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Caesars Entertainment, Inc. v. Adi Tarkay [2005] GENDND 555 (25 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars Entertainment, Inc. v. Adi Tarkay

Case No. D2005-0581

1. The Parties

The Complainant is Caesars Entertainment, Inc, Las Vegas, Nevada, United States of America.

The Respondent is Adi Tarkay, Moshav Mazor, Israel.

2. The Domain Names and Registrar

The disputed domain names <bingoflamingo.com>, <bingoflamingo.info> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2005. On June 7, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On June 8, 2005, eNom 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 13, 2005. The Center verified that the Complaint together with the amendment to 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 17, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2005.

The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on July 14, 2005. He submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Administrative Panel finds that it was constituted properly.

4. Factual Background

The following information derives from the Complaint.

The Complainant provides gaming, hotel and entertainment services through its operation of the famous FLAMINGO casinos and hotels, the most famous of which is located in Las Vegas, Nevada, USA (the “Casino”).

The Casino was first opened in December 1946 by Benjamin “Bugsy” Seigel, the Complainants’ predecessor in interest, who is widely credited with creating what is now known worldwide as the famous “Las Vegas Strip”. Legend has it that Mr. Seigel named the Casino after his girlfriend, Virginia Hill, who had red hair and long legs, bringing to mind a flamingo.

The Casino – situated several miles from downtown Las Vegas on what was named Flamingo Drive – introduced European-style gaming to the United States with an elegant aura featuring men in tuxedos and women in gowns. The opening of the Casino was attended by many Hollywood stars of the day, such as Jimmy Durante, Tommy Wonder, Eddie Jackson and Rose Marie. The Casino was so unlike any other that Las Vegas locals speculated that it was too opulent ever to succeed. The legend of the Flamingo continued to grow when, only months after its opening, Bugsy Seigel was murdered.

In the more than 50 years since the Casino opened, its reputation and fame have grown through appearances in movies such as “Viva Las Vegas”, starring Elvis Presley, “The Las Vegas Story”, starring Jane Russell and Vincent Price and in the cult classic “Elvira, Mistress of the Dark”. In addition, the Casino has hosted shows by major talents throughout the years, including Lena Home, Zsa Zsa Gabor, Jerry Lewis, Judy Garland, Dinah Shore, Burl Ives, Steve Allen, Ella Fitzgerald, Frank Sinatra, Duke Ellington and many others. At this time, Gladys Knight is appearing at the Casino. In 1991, the Casino was prominently featured in the movie Bugsy, starring Warren Beatty in the title role and Annette Bening as his girlfriend and inspiration for the name of the Casino.

The Complainant owns several U.S. Patent and Trademark Office registrations for the marks FLAMINGO, FLAMINGO (Stylized), FLAMINGO PLAYERS CLUB and FLAMINGO LAS VEGAS (the “Marks”), which are used to designate and promote the Complainant’s services. The Marks are associated firmly with the Complainant. The Complainant also owns registrations for the FLAMINGO marks in Egypt and Greece.

Since 1946, the Complainant (or its predecessor in interest) has been using the FLAMINGO name and mark in brochures, pamphlets, advertisements in periodicals and on its websites, which are located at “www.lv-flamingo.com” and “-www.laughlinflamingo.com”.

Over one million people per year stay overnight at the Complainant’s casino and hotel in Las Vegas. Each year, millions more pay a visit to the Complainant’s casino and hotel in Las Vegas without staying overnight.

After undergoing renovations in 1996 that expanded its capacity to 3,500 hotel rooms, the Complainant’s hotel and casino was the largest hotel in the world; today, it is the tenth largest hotel in the world and the fifth largest in Las Vegas.

The FLAMINGO also provides gaming services, entertainment services and shopping arcade services, as well as hotel services through its operation of the famous Flamingo Las Vegas and Flamingo Laughlin hotels in Nevada.

According to some, the FLAMINGO hotel sits on the busiest intersection in the world: Flamingo and Las Vegas Boulevards, which sees 50,000 people pass by every day. As a result, the FLAMINGO casinos and hotels have enjoyed and continued to enjoy exceptional success. The Casino also has received a high level of publicity and commendation from various sources. The Complainant also operates a popular casino/hotel under the FLAMINGO mark in Laughlin, Nevada. In the past, the Complainant operated a FLAMINGO hotel in Reno, Nevada.

The association of he word “flamingo” with the Complainant has been recognized by other UDRP panels.

