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Caesars World, Inc. v. Digi Real Estate Foundation [2005] GENDND 554 (25 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars World, Inc. v. Digi Real Estate Foundation

Case No. D2005-0425

1. The Parties

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

The Respondent is Digi Real Estate Foundation, Panama City, Panama.

2. The Domain Names and Registrars

The disputed domain names <caesarspallace.com> and <ceasarswembley.com> are registered with AO Domains, Incorporated Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2005 (electronic version) and April 22, 2005 (hardcopy). On April 21, 2005, the Center transmitted by email to AO Domains, Incorporated Bizcn.com, Inc. a request for registrar verification in connection with the domain names at issue. On May 5, 2005, AO Domains, Incorporated Bizcn.com, Inc. 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 May 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2005.

The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on June 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

Complainant holds the following trademark registrations in the U.S. and in other countries of the world:

Country	Mark	Reg. No.	Int. Classes	Registration Date
Aruba	CAESARS (stylized)	16251	3, 25, 41, 42	August 16, 1993
Aruba	CAESARS	16252	3, 25, 41, 42	August 16, 1993
Australia	CAESARS (series)	B326527	42	February 1, 1979
Bahamas	CAESARS	5735	39 (National Class)	February 13, 1969
China	CAESARS	777388	42	February 7, 1995
Costa Rica	CAESARS	105,772	41	February 3, 1998
France	CAESARS	1455133	18, 21, 25	March 18, 1988
Greece	CAESARS	114945	3, 9, 16, 18, 21, 24, 25, 35, 41, 42	December 19, 1995
Honduras	CAESARS	7674	41	May 29, 2001
Italy	CAESARS	733616	Classes 18, 21, 25	March 7, 1995
Spain	CAESARS	816929	Class 42	March 14, 1980

The domain name <caesarspallace.com> was registered on January 7, 2005.

The domain name <ceasarswembley.com> was registered on October 12, 2004.

5. Parties’ Contentions

A. Complainant

Complainant provides gaming, hotel, entertainment and shopping arcade services through the operation of its famous CAESARS casinos and hotels.

Complainant spends millions of dollars yearly promoting its brand and its properties.

A.1. Identity or Confusing Similarity

Complainant’s marks are well-known and famous, particularly in connection with gambling and casino services.

Internet users are likely to believe that the disputed domain names are related to, associated with, or authorized by Complainant.

The disputed domain names are virtually identical or confusingly similar to Complainant’s famous CAESARS trademarks. It is precisely because of this association with Complainant’s marks that Respondents registered the disputed domain names.

Complainant has extraordinarily strong rights in their CAESARS marks, which are entitled to protection from Respondent’s blatant acts of cyber-piracy.

A.2. Respondent’s lack of rights or legitimate interests in respect of the domain name

Upon information and belief, Respondent registered the <ceasarswembley.com> on the same day of the public announcement of Complainant’s plans to build a CAESARS branded casino hotel in the United Kingdom at the Wembley Complex.

Respondent is using the <caesarspallace.com> domain name to host a website whose primary purpose is to divert Internet users looking for Complainant’s website. When the Domain Name is entered into a web browser, the user is taken to a targeted search site featuring numerous links, such as <caesarspalace.com>, <theticketagency.com>, <expedia.com>, <i4vegas.com> and <powerblackjack.com>. The latter leads Internet users to a site that claims to teach said users “a new blackjack system that is beating the casinos cold!”

Respondent cannot claim or show any rights to the Domain Names that are superior to Complainant’s rights in Complainant’s Marks, as evidenced by Complainant’s prior and well-known use. Nor can Respondent demonstrate that it was unaware of Complainant’s Marks at the time it registered the Domain Names since Respondent actually advertises, among many others, Complainant’s own property. Such facts further demonstrate Respondent’s bad faith registration and use of the Domain Names.

Complainant tried contacting Respondent at least twice, one time with respect to each of the contested domain names. Both of Complainant’s letters were returned because Respondent’s address according to the WHOIS database was invalid in both cases.

A.3 Bad faith registration and use

The CAESARS Marks are well-known and famous trademarks, particularly in connection with gambling and casino services

Internet users are likely to believe that the Domain Names are related to, associated with, or authorized by Complainant. It is precisely because of this association with Complainant’s CAESARS Marks that Respondent registered the Domain Names.

The <caesarspallace.com> and <ceasarswembley.com> domain names consist of the famous CAESARS trademark, each with a misspelling. Internet users are likely to believe the Domain Names are related to, associated with, or authorized by Complainant. Thus there can be no dispute that the <caesarspallace.com> and <ceasarswembley.com> Domain Names are virtually identical or confusingly similar to Complainant’s famous CAESARS trademark.

