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Sanofi-Aventis and Aventis Pharma SA v. Advent Innovations [2005] GENDND 471 (16 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars Entertainment, Inc. v. Molpon Josef Baker

Case No. D2005-0065

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 Molpon Josef Baker, Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <casino-paris.net> is registered with Direct Information Pvt Ltd. dba Directi.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2005. On January 20, 2005, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On January 21, 2005, Directi.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 February 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2005.

The Center appointed Terrell C. Birch as the Sole Panelist in this matter on March 9, 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

Because the Respondent is in default, the Panel accepts the following as uncontested facts:

This dispute concerns the domain name <casino-paris.net>, registered on September 13, 2000, and renewed on October 15, 2004. (the “Domain Name”).

Complainant provides casino services, hotel services, and restaurant services through its operation of the famous Paris Las Vegas Casino and Hotel (the “PARIS Casino and Hotel”), located in Las Vegas, Nevada, United States of America.

Complainant owns several U.S. trademarks for PARIS and related marks. Registration No. 2,465,866, filed on July 18, 1995, and issued July 3, 2001, is for the mark PARIS CASINO RESORT in class 41 for casino services and in class 42 for hotel and restaurant services. Registration No. 2,475,977, filed on March 29, 1995, and issued August 7, 2001, and Registration No. 2,527,696, filed on July 18, 1997, and issued January 8, 2002, are for PARIS and PARIS (Stylized) in class 41 for casino services and class 42 for hotel and restaurant services. Complainant also owns a U.S. federal trademark registration for PARIS LAS VEGAS and Design (“Las Vegas” disclaimed), Reg. No. 2,432,163, filed on January 14, 1999, and issued February 27, 2001, for casino services in class 41 and hotel and restaurant services in class 42. As of January 5, 2004, Complainant changed it’s name from Park Place Entertainment Corporation (“PPE”) to Caesars Entertainment, Inc. For convenience, the term “Complainant” is used to identify both CEI and PPE.

As seen from the above referenced registrations, applications to register these marks were filed as early as March 29, 1995, on an intent to use basis under Section 1(b) of the U.S. Lanham Act (15 U.S.C. 1051(b)). Complainant’s rights of priority in the PARIS mark therefore date from March 29, 1995, which was long before Respondent registered the Domain Name.

Complainant opened the PARIS Casino and Hotel for business on September 1, 1999. The PARIS Casino and Hotel consists of an 83,000-square-foot casino, 2,916 guest rooms and replicas of Parisian landmarks including a 540-foot version of the Eiffel Tower.

Complainant uses its PARIS Marks in conjunction with, among other things, casino services, entertainment services and hotel and restaurant services, both at its casino and hotel in Las Vegas, Nevada, and on-line, as described below. With respect to casino services, the PARIS Casino and Hotel includes over 2000 slot machines, 100 table games including black jack and poker, and a race and sports book. With respect to hotel services, the PARIS Casino and Hotel includes 2,916 rooms. With respect to restaurant services, the PARIS Casino and Hotel includes eight authentic French restaurants. Complainant further uses its PARIS Marks in conjunction with entertainment services, including concerts by well-known performers. Complainant also uses the trademark PARIS in connection with the retail services provided at the property. In addition to its U.S. Registrations, Complainant owns Nevada state trademark registrations for L’ART DE PARIS (Reg. No. 32,371) and LE MENAGERIE DE PARIS (Reg. No. 32,373) for retail services as well as PARIS MAGNIFIQUE (Reg. No. 32,643) for casino services.

The notoriety of the PARIS Casino and Hotel is worldwide even though it has been open a relatively short time. Prior to the registration of the Domain Name there was significant publicity associated with the announcement of the construction of the PARIS Casino and Hotel and its anticipated opening. The announcement of the plans to build the casino was made on May 16, 1995. On May 22, 1996, the local county commission gave its approval to build the casino. That same year, Complainant’s predecessor agreed to buy land for the casino. On April 18, 1997, Complainant’s predecessor broke ground on the construction of the casino, which opened on September 1, 1999. These events, as well as many others leading up to the opening of the casino, were widely publicized in hundreds of articles in various periodicals throughout the period prior to Respondent’s registration of the Domain Name, according to a Nexus search. These articles appeared in such widely circulated periodicals as USA Today and The New York Times.

