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Harrah’s License Company, LLC v. FHC Entertainment [2005] GENDND 31 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harrah’s License Company, LLC v. FHC Entertainment

Case No. D2004-0989

1. The Parties

The Complainant is Harrah’s License Company, LLC, Las Vegas, Nevada, United States of America, represented by Alston & Bird, LLP, United States of America.

The Respondent is FHC Entertainment, Corozal Town, Belize.

2. The Domain Names and Registrar

The disputed concerns the following domain names: <onlineworldseries.com>, <onlineworldseriesofpoker.com>, <onlinewsop.com>, <wsoponline.com>, <2004wsop.com>, <2005worldseriesofpoker.com>, <2005wsop.com>, <2006worldseriesofpoker.com>, <2006wsop.com>, <2007worldseriesofpoker.com>, <2007wsop.com>, <2008worldseriesofpoker.com>, <2008wsop.com>, <2009worldseriesofpoker.com>, <2009wsop.com>, <2010worldseriesofpoker.com>, <2010wsop.com>.

Hereinafter collectively referred to as the Domain Names The Domain Names are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2004. On November 25, 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 November 29, 2004, Wild West Domains, Inc. transmitted by email to the Center its verification response. 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 December 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2005.

The Center appointed Jacques A. Léger, Q.C. as the sole panelist in this matter on January 11, 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

Complainant is a wholly owned subsidiary of Harrah’s Operating Company, Inc. Through licensed subsidiaries, Harrah’s Operating Company, Inc. owns or manages twenty-eight casino entertainment facilities throughout the United States.

In March 2002, Harrah’s acquired all worldwide rights in the marks WORLD SERIES OF POKER and its acronym WSOP, as well as the goodwill accruing to these marks from Horseshoe License Company, as it more fully appears in Annex 5 of the Complaint. The World Series of Poker is a large and prestigious poker tournament which has been staged since 1970. Today, they consist of 33 poker tournaments held over the course of five weeks in Las Vegas, but promotion, merchandising and participation in the tournament is international in scope. The tournaments are televised and watched in many countries through the television sports network ESPN, which has covered WSOP events for the past ten years. Complainant also hosts a website located at “www.worldseriesofpoker.com”, where viewers can obtain information about the World Series of Poker tournaments, book reservations and purchase official WORLD SERIES OF POKER and WSOP branded merchandise.

In addition, Complainant owns Registration numbers 1,025,395 and 2,119,064, issued by the United States Patent and Trademark Office (“USPTO”) for the mark WORLD SERIES OF POKER for use in connection with sponsoring and conducting poker contests, and computer programs, respectively. In addition, Complainant affirms that, to the best of its knowledge, no person or entity anywhere in the world other than Complainant has the legal right to use the WORLD SERIES OF POKER or WSOP marks to identify any goods or services.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed Domain Names and its marks are confusingly similar because the majority of the disputed Domain Names consist exclusively of future year numbers together with either the WSOP or the WORLD SERIES OF POKER marks. Complainant adds that the mere addition of a year number in the domain name is descriptive of future years of the World Series of Poker tournament. Complainant adds that the remaining disputed Domain Names simply add the word “online” to Complainant’s marks, which allegedly makes consumers likely to be confused into believing that these Domain Names host the online home of the World Series of Poker and makes them confusingly similar to their marks for these reasons.

Complainant also argues that Respondent has no rights or legitimate interests in the disputed Domain Names because it allegedly has enforceable common law rights in the WORLD SERIES OF POKER and WSOP marks, as well as a valid and enforceable trademarks registration on the trademark WORLD SERIES OF POKER. As such, Complainant claims that it has acquired its rights to the marks well before Respondent’s registration of the disputed Domain Names, and that its registrations constitute constructive notice of the ownership of the WORLD SERIES OF POKER mark. Complainant contends that Respondent has never used, or even made preparations to use any of the disputed Domain Names in connection with any bona fide offering of goods and services, and that its registration and use of the disputed Domain Names is merely an attempt to trade on the goodwill associated with Complainant’s WORLD SERIES OF POKER and WSOP marks. Complainant further adds that Respondent profits from Complainant’s marks by using the disputed Domain Names to recruit poker players for various third parties who offer online poker services, and to recruit members for the affiliate programs run by these third-party poker sites, all for the Respondent’s financial gain.

