WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Park Place Entertainment Corporation, Caesars World, Inc. v. 21LLC
Case No. D2003-0013
1. The Parties
The Complainants in this proceeding are Park Place Entertainment Corporation ("Park Place"), a company incorporated under the laws of Delaware, and its subsidiary Caesars World, Inc. ("Caesars World"), a company incorporated under the laws of Florida (collectively, the "Complainants"). Complainants’ principal place of business is in Las Vegas, Nevada 89109, United States of America. Complainants’ authorized representative is Robert A. Becker, Esq., Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, New York 10017, United States of America.
The Respondent is 21LLC of Salt Lake City, Utah 84103, United States of America.
2. The Domain Names and Registrar
The domain names at issue are <ballyslasvegas.com> and <caesarslasvegas.com> (collectively, the "Domain Names") which are registered with Melbourne IT d/b/a/ Internet Name Worldwide (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 7, 2003. On January 8, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 9, 2003, Registrar responded to the request, 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 for lack of a statement regarding Mutual Jurisdiction, the Complainant filed an amendment to the Complaint on January 15, 2003. 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 January 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2003.
The Center appointed Arif Hyder Ali as the sole Panelist in this matter on February 17, 2003. 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.
The decision date was originally projected to be March 3, 2003. Upon request from the Panel, the Center extended the date of decision to March 16, 2003.
4. Factual Background
Complainant Park Place operates casinos/hotels under the name Bally’s in four U.S. locations, including Las Vegas, Nevada. Park Place is the owner of three federal trademark registrations to the mark BALLY’S. The registrations -- U.S. Registration No. 1,515,843, U.S. Registration No. 1,523, 910 and U.S. Registration No. 1,581,959 -- are valid U.S. registrations and have been effective since December 6, 1988, February 7, 1989, and February 6, 1990, respectively. Park Place promotes its business in the Las Vegas location under the name Bally’s Las Vegas. Park Place also has a domain name registration for <ballyslv.com>.
Complainant Caesars World is a subsidiary of Park Place. Caesars World also provides casino and hotel services at four locations within the U.S. under the name Caesars, including one in Las Vegas which is known as Caesars Palace Las Vegas. Like Park Place, Caesar’s World owns valid federal service mark registrations as shown below:
Mark Registration No. Registration Date
CAESARS U.S. Registration No. 954,684 03/06/1973
CAESARS (stylized) U.S. Registration No. 1,001,363 01/07/1975
CAESARS U.S. Registration No. 983,525 05/07/1974
CAESARS (stylized) U.S. Registration No. 954,637 03/06/1973
CAESARS PALACE U.S. Registration No. 1,168,663 09/08/1981
LAS VEGAS-NEVADA and Design
Complainant Caesars World has had a web-site, "caesars.com," promoting its goods and services since May 26, 1995.
The whois database shows that Respondent registered the Domain Names on March 29, 2000. The Panel has verified that the Domain Names presently resolve to no active web-sites. In addition to the domain names at issue in this proceeding, Respondent also has domain name registrations to more than twenty-five other domain names, including <disneylandusa.net>, <avonasia.com>, <deltaair.org>, <excaliburlasvegas.org> and <hiltonhotel.net>.
The evidence provided by Complainant demonstrates a series of communications between Complainants and Respondent concerning the registration of the Domain Names.
On September 26, 2001, Complainants contacted Respondent to inform Respondent of Complainants’ rights in the BALLY’S and CAESARS marks, and to request that Respondent transfer the Domain Names to Complainants. After hearing nothing from Respondent, Complainants sent a follow-up letter on October 24, 2001, letting Respondent know that legal action was imminent unless Respondent contacted Complainants by October 31, 2001.
On October 31, 2001, Respondent sent an e-mail to Complainants stating that "the registrar was previously requested to abandon the domain name(s). A second follow-up request will be initiated."
The following day, Complainants responded to Respondent’s e-mail providing Respondent with information on how to effect the transfer and offering to assist in the matter. Complainants thanked the Respondent for its cooperation and provided contact information for every media for the Respondent’s convenience.
Apparently, Respondent took no action to transfer the Domain Names. On January 17, 2002, Complainants sent to Respondent a letter as an attachment to an e-mail reiterating Complainants’ desire to resolve the issue amicably, and giving Respondent one week to provide the information needed to transfer the Domain Names.
On January 23, 2002, Respondent e-mailed Complainants alleging that Respondent was unable to download the attachment and consequently was unable to review the recent letter. Respondent noted that it assumed the letter concerned the Domain Names and assured Complainants that it had no intention of renewing the Domain Names when they expired in the upcoming month or two. Respondent also informed Complainants that it had attempted, in vain, to contact the Registrar to request the transfer of the Domain Names.