There has also been significant publicity for the PARIS Casino and Hotel since it opened. In 2001, Complainant 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.

Since its opening, the number of persons who have actually visited the PARIS Casino and Hotel has been and continues to be tremendous. In the year 2000, 1,838,236 guests stayed at the PARIS Casino and Hotel. In 2001, over 2,000,000 guests stayed at the property. In the year 2000, approximately 16,510,000 pedestrians passed through the PARIS Casino and Hotel. By 2003, approximately 24,000,000 pedestrians passed through the PARIS Casino and Hotel.

Moreover, the PARIS Casino and Hotel and Complainant’s PARIS Marks are featured in a variety of newspapers and magazines widely disseminated to the public and are used in conjunction with information brochures and merchandise that is sold or given away. The PARIS Casino and Hotel has been mentioned in the media numerous times in each of the years 1999, 2000, 2001, 2002, 2003, and 2004. Because of the tremendous number of visitors to the PARIS Casino and Hotel and the surrounding publicity, Complainant’s PARIS Marks are distinctive and well known.

In addition to the land-based casino and hotel operation, Complainant also operates a website accessible through the domain names <parislasvegas.com> and <paris-lv.com>. Complainant is the owner of both domain names, which were registered prior to the opening of the PARIS Casino and Hotel. At both domain names, Complainant operates a website that includes the PARIS Marks used in conjunction with casino, dining and entertainment services. The mark PARIS is prominent on this website.

The PARIS website is extremely popular, which is evidence of the fame the mark has already achieved. For example, in the three months preceding the opening of the PARIS Casino and Hotel, the website dedicated to this property had 105,943 hits from consumers who were interested in this new and exciting property. During October–December 1999, the website had 224,072 hits. In the year 2000, the site had 1,654,967 hits. In 2001, the site had 3,388,095 hits. In 2002, the site had 3,491,215 hits and in 2003 the site had 3, 512, 641 hits. These numbers illustrate the strength and fame of the PARIS brand. Through the last 11 months of 2004, the Paris Las Vegas website attracted 3,101,880 hits. These numbers illustrate the strength and fame of the PARIS brand.

Complainant has also successfully brought several UDRP Complaints prior to this complaint under the name of its predecessor in interest including Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699 for the domain name <paris-lasvegas.com>, Park Place Entertainment Corporation v. Jean Conille, NAF 95492 for the domain name <casinoparislasvegas.com>, and in Park Place Entertainment Corporation v. Intronational Gaming, Ltd., WIPO Case No. D2002-0884 for the domain name <paris-casino.com>. (These decisions are attached hereto as Exhibit I.) In Park Place Entertainment Corporation v. Intronational Gaming, Ltd. the panel stated that,

“It is clear that the Complainant has rights to the mark ‘PARIS’, has used it extensively and has spent a considerable amount of money in connection with it. The mark is associated with the operation of a casino as is its registration. The subject domain name not only incorporates the mark, it does so with the word ‘casino’. It is a reasonable inference that anyone referring to the subject domain name or the website to which it resolves, would believe that they were connecting to the Complainant or to interests of the Complainant. The Respondent has done nothing to dispel this inference.”

Complainant’s outside counsel sent a letter to Respondent via email and United Parcel Service dated November 22, 2004, demanding that Respondent halt its infringing activity. Complainant’s counsel never received a response. When UPS attempted to deliver the letter, Complainant’s counsel learned that the address provided on the WhoIs database was invalid.

Complainant has not received a response from Respondent as of the date of the complaint.

