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Caesars World, Inc v. Trasporto di Networ [2004] GENDND 1180 (28 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars World, Inc v. Trasporto di Networ

Case No. D2004-0514

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 Trasporto di Networ, Rome, of Italy.

2. The Domain Names and Registrar

The disputed domain names <caesaratlanticcity.com>, <caesarpalacelasvegas.com>, <caesartahoe.com>, <caeserslasvegas.com>, <palacelasvegas.com> are registered with Fabulous.com.

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 Fabulous.com a request for registrar verification in connection with the domain names at issue. On July 14, 2004, Fabulous.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 16, 2004. The Center verified that the Amended 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 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2004.

The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on August 16, 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 25, 2004, the Panel requested Complainant to provide further evidence and arguments relating to the confusing similarity of the disputed domain name <palacelasvegas.com>. On September 15, 2004, Complainant submitted the supplemental evidence requested. The Respondent did not submit any response to the Complainant’s supplemental filing.

4. Factual Background

The Complainant provides gaming services, hotel services, entertainment services and shopping services through its operation of the famous “Caesars” casinos and hotels, the CAESARS PALACE in Las Vegas, Nevada; CAESARS TAHOE in Stateline, Nevada; CAESARS ATLANTIC CITY in Atlantic City, New Jersey; CAESARS INDIANA in Bridgeport, Indiana and CAESARS GAUTENG in South Africa. In addition, the Complainant provides casino services under the name of CAESARS PALACE AT SEA aboard the Crystal Harmony and Crystal Symphony cruise ships, and vessels bearing the CAERSARS marks have traveled the world.

The CAESARS PALACE Casino and Hotel opened on August 5, 1966, and approximately 1,500,000 guests stay at the CAESARS PALACE Casino and Hotel each year.

Complainant also stated that they constantly receive high level of publicity and recommendations from various sources.

In addition to the publicity generated by the media, Complainant has spent over 200,000,000 United States dollars in connection with advertising and promoting its CAESARS PALACE Casino and Hotel under the CAESARS PALACE, CAESARS PALACE LAS VEGAS and CAESARS marks during the period of August 1996, through December 2001.

The CAESARS ATLANTIC CITY Casino and Hotel opened on June 25, 1979, and on average 700,000 people stay at the hotel each year; The CAESARS TAHOE Casino and Hotel opened in 1979, with 440 rooms and in 2001, over quarter of a million guests stayed at this hotel.

In 1990, Complainant began providing casino services under the trademark CAESARS PALACE AT SEA aboard ships operated by Crystal Cruises.

Complainant has demonstrated that it is the legal owner, of the following trademarks, all duly registered before the USPTO:

“CAESARS”; “CAESARS PALACE”, “CAESARS WORLD”, “CAESARS WOMAN”; “CAESARS MAN”, “CAESARS TAHOE”, “THE PALACE”, “THE PALACE COURT” and “CAESARS PALACE AT SEA”.

Complainant has is the legal title holder of registrations for trademarks composed by the term “CAESARS” in countries around the world (namely, Aruba, Australia, Bahamas, Benelux, Canada, China, Costa Rica, France, Germany, Greece, Honduras, Hong Kong, Israel, Italy and Spain).

In addition to that, Complainant has had a presence on the Internet in the form of a web site devoted to the CAESARS Casinos and Hotels at “www.caesars.com” since June 1995. As per Complainant’s declaration, a user can access this site through <caesarspalace.com>; <caesarsac.com>; <caesars-tahoe.com> and <caesarsindiana.com>. The web site has continuously displayed the CAESARS Marks since June 1995. In the year 2000, 2,018,843 unique visitors visited the web site; in the year 2001, 1,130.248 unique visitors visited the portion of that web site devoted to the CAESARS PALACE Casino and Hotel for an average of 94,187 unique visitors per month.

Based on the Complainant’s corporate records, the CAESARS Marks are well-known throughout the world.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Names at issue are similar to several of Complainants’ registered trademarks, that Respondent has no rights or legitimate interests in respect of such Domain Names, and that Domain Names <caeserslasvegas.com>, <caesarpalacelasvegas.com>, <palacelasvegas.com>, <caesaratlanticcity.com> and <caesartahoe.com> were registered and used in bad faith.

Complainant states that Respondent has registered the domain names <caesaratlanticcity.com>, <caesarpalacelasvegas.com>, <caesartahoe.com>, <caeserslasvegas.com>, <palacelasvegas.com> in connection with a web-site that offers hotel reservation services over the internet and then diverts them to a discount hotel room and booking and car rental site, allowing Respondent to profit from an unauthorized use of Complainant’s trademarks but also taking potential consumers away from CAESARS hotel properties.

