WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Park Place Entertainment Corporation v. A.E. Engles and Associates
Case No. D2003-0381
1. The Parties
The Complainant is Park Place Entertainment Corporation, Las Vegas, Nevada, United States of America, of United States of America, represented by Pitney Hardin Kipp & Szuch of United States of America.
The Respondent is A.E. Engles and Associates, AM Stumph, Wermelskirchen, Remscheld, Germany.
2. The Domain Names and Registrar
The disputed domain names <ballysportsbook.com> and <ballyssportsbook.com> are registered with Tucows, Inc
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2003. On May 19, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On the same day, Tucows 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 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 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 2, 2003.
The Center appointed Knud Wallberg as the sole panelist in this matter on July 9, 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.
4. Factual Background
Complainant PPE provides gaming services, hotel services, and entertainment services through its operation of the famous BALLYíS casinos and hotels. PPE owns several U.S. Patent and Trademark Office registrations for the mark BALLYíS and the mark THE RACE & SPORTS BOOK BALLYíS LAS VEGAS, which are used to designate and promote PPEís goods and services offered at the BALLYíS casinos and hotels. The BALLYíS Marks are firmly associated with PPE.
PPE also owns registrations for the marks BALLY and BALLYíS throughout the world, including in Germany and elsewhere throughout Europe, including the United Kingdom, Denmark, Sweden, Italy, Benelux and Norway. Evidence to that effect was attached to the Complaint.
PPE also licenses the mark BALLY to Alliance Gaming and WMS Gaming, which manufacture and distribute pinball games, slot machines and gaming machines generally under the BALLY brand name.
Gaming machines bearing the BALLY mark are also sold in Germany, through BALLY WULFF, a subsidiary of Complainantís licensee, Alliance Gaming.
The BALLYíS LAS VEGAS Casino and Hotel opened in June 1986. PPE also operates casino/hotels under the BALLYíS mark in Atlantic City, New Orleans, and Tunica, Mississippi. Since that time, PPE has been using the BALLYíS Marks in brochures, pamphlets, and advertisements. More than 8,000,000 people have stayed at the BALLYíS LAS VEGAS casino and hotel alone. Millions more have visited the BALLYíS LAS VEGAS casino and hotel each year without spending the night. The BALLYíS casinos and hotels have also received a high level of publicity and commendation from various sources as shown in the annexes o the Complaint.
Complainant PPE also operates "THE RACE AND SPORTS BOOK" in its BALLYíS LAS VEGAS hotel and casino, where patrons can place wagers on horse races and sporting events and then watch those events on numerous projection televisions. On an average day, over 2,000 bets are placed at the RACE AND SPORTS BOOK in BALLYíS LAS VEGAS, 75,000 to 100,000 per month and over 1,000,000 per year. In addition to publicity generated by the media, PPE has spent more than $24,000,000 in the advertising and promotion of its BALLYíS LAS VEGAS casino and hotel under the BALLYíS marks from 1995 through the present.
PPE has had a presence on the Internet in the form of a website devoted to the BALLYíS casinos and hotels at "www.ballys.com" since 1996. This website has continuously displayed the BALLYíS mark since that time. From January 2000 through October 2002, there were over 6,000,000 visits to that website.
As a result of PPEís efforts, the BALLYíS Marks have gained world-wide recognition and have become famous. The BALLYíS Marks were firmly associated with PPE prior to Respondentís registration of BALLYSSPORTSBOOK.COM and BALLYSPORTSBOOK.COM on July 26, 2000.
5. Partiesí Contentions
Respondent registered the domain names <ballysportsbook.com> and <ballyssportsbook.com> on July 26, 2000.
Respondent is exploiting Complainantís Marks for active websites that are used to provide online gaming services to consumers, primarily by linking to another online gaming website, WorldWager. Copies of the home pages from the "ballysportsbook.com" and "ballyssportsbook.com" websites were includes as Exhibit to the Complaint.
When a visitor clicks on any of several menu selections on the website, or attempts to open an account or place a wager, he or she is linked to a page in the WorldWager website, at "http://www.worldwager.com". Copies of relevant "worldwager.com" website pages were attached as Exhibit. Significantly, wagering is offered on the outcome of games in various U.S. sports, including the NBA (National Basketball Association), the NHL (National Hockey League), the NCAA (National Collegiate Athletic Association), and other U.S.-based sports leagues.
