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Caesars Entertainment, Inc. v. Mark Phillip , Hazmat Service, Inc. [2005] GENDND 1480 (2 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars Entertainment, Inc. v. Mark Phillip , Hazmat Service, Inc.

Case No. D2005-0595

1. The Parties

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

The Respondent is Mark Phillip, Hazmat Service, Inc., PA, United States of America.

2. The Domain Name and Registrar

The disputed domain name <clubparislasvegas.com> is registered with NameSecure.com (a VeriSign Co.).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2005. On June 9, 2005, the Center transmitted by email to NameSecure.com a request for registrar verification in connection with the domain name at issue. On June 10, 2005, NameSecure.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. 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 June 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2005.

The Center appointed Kevin C. Trock as the Sole Panelist in this matter on July 19, 2005. 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.

4. Factual Background

The domain name at issue is <clubparislasvegas.com>. The disputed domain name was registered to the Respondents, Mark Phillip and Hazmat Service, Inc. on October 17, 2004.

The Complainant is Caesars Entertainment, Inc., which operates the Paris Las Vegas Casino and Hotel in Las Vegas, Nevada. Complainant’s predecessor-in-interest is Park Place Entertainment Corporation. On January 5, 2004, Complainant changed its name from Park Place Entertainment Corporation to Caesars Entertainment, Inc.

The Complainant claims ownership of U.S. trademark registrations for the marks PARIS CASINO RESORT, PARIS LAS VEGAS and PARIS dating back as early as February 2001, for use with casino, hotels, and restaurant services, among other things. The Complainant also claims ownership of the domain name <parislasvegas.com>, which was registered on June 28, 1997.

The Complainant seeks transfer of the disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it provides casino services, hotel services, and restaurant services through its operation of the Paris Las Vegas Casino and Hotel located in Las Vegas, Nevada, which was opened in September 1999. Complainant asserts ownership of several U.S. Trademark registrations (“the PARIS marks”). These include U.S. Trademark Registration No. 2,465,866 for the mark PARIS CASINO RESORT filed on July 18, 1995 in class 41 for casino services and in class 42 for hotel and restaurant services; U.S. Registration No. 2,475,977 for the mark PARIS filed on March 29, 1995 in class 41 for casino services and class 42 for hotel and restaurant services; Registration No. 2,527,696 for the mark PARIS (Stylized) filed on July 18, 1997 in class 41 for casino services and class 42 for hotel and restaurant services; and U.S. Trademark Registration Reg. No. 2,432,163 for the mark PARIS LAS VEGAS and Design filed on January 14, 1999, for casino services in Class 41 and hotel and restaurant services in Class 42.

Complainant also alleges that it owns the registrations for the domain names <parislasvegas.com> and <paris-lv.com>, at which it operates a website in connection with its business and on which it uses the PARIS Marks to advertise its casino, dining and entertainment services. The site allegedly had 1,654,967 hits in the year 2000, 3,388,095 hits in the year 2001, 3,491,215 hits in the year 2002, and 3,512,641 hits in the year 2003.

In 2001, Complainant alleges that it spent approximately $3,274,000 on advertising for the Paris Casino and Hotel. In 2002, Complainant spent approximately $7,100,000 on advertising and in 2003 Complainant spent approximately $11,600,000 on advertising.

In the year 2000, Complainant alleges that 1,838,236 guests stayed at the Paris Casino and Hotel and approximately 16,510,000 pedestrians passed through the Paris Casino and Hotel. In 2001, Complainant alleges that over 2,000,000 guests stayed at the property and approximately 24,000,000 pedestrians passed through the Paris Casino and Hotel.

Complainant alleges that Respondent registered the disputed domain name <clubparislasvegas.com> in October 2004. Complainant also alleges that Respondent is operating a website at this location as a Las Vegas targeted search engine, that lists many of Complainant’s competitor hotels and also provides links to various other online hotel reservation sites, including “www.orbitz.com”, “reservationz.us”, “lodging.com”, “book-a-hotel-in-paris.com”, “priceline.com”, and “venere.com”.

Complainant’s outside counsel allegedly sent a letter to Respondent via email and Certified Mail on March 16, 2005, demanding that Respondent stop its activity. Complainant’s counsel never received a response. Complainant has not given any license, permission, or authorization to Respondent to use its marks or to link to its website.

