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Waterman, S.A.S. v. Brian Art [2005] GENDND 483 (13 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars World, Inc. v. Lester Bakator

Case No. D2005-0125

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 Lester Bakator, Winnipeg, Manitoba of Canada.

2. The Domain Name and Registrar

The disputed domain name <ceasars-palace.com> is registered with DomainPeople.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2005. On February 4, 2005, the Center transmitted by email to DomainPeople a request for registrar verification in connection with the domain name at issue. On February 4, 2005, DomainPeople 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 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2005.

The Center appointed David Williams QC, barrister of Auckland, New Zealand as the sole panelist in this matter on March 10, 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 Complainant, a wholly owned subsidiary of Caesars Entertainment, Inc, provides gaming, hotel, entertainment and shopping arcade services through the operation of its Caesars casinos and hotels: the “Caesars Palace” Casinos and Hotel in Las Vegas, Nevada; “Caesars Tahoe”, located in Stateline, Vevada; “Caesars Atlantic City”, located in Atlantic City, New Jersey, “Caesars Indiana”, located in Bridgeport, Indiana and “Caesars Gauteng”, located in South Africa. The Complainant also provides casino services under the name “Caesars Palace at Sea” aboard the Crystal Harmony and Crystal Symphony cruise ships.

The Complainant owns several registrations for the CAESARS marks, including CAESARS and CAESARS PALACE, in both the U.S. and in other countries. The Complainant operates a website at “www.caesars.com”.

The Respondent renewed the domain name <ceasars-palace.com> on September 26, 2004. Complainant’s counsel sent a cease and desist letter on October 4, 2004, and a further cease and desist letter on December 22, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent is exploiting the Complainant’s marks by diverting traffic intended for the Complainant to an active online gaming website. Internet users who enter the <ceasars-palace.com> domain name into the browser are redirected to <starluckcasino.com>. The website states, “Welcome to Starluck Casino Online! Play Now!” The available games include BlackJack, VideoPoker, Roulette and Slots.

The Complainant contends that the Respondent is a member of the Starluck Affiliate Program, under which a member earns commission on the net revenue earned by Starluck Casino for every payer an Affiliate Member sends to them.

While the Complainant does not operate any online casinos (as they are illegal in the United States), the Complainant is aware that a major concern for consumers interested in such activity is the integrity of the website offering the gambling. The Complainant contends that by providing links to various online casinos under the CAESARS mark, the Respondent is trading off the reputation of the Complainant’s famous CAESARS properties by implying some connection or association with its famous name. The Complainant believes that the continuous use of this domain name by the Respondent not only allows it to profit from an unauthorized use of the Complainant’s trademarks, but could even lead to enquiries from various gaming authorities and place the Complainant’s gambling license at risk.

The Complainant’s contention that the Respondent’s registration and use of the domain name violates the Policy can be summarized as follows:

First, that the domain name is confusingly similar or identical to the Complainant’s CAESARS family of trademarks. The Complainant points to the fact that its mark is well-known, particularly in connection with gambling and casino services, and points to the typographical similarities between the <ceasars-palace.com> domain name and its CAESARS PALACE trademark.

Secondly, that the Respondent lacks any legitimate interest in the domain name, because the Respondent registered its domain name only after the Complainant had established rights in the CAESARS marks, the Respondent specifically chose as its domain name the almost identical name of Complainant’s well-known global resort hotels and casinos, and the Respondent is not authorized or licensed to use the domain name.

Thirdly, that the Respondent registered and is using the domain name in bad faith 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 by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its websites or location of services on its websites or location. The Complainant also contends that the Respondent’s bad faith is demonstrated by its failure to respond to the cease and desist letters sent to it, and refers to Telstra Corporation Limited v. Nuclear Marshmallows WIPO D2000-0003 in this respect.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (see below, section A);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B; and

3. The domain name has been registered and is being used in bad faith (see below, sectio n C).

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any principles of law it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in the trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first issue, the Complainant provided evidence that it owns numerous U.S. Patent and Trademark Office and overseas registrations for its various CAESARS trademarks, which have been and continue to be used to designate and promote the Complainant’s goods and services offered at the CAESARS casinos and Hotels. Ten of the U.S. federal registrations and ten of the country registrations are for the mark CAESARS PALACE. The Panel accordingly finds that Complainant has rights in the CAESARS PALACE trademark. Although not strictly necessary for the purposes of this decision, the Panel considers that the Complainant has established rights in its various other registered CAESARS trademarks. The Panel refers to similar findings of fact in other administrative decisions under the Policy, in particular Caesars World. Inc v. Universalinteractives WIPO D2001-0951 (finding that the Complainant’s CAESARS and CAESARS PALACE marks had “gained wide recognition”, had “become well-known”, and are “firmly associated with” the Complainant); Caesars World, Inc v. Licensee Techs/Darren Flynn WIPO D2001-0915 (finding that the Complainant had “clearly demonstrated …that it has rights in various CAESARS marks registered as trademarks over a period of several years and have been used over a long period of time in connection with the Complainant’s business, which includes casino gambling); Caesars World v. Mark Stephens WIPO D2001-0553 (noting, inter alia, the numerous U.S. federal registrations and overseas registrations for the CAESARS PALACE mark); and Caesars World, Inc. v. Contessa Marketing Services, Inc., WIPO D2003-0529 (in which the panel noted that the Complainant may also have common law rights in the CAESARS CASINO mark, following from the use of “Caesars Palace Casino” since 1966).