Complainant has sent a cease and desist letter to Respondent which was not responded to, however these web sites later became inactive, with the exception of the site at <palacelasvegas.com>.

By reaching the website “www.palacelasvegas.com”, which is identical to the former “www.caeserslasvegas.com” and “www.caesarpalacelasvegas.com” sites, a user would be directed to a home page which could be confused with the Caesars Palace web site with the Caesars Palace stylized logo.

Complainant states that when a user visits “palacelasvegas.com” web site, leads to a reservation page and when the user inputs the dates and times they would like to stay at Caesars Palace the site automatically redirects the user to a page informing them that there are no reservations available on that day. The Respondent then asks the user to change the dates, to select other hotels in the area, or to start a new search. As there are never any dates available at Caesars Palace, regardless of the date and regardless of the availability, a user seeking to use this site would have no option but to book a room in a different hotel.

In view of the above, Complainant declares that Respondent has registered the Domain names for the purpose of deriving income by using the Complainant’s Marks to promote its own site as well as to divert Internet Users to the “www.caesarpalacelasvegas.com”, “www.caeserspalacelasvegas.com”, “www.palacelasvegas.com”, “www.caesartahoe.com” and “www.caesaratlanticcity.com” web sites.

On this regard, Respondent’s use of the Complainant Marks in connection with its own web sites that offer hotel booking services or link to other sites offering those services is evidence of Respondent’s bad faith intention to attract, for commercial gain, internet users to Respondent’s web sites by creating a likelihood of confusion with Complainant’s Marks.

Complainant argues that Respondent’s Domain Names are identical or confusingly similar to Complainant’s Marks. The domain names simply leave off the “s”, omit the actual “caesars” or place an “e” where an “a” should be. In of the Complainant, Internet users are likely to believe that the domain names are related to the Complainant, since the web sites connected to the domain names show photographs taken from Complainant’s own web site and show the Caesars Palace stylized logo.

Finally, Complainant states that Respondent cannot demonstrate any legitimate interest in the Domain Names, since Respondent has registered its Domain Names only after Complainant had established rights in its CAESARS Marks. Moreover, Respondent has a different business name and Respondent specifically registered domain names almost identical to Complainant’s well-known global resort hotels and casinos.

Furthermore, there is 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 names, which incorporate in their entirety and/or are confusingly similar to Complainant’s Marks. Respondent is not commonly known by the Domain Names and is not making legitimate noncommercial or fair use of them.

Based on the above mentioned, Complainant states that has met the requirements of the Policy by demonstrating not only their own legitimate interest in their marks, but also that Respondent registered and has used the Domain Names in bad faith, and that Respondent’s sole interest in the Domain Names is to unlawfully profit from them.

Consequently, Complainant requests the transfer of the Domain Names <caesaratlanticcity.com>, <caesarpalacelasvegas.com>, <caesartahoe.com>, <caeserslasvegas.com>, <palacelasvegas.com> to Complainant.

B. Respondent

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

6. Discussion and Findings

The Policy lists in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant to succeed in an administrative proceeding for abusive domain name registration. I will examine each one of these elements in the following points.

6(i) Identity or Confusing Similarity

Since the domain “.com” is merely an attribute to this kind of general top-level domain name and since this Panel does not consider “CAESARS” to be a generic term or a common word, the Panel finds that Complainant has established trademark rights in the term CAESARS (and its several variations) and such term is confusingly similar to the domain names <caesaratlanticcity.com>, <caesarpalacelasvegas.com>, <caesartahoe.com>, <caeserslasvegas.com>. Therefore, the requirement of Paragraph 4(a)(i) has been met.

However, even though the Panel understands that the terms “palace” and “las vegas” may be considered generic terms depending on the form they are being used, in this case, the domain name <palacelasvegas.com> is to be considered confusingly similar to the prior trademarks registered by the Complainant, namely, “THE PALACE”, “THE PALACE COURT” and “PALACE RESERVE”.

It should also be noted that the famous hotel CAESAR PALACE is often referred to as simply “THE PALACE”. In the decision in the case Trump v. Caesars World, Inc., 645 F. Supp 1015 (DNJ 1986), aff´d 2 U.S.P.Q. 2d 1806 (3^rd Cir. 1987), the court granted Complainant’s motion to enjoin a rival casino owner from using the name “Trump Palace”. The district court found that the word CAESARS is associated with the word PALACE, and vice versa, in relation to the services involved.

Such facts show that the element “PALACE” associated with the words “Las Vegas”, where Complainant has a famous casino/hotel operating under the name “CAESARS PALACE LAS VEGAS”, makes the domain name <palacelasvegas.com> confusingly similar to the Complainant’s marks.

