WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caesars World, Inc. v. Starnet Communications and
Atlantic West Gaming Entertainment, Ltd.
Case No. D2002-0066
1. The Parties
The Complainant in this administrative proceeding is Caesars World, Inc. ("Caesars"), a Florida corporation doing business at 3930 Howard Hughes Parkway, 4th Floor, Las Vegas, Nevada 89109, USA. Complainant is represented in this administrative proceeding by its attorneys, Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, New York 10017, USA.
Respondents are cited as (1) Starnet Communications of either Suite #2, Po Box W1227, Woods Center, St. Johns, Antigua, or 425 Carrall Street, Mezzanine Level, Vancouver, BC V6B 6E3, Canada; and (2) Atlantic West Gaming Entertainment, Ltd., of either 60 Nevis Street / Box 2167, St. Johns, Antigua, or Suite #2, Po Box W1227, Woods Center, St. Johns, Antigua.
2. The Domain Names and Registrar
The Domain Names the subject of this Complaint are:
The Registrar of the Domain Names is: Network Solutions, Inc., (NSI), 505 Huntmar Drive, Herndon, VA 20170-5139, USA.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Names was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) by email and in hard copy on January 23, 2002. Complainant states that on January 22, 2002, a copy of the Complaint was sent or transmitted to the Respondents in respect of each Domain Name, (1) without exhibits by email to the Administrative and Billing contact of each Domain Name holder (amounting to two email addresses in total); and (2) with exhibits by DHL to the street or postal addresses provided for each Domain Name holder (amounting to three physical addresses in total). A copy of this Complaint has been sent or transmitted to the Registrar, NSI, on January 22, 2002, by email without exhibits and by DHL with exhibits.
3.2. On February 7, 2002, verification was received from the Registrar, NSI that the Domain Names were registered as follows:
3.2.1. For <teaserspalace.com> the Domain Name holder is Starnet Communications, Suite #2, Po Box W1227, Woods Center, St. Johns, AG; administrative and billing contact is Mark Anton, Atlantic West Gaming Entertainment Ltd., Suite #2, Woods Center, St. Johns, AG.
3.2.2. For <teaserspalace.net> the Domain Name holder is Starnet Communications, 425 Carrall Street, Mezzanine Level, Vancouver, BC V6B 6E3, Canada; administrative and billing contact is Mark Anton, of SoftNetGaming Inc., 11601 Biscayne Boulevard, Suite 101, Miami, FL 33181.
3.2.3. For <ceasarsonlinegaming.net> and <ceasersonlinegaming.net> the Domain Name holder is Atlantic West Gaming Entertainment, Ltd., 60 Nevis Street / Box 2167, St. Johns, Antigua, AG; administrative and billing contact is Mark Anton, of SoftNetGaming Inc., 11601 Biscayne Boulevard, Suite 101, Miami, FL 33181.
3.3. The Administrative Panel is satisfied that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules) all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN).
3.4. On February 11, 2002, Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center by post/courier to the registered addresses of Respondents. Email copies without enclosures were sent to Respondents, copied to Complainant, ICANN and NSI.
3.5. No Response was received from Respondents by the due date of March 3, 2002, and Notification of Respondent Default was sent to the Parties on March 14, 2002.
3.6. On March 30, 2002, a communication by way of acknowledgement and an outline Response to the proceedings was received from a Respondent.
3.7. On April 5, 2002, Dr. Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondents and the Administrative Panel. An electronic copy of the Case File was sent by email to the Administrative Panel on April 5, 2002, and the complete Case File was sent by courier.
4. Factual Background
4.1. Caesars Palace (Caesars), which opened on August 5, 1966, is famous and its name is widely recognized. Many people, including those having no interest in the services provided by Caesars Palace, would be familiar with its name as one of the best known providers of gaming services in one of the best known gaming cities in the world, namely Las Vegas, Nevada, USA.