Respondent renewed the <casino-paris.net> Domain Name on October 15, 2004.

Respondent is using the Domain Name to direct users to a portal for on-line gaming sites, but which expressly claims a relationship to Complainant. The home page for this website proclaims: “Welcome to Casino Paris! The Casino site devoted to the greatest land-casino in Las Vegas.” This reference to the greatest land casino in Las Vegas makes plain that Respondent seeks to profit by creating the illusion that this site is connected to Complainant. However, the site has nothing to do with Complainant’s hotel or casino. The only other mention of the Paris Hotel and Casino is under the heading “A Word From the Webmaster” on the main page. Other than the two aforementioned references, the site is completely unrelated to Complainant’s Casino Resort Hotel.

The center of the “www.casino-paris.net” main page provides direct to links to online casinos, such as Crystal Palace, 7 Sultans, Swiss Casino, and numerous others. When a user clicks on the links to the above-mentioned online casinos, that user is brought to “www.crystalpalacecasino.com”; “www.7sultanpoker.com”, and various other online gaming sites.

On the left side of the “www.casino-paris.net” main page is a list of links as well. By clicking on “Casino”, the user is brought to “www.casino-hits.com”, which is another online gaming portal. The “Online Casino” link brings the user to “www.great-onlinecasino.com”, yet another online gaming portal and information site.

5. Parties’ Contentions

A. Complainant

Based on the foregoing facts, Complainant contends as follows:

While Complainant does not operate any on-line casinos (as they are illegal in the United States), Complainant is aware that a major concern for consumers interested in such activity is the integrity of the website offering online gaming. By providing links to various online casinos under the PARIS mark, Respondent is trading off the reputation of Complainant’s famous Paris Casino and Hotel by implying some association with one of the most trusted names in the industry. The continuous use of this Domain Name not only allows Respondent to profit from an unauthorized use of Complainant’s trademarks, but could even lead to inquiries from various gaming authorities and place Complainant’s gambling license at risk.

Thus, this Domain Name is being used to offer services directly competing with Complainant and for the purpose of diverting consumers looking for Complainant.

Complainant is the owner of strong marks that have a unique meaning within the world of gaming. Clearly, the fact that, as shown above, Respondent uses the Domain Name to link to online casinos proves that Respondent is not benefiting from the purported generic or descriptive meaning of the elements of the Domain Name but from their trademark significance as designations for casino services. Indeed, the Domain Name is being used for directly competing services.

Respondent’s use of the Domain Name in connection with websites that offer gambling or casino services or links to other sites offering those services, is evidence of Respondent’s bad faith intention to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s Marks.

Complainant further alleges in view of the foregoing facts that:

(1) The Domain Name adopted by Respondent is virtually identical and/or confusingly similar to Complainant’s famous PARIS trademarks;

(2) Respondent has no rights or legitimate interests in that Domain Name; and

(3) Respondent has registered and used that Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

In light of the foregoing facts and allegations, the Panel finds as follows:

A. The Disputed Domain Name is Virtually Identical and/or Confusingly Similar to Complainant’s Famous PARIS Trademarks

The disputed Domain Name is merely a slight variation of the PARIS CASINO RESORT and PARIS registered marks. There can be no dispute that <casino-paris.net> is virtually identical and/or confusingly similar to Complainant’s famous PARIS marks. See Toronto Convention & Visitors Assn. v. This Domain Is For Sale, WIPO Case No. D2001-1463 (<tourism-toronto.org> confusingly similar to Toronto Tourism); Fortis NL N.V. v. Yannick Godu, WIPO Case No. D2000-1453 (<ag-fortis.com> confusingly similar to Fortis AG).

B. Respondent Has No Rights or Legitimate Interests with Respect to the Disputed Domain Name

This finding is based upon the following:

(1) Respondent is not commonly known by the disputed Domain Name.

(2) Respondent registered and began using <casino-paris.net> after Complainant had established rights in its PARIS Marks through extensive use of the marks in connection with casino services.

