WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Park Place Entertainment Corporation v. Mike Gorman
Case No. D2000-0699
1. The Parties
Complainant is Park Place Entertainment Corporation, a Delaware corporation located at 3930 Howard Hughes Parkway, Las Vegas, Nevada. Respondent is Mike Gorman, residing in Los Angeles, California.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is PARIS-LASVEGAS.COM. The Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia.
3. Procedural History
On June 29, 2000, the Complainant submitted a Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation of Assigned Names and Numbers ("ICANN") on October 24, 1999, under the Rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center"), in a hard copy sent by courier. On June 29, 2000, the Center performed its check for compliance with formal requirements, and determined that the Complaint had not been submitted in electronic format, as required by paragraph 3(b) of the UDRP Rules.
In a notification sent by e-mail to Complainant and Respondent on July 2, 2000, the Center acknowledged receipt of the Complaint in hard copy. That same day, the Center requested Registrar Network Solutions, Inc. ("NSI") to verify that it had received the Complaint; that it had registered the domain name at issue; that the Respondent is the current registrant of the domain name; that the UDRP applies to the domain name; that it indicate the current status of the domain name; and that it provide full contact details for the domain name Registrant, administrative contact and billing contact.
On July 3, 2000, the Center issued a Complaint Deficiency Notification, advising the parties by e-mail that the Complaint was deficient because it was not submitted in electronic format as required by the UDRP Rules, paragraph 3(b).
On July 5, 2000, the Registrar, NSI, verified that it had received the Complaint; that it is the Registrar of the domain name in question; that the Respondent is the current Registrant of the domain name; that the UDRP Policy is in effect concerning the domain name; and that the domain name registration is in "active" status. NSI also provided its contact information of record for the Registrant, and for its administrative, technical, zone and billing contacts.
On July 5, 2000, the Center received a copy of the Complaint by e-mail from the Complainant. Therefore, on July 7, 2000, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, forwarding the Complaint to the Respondent by courier and e-mail. A copy of the Complaint was also communicated to ICANN and to NSI. The Notification set the deadline for a response to the Complaint as July 27, 2000.
On August 1, 2000, the Center issued a Notification of Respondent Default, advising Respondent that it failed to comply with the deadline of July 27, 2000.
On August 16, 2000, the Center issued to this Panel a Request for Declaration of Impartiality and Independence. This Panel provided its Declaration of Impartiality and Independence to the Center on August 17, 2000. On August 22, 2000, the Center issued a Notification of Appointment of Administrative Panel and Projected Decision Date, setting this Panelís deadline for issuing a decision as September 5, 2000.
The Center transmitted the case file herein to this Panel on August 22, 2000. The case file was received by the Panel on August 24, 2000.
4. Factual Background
Complainant Park Place Entertainment Corporation ("Park Place") operates hotels and casinos. Complainant filed an application to register the mark PARIS LAS VEGAS and Design with the U.S. Patent and Trademark Office, on January 14, 1999. The application was assigned Serial No. 75/622,575. A search of the U.S. Patent and Trademark Office electronic database reveals that a Statement of Use has been accepted, and the application has been allowed for registration. Except for ministerial delays in printing, the application will be issued as a registration.
5. Partiesí Contentions
Complainant asserts it has been publicizing its PARIS LAS VEGAS mark on its website since at least June, 1999. Complaint, ∂ 10.A(iii). The website is operated under the domain name PARIS-LV.COM. Complainant asserts that between June, 1999 and May, 2000, over 1,100,000 Internet users have visited Complainantís website at PARIS-LV.COM, with an average of more than 92,000 unique hits each month. Id. Complainantís website can also be reached through the domain name PARISLASVEGAS.COM, which Complainant acquired recently. Id.
Complainant asserts that it opened its Paris-Las Vegas hotel and casino in Las Vegas, Nevada on September 1, 1999. Complaint, ∂ 10.A(i). Since that date, Complainant asserts that more than 300,000 guests have stayed in its Paris-Las Vegas hotel. Id. Complainant asserts that more than 1,000,000 people visited Complainantís Paris-Las Vegas casino in both March and April, 2000. Id. Complainant also asserts it has received a high level of publicity and commendation from independent sources, including the New York Times. Id. Complainant attached to its Complaint sample articles indicating the positive publicity it has received in connection with its Paris-Las Vegas hotel and casino.