4.2. According to Complainant, Caesars provides not only gaming services, but also hotel and entertainment services through its operation of Caesars Palace in Las Vegas and also casinos and hotels operating under the Caesars name in Stateline Nevada, Atlantic City New Jersey and Bridgeport Indiana. On average, approximately 1,500,000 people stay at the Caesars Palace casino and hotel each year.
4.3. Caesars owns a number of USA Patent and Trademark Office registrations for the marks Caesars Palace and Caesars, including stylized marks and designs. Registration of some of these trademarks extends into services ancillary to its core activities in gaming, hotels and entertainment. Complainant's trademarks are registered in at least 26 countries other than the USA. The Complainant has spent approximately $96,000,000 in the period 1995-2000, on advertising and promotion. In addition it receives considerable publicity through the media, including through its hosting or sponsorship of televised sporting events (Complainant's Exhibit G).
4.4. Complainant has had a website at the address "www.caesars.com" devoted to its services since June 1996, and automatically directs users who type "www.caesarspalace.com" to the same website. The portion of the website devoted to the Caesars Palace casino and hotel at "www.caesars.com/palace/body.html" received over 2 million hits in year 2000. The website has displayed the Caesars Palace and Caesars trademarks since June 1996.
5. Parties’ Contentions
A. Contentions of Complainant
5.1. The contentions of Complainant include (paragraphs 5.2-5.6 below) that:
5.2. The dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the Domain Names being the subject of this Complaint were registered, incorporates the Policy by reference.
5.3. The disputed Domain Names are confusingly similar to trademarks in which Complainant has rights.
5.4. Respondents have no rights or legitimate interests in the disputed Domain Names, which were registered relatively recently on February 25, 1999, (<teaserspalace.com> and <teaserspalace.net>) or on May 23, 2000, (<ceasarsonlinegaming.net> and <ceasersonlinegaming.net>).
5.5. Registration and use of the disputed Domain Names by Respondents is in bad faith in the terms of the Policy. Respondents are using the Domain Names to exploit Complainant’s fame for the purpose of attracting users to their own gaming website.
5.6. The remedy requested by Complainant is that the disputed Domain Names shall be transferred to Complainant.
B. Contentions of Respondents
5.7. The contentions of Respondents include (paragraphs 5.8-5.11 below) that:
5.8. Respondents have not done anything wrong; in effect they do not admit the Complaints.
5.9. The disputed Domain Names <teaserspalace.com> and <teaserspalace.net> are operated as sports wagering sites, having nothing to do with Caesars Palace. These sites are based on a type of wager known as a "teaser".
5.10. Many names could rhyme with Caesars Palace.
5.11. A potential disclaimer on Respondents' websites could confirm that these are not associated with Complainant.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. Paragraph 4(a) of the Uniform Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "Complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy and the Administrative Panel has jurisdiction to decide the dispute.
6.3. In Rules (1) (Definitions) a Respondent is defined as the holder of a Domain Name registration against which a Complaint is initiated. The Panel is satisfied that all four Complaints against the Respondent companies identified in Paragraph (1) above should be considered together because the same Mark Anton is the administrative contact, billing contact and guiding mind behind all four and there are other instances of commonality in the registration details. Furthermore Mark Anton in his email Response dated March 30, 2002, has responded at least in respect of the Domain Names <teaserspalace.com>, <teaserspalace.net> and <ceasarsonlinegaming.net>. Respondent will therefore be referred to hereafter in the singular.
6.4. The Panel notes that Complainant is a large corporation and legally represented whereas Respondent states by email that it is a small company that cannot afford to be represented in this Proceeding. Rules 10 (b), and the principles of natural justice, require the Panel to ensure that the Parties are treated with equality and that each is given a fair opportunity to present its case. Furthermore it is for Complainant to establish its case. The email received from Respondent on March 30, 2002, although later than the closing date of March 3, 2002, and later than the service of the Notification of Respondent Default dated March 14, 2002, will be taken into account.