It is thus obvious that Registrant is using the Domain Names to push traffic to <worldwager.com> for Registrantís financial gain. The selection of these Domain Names was specifically intended to capture those individuals looking for BALLYíS on-line due to their fame and popularity as respected, honest casinos in the United States.
On information and belief, Respondent has registered the Domain Names for the purpose of deriving income by using the Complainantís Marks to divert Internet users to the "worldwager.com" website. Exhibit G hereto is a copy of a page from the "worldwager.com" website offering those who refer traffic to the site "a 20% profit on all customers you send our way" and a 5% profit on the customers referred by any affiliate signed up by the original referral source.
Respondentís use of the Complainantís Marks in connection with websites that offer gambling or casino services or link to other sites offering those services is evidence of Respondentís bad faith intention to attract, for commercial gain, Internet users to Respondentís websites by creating a likelihood of confusion with Complainantís Marks.
Moreover, as noted above, long before Respondent registered the Domain Names Complainant had firmly established rights in BALLYíS and related marks. Respondent cannot claim or show any rights to the Domain Names that are superior to Complainantís rights in BALLYíS and related marks, as evidenced by Complainantís prior and well-known use. Nor can Respondent demonstrate that it was unaware of Complainantís Marks at the time it registered the Domain Names. Such facts further demonstrate Respondentís bad faith registration and use of the Domain Names.
Additionally, the Respondent has registered at least 243 other domain names, over 100 of which are clearly the registered trademarks of others. These domain names include <aladdinssportsbook.com>, <cnbcsportsbook.com>, <cbssportslines.com>, <nflsportsbooks.com>, <playboysportbooks.com>, <fifasports.com>, <foxsportswager.com>, <espnwager.com> and many others. A printout of the various names registered by the Respondent was attached as Exhibit to the Complaint.
On information and belief, most of the 243 domain names registered by Respondent, including those that contain the trademarks of third parties, resolve to the same "worldwager.com" website.
The Domain Names are confusingly similar or identical to Complainantís marks
Respondentís Domain Names are identical or confusingly similar to Complainantís Marks. The Domain Names combine Complainant BALLYíS Mark with a designation commonly used by casinos, the term "sportsbook.". See e.g "http://www.harrahs.com/our_casinos/rlv/ gaming/race_sport_book.html" and "http://www.mandalaybay.com/ameneties/casino/books.jsp". Internet users are thus likely to believe that the Domain Names are related to, associated with, or authorized by Complainant. It is precisely because of this association with Complainantís Marks that Respondent registered the Domain Names. As such, Complainant has satisfied the first element of the Policy that Registrantís Domain Names are identical or confusingly similar to Complainantís Marks.
Respondent lacks any legitimate interest in the Domain Names
Respondent cannot demonstrate any legitimate interest in the Domain Names. Respondent registered the Domain Names after Complainant had established rights in its marks. See Fiber-Shield Industries, Inc. v. Fiber Shield LTD, NAF 1000092054. Where, as here, Complainantís Marks are so well known and recognized, there can be no legitimate use by Respondent. Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055; Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 ("[The domain name] is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith."), p. 5.
The fame and distinctiveness of the Complainantís Marks has been recognized in previous matters before this body. In Park Place Entertainment v Bowno, WIPO Case No. D2001-1410, a decision involving the <ballysatlanticcity.com> domain name, the panel found that Complainantís BALLYíS marks have "clearly acquired the requisite secondary meaning and distinctiveness as a result of the Complainantís apparently continuous and rather extensive use since 1979 in conjunction with its hotel and casino services".
While the evidence shows that the BALLYíS marks are renown throughout the world, in as much as "worldwager.com" offers sports bets on U.S. sports, it is clear that the true target of these Domain Names are persons interested in betting on U.S. sports events, who would largely consist of U.S. residents to whom these names are clearly famous.
Furthermore, 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 Names, which incorporate in their entirety and/or are confusingly similar to Complainantís Marks. Respondent is not commonly known by the Domain Names and is not making legitimate noncommercial or fair use of them. Indeed, Respondent is not making and has never made any use of the Domain Names apart from associating them with a website on which users may engage in online gambling activities, to the Respondentís profit.