Despite its assurances to the contrary, the whois database reflects that Respondent renewed its registrations to the Domain Names. They are now set to expire March 29, 2004.
5. Parties’ Contentions
Complainants first contend that the Domain Names are identical or confusingly similar to the marks BALLY’S, BALLY’S LAS VEGAS, CAESARS and CAESARS PALACE LAS VEGAS, all of which are marks in which Complainants have prior rights. As to their rights, Complainants contend that their rights are "extraordinarily strong." As evidence of this, they offer the following:
Complainant Park Place provides gaming services, hotel services and entertainment services through its operation of the famous BALLY’S casinos and hotels, one of which is located in Las Vegas and is known as BALLY’S LAS VEGAS. The BALLY’S casino and hotel in Las Vegas opened in June 1986. Since that time, Park Place has been using the BALLY’S marks in brochures, pamphlets and advertisements in periodicals relating to the Bally’s Las Vegas casino and hotel. Since 1997, more than 8,226,061 people have stayed at the Bally’s Las Vegas casino and hotel, and millions more have visited without spending the night. The casino and hotel has received high levels of publicity and commendation from various sources. Complainants provide evidence of close to 200 articles from the past two years mentioning the name BALLY’S LAS VEGAS and BALLY’S. Park Place spent over $24,754, 459 in advertising and promoting the Bally’s Las Vegas casino and hotel under the BALLY’S LAS VEGAS and BALLY’S marks.
Complainant Caesars World is a subsidiary of Complainant Park Place, and also provides gaming services, hotel services, entertainment services and shopping and arcade services through its operation of four famous Caesars casinos and hotels, one of which is located in Las Vegas and is known as Caesars Palace. Caesars Palace in Las Vegas is the original and most famous of the Caesars family of casinos/hotels. Caesars Palace opened on August 5, 1966. Approximately, 1,500,000 people stay overnight at Caesars Palace, and millions more visit without spending the night. Like Bally’s, Caesars Palace has generated much publicity from the media, and Complainants provide evidence of such. Caesars World has spent approximately, $240,559,795 in connection with advertising and promoting its Caesars Palace casino/hotel under the CAESARS, CAESARS PALACE and CAESARS PALACE LAS VEGAS marks.
Based on the above, Complainants contend that Bally’s Las Vegas and Caesars Palace have enjoyed and continue to enjoy exceptional success. Complainants urge that the BALLY’S, BALLY’S LAS VEGAS and CAESARS marks have gained wide recognition and are very well known.
Complainants contend that the Domain Name <ballyslasvegas.com> is identical or confusingly similar to Complainants’ BALLY’S LAS VEGAS and BALLY’S marks because the domain name <ballyslasvegas.com> combines the BALLY’S mark with the location of its most famous Bally’s casino and hotel. Likewise, Complainants contend that the domain name <caesarslasvegas.com> is identical to the CAESARS mark for the same reasons.
Complainants next contend that Respondent has no known rights or legitimate interests in respect of the Domain Names. In support of this contention, Complaints assert that Respondent: (a) registered the Domain Names after Complainants had established rights in their marks; (b) there is no relationship between Complainants and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the Domain Names; (c) Respondent is not commonly known by the Domain Names; and (d) Respondent is not making legitimate noncommercial fair use of the Domain Names, and in fact has made no use of the Domain Names other then attempting to sell them to Complainants’ representative.
Finally, Complainants contend that Respondent registered and is using the Domain Names in bad faith. Complainant offers the following as evidence of Respondent’s bad faith: (a) Respondent first indicated to Complainants that it would transfer the Domain Names and later indicated that it would allow its registrations in the Domain Names to expire -- Respondent failed to do either of these and instead renewed its registrations in the Domain Names for an additional two years; (b) Respondent agreed to sell the Domain Names for more than they are worth; (c) Respondent has registered many other domain names containing well-known third party trademarks; (d) Respondent has never used the Domain Names to sell or provide any goods and has instead simply placed a generic web page at each of the web-sites; and (e) Respondent is located within the U.S. and was fully aware of the well-known marks of Complainants.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainants have established their rights in the marks, BALLY’S, BALLY’S LAS VEGAS and CAESARS. Ignoring the ".com," as it is appropriate to do, the domain name <ballyslasvegas.com> is identical to Complainants’ mark BALLY’S LAS VEGAS. The only distinction between Complainants’ registered marks, BALLY’S and CAESARS, and the Domain Names is the addition of the term "Las Vegas." In the Panel’s view, the addition of this geographic descriptor does nothing to avoid the likelihood of confusion. In fact, the use of the term "Las Vegas" in connection with the registered marks, if anything, increases the likelihood that a member of the public would associate the Domain Names with Complainants: Las Vegas is home to both a Bally’s and a Caesar’s Palace and Complainants themselves use the term Las Vegas when promoting these particular Nevada casinos/hotels.