6.5. For convenience this Discussion refers to contentious words without necessarily distinguishing between singular, plural, possessive, possessive with the apostrophe omitted, and combinations of these, however the Panel's deliberations have tested all such permutations.
Whether the Domain Names are Identical or Confusingly Similar to a Trademark
6.6. The Panel will first consider the disputed Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>. The question is whether these Domain Names are confusingly similar to Complainant's trademarks CAESARS and CAESARS PALACE. Each Domain Name contains one or more mis-spellings of the Complainant's trademark name CAESARS that are predictably likely to be typed by some Internet users. One contains "Cea..." in place of "Cae..." and the other additionally spells the name Caesar ending in "...er" instead of "...ar". These mis-spellings represent the ways many people would be expected to speak, think and write the name Caesar and are among the most likely mistakes that people could make. They are confusingly similar to the element CAESARS.
6.7. The disputed Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net> begin with what is effectively the Complainant's trademark, albeit with an erroneous or phonetic spelling. They continue with the explicit proclamation "onlinegaming". Ignoring punctuation, the words "on line gaming" are ordinary descriptive words such as might be tried by a person searching for on-line gaming. Domain Names consisting of a trademark and generic words are in general confusingly similar to the trademark (Sony Kabushiki Kaisha v. Inja, WIPO Case No. D2000-1409, in which nineteen Domain Names consisting of a trademark with appended ordinary words were transferred).
6.8. The Panel finds the disputed Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net> to be confusingly similar to Complainant's trademarks in terms of Paragraph 4(a)(i) of the Policy.
6.9. The same considerations do not apply to the disputed Domain Names <teaserspalace.com> and <teaserspalace.net>. Complainant posits that these two Domain Names are confusingly similar to its trademarks CAESARS and CAESARS PALACE. They rhyme in a simplistic way. However, the narrow question to be decided is whether they are confusingly similar to Complainant's trademarks. The exceptionally high and universal profile of CAESARS PALACE itself diminishes the likelihood of confusion with words based on Teaser.
6.10. It can be expected that virtually anyone familiar with Complainant's trademarks knows that they begin with the sound of a soft "C". The first letter might erroneously be thought to be a different letter from "C", but it is inherently unlikely that anyone would think it is a "T".
6.11. It is established precedent that many abusive website names are concocted in the expectation that inexpert typists will hit an adjacent key by mistake, when either logging on or searching. There can be little realistic expectation that a significant number of users of the almost universal QWERTY... or AZERTY... keyboards would hit "T" in mistake for "C". In any case such an error would need to be followed by further errors such that "TEASE..." was typed in place of "CAESA..." in order to find Respondent's website by mistake for Complainant's
6.12. Caesar is well known to be a person's proper name and has no other meaning except by association with a person's name. The word Teaser is the opposite, being to all intents and purposes not derived from a person's proper name and having many meanings that have nothing to do with a person's name.
6.13. The word Teaser in the disputed Domain Names is spelled in the ordinary way. It is not like the Complainant's trademarks.
6.14. Thus far the Panel does not find the word Teaser to be confusingly similar to Caesar. However, the Panel also approached the question from another direction by considering what mental images were evoked by the disputed Domain Names <teaserspalace.com> and <teaserspalace.net> and whether those images conflicted with the Complainant's intellectual property. The Panel was able to resolve several different images of a Teaser and of a Teasers Palace, but was unable to match any of them with the gaming and associated services stated to be on offer by the Complainant.
6.15. The word Caesar in connotation with gaming and associated services is highly specific and unquestionably protected, and the same applies to Caesars Palace. Nevertheless, the word Palace in isolation is a generic word used widely in the cinema, theatre, entertainment, hotel, hospitality and other industries. The word has wide everyday usage that includes the descriptive (royal palace), the institutional (palace of justice), the hyperbolic (cinema name) and the flippant (floating gin palace). The Panel does not find that the association of the words Teasers and Palace conflicts with Complainant's trademarks sufficiently for a finding of confusing similarity to be made.