Finally, Complainant argues that Respondent has registered and used the disputed Domain Names in bad faith for three main reasons: (1) Respondent registered the disputed Domain Names for the purpose of selling them to Complainant for consideration in excess of the costs directly related to the disputed Domain Names; (2) espondent registered the disputed Domain Names to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s WORLD SERIES OF POKER and WSOP marks; and (3) upon information and belief, Respondent was well-aware of the reputation of the WORLD SERIES OF POKER and WSOP marks when it registered the disputed Domain Names.

B. Respondent

The Respondent has failed to reply to the Complainant’s contentions nor to file any evidence to this end.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy the Complainant must convince the Panel of three elements. In order to have a domain name transferred to this end, it is incumbent upon the Complainant to cumulatively show that:

(i) the Domain Name is identical or confusingly similar to a trademark in which it holds rights;and

(ii) the Respondent has no legitimate rights or interests in the Domain Name; and

(iii) the Domain Name was registered and used in bad faith.

These three elements are considered below. However, before addressing them, the Panel deems it appropriate to reiterate the fact that all the allegations, arguments and documents in support thereof submitted by the parties were examined and considered prior to the Panel deciding the case on the merits.

(i) Identical or Confusingly similar

Complainant’s rights in the marks

The registered trademarks “WORLDSERIESOFPOKER” and “WSOP”, along with the goodwill associated with these marks, have been validly acquired by Complainant through assignment in March 2002, which assignment has been recorded with the USPTO. These trademarks have been registered at the Principal Register of the USPTO. These registrations, along with their subsequent assignment, constitute prima facie evidence of the validity of Complainant’s alleged mark, Complainant’s ownership of its alleged mark, Complainant’s exclusive right to use the alleged mark on the goods or services for which it was registered, as well as Complainant’s priority of right to use of the mark dating back to at least as early as the filing date of the application for federal registration. See Tahoe Luxury Properties, Inc. v. Shari Chase and Chase International, (WIPO Case No. D2004-0151, May 21, 2004), Drake Bliss v. Cyberline Enterprises (WIPO Case No. D2001-0718, September 20, 2001). Therefore, the Panel finds that Complainant has satisfactorily proven that it has exclusive rights in these trademarks.

Identical or confusingly similar

Complainant argues, and the Panel so finds, that the confusing similarity between all but one of the Domain Names and Complainant’s registered WSOP and WORLDSERIESOFPOKER trademarks exists. This is certainly the case for the thirteen Domain Names which merely consist of one of Complainant’s trademarks together with a past, present, or future year number. See, to this effect: H-D Michigan, Inc. v. Chad Morris, No. FA0212000137094 (Nat. Arb. Forum, January 29, 2002) (where the domain names <2003harley.com>, <2004harley.com> and <2005harley.com> were held to be confusingly similar to Complainant’s HARLEY-DAVIDSON trademark), Hitachi, Ltd. V. Fortune Int’l Dev. Ent., No. 2000-0412 (WIPO Decision, July 2, 2000) (where the Panel found that the domain name HITACHI2000.NET was confusingly similar to complainant’s HITACHI trademark). These Domain Names are the following:
<2004wsop.com>, <2005worldseriesofpoker.com>, <2005wsop.com>, <2006worldseriesofpoker.com>, <2006wsop.com>, <2007worldseriesofpoker.com>, <2007wsop.com>, <2008worldseriesofpoker.com>, <2008wsop.com>, <2009worldseriesofpoker.com>, <2009wsop.com>, <2010worldseriesofpoker.com>, <2010wsop.com>.

The Panel also finds that there is a confusing similarity between Complainant’s marks and the three Domain Names which merely incorporate Complainant’s registered trademarks and add the word “online” to the Domain Name. See, in this respect: Revlon Consumer Products Corp. v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602 (September 28, 2003). These Domain Names are the following:
<onlineworldseriesofpoker.com>, <onlinewsop.com>, <wsoponline.com>.

However, the Panel finds that there is no confusing similarity between Complainant’s registered trademarks and the <onlineworldseries.com> Domain Name. The words “world” and “series” are merely descriptive of the scope and type of the activities pursued by the Complainant, and as such Complainant should not be able to claim exclusive rights to them, particularly given the fact that the term is used extensively in other fields of activities. It is the combination of terms “WORLD SERIES OF POKER” and its acronym “WSOP” which have become distinctive of Complainant’s services, not the terms “World Series” generally. Moreover, the Panel has verified proprio motu that the registration of trademark “WORLD SERIES” on the U.S. Patent and Trademark Office’s principal Register is owned by an entity other than the Complainant, namely the Office of the Commissioner of Baseball, for example, under registration numbers 1825850, 1844979, and 2811289. Therefore, Complainant should not be able to claim exclusive rights on this mark on the face of the evidence provided. For these reasons, the Panel finds that Complainant does not have exclusive rights on the mark “WORLD SERIES”, and that Complainant has not satisfactorily discharged its burden to show there is confusing similarity between the domain name <onlineworldseries.com> and Complainant’s registered trademarks. Therefore, the Panel will not consider the second and third elements of the Policy with regard to the domain name <onlineworldseries.com>.