Respondent registered and is using the domain names in bad faith
Respondent has further demonstrated its bad faith by its refusal to respond to a cease and desist letter sent to the address in Germany listed in the official WHOIS record by Complainantís German counsel on October 25, 2002. A copy of the letter is attached as Exhibit J. German counsel reported that the letter, sent to the address listed in the Registrarís official WHOIS record, was returned by the Post Office as undeliverable and that no response was received to the copy of the cease and desist letter sent by email.
Thus, Respondentís actions evidence bad faith use and registration of the Domain Names under ß 4.b.(iv) of the Policy, because it is using the domain names to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainantsí marks as to the source, sponsorship, affiliation, or endorsement of its website or location of a service on its website or location.
Further evidence that Respondent registered the Domain Names in order attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainantsí marks as to the source, sponsorship, affiliation, or endorsement of its website or location of a service on its website or location, and thus of its bad faith, is found in the fact that Respondent has registered many other domain names containing well-known third-party trademarks. See, e.g., Stella DíOro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012; Parfums Christian Dior v. Javier Garcia Quintas and <christiandior.net>, WIPO Case No. D2000-0226. The pattern of registrations reflecting the well-known marks of third parties, most of which lead to an online gaming site from which the Respondent receives a percentage of all profits made as a result of the referring link, is consistent only with the Respondentís intent to profit from the use of those marks.
Finally, bad faith can be found from the fact that Respondent has directed its activities to a U.S. based Internet audience by allowing users to place bets on U.S. based sports teams. As shown above, Complainant owns many registrations for its marks in the U.S. Clearly, Respondent knew of the fame of Complainantís Marks when it registered the Domain Names and Under U.S. trademark law, Respondent is deemed to have been on constructive, if not actual, notice of Complainantís rights in its marks before it registered the Domain Names. Given this awareness, it is evident that the registration and use of the Domain Names was in bad faith. See Cellular One Group v. Paul Bryan, WIPO Case No. D2000-0028; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. The fact that Respondent proceeded with the registration of Domain Names that incorporate Complainantís Marks in their entirety and/or are confusingly similar to them supports a finding of registration and use in bad faith. Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140; Chanel, Inc. v. Designer Exposure, WIPO Case No. D2000-1832.
Based on all of the above, it is evident that Complainant has met the requirements of the Policy by demonstrating not only its own legitimate interest and long continuous use of BALLYíS and related marks, as evidenced by their use of those marks, but also that Respondent registered and has used the Domain Names in bad faith, and that Respondentís sole interest in the Domain Names is to unlawfully profit from them. Accordingly, Complainant believes it is entitled to ask for the transfer of the domain name.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent 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.
Identical or Confusingly Similar
The Complainantís mark BALLY and variations thereof are registered and have been used in a number of countries around the world including in the country of residence of the Respondent, Germany. In addition the mark must be considered to be a well-known mark.
The contested domain names contain the mark BALLY in full as the first and dominant part of the domain names to this part is added the descriptive term "-sportsbook" and the gTLD suffix. Under these circumstances the domain name must be considered to be confusingly similar to the trademark BALLY in which the Complainant has rights. See in particular Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 where the domain name <nokiagirls.com> was found confusingly similar to the NOKIA trademark and several subsequent decisions.
The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not demonstrated that he has any prior rights or legitimate interests in the domain name, and, in the absence of other information, the Panel finds it highly unlikely that such legitimate interest may exist.
The prerequisites of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.
Registration and use in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
The Panel finds that it has been proven that Respondent has been engaged in a pattern of conduct of registering domain names incorporating trademarks of others.
In addition the contested domain names have been used actively, since they have both been linked to the website "wwweb4.worldwager.com". This is a clear indication that the domain names were registered and are used with the purpose of attracting, for commercial gain, Internet to users to the website of a competitor. By the said linking it is also suggested that the Complainant is associated with the Respondent or has endorsed the Respondentís products, which is not the case.
The Panel therefore concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.
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, <ballysportsbook.com> and <ballyssportsbook.com> be transferred to the Complainant.
Dated: July 11, 2003