WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caesar World, Inc. v. Contessa Marketing Services, Inc.
Case No. D2003-0529
1. The Parties
The Complainant is Caesars World, Inc., a Florida corporation, doing business in Las Vegas, Nevada, United States of America, represented by Stephen W Feingold, Esq, of Pitney, Hardin, Kipp & Szuch LLP, of United States of America.
The Respondent is, Contessa Marketing Services, Inc., Grand Turk, Turks and Caicos Island.
2. The domain name and Registrar
The disputed domain name, <caesargrandcasino.com> is registered with GoDaddy.com Domains, of Scottsdale, Arizona, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2003. On July 4, 2003, the Center transmitted by email to GoDaddy.com, Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On July 7, 2003, GoDaddy.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 17, 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 July 22, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 13, 2003.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on September 3, 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
The Complainant owns several trademarks, including CAESARS and CAESARS PALACE, in the United States and many other countries related to the Caesars World, Inc. and Park Place Entertainment, Inc. gaming, hotel, entertainment and shopping arcade services through the operation of its well-known CAESARS casinos and hotels, the first of which, Caesar Palace Casino and Hotel in Las Vegas Nevada, opened on August 5, 1966. The Complainant holds several trademark registrations worldwide for CAESARS and CAESARS PALACE. The Complainant operates a website at "www.caesars.com".
There was direct communication between the parties to the dispute between July 9 and July 15, 2003, regarding the possible transfer of the domain name. Parties did not reach the agreement on the transfer of the domain name.
5. Partiesí Contentions
The Respondent registered and is using a domain name that is confusingly similar to Complainant's marks. According to the information in WhoIs database, the Respondent registered domain name <caesarsgrandcasion.com> on August 11, 2000, and is using the domain name to provide online gaming services to consumers, either directly at its website, or indirectly, by linking to an online sports gaming website, "www.1staccesssportsbet.com".
The first page of the Respondentís website features the statute of Julius Caesar, and then refers the users to either the online games on the Respondentís website, or refers users to the sport betting site "www.1staccesssportsbet.com". The Respondent is using the domain name for its own financial benefit and to generate financial gain.
The Respondent is fully aware that the Complainant has long-standing rights in its CAESARS and CAESARS PALACE marks, and that the Complainantís marks are famous marks worldwide.
The Complainant has no business relationship whatsoever with the Respondent. The Complainant has not licensed or otherwise permitted the Respondent to use its marks or to apply for any domain name incorporating any such marks. The fact that the Respondent established a business entity under the name Caesars Grand Casino is not sufficient to create legitimate interest in the disputed domain name.
The Complainantís marks are well known marks, and have been used in connection with gaming services for many years. The Respondent could not have been unaware of the Complainantís marks. The Respondent registered and is using the domain name in bad faith. The Respondent is fully aware of the Complainantís marks and is using them to attract United States audience, to whom the Complainantís marks are well-known and are associated with gaming services. In addition, the Respondentís bad faith is demonstrated by an offer to sell the domain name to the Complainant. The domain name was to expire on August 11, 2003. Once the Complainant offered to pay the registration fee for the domain name for the year 2003, the Respondent extended the registration for the domain name until August 11, 2005.
In the private correspondence between the parties, the Respondent expressed the view that the domain name was "registered without any infringement". However, the Respondent did not file any formal reply to the Complainantís contentions
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the record confirms that the Complainant has used the marks CAESARS and CAESARS PALACE since at least 1972, and that the Complainant succeeded in obtaining several registrations of the marks in the United States and a few other countries. The Panel finds that the Complainant has rights in registered trademarks CAESARS and CAESARS PALACE, in connection with casino and gambling. The Panel refers to similar findings of fact in other administrative decisions under the Policy, in particular Caesars World, Inc. v. Universalinteractives (WIPO Case No. D2001-0951 October 3, 2001; and Caesars World, Inc. v. Licensee Techs/Darren Flynn, WIPO Case No. D2002-0915 (November 19, 2002). The Complainant may have common law rights in the CAESARS CASINO mark, following from the use of "Caesars Palace Casino" since 1966, when the first Caesars palace Hotel and Casino in Las Vegas were opened. See Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. E-Casino Marketing, WIPO Case No. D2003-0242 (May 27, 2003)
As to the second question, the Panel finds that the domain name is confusingly similar to the Complainantís marks. As a rule, when a domain name wholly incorporates a complainantís mark and adds a generic word, that is sufficient to establish confusing similarity for purposes of the Policy. See Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans) WIPO case D2002-0367 (July 8, 2002)). Confusion is only heightened when the generic word added by Respondent is descriptive of the Complainantís services marketed in relation to the trademark. See, e.g., Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445 (August 1, 2002); Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 (March 22, 2001); and Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (March 23, 2001)).
6.2 Does the Respondent Have Rights or Legitimate Interests in the domain name?
The Complainants submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's prior use of the CAESARS and CAESARS PALACE. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. On the contrary, the Respondent is using the domain name in connection with gaming services, for which the Complainant has been known for a number of years.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
6.3 Was the domain name Registered and Used in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's 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 Respondent's website or location or of a product.
There is evidence of the situation described in paragraph (iv) and some evidence of a pattern as contemplated in paragraph (i). The relevant facts are mentioned below.
The Respondent registered the domain name in bad faith. Apart from the famous nature of the Complainantís marks, the domain name is composed of the Complainantís mark CAESARS to which are added the generic terms "grand" and "casino", which evoke precisely the services offered by the Complainant and associated with its marks. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would have gone through the trouble of registering the domain name.
The domain name was used to link to services competing with the Complainantís, although Complainant does not offer any games on in its website. This is another sign of the Respondentís intent to free-ride on the Complainantís goodwill.
A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g. Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and indicating good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (November 13, 2000); Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515 (January 24, 2001); Telstra Corporation, Ltd. v. Nuclear Marshmallows, already cited; Encyclopaedia Britannica, Inc. v. Zuccarini et al., WIPO Case No. D2000-0330 (June 7, 2000); eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (January 18, 2001) and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO Case No. D2001-1461.) The Respondent answered communications sent by the Complainant first by an offering to sell the domain name, and then by indicating an intention to transfer the domain name to the Complainant. These actions, in addition to the Respondent extending the registration of the domain name until August 11, 2005, lead this Panel to conclude that the Respondent acted in bad faith. The Respondent is in default and did not answer any of the claims raised by the Claimant.
It is inconceivable that Respondent chose to include the word CAESARS in the domain name by accident. Any doubt in that respect is dispelled by the addition by Respondent of the word "casino" in the domain name, which merely describes the Complainant's principal services. In fact, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing or, indeed, illegal.
As to paragraph 4(b)(i), although it is questionable whether the Respondent registered the domain name solely for the purpose of selling it to the Complainant, in its correspondence with the Complainant, the Respondent did offer to sell the domain name to the Complainant after being contacted by the Complainantís representatives.
The Panel finds for the Complainant on this third element of the test.
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 name, <caesarsgrandcasino.com>, be transferred to the Complainant.
Daniel J. Gervais
Dated: September 15, 2003