(3) There exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use <casino-paris.net>, which is confusingly similar to Complainant’s PARIS Marks.

(4) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Respondent’s use of <casino-paris.net> for a site linking to online casinos was clearly intended to divert users looking for the PARIS Casino and Hotel or to attract consumers looking for an online casino and who would be drawn by the allure of the PARIS Casino and Hotel’s famous reputation.

(5) Under U.S. law, a U.S. company is prohibited from offering online gaming without obtaining the proper licensing and credentials. Respondent’s use of the PARIS Marks in connection with an online casino creates an impression that Complainant is violating the law, as it is not licensed to provide online gaming services and online gaming is not lawful in the United States.

C. Respondent Registered and Is Using the Disputed Domain Name in Bad Faith

This finding is based upon the following:

(1) Complainant had firmly established rights in its PARIS Marks well before Respondent registered the Domain Name. It is clear from Respondent’s use of the Domain Name that Respondent has sought to profit from an unauthorized association with Complainant’s PARIS Marks.

(2) Respondent was aware of Complainant’s PARIS Casino and Hotel at the time it registered <casino-paris.net>. This is evident from the content on the site, which makes clear that the site is being used to divert either consumers looking for the authorized Paris Las Vegas website, or consumers looking for online casinos generally and who are attracted to the site based on the trustworthiness and high reputation of the PARIS Casino and Hotel.

(3) The decision in Infospace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075 is directly on point. In that case, the Panelist found that bad faith had been proved when “it appears more likely than not from the evidence offered by Complainant that Respondent has registered the Domain Name in a deliberate attempt to attract users to its planned website for commercial gain due to confusion with Complainant’s mark”.

(4) Furthermore, there exists no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use <casino-paris.net>, which is merely a slight variation of the trademark PARIS CASINO RESORT. Respondent is not commonly known by the Domain Name and is not making legitimate noncommercial or fair use of it. Indeed, it is using the Domain Name to divert web traffic to its sites that then link to on-line casinos. Since Respondent’s website makes clear that its use of the term PARIS is intended to refer to Complainant’s PARIS Casino and Hotel of that name, it is equally clear that Respondent has no rights of its own in that name.

(5) Respondent has clearly sought to profit from an unauthorized association with Complainant’s PARIS Marks by using the PARIS mark to increase traffic to its website; and that Respondent has registered and is using the Domain Name to divert web users to a website linking to online gambling sites for its own commercial benefit. Web users would inevitably believe that Respondent’s websites are maintained by, sponsored by, affiliated with, or endorsed by Complainant, given the fame of the PARIS Marks.

(6) Respondent’s conduct demonstrates bad faith registration and use of <casino-paris.net> in violation of the Policy because, as set forth in paragraph 4(b)(iv) of the Policy, “by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website . . ., by creating a likelihood of confusion” with Complainant’s PARIS Marks “as to the source, sponsorship, affiliation, or endorsement of [its] web site . . . or of a product or service on [its] web site …”. See Caesars World, Inc. v. Mark Stephens, WIPO Case No. D2001-0553 (concerning the domain name <caesarspalaceusa.com>), Caesars World, Inc. v. Universalinteractives, WIPO Case No. D2001-0951 (concerning the domain name <caesarspalaceonlinecasino.com>).

(7) Moreover, Respondent registered <casino-paris.net> using an invalid address.

(8) Therefore, Respondent has further demonstrated its bad faith by providing the Registrar with false contact information under ¶4(b) of the Policy. In Visit America Inc. v. Visit America, NAF/FA95093, the panel found evidence that a domain name owner providing incorrect information to a domain name registrar evidenced bad faith. See America Online, Inc. v. QTR Corp., NAF/FA92016 (providing incomplete and/or false information on WhoIs directory evidences bad faith).

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 <casino-paris.net> be transferred to the Complainant.

Terrell C. Birch
Sole Panelist

Dated: March 23, 2005