B. Respondent

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

6. Discussion and Findings

In order to prevail, the Complainant must prove the following three elements:

(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 the domain name; and

(iii) Respondent has registered the domain name and is using it in bad faith. (Policy, paragraph 4(a)).

The Respondent has not filed a response to the Complaint. Pursuant to the Rules, paragraph 5(ix)(e), the Panel will decide the dispute based on the Complaint.

A. Identical or Confusingly Similar

The Complainant, or its predecessor in interest, has been using the PARIS marks in connection with casino, hotel, restaurant and entertainment services since the opening of the Paris Casino and Hotel in Las Vegas, Nevada in September 1999. Complainant registered the PARIS marks in the United States for use with casino, hotel, and restaurant services beginning in February 2001. Complainant has spent large sums of money annually advertising the PARIS mark in connection with its casino, hotel, restaurant and entertainment services. Complainant also registered the domain name <parislasvegas.com> in June 1997 and has operated a website at that location in connection with its casino, hotel, restaurant and entertainment services.

Accordingly, the Panel finds that the Complainant has rights in the PARIS marks in connection with casino, hotel, restaurant and entertainment services.

The disputed domain name <clubparislasvegas.com> is confusingly similar to the PARIS marks. The Respondent’s use of the arguably descriptive terms “club” and “las vegas” to flank the mark PARIS in the disputed domain name does nothing to reduce that confusing similarity. Accordingly, the Panel concludes that the domain name <clubparislasvegas.com> is confusingly similar to the Complainant’s PARIS marks.

B. Rights or Legitimate Interests

Because Respondent has not filed a response, the Panel only has the Complaint by which to address the issue of Respondent’s rights or legitimate interests in the disputed domain name.

According to the Complainant, the Respondent has not been issued any license, permission, or authorization by the Complainant to use Complainant’s trade name or trademarks, nor does it have any relationship with the Complainant.

Complainant alleges that Respondent’s website located at <clubparislasvegas.com> features links to other websites, and argues that the website is merely a targeted search engine providing advertising and links to other websites that offer services including travel agencies, travel packages and hotel booking services which compete with the business of the Complainant.

The Panel is persuaded and finds that Respondent has no rights or legitimate interests in the domain name <clubparislasvegas.com>.

C. Registered and Used in Bad Faith

Complainant contends that the Respondent registered the disputed domain name in bad faith and sought to profit from an unauthorized association with Complainant’s PARIS marks. Complainant also alleges that Respondent was aware of Complainant’s PARIS marks at the time it registered the disputed domain name and that the Respondent’s website is being used to divert consumers looking for the authorized Paris Las Vegas website.

Complainant has been using the PARIS marks in connection with Complainant’s casino, hotel and restaurant services being offered at the Paris Casino and Hotel in Las Vegas since at least 1999 and registered the PARIS marks beginning in 2001 as noted above. Complainant also registered the domain name <parislasvegas.com> in 1997 and operates a high-traffic website for the Paris Casino and Hotel at that address. Complainant also spends millions of dollars annually advertising the PARIS marks in connection with the Paris Casino and Hotel and has millions of guests staying at the hotel annually.

Respondent did not register the disputed domain name until October 2004.

The Respondent’s website operating at <clubparislasvegas.com> is a targeted search engine. It provides advertising and sponsored links to other websites providing travel agency, travel packages, hotel booking and other services that compete with the Complainant’s business and include some of the Complainant’s direct competitors in Las Vegas. There is no evidence that the Respondent is using the disputed domain name to promote the good or services of a “Club Paris Las Vegas” nor is there any evidence that such a club exists other than one that would be affiliated with the Complainant. Thus, it appears that Respondent’s selection and use of the disputed domain name <clubparislasvegas.com> is to intentionally divert consumers from Complainant’s website for its own illegitimate commercial gain by creating a likelihood of confusion with Complainant’s PARIS marks and Complainant’s website located at “parislasvegas.com”.

The Policy states that evidence of registration and use of a domain name in bad faith can be shown “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. Policy, paragraph 4(b).

Here, the conduct of Respondent evidences a deliberate attempt to divert traffic from Complainant’s website for the Respondent’s commercial gain and to the detriment of the Complainant by creating just such a likelihood of confusion. See VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446; Infospace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075. Such conduct by Respondent demonstrates bad faith registration and use of a domain name in contravention of the Policy.

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 <clubparislasvegas.com> be transferred to the Complainant.

Kevin C. Trock
Sole Panelist

Dated: August 2, 2005