6.16. The Respondent's admission that <teaserspalace.com> and <teaserspalace.net> are intended to be sports wagering sites (that by implication may be in competition with Complainant) does not impinge on the question of whether those Domain Names are confusingly similar to Complainant's trademarks, which has to be decided narrowly.
6.17. The Panel finds on the facts that the disputed Domain Names <teaserspalace.com> and <teaserspalace.net> are not confusingly similar to Complainant's trademarks in terms of Paragraph 4(a)(i) of the Policy. Since it is not necessary to proceed further in respect of these two Domain Names, the remainder of this Discussion (Section 6) will be concerned with <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Names
6.18. In accordance with Paragraph 4(a)(ii) of the Policy, Complainant is required to prove that Respondent has no rights or legitimate interests in respect of the Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>. Complainant has provided evidence that it is the proprietor of the trademarks CAESARS and CAESARS PALACE in at least twenty-seven countries. Evidently Complainant has not licensed its trademarks to Respondent. The Respondent has the opportunity to rebut Complainant's assertions, either in accordance with Paragraph 4(c) of the Policy or otherwise.
6.19. Respondent has not responded with any claim to use the disputed Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services in terms of Paragraph 4(c)(i) of the Policy.
6.20. There is no evidence that Respondent as an individual, business, or other organization has been commonly known by the Domain Names in terms of Paragraph 4(c)(ii) of the Policy.
6.21. Respondent has not provided any evidence that it is making a legitimate noncommercial or fair use of the Domain Names in terms of Paragraph 4(c)(iii) of the Policy.
6.22. Having considered the totality of the Complaint and the Response, the Panel finds that Respondent has no rights or legitimate interests in the disputed Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net> in terms of Paragraph 4(a)(ii) of the Policy.
Whether Domain Names Have Been Registered and Are Being Used in Bad Faith
6.23. Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that a Domain Name has been registered and is being used in bad faith. Paragraph 4(b)(iv) of the Policy provides for a finding of bad faith where "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".
6.24. Having regard to all the evidence there can be no plausible explanation for Respondent's activities in establishing the Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net> other than to attract Internet users to its locations by relying on their confusion with the trademarks of the Complainant that are famous in connection with on-line gaming; and Respondent has done so for commercial gain. The Panel finds registration in bad faith to be proved in the terms of Paragraph 4(a)(iii) of the Policy.
6.25. In summary in respect of the Domain Names <teaserspalace.com> and <teaserspalace.net>, as concluded in 6.17 above these are not confusingly similar to Complainant's trademarks. The Panel gives its Decision for Respondent and against Complainant.
6.26. In summary in respect of the Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>, as concluded in 6.8 above these are confusingly similar to trademarks in which Complainant has rights and Complainant succeeds under Paragraph 4(a)(i) of the Policy. As concluded in 6.22 above, Respondent has no rights or legitimate interests in these two Domain Names and Complainant succeeds under Paragraph 4(a)(ii) of the Policy. As concluded in 6.24 above, Respondent has registered and used these two Domain Names in bad faith and Complainant succeeds under Paragraph 4(a)(iii) of the Policy. The Complainant has proven all three points required by Paragraph 4(a) of the Uniform Policy and in respect of the Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net> the Panel gives its Decision for the Complainant and against the Respondent.
The Decision of the Administrative Panel is that the Complaints in respect of the disputed Domain Names <teaserspalace.com> and <teaserspalace.net> are dismissed. The disputed Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net> are confusingly similar to the trademarks CAESARS and CAESARS PALACE in which Complainant has rights; Respondent has no rights or legitimate interests in the disputed Domain Names; and Respondent has registered and is using the disputed Domain Names in bad faith. The Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net> shall be transferred to the Complainant.
Dr. Clive N. A. Trotman
Dated: April 19, 2002