The Complainants, therefore, prevail on element (i).
B. Respondent’s Rights or Legitimate Interests in the Domain Names
The next inquiry is whether the Respondent has any rights or a legitimate interest in the Domain Name. The Respondent is 21LLC; the Domain Names, therefore, do not reflect the name or corporate identity of the Respondent. There is nothing to show that Respondent is commonly known by the Domain Name. Respondent does not appear to have any rights to any trade names or trademarks consisting in whole or in part of the mark BALLY’S, CAESARS, BALLYSLASVEGAS or CAESARSLASVEGAS. Further, the Panelist accepts the Complainants’ position that Respondent has neither been licensed or otherwise permitted to use the marks BALLYS or CAESARS.
Other factors that may be used to establish that a Respondent has a legitimate interest in a domain name include a Respondent making a legitimate or non-commercial fair use of a domain name or a Respondent using or preparing to use a domain name in connection with a bona fide offering of goods or services. See Paragraph 4(c) of the Policy.
The domain names <ballyslasvegas.com> and <caesarslasvegas.com> do not resolve to active web-sites. Consequently, Respondent does not appear to be making a bona fide offering of goods or services or using the Domain Names for legitimate or non-commercial fair use purposes. Likewise, there is no suggestion that Respondent is making, or has made, any preparations to use the Domain Names.
The Respondent has foregone any opportunity to provide any evidence to indicate any plausible legitimate interest Respondent may have in the Domain Names and the Panel is unable to identify any reason which allows the Respondent any right or legitimate interest in respect of the Domain Names. This is especially so because the Domain Names were registered long after Complainants had adopted the BALLY’S and CAESARS marks.
For the above reasons, the Panel finds for the Complainants on element (ii).
C. Bad Faith Registration and Use
Respondent has held the Domain Names beginning in March 2000, until the present time. It is well accepted that under some circumstances passive holding of a domain name can constitute bad faith use of that domain name. This principle was first set out in the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), and that decision has been cited for that precedent many times since then. The Panel finds that the circumstances of this case in combination with the passive holding of the Domain Names do indeed give rise to a finding of bad faith registration and use. The following factors were pertinent to this decision.
First, Complainants have deep rooted rights in the marks BALLY’S and CAESARS and the marks are well-known. There is no doubt that Respondent was fully aware of those rights and the connection the public would make between the Domain Names and Complainants. Even if Respondent claims to have had no knowledge of the Complainants’ marks prior to registering the Domain Names, which is highly unlikely, Respondent certainly knew of the Complainants’ rights by virtue of the communications between Complainants and Respondent. Respondent’s decision to register or maintain registration to the well-known Domain Names without making any fair non-commercial use is evidence of bad faith registration.
Next, the Panel has verified that Respondent is the registrant of other domain names containing other well-known third-party trademarks, such as <hiltonhotel.net>, <alaskaairline.net> and <disneylandusa.net>. These domain names were registered on or about the same date as the domain names at issue were registered, and they also do not resolve to any active web-sites. As such the Panel concludes that the Respondent has engaged in a pattern of registering domain names with the sole objective of preventing a mark holder from reflecting its mark in the corresponding domain name, and perhaps with the hope that Respondent can make some money by selling the registration to the domain names.
It is clear from the evidence provided by Complainants in the form of the various letters and e-mails exchanged between Complainants and Respondent that the Respondent did not communicate in good faith with Complainants prior to the commencement of this Administrative Proceeding. Respondent first led Complainants to believe that it was taking the necessary steps to transfer the Domain Names and then assured Complainants that it would not be renewing its registrations. Respondent failed to take either of the promised actions. In these circumstances, it is certainly proper for the Panel to infer a lack of credibility on the part of the Respondent.
Finally, consistent with prior WIPO decisions, the Panel draws inferences from the fact that the Respondent elected to not submit a response in this administrative proceeding. The Panel cannot, in the absence of any evidence by Respondent, conceive of any good faith purpose for Respondent’s registration of the Domain Names.
In light of the circumstances of this case, it is difficult to reach any conclusion other than that the Respondent is in bad faith in accordance with paragraph 4(a)(ii) of the Policy.
For the foregoing reasons, the Panel decides that:
1. The Domain Names at issue are confusingly similar to the marks in which Complainants have rights;
2. Respondent has no rights and no legitimate interest in respect of the Domain Names; and
3. Respondent registered and is using the Domain Names in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registrations of the domain names <ballyslasvegas.com> and <caesarslasvegas.com> be transferred to Complainant Caesars World, Inc.
Arif Hyder Ali
Dated: March 17, 2003