Therefore, the requirement of Paragraph 4(a)(i) has been met.

6(ii) Absence of Respondent’s Rights or Legitimate Interests in the Domain Name

Initially, the only time that Respondent used the terms “CAESAR “, “CAESERS” and “PALACE LAS VEGAS” was when he registered them as part of the domain names <caeserslasvegas.com>, <caesarpalacelasvegas.com>, <caesaratlanticcity.com> <caesartahoe.com> and <palacelasvegas.com>. Respondent does not have any enterprise or business known with these denominations, nor any trademarks containing these words, nor any other link of any kind with these terms.

To help panels determine whether a Respondent’s interest is legitimate, the Policy offers three non-exclusive examples of how a Respondent can demonstrate legitimate interest:

(i) Before any notice to [respondent] of the dispute, [respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent has] acquired no trademark or service mark rights; or

(iii) [respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).

As mentioned above, the Policy states that a Respondent can demonstrate its rights and legitimate interests in the domain name by showing its efforts made before any notice of the dispute to use the domain name in connection with a bona fide offering of goods or services.

In this case, Respondent received notice of dispute as of July 15, 2004, and made no use of the domain names other than using them in connection with a web site that offers hotel reservation services over the internet and then diverting them to other hotels (in other words, diverting the visitors of the web sites to websites of hotels that are competitors of the Complainant and, consequently moving potential consumers away from CAESARS hotel properties), so there was no bona fide or any plan for bona fide to use of the domain names prior to notice of the dispute by Respondent, as it is obvious that Respondent was using the domain names for profit.

Finally, Respondent is not commonly known as “caesaratlanticcity.com”, “caesarpalacelasvegas.com”, “caesartahoe.com”, “caeserslasvegas.com”, or “palacelasvegas.com” .

In view of the above, Respondent failed to demonstrate each of the above mentioned situations or any other situation that could show its rights or legitimate interests in the Domain Names.

On this basis, the Panel concludes that the Respondent has no legitimate interest in the domain names <caesaratlanticcity.com>, <caesarpalacelasvegas.com>, <caesartahoe.com>, <caeserslasvegas.com>, <palacelasvegas.com>. Therefore, the requirement of Paragraph 4(a)(ii) is met.

6(iii) Respondent’s Registration and Use of the Domain Name in Bad Faith

This Panel is of the opinion that the registrations of the domain names <caesaratlanticcity.com>, <caesarpalacelasvegas.com>, <caesartahoe.com>, <caeserslasvegas.com>, <palacelasvegas.com> took place in bad faith. As circumstances supporting this conclusion, it should be mentioned first of all that no legitimate interest or use in or with respect to the marks “CAESERS”, “CAESAR” nor “PALACE” was established by the Respondent.

Complainant has sent to the Respondent a cease and desist letter, which Respondent did not reply to. After receiving the cease and desist letter Respondent attempted to correct its wrongful acts by deactivating the domain names <caesaratlanticcity.com>, <caesarpalacelasvegas.com>, <caesartahoe.com>, <caeserslasvegas.com>, but not <palacelasvegas.com>. However, such changes does not prevent bad faith being found, since the Policy requires consideration of the matter as the time of the registration, and the bad faith was evident at registration.

Indeed, taking into consideration Complainant’s development and fame across United States of America and worldwide, it is assumed that Respondent knew of the existence of Complainant and of its “CAESARS” marks, and Respondent proceeded with the registration of the disputed domain names, using Complainant’s famous marks to promote its business.

Respondent has been using the disputed domain names in connection with a web site that offers hotel reservation services over the Internet and then diverts uses websites connected to competitors of the Complainant.

In view of the above, visitors to the Respondent’s web site are likely to believe that that site is sponsored or affiliated with the Complainant. The use of these domain names not only allows Respondent to profit from an unauthorized use of Complainant trademarks comprising the term “CAESARS”, but also are designed to move potential consumers away from Caesars hotel properties.

This Panel understands that such acts show that Respondent was/is using the domain names to intentionally attempt to attract, for commercial gain, Internet users to its web site 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 web sites or location of services on these web sites or location. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.

In conclusion, this Panel finds that the Respondent registered and used the domain names <caesaratlanticcity.com>, <caesarpalacelasvegas.com>, <caesartahoe.com>, <caeserslasvegas.com>, and <palacelasvegas.com> in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain names <caesaratlanticcity.com>, <caesarpalacelasvegas.com>, <caesartahoe.com>, <caeserslasvegas.com>, <palacelasvegas.com> be transferred to the Complainant.

Luiz E. Monetary Pimenta
Sole Panelist

Dated: September 28, 2004