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Caesars Entertainment, Inc. v. Michael Ulrich/HardcoreDVD.com [2004] GENDND 1117 (19 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars Entertainment, Inc. v. Michael Ulrich/HardcoreDVD.com

Case No. D2004-0463

1. The Parties

The Complainant is Caesars Entertainment, Inc., Las Vegas, Nevada, United States of America. The Complainant is represented by Stephen W. Feingold of Pitney Hardin LLP in New York, New York, United States of America.

The Respondent is listed in the WhoIs database as Michael Ulrich and HardcoreDVD.com, with an address at Canoga Park, California, United States of America.

2. The Domain Name and Registrar

The domain name at issue in this proceeding is <flamingo-club-online.com> (the “Domain Name”). The Registrar with which the Domain Name is registered is eNom, Inc.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2004.

(b) On June 28, 2004, the Center transmitted by e-mail to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On June 29, 2004, eNom, Inc. transmitted by e-mail to the Center its verification response.

(c) 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”).

(d) 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 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2004.

(e) The Respondent did not submit any response by the requested due date of July 21, 2004. Accordingly, the Center notified the Respondent of its default on July 22, 2004.

(f) The Center appointed Timothy D. Casey as the sole panelist in this matter on August 2, 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.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

4. Factual Background

(a) Complainant provides gaming, hotel, and entertainment services through its operation of the Flamingo casinos and hotels, the most famous of which is located in Las Vegas, Nevada, United States of America. This Casino was first opened in December 1946.

(b) Complainant owns several United States Patent and Trademark Office (the “USPTO”) registrations for the marks “FLAMINGO,” “FLAMINGO” (Stylized), “FLAMINGO PLAYERS CLUB” and “FLAMINGO LAS VEGAS” (the “Marks”), which are used to designate and promote Complainant’s services. Complainant also owns registrations for the “FLAMINGO” Marks in Egypt and Greece.

(c) Since 1946, Complainant has been using the “FLAMINGO” name and mark continuously.

(d) Over one million people per year stay at Complainant’s casino and hotel in Las Vegas. Millions more pay a visit to Complainant’s casino and hotel in Las Vegas each year without staying overnight. After undergoing renovations in 1996 that expanded its capacity to 3,500 hotel rooms, Complainant’s hotel and casino was the largest hotel in the world. Currently, it is the tenth largest hotel in the world, and the fifth largest in Las Vegas.

(e) The Flamingo operation also provides gaming services, entertainment services and shopping arcade services, as well as hotel services through its operation of the Flamingo Las Vegas and the Flamingo Laughlin hotel in Nevada. In the past, Complainant also operated a Flamingo hotel in Reno, Nevada.

(f) In addition, according to some, Complainant’s Flamingo hotel sits on one of the busiest intersections in the world, Flamingo and Las Vegas Boulevards, which sees 50,000 people pass by every day.

(g) In 2001, Complainant spent approximately $3,500,000 on advertising its casinos. In 2002, Complainant spent approximately $4,000,000 on advertising its casinos. In 2003, Complainant spent approximately $7,000,000 on advertising its casinos.

(h) Complainant has had a presence on the Internet in the form of a website devoted to its Las Vegas Flamingo casino at “www.lv-flamingo.com” since on or about August 3, 2000. From January 2003 through December 2003, there were approximately 2,100,000 visits to Complainant’s “www.lv-flamingo.com” website.

(i) Complainant has had a presence on the Internet in the form of a website devoted to its Laughlin Flamingo casino at “www.laughlinflamingo.com” since on or about August 3, 2000. From January 2003 through December 2003, there were approximately 425,000 visits to Complainant’s “www.laughlinflamingo.com” website.

(j) Complainant is also active in preventing use of its famous trademarks on the Internet and has been successful in protecting its rights in over a dozen UDRP decisions.

(k) Respondent registered the Domain Name on January 28, 2004.

(l) Respondent is in the business of operating on-line casinos at least under the website “www.flamingo-club-online.com”.

5. Parties’ Contentions

I. Complainant

Complainant alleges that it has rights in the “FLAMINGO” family of marks as evidenced by registrations at the USPTO and based on long and extensive use in commerce.

Complainant asserts that the “FLAMINGO” mark is “very well known” in connection with the hotel and casino industry, and is famous.

Complainant argues that the disputed domain name is identical or confusingly similar to its well known mark since the term “club” in this context is only indicative of some sort of membership and “online” in this case is solely descriptive in nature. Therefore, “flamingo-club-online” creates the same commercial impression as Flamingo for gaming services.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed Domain Name. Complainant argues that Respondent must have been aware of its famous mark at the time it undertook its registration of the disputed Domain Name and that under U.S. trademark law, Respondent is deemed to have been on constructive notice of Complainant’s rights in Complainant’s Marks before it registered the Domain Name.

Complainant alleges that Respondent registered and has used the disputed domain name in bad faith. Complainant argues that Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of its website or location of a service on its website or location.

Complainant requests the Panel to direct the registrar to transfer the disputed Domain Name to it.

II. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(I) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(II) Respondent has no rights or legitimate interests in respect of the domain name; and

(III) Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforementioned three elements must be proved by a complainant to warrant relief.

In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings:

I. The Domain Name is identical or confusingly similar

Respondent’s Domain Name is identical or confusingly similar to Complainant’s Marks. The use of the term “flamingo” with gaming services is strongly identified with the Complainant’s Marks. The terms “club” and “online” are merely descriptive as “club” refers to a group of people organized for a common purpose, in this case gambling, and “online” is a description of the specific sales channel employed. Therefore, when the Domain Name inserts the descriptive words “club” and “online” after “flamingo,” it creates the same commercial impression as the Complainant’s Marks. Internet users are likely to believe the domain name is related to, associated with, or authorized by Complainant, perhaps as an on-line representation of its other facilities. It is precisely because of this association with Complainant’s Marks that Respondent registered the Domain Name. As such, Complainant has satisfied the first element of the Policy that Registrant’s Domain Name is identical or confusingly similar to Complainant’s Marks.

II. The Respondent has no rights or legitimate interests in the Domain Name

Respondent registered its Domain Name only after Complainant had established rights in its family of “FLAMINGO” marks. Moreover, Respondent specifically chose as the name for its business entity and domain name, the confusingly similar name of Complainant’s well-known casino. The use of “Flamingo” in connection with an active on-line casino is clearly a way for Respondent to gain consumer trust.

The fame and distinctiveness of the Complainant’s arks has been recognized in a previous matter before this body. In Park Place Entertainment Corporation v. Anything.com Ltd., WIPO Case No. D2002-0530, a decision involving the <flamingo.com> domain name, the panel found that Complainant’s FLAMINGO mark “...is well known in the field of hotels and casinos...” based on “strong consumer identification of the mark with Complainant’s service business, extensive advertisement of the mark, and its continuous long use in commerce.” As set forth in that decision, it is clear that as used on the Internet as part of a domain name, the term “Flamingo” is identified with the Complainant.

While the evidence shows that the “FLAMINGO” marks are renown throughout the world, in as much as <flamingo-club-online.com> offers on-line casino gaming and sports betting on U.S. sports, it is clear that the true target of this Domain Name are persons interested in betting on traditional games of chance and U.S. sports events, who would largely consist of U.S. residents to whom these names are famous.

Where, as here, Complainant’s Marks and name are so well known and so widely recognized, and have been used in connection with gaming services for so many years, there can be no legitimate use by Respondent with respect to gaming services.

There also exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the Domain Name, which incorporates in their entirety and/or are confusingly similar to Complainant’s Marks. Respondent is not commonly known by the Domain Name and is not making legitimate noncommercial or fair use of them. Indeed, Respondent is not making and has never made any use of the Domain Name apart from associating it with a website on which users may engage in online gambling activities, to the Respondent’s profit.

Furthermore, a legitimate business entity would attempt to defend its legitimate interest by responding to the Complaint. Respondent’s lack of response is indicative of an organization without a legitimate business interest in the domain name.

III. The Respondent registered and used the Domain Name in bad faith

Respondent’s actions evidenced bad faith use and registration of the Domain Name under paragraph 4(b)(iv) of the Policy, because it is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s Marks as to the source, sponsorship, affiliation or endorsement of its website or location of a service on its website or location.

Attempts to contact the Respondent at each e-mail address and physical address listed in the WhoIs database has yielded no response. Curiously, the phone number listed in the WhoIs record is of a number in France even though the listed WhoIs address is from California. The Panel conducted independent research on domain names that apparently are related to the owners of the Domain Name in question and found WhoIs records for <hardcoredvd.com> and <flamingoclub.com>. Both domain names have addresses (Hawaii and Virginia respectively) that are different from the Domain name at issue. Again, the <flamingoclub.com> domain name has a phone number in a different state (Pennsylvania) from that of its listed WhoIs address (Virginia). Therefore, in light of the above facts and a lack of a response by the Respondent, the Panel infers that false information was given when registering the Domain Name, perhaps in an attempt to avoid prosecution for operating an illegal gambling website in the United States. Providing false information on a WhoIs record is indicative of bad faith registration and use.

As further evidence of Respondent’s bad faith, the Panel also discovered that Respondent’s website claims that the “FLAMINGO CLUB CASINO” trademark utilized by it is a registered trademark. Independent review of the USPTO records, however, reveals no such registration.

By operating an on-line casino under the “FLAMINGO” mark, Respondent is clearly trading off the reputation of Complainant’s famous Flamingo properties by implying some association or connection with one of the most trusted names in the industry.

The Complainant has met the requirements of the Policy by demonstrating not only their own legitimate interest in Complainant’s Marks, as evidenced by their use of those registered marks, but also that Respondent registered and has used the Domain Name in bad faith, and that Respondent’s sole interest in the Domain Name is to unjustly profit from it.

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, <flamingo-club-online.com> be transferred to the Complainant.

Timothy D. Casey
Sole Panelist

Dated: August 19, 2004