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FMTM Distribution Limited v. Frnack Muller [2005] GENDND 619 (24 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars World, Inc. v. Chester Vargas/Latin American Financial Holdings Group

Case No. D2005-0362

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 Chester Vargas/Latin American Financial Holdings Group, Panama City Panama.

2. The Domain Names and Registrars

The disputed domain name <caesars-bucks.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

The disputed domain names <caesarbucks.com>, <caesar-bucks.com> and <caesars-empire.com> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2005. On April 8, 2005, the Center transmitted by email to Network Solutions, LLC and CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain names at issue.

On April 8, 2005, Network Solutions, LLC 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.

On April 11, 2005, CSL Computer Service Langenbach GmbH dba Joker.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 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 April 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2005.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on May 25, 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 the holder of the trademarks CAESARS and CAESAR (stylized) in the United States of America and around the world.

The domain name <caesars-bucks.com> was registered on December 4, 2003, and updated by Respondent on April 13, 2005.

The domain names <caesar-bucks.com>, <caesarbucks.com> and <caesars-empire.com> were created on February 19, 2005.

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 consist of the famous CAESARS trademark with “Bucks” or “Empire” added on. The term “Bucks” is commonly used in the gaming industry, and is virtually generic. Internet users are likely to believe the 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 CAESAR trademark. It is precisely because of this association with Complainant’s marks that Respondent registered the disputed domain names.

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

Respondent cannot demonstrate any legitimate interest in the disputed domain names.

Respondent registered his domain names only after Complainant had established rights in its CAESARS Family marks. Moreover, Respondent specifically chose as his domain names the almost identical name of Complainant’s well-known Caesars resort hotels and casinos worldwide.

Respondent lures Internet users looking for Caesars websites to its website in an attempt to get them to join its Affiliate Program, which in turn generates revenue for Respondent. Such activity cannot be legitimate non commercial or fair use when Respondents are profiting from approaching Internet users. While Complainant does not have its own Affiliate Program, Respondent is profiting by obtaining members to redirect Internet users to its own websites.

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, there can be no legitimate use by Respondent.

While the evidence shows that the CAESARS marks are renowned throughout the world, it is also clear that the true target of the disputed domain names are consumers interested in staying at CAESARS branded properties. These people are primarily United States citizens, since Complainant’s brands are clearly most famous to United States residents.

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 disputed domain names, which incorporate in their entirety and/or are confusingly similar to Complainant’s marks. Respondent is not commonly known by the disputed domain names and is not making legitimate noncommercial or fair use of them. Respondent is not making and has never made any use of the disputed domain names apart from associating them with websites on which users may become Affiliate Program Members to the Respondent’s profit.

A.3 Bad faith registration and use

Respondent is using the disputed 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.

Respondent has further demonstrated his bad faith by providing the Registrar with false contact information.

Respondent transferred Registrars and changed the Registrant information for three of the domain names at issue after Complainant’s counsel sent a cease and desist and follow-up letter to Respondent. This also evidences Respondent’s bad faith.

Bad faith can also be found by Respondent’s use of Complainant’s famous trademarks by misdirecting Complainant’s business.

Respondent knew of the fame of Complainant’s marks when it registered the disputed domain names.

Respondent is using the disputed domain names <caesar-bucks.com>, <caesarbucks.com> and <caesars-bucks.com> to host a site whose purpose is to divert Internet users looking for Complainant’s website. When the Domain Names <caesar-bucks.com>, <caesarbucks.com> and <caesars-bucks.com> are entered into a Web browser, the user is taken to the Caesarbucks Affiliates Program.

The <caesars-empire.com> domain name resolves to an e-support Website powered by Kayako, which is a Web-based Internet help desk management software program.

The Caesarsbucks Affiliates Program main page claims that Respondent pays out “tens of thousand of dollars every week to [their] successful applicants”; “all you have do is 1. sign up, 2. send traffic, 3. get paid”. Towards the far right of the Website, there is a list of the “Top Converting Websites” including, inter alia, NERO AMPLIFICO a “Male Penis and Sexual Enhancement Supplement”, MYAUCTIONBIZ, a “Turkney, Ebay, and Online Auction Success Kit”, TIBERIUS ERECTUS, a “Prescription Strength Herbal Viagra” and TRACE DESTROYER “a website and history trace destroyer program”. Some of said Top Converting Websites are owned by the same Respondent.

When the user clicks on “Benefits” on the Caesarbucks Affiliates Main Page, she is brought to a Web page which describes how the Affiliate Member generates income.

When a user types the affiliate member’s URL into her browser, she is redirected to one of the Affiliate Program’s website. Accordingly, the Affiliate Member receives a fee or commission when the user purchases a product off one of the Caesarbucks websites, and Caesarsbucks profits by having more Internet traffic diverted to its websites. Thus, Respondent is using confusingly similar domain names to obtain members who in turn redirect Internet traffic to their websites.

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 credible allegations in 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.

The fact that Respondent simulated a transfer of some of the disputed domain names after having been contacted by Complainant’s counsel is irrelevant. Complainant has submitted allegations and evidence on this regard, which has not been contested. Therefore, the Panel accepts as true Complainant’s allegations (see, Mutatis Mutandis Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206, the Respondent is bound by the same terms and conditions that its predecessor in title, even if it has not necessarily registered the Domain Name directly or personally with the Registrar.) In this case, Respondent Chester Vargas owned all four disputed domain name registrations, and once it discovered that Complainant would assert its rights against Mr. Vargas, he pretended to assign three of said registrations to Latin American Financial Holdings Group. There is no evidence in the case file suggesting the said assignment was a genuine arm-length assignment made in good faith. This proceeding should not be stagnated by such a maneuver.

A. Identical or Confusingly Similar

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

Other UDRP 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.

All of the contested domain names fully incorporate the trademark CAESARS or a variation thereof . The mere addition of common terms such as “Bucks” or “Empire” does not change the overall impression of the designations as being domain names connected to the Complainant (see Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTA, WIPO Case No. D2001-0026; see also PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184).

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, Sony Kabushiki Kaisha v. Kil, WIPO Case No. D2000-1409).

In light of the above, and taking into account that the disputed domain names <caesars-bucks.com>, <caesarbucks.com>, <caesar-bucks.com> and <caesars-empire.com> fully incorporate Complainant’s mark CAESARS or a slight variation thereof CAESAR, and that the gTLD “.com” is irrelevant in this analysis, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s trademarks. The first requirement of the Policy has been met.

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 name. 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 UDRP 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 Corporation Limited 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 <caesars-bucks.com>, <caesarbucks.com>, <caesar-bucks.com> or <caesars-empire.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.

The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain names. 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.”

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, WIPO Case No. D2002-0487, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, and other analogous cases ruled by previous UDRP panels, this Panel accepts as true Complainant’s uncontested allegations and evidence. Complainant has satisfactorily shown that Respondent is taking advantage of Complainant’s well-publicized 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, affiliate program and/or activities.

Complainant has thus established that the disputed domain names <caesars-bucks.com>, <caesarbucks.com>, <caesar-bucks.com> and <caesars-empire.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 <caesars-bucks.com>, <caesarbucks.com>, <caesar-bucks.com> and<caesars-empire.com> be transferred to the Complainant.

Kiyoshi I. Tsuru
Sole Panelist

Dated: June 20, 2005