WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Park Place Entertainment Corporation v. Intronational Gaming, Ltd.
Case No. D2002-0884
1. The Parties
The Complainant in this administrative proceeding is Park Place Entertainment Corporation ("Park Place"), a Delaware corporation doing business in Las Vegas, Nevada 89109, United States of America (("USA"). The Respondent in this administrative proceeding is Intronational Gaming, Ltd., St. Johns, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name is <paris-casino.com>. The Registrar of the subject domain name is Tucows, Inc., Ontario, Canada.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on September 23, 2002, by email and on September 26, 2002, by hardcopy. On September 26, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On September 26, 2002, the Center sent to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, which was returned from the Respondentís address on October 4, 2002. On October 18, 2002, the Center issued a Notification of Respondent Default.
The Administrative Panel consisting of one member was appointed on October 24, 2002, by the Center.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
4. Factual Background
The following information is derived from the Complainant.
The Complainant provides casino services, hotel services, and restaurant services through its operation of the PARIS casino and resort (the "Casino"), located in Las Vegas, Nevada, USA.
The Complainant owns U.S. Patent and Trademark Office registration Reg. No. 2,475,97 for "casino services" in Class 41 and "hotel services" in Class 42 for the mark PARIS (the "mark"). It is used to designate and promote the Complainant's goods and services.
The mark was registered on August 7, 2001. The application that matured into the registration, application Ser. No. 75/653,425, was filed on March 29, 1995, on an intent to use basis under Section 1(b) of the U.S. Lanham Act (15 U.S.C. ß 1051 (b)). The Complainantís rights of priority in the mark date from March 29, 1995.
The subject domain name was registered on December 19, 1998. Prior to that date, there was significant publicity associated with the announcement of the construction of the PARIS casino and hotel and its anticipated opening. The announcement of the plans to build the Casino was made on May 16, 1995. On May 22, 1996, the local county commission gave its approval to build the Casino. That same year, the Complainantís predecessor agreed to buy land for the Casino. On April 18, 1997, the Complainantís predecessor broke ground on the construction of the Casino. These events, as well as many others leading up to the opening of the Casino, were publicized in hundreds of articles in various periodicals throughout the period prior to December 19, 1998. For example, articles appeared in such widely-circulated periodicals as USA Today and The New York Times.
The Complainant spent significant amounts on advertising for the PARIS casino and hotel both before and after it opened: in 1999, approximately $12,300,000; in 2000, approximately $3,528,000; in 2001, approximately $3,274,000; during the first half of 2002, approximately $2,146,000.
The Complainant opened the PARIS casino and hotel for business on September 1, 1999. It consists of an 83,000-square-foot casino, 2,916 guest rooms and replicas of Parisian landmarks including a 540 foot version of the Eiffel Tower.
The Complainant uses its PARIS mark in conjunction with, among other things, casino services, entertainment services and hotel and restaurant services, both at its casino and hotel in Las Vegas, Nevada and on-line.
With respect to casino services, the PARIS casino and hotel includes over 2000 slot machines, 100 table games including black jack and poker and a race and sports book. With respect to restaurant services, the complex includes eight authentic French restaurants. The Complainant also uses its PARIS mark in conjunction with entertainment services, including concerts by well-known performers.
Since its opening, a large number of persons have visited the PARIS casino and hote: in 2000, 1,838,236 guests stayed at the PARIS casino and hotel; in 2001, 2,003,608 guests stayed there; in 2000, approximately 16,510,000 pedestrians passed through the PARIS casino and hotel; in 2001, 20,857,719 pedestrians passed through the PARIS casino and hotel; in January-July 2002, 11,774,065 pedestrians passed through the PARIS casino and hotel.
The Complainantís mark is featured in a variety of newspapers and magazines widely disseminated to the public and is used in conjunction with information brochures and merchandise that is sold or given away. The PARIS casino and hotel has been mentioned in the media millions of times in each of the years 1999, 2000, and 2001.
In addition to its land-based casino and hotel operation, the Complainant also operates a website accessible at the domain names <parislasvegas.com>, <parislv.com>, and <paris-lv.com>.
The Complainant is the owner of these domain names. <parislasvegas.com> and <paris-lv.com> were registered prior to the registration of the subject domain name and the opening of the PARIS casino and hotel. At these domain names, the Complainant operates a website that includes its PARIS mark which is used in conjunction with dining, casino, and entertainment services.
In the three months preceding the opening of the Complainantís casino and hotel (June - August 1999), its website had 105,943 hits. During October Ė December, 1999, there were 224,072 hits and in the year 2000, the site had 1,654,967 hits. In 2001, there were 3,388,095 hits.
There is no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the subject domain name or the Complainantís mark.
The Respondent is not commonly known by the subject domain name and the Respondent is using the subject domain name to divert web traffic to its gambling site for its own profit.
