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Caesars World, Inc v. Alaiksei Yahorau [2004] GENDND 1090 (31 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Caesars World, Inc v. Alaiksei Yahorau

Case No. D2004-0513

1. The Parties

The Complainant is Caesars World, Inc, Las Vegas, Nevada, of United States of America, represented by Pitney Hardin LLP, United States of America.

The Respondent is Alaiksei Yahorau, Mahileu, of Belarus.

2. The Domain Name and Registrar

The disputed domain name <pornocaesar.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2004. On July 13, 2004, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On July 13, 2004, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2004.

The Center appointed Christopher J. Pibus as the Sole Panelist in this matter on August 10, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On August 16, 2004, the Panel issued a Procedural Order requiring the Complainant to produce correspondence it had mentioned in the Complaint, but not included as an exhibit.

On August 24, 2004, Complainant responded to the Procedural Order by producing a copy of the cease-and-desist letter dated April 20, 2004, which it sent to the prior registrant Alexander Yevmenov, and certain related materials.

4. Factual Background

Complainant operates casinos and hotels, using the CAESARS name at 6 different locations in the United States and one location in South Africa. Complainant owns at least 19 registered trademarks in the United States, all of which include the words CAESARS (see Exhibit 1 – Simball Declaration). In particular, Complainant owns the following U.S. registrations for the mark CAESARS alone:

CAESARS stylized	954,637	hotel, restaurant,…beauty salon services	March 6, 1973
CAESARS	954,684	night-club entertainment…casino services	March 6, 1973
CAESARS	983,525	hotel, restaurant…beauty salon services	May 7, 1974
CAESARS (stylized)	1,001,363	night-club entertainment…casino services	January 7, 1975

(hereafter “the CAESARS Marks”).

Respondent registered the domain name <pornocaesar.com> on March 4, 2004. At the date of the Complaint, Respondent was operating an active website using this domain name.

5. Parties’ Contentions

A. Complainant

The Complainant Caesars World, Inc. has filed evidence in the form of a Declaration in the name of Mitchell Simball, along with numerous exhibits. Comprehensive submissions are set out in the Complaint.

Complainant argues that it has well-established rights in the trademark CAESARS, and in a number of variations which include the word CAESARS as a distinctive element. Complainant relies on evidence of some 19 USPTO registrations, and claims that it owns registrations in 30 other countries, including the Russian Federation.

The fame of the CAESARS Marks is supported by extensive evidence of sales and advertising, including:

1. The substantial amounts ($96,012,057) which have been spent in connection with advertising for CAESARS PALACE Casino and hotel from 1995-2000;

2. The sheer number of visitors who have stayed at the Complainant’s CAESARS hotels on an annual basis:

CAESARS PALACE – 1,500,000 annual visitors

CAESARS ATLANTIC CITY – 700,000 annual visitors

CAESARS TAHOE – 250,000 annual visitors

3. The popularity of the <caesars.com> website, attracting 2,018,843 unique visitors in 2000.

Complainant argues that its CAESARS Marks had gained wide recognition and had become very well-known, prior to the registration of the <pornocaesar.com> domain name in March 2004. Complainant notes that the Respondent’s predecessor Alexander Yevmenov failed to respond to a complaint letter dispatched to him in advance of these proceedings.

The essence of the Complaint is that the Respondent is exploiting the famous CAESARS Marks to attract business to an active website which contains graphic pornography. Tarnishment of goodwill and reputation is consequently alleged, particularly in light of the significance of the CAESARS Marks in the world of entertainment services.

Complainant argues that the domain name is confusingly similar to the CAESARS Marks, because it merely adds a generic term “porno” to a shortened form of the CAESARS Marks themselves.

Respondent is alleged to have no legitimate interest in the domain name, as there is no evidence that Respondent was commonly known by the name, which was registered decades after the Complainant had established its rights to the CAESARS Marks.

In terms of bad faith, Complainant alleges that Respondent seeks to profit from the long-established reputation in the CAESARS Marks, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website. The pornographic context of Respondent’s site, combined with the use of a famous mark, is alleged to be strong evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The central issue in this matter is whether the domain name <pornocaesar.com> is confusingly similar to the Complainant’s CAESARS Marks. The Panel finds that there is compelling evidence to support the conclusion that the CAESARS Marks are well-known, particularly in the hotel, gaming and entertainment business.

The domain name in question comprises a shortened, singular form of the trademark CAESARS, whereby the final “s” has been deleted, and to which the prefix “porno” has been added. The question is whether these changes are sufficient to avoid or significantly diminish the likelihood of confusion. No arguments have been put forward by the Respondent to assist the Panel in this regard.