Complainant asserts that as a result of the high number of visitors to its casino and hotel, the visitors to its website, and the independent publicity it has received, Complainantís mark PARIS LAS VEGAS has gained widespread recognition and become very well known, and that the mark was firmly associated with Complainant prior to Respondentís registration of PARIS-LASVEGAS.COM on November 13, 1999. Complaint, ∂ 10.A(iv). This Panel notes that the mark of Complainantís U.S. trademark application Serial No. 75/622,575 is a composite word and design mark, consisting of a stylized depiction of the Eiffel Tower, the word PARIS in a stylized script, and the words LAS VEGAS in smaller script below. The words "Las Vegas" are disclaimed apart from the mark, meaning that Complainant claims no right to exclude others from use of the words "Las Vegas" apart from its entire mark. Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-7 (Commr. Pats. 1954).
Complainant asserts that as of November 13, 1999 when Respondent registered the domain name PARIS-LASVEGAS.COM, Complainant had already been using its PARIS LAS VEGAS marks and firmly established its rights therein. Complaint, ∂ 10.B(i). Complainant asserts that on November 13, 1999, the same day Respondent registered its domain name, Respondent wrote to Complainant "with an offer to sell [Complainant] the ownership rights" to the domain name at issue. Id. Complainant attached a copy of Respondentís correspondence as an Exhibit to the Complaint. The letter, dated November 13, 1999, states:
Dear Paris Las Vegas:
I am writing with an offer to sell you the ownership rights to an Internet domain address.
I understand the current Paris Las Vegas Internet address to be:
This address is not owned by Paris Las Vegas.
My proposal will transfer to you ownership of the following domain name:
PARIS-LASVEGAS.COM, reads much better for advertising purposes than your existing address...and is of course, the actual name of your business and the URL most Internet surfers would intuitively type in to visit your site.
The easier it is for your customers to find your website, the less frustrated theyíll be, the fewer phone calls will be made for inquiries, and the more the Paris-Las Vegas name will be reinforced for a competitive advertising advantage. Or maybe you were planning on changing the name of your hotel/casino to: ĎParis-LVí?
For compensation of the domain name transfer, we are asking for:
-A lifetime compd. room, 6X annually, for my wife and me.
Thank you for your consideration.
5850 W. Third Street
Los Angeles, CA 90036
Complainant notes that the address on Respondentís letter matches the address for contact details in the NSI records which are part of the case file.
Complainant asserts that Respondentís domain name PARIS-LASVEGAS.COM copies Complainantís PARIS LAS VEGAS mark and business name exactly, as pointed out by Respondent in its offer to sell the domain name of November 13, 1999. Complaint, ∂ 10.B(ii).
Complainant asserts that Internet users have actually become confused when they typed in Respondentís domain name PARIS-LASVEGAS.COM, thinking they were reaching Complainant rather than Respondent. Id. To support this assertion, Complainant attached as an exhibit e-mails from Internet users, indicating confusion by such comments as "I tried to see what your hotel looked like and had to offer", "...I understand you are still under construction [then indicating the writer understood it was the hotel that was under construction]", "How does one get on to your website to look for room availability and prices?", "Your website doesnít work & your computer reservations donít work? Iíd still be interested in a strip-view room for Monday, May 29, 2000...".
Complainant asserts that Respondent has no legitimate interest in the domain name PARIS-LASVEGAS.COM, because: the domain name was registered after Complainant had established rights in the mark PARIS LAS VEGAS, Complaint, ∂ 10.B(iii); 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 name, Complaint, ∂ 10.B(iv); that Respondent offered to sell the domain name PARIS-LASVEGAS.COM on the same day it registered the name, Complaint, ∂ 10.B(v); Respondent threatened to transfer its domain name to a "new owner who resides in Ukraine" if Complainant did not comply with Respondentís demands for payment to transfer the domain name, Complaint, ∂ 10.B(vii); Respondent had not established any fully functioning website in connection with the domain name as of June 26, 2000 (when the Complaint was filed), despite the fact that the domain name was registered since November 13, 1999, Complaint, ∂ 10.B (vii); and Respondent cannot demonstrate any rights to or legitimate interest in the domain name, because it has not used the name in connection with the bona fide offering of goods or services, nor is it commonly known by the domain name, nor is it making legitimate non-commercial or fair use of the name, Complaint, ∂ 10.B(viii).