Respondent has engaged in “typosquatting” The <caesarspallace.com> and <ceasarswembley.com> Domain Names are each a slight variation or misspelling of a well-known trademark for the purpose of diverting Internet and traffic and reaping profit.

The <ceasarswembley.com> domain name consists of the famous CAESARS trademark with a geographic designator, Wembley, added. It is identical to Complainant’s common law trademark. Internet users are likely to believe the domain names are related to, associated with, or authorized by Complainant. Thus, there can be no dispute that the <ceasarswembley.com> domain name is virtually identical or confusingly similar to Complainant’s famous CAESARS trademark.

Complainant’s marks and name are so well known and so widely recognized, and have been used in connection with gaming services for so many years, that there can be no legitimate use by Respondent.

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 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.

Respondent has further demonstrated its bad faith by providing the Registrar with false contact information under paragraph 4(b) of the Policy.

Respondent knew of the fame of Complainant’s Marks when it registered the Domain Names and under U.S. trademark law, Respondent is deemed to have been on notice of Complainant’s rights in its marks before it registered the Domain Names and then used it for improper purposes. Given this awareness, it is evident that the Domain Names were registered and used in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), the Complainant must prove that:

“(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith.”

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

As Respondent has failed to submit a response to the Complaint, the Panel may choose to accept as true all of the allegations of the Complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

A. Identical or Confusingly Similar

Complainant has submitted evidence showing that it is the holder of numerous trademark registrations in the United States and other countries of the world.

Other Panels have accepted the validity and recognition of Complainant’s marks. See, for example, Caesars World, Inc. v. Mark Stephens, WIPO Case No. D2001-0553, Caesars World, Inc. v. Universalinteractives, WIPO Case No. D2001-0951, Caesars World, Inc. v. Licensee Techs/Darren Flynn, WIPO Case No. D2002-0915, Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615, and Caesars World, Inc v. Alaiksei Yahorau, WIPO Case No. D2004-0513. This Panel concurs with them.

The Panel also recognizes that Complainant’s trademarks have been extensively publicized and that they are well positioned in the minds of consumers, especially in the areas of gambling, hotels and shows, due to Complainant’s considerable investment in advertising and the continuous use of its marks for decades.

The contested domain names fully incorporate the trademark CAESARS or a common misspelling thereof: “Ceasars”. The mere addition of common terms such as “Pallace” or the geographic name “Wembley” does not change the overall impression of the designations as being domain names connected to the Complainant, especially taking into account that some of Complainant’s most renowned Casinos are widely known by their name CAESARS PALACE. (See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTA, WIPO Case No. D2001-0026; See also General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375; The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184).

Of course, to carry into effect the similarity analysis, we must not take into account the generic top-level domain (gTLD) “.com,” because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035; See also Pomellato S.p.A. v. Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha v. Kil, WIPO Case No. D2000-1409).

Following VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446, this Panel believes that “Respondent appears to have employed minor misspellings of Complainant’s mark to take bad faith advantage of spelling errors made by Internet users while attempting to enter Complainant’s Internet address from the web browser, i.e., that Respondent’s conduct falls within the definition of “typosquatting” which consists of taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom.

According to Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587, “‘typosquatting,’ is a practice that has been condemned and been found to be confusingly similar to the marks which they mimic”.

This Panel agrees with NIHC, Inc. and Nordstrom, Inc. v. John Zuccarini, (see id.), in that, mutatis mutandis, “[t]he disputed domain name <nordstom.com> is the same as the Complainant’s NORDSTROM mark, but for the absence in the domain name of the second letter “r” found in the mark, and the addition of the generic top level domain <gTLD.com>. The disputed domain name is very similar to the mark in its visual impression. An Internet user or consumer viewing the disputed domain name is likely to confuse it with the Complainant’s mark […] Respondent appears to have employed a minor misspelling of Complainant’s mark to take advantage of a typographical error that may be made by Internet users while attempting to enter Complainant’s mark and website as its logical Internet address in their web browsers. Bad faith in selecting a domain name may contribute to a finding of confusing similarities.” In fact, simply changing the order of the vowels “A” and “E” in <ceasarswembley.com> as opposed to Complainant’s marks CAESARS does not render the disputed domain name different to said marks, or distinctive. It is rather the opposite.

In view of the above, it is clear to this Panel that the contested domain names <caesarspallace.com> and <ceasarswembley.com> are confusingly similar to Complainant’s marks. Complainant has met its first burden under the Policy.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:

“(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.” (Policy, paragraph 4c).

Respondent has not submitted any evidence showing any rights or legitimate interests in the disputed domain names. Complainant has denied having granted any license nor in any way authorized Respondent to make use of Complainant’s marks.