(ii) Rights or Legitimate interests

Complainant contends that Respondent has no rights or legitimate interest in respect of the Domain Names pursuant to the Policy paragraph 4(a)(ii). Moreover, Complainant adds, and the Panel find that Respondent has never used the Domain Names in connection with any bona fide offering of goods and services, and that Respondent’s use and registration of the Domain Names is a blatant attempt to trade on the goodwill associated with Complainant’s marks. The Panel finds that the facts that some of the Domain Names are used merely for advertising purposes with a “coming soon” inscription on the home page, while others use official merchandise of Complainant on the home page, support such a finding.

Respondent has no relationship with or permission from Complainant for the use of the WORLDSERIESOFPOKER and WSOP marks.

According to the Policy, the Panel can rely on any of the following circumstances, but without limitation, to find that a Respondent has rights or legitimate interests in the domain name if:

“(i) before any notice to you of the dispute, your 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; or

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

(iii) you are 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.”

Respondent has not even attempted to offer any evidence in support of any of the three circumstances provided in the Policy, paragraph 4(c).

On this basis, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names which have been found to be confusingly similar to Complainant’s registered trademarks.

C. Registered and Used in Bad faith

Most of the time, it is difficult to show bad faith with concrete evidence, particularly given the limited scope of the inquiry in these proceedings. At the same time, good faith is to be presumed. It is the Panel’s view that once Complainant has made a case in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be ascribed to bad faith. The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration or the use of the disputed domain name lies squarely on the shoulders of Complainant, once Complainant has shown a case of bad faith h, as the Panel finds in the present case, it is up to Respondent to either justify its business conduct, explain it, or at least attempt to demonstrate the contrary. See, to this effect: The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez (WIPO Case No. D2002-0823, December 3, 2003); AT&T Corp. v. Linux Security Systems (WIPO Case No. DRO2002-0002, October 11, 2002).

The Prima facie case of bad faith is set out in the Complaint. Complainant argues that: (1) Respondent registered the Domain Names for the purpose of selling them to Complainant for consideration in excess of the costs directly related to the Domain Names; (2) Respondent registered the Domain Names to attract Internet users to Respondent’s websites for commercial gain by creating a likelihood of confusion with Complainant’s WORLD SERIES OF POKER and WSOP marks; and (3) upon information and belief, Respondent was well aware of the reputation of the WORLD SERIES OF POKER and WSOP marks when it registered the Domain Names. In light of all the facts and circumstances that have been brought to the Panel’s attention, the Panel finds that Complainant has discharged its initial burden of showing there is a prima facie case of bad faith in the case at hand.

While Respondent is located in Belize, the fame of Complainant’s reputation and of the Complainant’s marks, supported by the fact that its television programs are shown world-wide, is global. The Respondent may well have had actual knowledge of the marks or may have prudently performed a USPTO search prior to registering the domain names. See Digi Int’l v. DDI Sys., FA 124506 (National Arbibration Forum, October 2002) where the Panel finds accordingly to the conclusion that there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks; see also Aventis Pharma, Inc., Merrell Pharmaceuticals, Inc. v. Connor Trip (WIPO Case No. D2003-0956), wherein the Panel noted that any trademark check of the records of the patent and trademark offices of the United States or Canada would have made Complainant’s registrations known to Respondent.

Since Respondent has not even attempted to rebut Complainant’s supported arguments showing bad faith, the Panel finds in favor of the Complainant.

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 names, <2004wsop.com>, <2005worldseriesofpoker.com>, <2005wsop.com>,<2006worldseriesofpoker.com>, <2006wsop.com>, <2007worldseriesofpoker.com>, <2007wsop.com>, <2008worldseriesofpoker.com>, <2008wsop.com>, <2009worldseriesofpoker.com>, <2009wsop.com>, <2010worldseriesofpoker.com>, <2010wsop.com>, <onlineworldseriesofpoker.com>, <onlinewsop.com>, and <wsoponline.com>, be transferred forthwith to the Complainant.

As for the Domain Name <onlineworldseries.com>, the Complaint is dismissed.

Jacques A. Léger, Q.C.
Sole Panelist

Date: January 25, 2005