Complainant asserts that Respondent has registered and used the domain name in bad faith because: Respondent failed to use the domain name in connection with a functioning website legitimately to sell or provide any goods or services, Complaint, ∂ 10.B(ix); Respondent registered with advertisers to provide on-site banner advertising promoting on-line gambling and Las Vegas travel services, including hotel and transportation services for the Las Vegas area, Id.; Respondent stated to an officer of Complainant that he "received money" for "banners" placed on the PARIS-LASVEGAS.COM site, Id.; and Respondent offered the domain name for sale immediately upon registering it, Complaint, ∂ 10.B(x). Finally, Complainant suggests Respondent can have no legitimate right to use PARIS-LASVEGAS.COM as a domain name based upon its use in connection with an informational site devoted to [the cities of] Paris and Las Vegas, since "the lack of anything more than a single page at the domain name which provides no information concerning these cities and hyper-links which are inoperable demonstrates that Respondentís efforts are a mere sham to cover his true bad-faith intention of extorting Complainant." Complaint, ∂ 10.B(xi).
Respondent has failed to file a Response to the Complaint, and is therefore in default.
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding:
1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. That the Respondent has no rights or legitimate interests in respect of the domain name; and
3. That the domain name has been registered and is being used in bad faith.
UDRP Policy, Section 4.a.
In order to prevail, a Complainant cannot prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001; Robert Ellenbogen v. Mike Pearson, Case No. D2000-0001.
In order to establish that it has rights or legitimate interests in respect of a domain name, a Respondent may provide evidence including but not limited to the following:
(i) Circumstances indicating that [the Registrant 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the Registrant 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 [the Registrant has] engaged in a pattern of such conduct; or
(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [its] web site or location or of a product or service on [its] web site or location.
UDRP Policy, Section 4(b).
B. Opinion of the Panel
This Panel finds that the Complainant has proved all three elements under section 4.a. of the Policy, and is therefore entitled to the relief it seeks. The Panel will address each of the elements in turn.
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First, the Complainant has established that it has rights in the mark PARIS LAS VEGAS. Complainant owns a trademark application pre-dating Respondentís registration of its domain name by eleven months, which but for delays in the U.S. Patent and Trademark Office will be issued as a registration. Once the registration issues, Complainant will have "constructive use" priority dating back to the filing date of its application, January 14, 1999. 15 U.S.C. ß 1057(c).
Although such "constructive use" priority is not effective until issuance of the registration, this is not an impediment to Complainantís claim of right in the mark PARIS LAS VEGAS. Complainant has also provided evidence that prior to Respondentís registration date, Complainant has used the term in commerce in connection with its hotel and casino, and that members of the press and public refer to Complainantís hotel and casino by this name.
Under U.S. law, rights in a trademark or service mark are based not upon registration, but upon sale of goods or rendering of services in interstate commerce in connection with the mark. Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1473, 1 USPQ2d 1772, 1774 (Fed. Cir. 1987). Complainantís uncontroverted proof and exhibits that it has been rendering its services under the name PARIS LAS VEGAS since September, 1999, and on its website since June, 1999, established its rights in the mark PARIS LAS VEGAS for purposes of this proceeding.