As to the second issue, the <ceasars-palace.com> domain name consists of the Complainant’s mark CAESARS PALACE with the “a” and “e” reversed in CAESRAS and a hyphen added before “PALACE”.

The hyphen does not serve to distinguish the domain name from the Complainant’s mark. This finding is consistent with a line of WIPO decisions in which it has been held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark (see Nintendo America Inc. v. This Domain is For Sale WIPO D2000-1197 and the decisions cited therein, and Fort Knox national Company v. Ekaterina Phillipova WIPO D2004-0281: “From the point of view of the Panel, the fact of including a hyphen between the words true and pay does not make a sufficient difference between the domain name and the Complainant’s trademark”).

Nor does the obvious typographical error serve to distinguish the domain name from the Complainant’s mark. It is well established that an obvious misspelling of the Complainant’s mark does not defeat a confusingly similar claim under the Policy. For example, in Harrah’s Las Vegas, Inc. v. Dotsan, NAF/FA109715 the panel found the domain name <harrahs.com> to be confusingly similar to the Harrah’s mark, because “the only thing that separates the mark is the transposition of the letters ‘a’ and ‘h’”. The panel also referred to Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum April 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); Geocities v. Geociites.com, WIPO D2000-0326 (finding that the domain name <geociites.com> is confusingly similar to Complainant’s GEOCITIES mark); and Reuters Ltd. v. Global Net 2000, Inc., WIPO D2000-0441). Reference can also be made to Scholastic Inc. v. Applied Software Solutions, Inc., WIPO D2000-1629, where it was held that minor changes such as “s” or “e” do not prevent confusion. Moreover, the word “ceasars” is aurally identical to “caesars”.

The Panel accordingly finds that the domain name <ceasars-palace.com> is confusingly similar to the Complainant’s CAESARS PALACE trademark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”

As mentioned above, no response was filed. Nor was any evidence provided suggesting a relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the domain name. Nor was there any evidence that the Respondent is commonly known by the domain name, or is making legitimate noncommercial or fair use of it.

The prominence of the Complainant’s mark, coupled with the finding that the domain name is confusingly similar to the Complainant’s mark, and the fact that the domain name is being used as an online gambling site for profit cannot support a finding that the Respondent is making a legitimate noncommercial or fair use of the domain name. In a similar situation the panel in Barnes & Noble College Bookstores, Inc v. Leasure Interactive WIPO D2001-1216 found that, given the prominence and fame of the Complainant’s mark, it was more probable than not that Respondent, in registering the disputed domain name, was motivated by a desire to benefit from the widespread reputation of the BARNES & NOBLE marks. That being the case, the panel found that the Respondent could not be found to have used the domain name in connection with a bona fide offering of goods and services.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The significance of the conjunctive requirements of registration and use in bad faith is that the Complainant must prove use in bad faith as well as registration in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows WIPO D2000-0003.

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location or of a produce.

The Panel finds that Respondent’s actions evidence bad faith use and registration of the domain name under paragraph 4.b(iv) of the Policy. The Respondent proceeded with the registration of a domain name that is confusingly similar to the Complainant’s well-known mark, CAESARS PALACE. It then used the domain name to offer gambling services, the very field of business of the Complainant. By substantially incorporating the Complainant’s mark in the domain name, then using the domain name for a site which also offers gambling services, the Respondent must have intended to attract, for commercial gain, members of the public to its site by creating confusion as to the source or affiliation of the Respondent’s website.

The fact that the Complainant does not offer online gambling services does not detract from the likelihood of confusion as to the source or affiliation of the Respondent’s website. In Caesars World, Inc. v. Contessa Marketing Services, Inc., WIPO D2003-0529 the Respondent registered the domain name <caesarsgrandcasino.com>. In finding that the Respondent had registered the domain name in bad faith, the Panel said “Apart from the famous nature of the Complainant’s marks, the domain name is composed of the Complainant’s mark CEASEARS to which are added the generic terms ‘grand’ and ‘casino’, which evoke precisely the services offered by the Complainant and associated with its marks. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would have gone through the trouble of registering the domain name. The domain name was used to link to services competing with the Complainant’s, although the Complainant does not offer any games on its website. This is another sign of the Respondent’s intent to free-ride on the Complainant’s goodwill”.

As to the Complainant’s contention that the failure to respond to the cease and desist letters is of itself evidence of bad faith, it should be noted that in Telstra Corporation Limited v. Nuclear Marshmallows the Respondent’s failure to respond to a cease and desist letter was simply one of the circumstances that led to a finding of bad faith.

In all the circumstances, the Panel finds that the Respondent registered and used the domain name in 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 <ceasars-palace.com> be transferred to the Complainant.

David Williams
Sole Panelist

Dated: March 18, 2005