The first complicating factor is that the domain name includes the added prefix “porno.” The Panel agrees with Complainant’s submission that the addition of a generic term does not diminish the likelihood of confusion. Ample authority exists to support this conclusion: Nokia Corporation v. Nokiagirls.com a.k.a.IBCC, WIPO Case No. D2000-0102 (addition of “girls” to trademark NOKIA). In particular, the Panel relies on Microsoft Corporation v. S.L. Mediaweb WIPO Case No. D2003-0538:

“the addition of a generic denomination, in particular to a famous trademark, did not suffice to avoid confusing similarities, but the addition of, for instance, the generic word “porno” to a trademark only suggests that the services and goods marketed are those of the trademark holder with a pornographic content.”

As Complainant points out, the CAESARS Marks are well-known for entertainment services, and there may well be some form of perceived nexus between the business of the Complainant and the suggested content of the disputed domain name and website, among users.

The second issue is the effect of deleting the letter “s” from the marks in question. There are a number of prior decisions which discuss the addition of single letters such as “e” or “s,” and conclude that such minor changes do not prevent or significantly reduce the likelihood of confusion. (BusyBody, Inc. v Fitness Outlet Inc. WIPO Case No. D2000-0127 - <efitnesswarehouse.com> confusingly similar to FITNESS WAREHOUSE) (Scholastic Inc. v. Applied Software Solutions Inc. WIPO D2000-1629 – <escholastics.com> confusingly similar to SCHOLASTIC trademark).

The deletion of the single letter “s” was reviewed in MatchNet PLC v. Mac Trading (WIPO Case No. D2000-0205) where the disputed domain name was <americansingle.com>, and the trademark was the plural form: AMERICANS SINGLES. The Panel in that decision found that it was “obvious” the domain name was virtually identical to the mark in question.

In this matter, it cannot be said to be obvious that the domain name and marks are virtually identical. However, in the Panel’s view, the deletion of the letter “s” from the CAESARS Marks does not significantly diminish the likelihood of confusion, particularly in light of Respondent’s failure to produce any evidence on this issue.

All these factors lead to a conclusion that there is a substantial likelihood of confusion between the Complainant’s marks and the domain name in question. The Panel acknowledges that arguments to the contrary could have been raised, focusing on the difference in meaning between the word CAESAR and the mark CAESARS. Similar arguments were persuasively presented in connection with <teaserspalace.com> (Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd. WIPO Case No. D2002-0066). In the absence of any evidence or submissions on the part of the Respondent, the Panel is not prepared to find in favour of the Respondent on this point.

Accordingly, the Panel finds that the domain name in issue is confusingly similar to the Caesars Marks, in which the Complainant clearly has rights. The first element in paragraph 4(a)(i) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

There is no evidence on the record that the Respondent ever had any legitimate right or interest in the <pornocaesar.com> domain name. To the contrary, the evidence shows that the website only recently became active, many decades after Complainant had established its rights to the CAESARS Marks. No relationship exists between Complainant and Respondent, which would give rise to any license, permission or authorization to use the domain name.

The Panel determines that the Respondent has no legitimate interests or rights in the disputed domain name.

C. Registered and Used in Bad Faith

The pornographic content of the Respondent’s website, as it existed when the Complaint was initiated, constitutes significant indicia of bad faith. Prior decisions have consistently articulated support for this position, based on the concept of tarnishment:

ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215, “the use of ABB as part of a domain name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith.”;

America Online v. Viper, WIPO Case No. D2000-1198 “The fact that the site operated by Respondent is pornographic in nature has been found in prior decisions to be evidence of bad faith.”;

MatchNet PLC v. MAC Trading, WIPO Case No. D2000-0205 “The Respondent has used its website to furnish sexually explicit and pornographic material under the domain name and in the circumstances, given the likelihood of confusion, there is a prima facie case that this could tarnish the Complainant’s goodwill in its common law service mark.”;

America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661, citing Coral Trademark Limited v. Eastern Net, Inc., WIPO Case No. D2000-1295, “the posting of pornographic contents on a website under a domain name that corresponds to a third party’s mark is a bad faith use of the domain name.

The Panel is prepared to find, in the absence of evidence to the contrary, that the Respondent has used the <pornocaesar.com> domain name to attract, for commercial gain, internet users to this website by creating a likelihood of confusion as to whether Complainant was the source, sponsor, affiliate or endorser of the website.

Accordingly, the Complainant has satisfied the third element under paragraph 4(a), and is entitled to the remedy it seeks.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <pornocaesar.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Dated: August 31, 2004