The Respondentís website to which the subject domain name resolves contains links to other gambling sites. If an Internet user were to click on "Links" on the left side of the home page, the user would be taken to a list of links. If the Internet user were then to click on "Gambling Related Sites," the user would be taken to a web page with links to various gambling sites. For several of these links, the Respondent derives further income whenever an Internet user clicks on one of the links, goes to one of the linked gambling sites and generates gambling revenue. For example, if an Internet user were to click on the link that is second from the left in the third row of links on the Gambling Links Page, the user would be taken to a web page from the "gamblingspots.com" website.
Whenever a user gets to the "gamblingspots.com" website by clicking on the link on the website to which the subject domain name resolves and then generates gambling revenue, the Respondent earns fees through the affiliate program of the "gamblingspots.com" website. This can be seen by going to the bottom of the web page and clicking "Click Here for details" in the box headed "WEBMASTERS Ė Make $$$!," which links to a page that contains an application for that affiliate program. Going to the bottom of that application page and clicking on "TERMS AND CONDITION" leads to the terms and conditions for that affiliate program, which describe how participants in that affiliate program earn fees.
There are a number of other, similar examples.
On April 12, 2002, an in-house attorney for the Complainant sent a letter by FedEx to Manager, Casino and by e-mail to the address and e-mail address given in the easyWHOIS records for the Respondentís administrative, technical, and billing contacts. In that letter, counsel demanded that the Respondent transfer the subject domain name to the Complainant. There was no response.
On May 10, 2002, external counsel for the Complainant sent a letter by DHL to Intronational Gaming, Ltd. at the address given for the registrant, as shown in the easyWHOIS records. In that letter counsel repeated the demands set forth in the April 12, 2002, letter and enclosed a copy of the April 12, 2002, letter. There was no response. On May 30, 2002, counsel was advised by a DHL representative that DHL had been unable to deliver the May 10, 2002, letter because there was no street in St. Johnís, Antigua as given by the Respondent and because DHL had been unable to find a company called Intronational Gaming, Ltd. in St. Johns, Antigua and Barbuda.
The Respondent did not participate in this proceeding
5. Partiesí Contentions
The Complainant relies on the use and registration of its mark "PARIS" and says that the subject domain name is confusingly similar.
The Complainant asserts a number of facts in support of its contention that the Respondent does not have legitimate interest in the subject domain name. These include: the subject domain name incorporates completely the Complainantís mark; it is used to divert custom from the Complainant; the Respondent is not known commonly by the subject domain name; there is no relationship between the parties by which the Respondent is authorized to use either the Complainantís mark of the subject domain name.
Many of the facts that the Complainant says support the first two contentions are relied on as evidencing bad faith. In addition, it asserts that the Respondent must have known of its mark and casino and hotel complex when the subject domain name was registered. The Complainant also points to the Policy and contends that the Respondentís conduct is a "Öviolation of the Policy because, as set forth in paragraph 4(b)(iv) of the Policy, "by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] websiteÖby creating a likelihood of confusion" with the Complainantís mark "Öas to the source, sponsorship, affiliation, or endorsement of [its] website . . . or of a product or service on [its] website Ö.""
The Respondent did not participate in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 the website or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant refers to and relies on a number of previous domain name dispute decisions. While these are neither controlling nor binding on this Administrative Panel, reference to them can be of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the mark "PARIS", has used it extensively and has spent a considerable amount of money in connection with it. The mark is associated with the operation of a casino as is its registration. The subject domain name not only incorporates the mark, it does so with the word "casino". It is a reasonable inference that anyone referring to the subject domain name or the website to which it resolves, would believe that they were connecting to the Complainant or to interests of the Complainant. The Respondent has done nothing to dispel this inference.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent's Legitimate Interest
Although merely using a complainantís mark in a domain name does not automatically lead to a finding that a respondent does not have a legitimate interest in the domain name Ė for, example, incorporation of a mark with words that denote a site for criticism might be legitimate Ė but, incorporation of the mark with no qualification may, in some cases, constitute prima facie evidence of a lack of legitimate interest. In this case, the inclusion of the word "casino" does not distinguish the subject domain name from the Complainantís mark. It effectively is the incorporation of the mark without qualification. In fact, the addition of the word "casino" links the subject domain name to the Complainant.
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, it would be subject to the inferences that flow naturally from the information provided by the complainant.
The Complainant points to a number of the usual indicia of a lack of legitimate interest. They raise an inference against the Respondent that the Respondent has done nothing to meet.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
Although a finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of a complainant, does not lead automatically to bad faith, the facts that support the finding are relevant to the issue.
In addition to the facts on which the Complainant relies to support the first two requirements of its case, the Complainant also notes other indicia of bad faith.
The Complainant endeavored to communicate with the Respondent. It was unable to do so. There is a suggestion that the contact information provided by the Respondent is not correct.
The close connection between the use made of the subject domain name by the Respondent and the commercial interests of the Complainant, in the context of this case, raises a serious question of bad faith. The Respondent appears to be capitalizing on the Complainantís use, registration and investment in its mark. The Respondent has done nothing to offset the clear inferences that the information supplied by the Complainant raises.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its claim.
The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: November 3, 2002