In 2001, 2002, 2003 and 2004 the Complainant spent respectively approximately $3,500,000, $4,000,000, $7,000,000 and $4,800,000 advertising its Casinos.

The Complainant has had a website devoted to its Las Vegas FLAMINGO casino at “www.lv-flwningo.com” since on or about August 3, 2000. The website continuously has displayed the FLAMINGO mark since August 2000. From January 2003 through December 2003, there were approximately 2,100,000 visits to the Complainant’s website. In 2004, there were approximately 3,000,000 visitors to the website.

The Complainant has had a presence on the Internet in the form of a website devoted to its Laughlin FLAMINGO casino at “www.laughlinflamingo.com” since on or about August 3, 2000.

That website continuously has displayed the FLAMINGO mark since August 2000. From January 2003 through December 2003, there were approximately 425,000 visits to this website and in 2004 approximately 445,100 visitors.

As a result of the Complainant’s continuous use of the FLAMINGO mark for more than fifty years its Marks have gained wide recognition and have become very well known. The Marks were associated firmly with the Complainant prior to the Respondent’s registration of the subject domain names.

The Complainant owns a number of U.S. federal trademark registrations for the FLAMINGO mark, and variations thereof. Below is a table summarizing some of those registrations:

Mark	Reg. No.	Goods and Services	Filing Date	Registration Date
FLAMINGO	1,948,975	Casino services	February 21, 1995	January 16, 1996
FLAMINGO (Stylized)	2,517,266	Casino services and entertainment services	March 22, 2001	December 11, 2001
FLAMINGO PLAYERS CLUB	2,015,176	Casino services and hotel services	August 21, 1995	November 12, 1996
FLAMINGO LAS VEGAS	2,514,373	Casino services and entertainment services	March 22, 2000	December 4, 2001
FLAMINGO (Stylized)	2,517,267	Resort hotel, bar, restaurant and health spa services	March 22, 2001	December 11, 2001

The FLAMINGO and FLAMINGO PLAYERS CLUB registered marks in the above table are incontestable. They were registered long before the Respondent’s registration of the <bingoflamingo.com> domain name. The listed registrations are still in the name of the Complainant’s predecessor, Park Place Entertainment Corporation.

In addition, the Complainant owns several registrations for its FLAMINGO mark in other countries:

Mark	Reg. No.	Goods and Services	Country
FLAMINGO	88,984	Gaming equipment	Egypt
FLAMINGO	88,986	Entertainment services	Egypt
FLAMINGO	88,988	Hotel, resort, restaurant and bar services	Egypt
FLAMINGO Plus Design	118,593	Entertainment services, including casino services	Greece
FLAMINGO Plus Design	118,594	Entertainment services, including casino services	Greece
FLAMINGO	620,551	Hotel, restaurant, bar and related services	Australia
FLAMINGO	634,872	Entertainment Services including casino, gaming and related services	Australia
FLAMINGO	620,549	Entertainment services, including casino, gaming and related services in this class none being entertainment services with the production or rental of records	Australia

The Complainant is also very active in preventing use of its famous trademarks on the Internet and has been successful in protecting its rights in over a dozen ICANN complaints.

The Respondent registered the <bingoflamingo.com> domain name on July 5, 2002, and the <bingoflamingo.info> domain name on September 28, 2004.

The <bingoflamingo.com> domain name is used by the Respondent for an online gaming site.

Towards the center of the “www.bingoflamingo.com” home page is a list of different games of chance a visitor the can play, including but not limited to 75-Ball, 90-Ball, Slots, Keno, and Video Poker. On the far right of the “www.bingoflamingo.com” home page is a flashing box which states “Register and Get $10 free!” Below the box is another flashing box which states “Get Guaranteed 300% Bonus on your first deposit.”

On the bottom of the Internet home page to which the “www.bingoflamingo.com” resolves, in small writing, is a disclaimer which states “This site has absolutely no affiliation or connection with Caesars Entertainment, Inc. If you found and/or entered this site with the mistaken notion that it is affiliated with CEI or any of its FLAMINGO branded services, we apologize and request that you leave immediately.…”

At the bottom of the “www.bingoflamingo.com” home page is a link entitled “Affiliates”. When the user clicks on this link, he is brought to the “www.bingoflamingo.com” Affiliate program.

The <bingoflamingo.info> Domain Name is inactive.

Upon learning that the Respondent registered the domain name <bingoflamingo.info> on January 28, 2005, the Complainant’s outside counsel sent the Respondent a letter warning him against using the domain name for a gaming related website. The letter was returned because the address was false. At the time the Complainant sent the letter the “www.bingoflamingo.info” was inactive.