This Panel notes that Complainantís application for its mark PARIS LAS VEGAS is a composite word and design mark. The Panel further notes that the mark as it appears on Complainantís website is also stylized, in the identical form appearing in Complainantís trademark application. Since a domain name cannot include design elements, the domain name cannot be identical to the stylized version of Complainantís mark. But this is not fatal to Complainantís claim. First, the dominant portion of Complainantís word and design mark is the term PARIS LAS VEGAS; that is the term which would be used by consumers and the press in referring to the Complainant and its hotel and casino services. This was evident from the text of e-mails referring to Complainant as PARIS LAS VEGAS or some variation thereof, and newspaper clippings to the same effect. The e-mails also prove that consumers were being confused, despite the fact that the address they e-mailed contained no design element. "Where the dominant portion of both marks is the same, then confusion may be likely, notwithstanding peripheral differences." 3 McCarthy on Trademarks and Unfair Competition, ß 23:44 and cases cited at fn. 3 (2000). Here, confusion is not just likely, it is actual.
Finally, the fact that Complainantís design element is not reproduced in Respondentís domain name is of no practical significance. Because domain names cannot include design elements, Internet users must seek a website by typing in the name they know, rather than a design element. For example, Internet users cannot (yet) find a website for Nike shoes by typing in a "swoosh." Likewise, Internet users cannot type in a representation of the Eiffel Tower in order to find Complainantís website relating to its PARIS LAS VEGAS hotel and casino. Complainant has established the first element of the test.
2. Respondent has no rights or legitimate interests in respect of the domain name.
This Panel finds the most persuasive evidence in Complainantís favor on this issue, the fact that Respondent waited not even a single day from when it registered its domain name until it sought to sell the domain name to Complainant. In its offer letter to Complainant, Respondent made no pretense of having an existing business, business plan or otherwise, rather it sought only to sell "the ownership rights to an Internet domain address" (Emphasis added).
To its credit, Complainant raises and then argues against the possibility that Respondent could have made fair use of the domain name to refer to the cities of Paris and Las Vegas. Such effort was laudable, but not necessary. First, no such use of the domain name in connection with information about the two cities was made as of the time Respondent sought to sell the domain name to Complainant. Respondentís effort was made clearly as an afterthought; an effort to shore up rights it did not own in good faith. Such efforts are not countenanced under the UDRP Policy. See, e.g., Compagnie de Saint-Gobain v. Com-Union Corp., Case No. D2000-0020.
A visit to Respondentís website at www.paris-lasvegas.com provides further evidence that the website is a "Potemkin village" set up purely as an afterthought. All of the links to substantive sections of the website are listed as "under construction." The only links which do work are those leading to websites for Complainantís competitors: other casinos or hotel booking services. The fact that these links are established and operating is evidence not of Respondentís legitimate efforts to use the domain name in connection with services, but rather of its bad faith in using the domain name. Complainant has established this element of the test under Section 4.a. of the UDRP Policy.
3. The domain name has been registered and is being used in bad faith.
As noted above, it is necessary for Complainant to prove that Respondent both registered and used the domain name in bad faith, in order to prevail. This Panel is aware that prior decisions have sometimes struggled to prove both of these elements. In the present case, however, the effort is simple: Respondent registered the domain name in bad faith, because on the same day it obtained its registration, it immediately turned around and sought to sell the domain name to Complainant for an amount far in excess of its out-of-pocket costs.
Respondent used the domain name in bad faith not only because it immediately sought to sell the domain name without any legitimate use, but also because it is diverting traffic clearly intended for Complainant (as amply demonstrated by the misdirected e-mails attached to the Complaint) to competitors of Complainant which advertise on Respondentís website, such as other hotels and casinos, and Las Vegas travel and booking services.
Further evidence of Respondentís bad faith in registering and using the domain name are the false telephone number Respondent provided in its registration details, and its threat, evidently false, to reassign the domain name to a new owner in the Ukraine should Complainant seek to institute legal proceedings against the Respondent. A legitimate business owner does not act this way.
This Panel decides that the Complainant has proven each of the three elements in Section 4(a) of the UDRP Policy in the present proceeding. Therefore, pursuant to paragraph 4(i) of the UDRP Policy, and paragraph 15 of the UDRP Rules, this Panel grants the relief requested by Complainant, and hereby orders that the domain name PARIS-LASVEGAS.COM be transferred to Complainant, Park Place Entertainment Corporation.
Jordan S. Weinstein
Dated: September 5, 2000