous online casinos.  Respondent is using the goodwill associated with Complainant’s SHOWBOAT casino in order to commercially gain by redirecting Internet users looking for information about Complainant to a series of websites orchestrated by Respondent.  This type of activity is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with 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).

Furthermore, Respondent is known to this Panel only as Azra Kahn.  There is no evidence on record that proves that Respondent is commonly known as SHOWBOAT, SHOWBOAT CASINO, or <showboatcasino.com>.  Respondent has not come forward with any evidence to contradict these findings, therefore it has failed to establish that it has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

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

Registration and Use in Bad Faith

Based on the fact that Respondent is using the disputed domain name in order to redirect Internet users to a series of websites advertising online casinos, it can be inferred that Respondent had knowledge of Complainant’s SHOWBOAT mark when it registered the disputed domain name because SHOWBOAT is the name of Complainant’s famous casino.  Registration of a domain name, despite knowledge of Complainant’s rights in the mark, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See 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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Furthermore, Respondent is using the <showboatcasino.com> domain name in order to divert Internet users for its own commercial gain.  Respondent strategically registered a domain name that would attract Internet users interested in Complainant’s casino services so that it could redirect these users to its series of websites.  For every Internet user directed to the website in Respondent’s series, Respondent receives a commission through the online casinos’ affiliate programs.  Therefore, Respondent is using a confusingly similar domain name in order to commercially benefit, and this behavior is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

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 shall be hereby granted.

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

                                                Dated: November 4, 2002

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