This Panel agrees with previous Panels in that registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name to Respondent, but rather constitutes bad faith under paragraph 4(c) of the Policy. See Telstra Corp. Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Medisite S.A.R.L. v. Intellisolve Ltd., WIPO Case No. D2000-0179 and V&S Vin & Sprit Aktiebolag v. Kownacki, NAF Case No.95079.

Respondent has not set forth any evidence showing that before this dispute arose, it had used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Attempting to attract traffic for profit, by free-riding on the goodwill of another cannot constitute a bona fide offering of goods or services.

Respondent has not submitted any evidence showing that it has been commonly known by the disputed domain names <caesarspallace.com> and <ceasarswembley.com>.

Respondent has not provided any evidence showing that it is making a legitimate noncommercial use of the disputed name, without intent for commercial gain to misleadingly divert consumers. In fact, the evidence on record shows exactly the opposite. Complainant has submitted evidence showing that Respondent is diverting consumers to sites like <theticketagency.com>, <expedia.com>, <i4vegas.com> and <powerblackjack.com>, by using <caesarspallace.com>. Respondent has not contested this evidence.

Complainant claims that upon information and belief, Respondent registered the <ceasarswembley.com> on the same day of the public announcement of Complainant’s plans to build a CAESARS branded casino hotel in the United Kingdom at the Wembley Complex. Complainant’s claim was not contested by Respondent. Said conduct cannot constitute a bona fide offering of goods or services.

The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name. The second requirement set forth in the Policy has therefore been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) 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.”

Respondents entirely incorporate a known trademark in their domain name. Registration of a trademark in a domain name by a party other than the trademark owner, without authorization and absent legitimate rights or fair use exceptions, indicates bad faith registration. (See Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489).

Complainant has argued that Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Respondent has not rebutted said affirmation. Complainant has submitted evidence in support of its accusation.

In accordance with Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, Talk City, Inc. v. Michael Robertson, supra, and other analogous cases ruled by previous Panels, this Panel accepts as true Complainant’s supported allegations, that have not been rebutted by Respondent. Complainant has satisfactorily shown that Respondent is taking advantage of Complainant’s marks to attract, for commercial gain, users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s sites.

Internet users looking for Complainant are likely to be confused and mislead by Respondent’s domain names <caesarspallace.com> and <ceasarswembley.com>. See, mutatis mutandis, Nasdaq Stock Market v. NSDAQ, supra (citing in turn See Yahoo! Inc. v Data Art Corp., WIPO Case No. D2000-0587; Edmunds.com, Inc v. WWWEDMUNDS.com and DMUNDS.com, WIPO Case No. D2001-0937 and Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594.

Complainant has shown that Respondent is conducting a typosquatting practice, i.e., taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom. Respondent has submitted no justification for registering two domain names: <caesarspallace.com> and <ceasarswembley.com> that are confusingly similar to Complainant’s trademarks CAESARS. Substituting CAESARS for Ceasars in <ceasarswembley.com> is clearly a typosquatting practice. Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name (See News Group Newspapers Limited and News Network Limited v. Momm Amed Fa, WIPO Case No. 2000-1623, America Online, Inc. v. Intellectual-Assets.com, Inc., WIPO Case No. D2000-1043, Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. 2000-1547; Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. 2000-1594; Club Méditerranée S.A. v. Clubmedical, WIPO Case No. D2000-1428; Yahoo! Inc. and GeoCities v. Data Art Corp. et al, WIPO Case No. D2000-0587; AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447).

Respondent is trading on the goodwill of the Complainant and free-riding on the recognition that Complainant’s trademarks enjoy among Complainant’s customers on the Internet. Respondent has intentionally attempted to attract Internet users to on-line locations other than Complainant’s, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of said other websites, presumably for commercial gain. In this sense, Respondent has not submitted any justification for using <caesarspallace.com> and <ceasarswembley.com>, two domain names that are confusingly similar to Complainant’s marks, in connection to links that divert traffic to websites that are unrelated to Complainant, and has not rebutted Complainant accusations that Respondent’s conduct has a commercial aim.

This Panel accepts Complainant’s allegation in the sense that knowingly providing false WHOIS contact information indicates bad faith. It also constitutes a breach to the Registrar’s service agreement.

Complainant has thus established that the disputed domain names <caesarspallace.com> and <ceasarswembley.com> have been registered and are being used in bad faith. The third requirement of the Policy has therefore been fulfilled.

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 <caesarspallace.com> and <ceasarswembley.com> be transferred to the Complainant.

Kiyoshi I. Tsuru
Sole Panelist

Dated: July 25, 2005