After a series of voicemail messages, Vladimir Sherman, the Respondent’s counsel, sent an e-mail message to the Complainant’s outside counsel. The e-mail stated that the Respondent operates a large number of online bingo sites and purchased <bingoflamingo.com> for operating another bingo site. The letter also stated that the Respondent operates out of Costa Rica, near “Flamingo Beach,” and that the Respondent placed a message on the website indicating there was no affiliation with the Complainant.

The Complainant’s outside counsel responded on April 26, 2005, reiterating that the Complainant does not allow FLAMINGO to be used for online gaming services and asking what other domain names, the Respondent owned.

On April 26, 2005, the Respondent’s counsel responded stating that Respondent lives in Costa Rica, despite the address listed on the WhoIs database and that his client will not shut down the site.

The Complainant does not operate any online casinos because they are illegal in the United States of America.

The Respondent did not file a response in this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its registration and use of the word ‘FLAMINGO” and says that the subject domain names are identical or confusingly similar to its marks. It relies on previous decisions that address the latter conclusion.

Relying on the fame and notoriety of its mark, the Complainant contends that the Respondent does not have a legitimate interest in the subject domain names. The Complainant also asserts that it is a fair inference that the Respondent intends to target United States residents in contravention of United States law. The Complainant adds that there is no relationship between the parties whereby the Respondent is authorized, licensed or has permission to use the Complainant’s marks.

Bad faith is said to be established because the Respondent is, “…using the domain Names to intentionally attempt to attract, for commercial gain, Internet users to its or other on-line location, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of its or location of a service on its or location”. The Complainant relies on the notoriety of its marks and contends that the Respondent must know about them and seeks to capitalize on them.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain names are 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 names; and

(iii) the domain names have been registered and are being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

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

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

(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the mark “FLAMINGO” both through registration and use. Other UDRP panels have recognized the Complainant’s interests.

The Complainant states that the subject domain names are identical or confusingly similar to its Marks. These are different conclusions involving different tests.

The subject domain names use the word “BINGO’ in conjunction with the word “FLAMINGO” (the addition of “.com” or “.info” is of no legal significance). The test is objective. That is, are the subject domain names in substance identical to the marks on their face? Use is not relevant. The addition of the word “BINGO” leads to the conclusion that the subject domain names are not identical to the Complainant’s Marks.

The real inquiry is whether the subject domain names are confusingly similar. The test is more subjective. Use and the context of use can be taken into account.

The Complainant is in the gaming business. Bingo is a game of chance. Taking these facts into account, the addition of the word “BINGO” is confusingly similar to the Complainant’s marks.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent took the position in communications to the Complainant that, “…the Respondent operates a large number of online bingo sites…he purchased BINGOFLAMINGO.COM for operating another a bingo site…Respondent operates out of Costa Rica, near “Flamingo Beach,” and that Respondent placed a message on the website indicating there was no affiliation with Complainant”.

The Complainant fairly provided this information to the Administrative Panel together with information concerning the disclaimer.

A respondent is not obliged to participate in a domain name dispute, but if it were to fail to do so, it would be vulnerable to the legitimate inferences that flow from a complainant’s not unreasonable assertions of fact.

It is the Complainant’s obligation to establish that the Respondent does not have a legitimate interest in the subject domain names. The context of use, the lack of any authorization given by the Complainant to the Respondent and the lack of use of one of the subject domain names establish a prima facie case.

The Respondent could have attempted to meet this case by relying on the assertions it made in communications to the Complainant. He chose not to do so. It is a fair inference that if the assertions were correct, the Respondent would have relied on them. The Administrative Panel disregards them.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

A conclusion that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of a complainant does not lead automatically to a bad faith finding, but the facts that support the conclusion are relevant to the bad faith inquiry.

The notoriety of the Complainant’s marks, their use in the gaming industry and the Respondent’s use and stated intention to use the subject domain names in the gaming industry all support a conclusion that the subject domain names were registered and are being used in bad faith.

The Respondent has provided nothing to counter this conclusion. Standing alone, the Respondent’s disclaimer is not an answer. Any effect it might have would be after the fact.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.

The Complainant asks that the subject domain names <bingoflamingo.com>, <bingoflamingo.info > be transferred to it. The Administrative Panel so orders.

Edward C. Chiasson Q.C.
Sole Panelist

Date: July 25, 2005