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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 Respondent’s 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. Parties’ Contentions
A. Complainant
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 Respondent’s website features the statute of Julius Caesar,
and then refers the users to either the online games on the Respondent’s 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 Complainant’s 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 Complainant’s 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 Complainant’s marks. The Respondent registered and is using the domain
name in bad faith. The Respondent is fully aware of the Complainant’s marks
and is using them to attract United States audience, to whom the Complainant’s
marks are well-known and are associated with gaming services. In addition, the
Respondent’s 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.
B. Respondent
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 Complainant’s 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 Complainant’s marks. As a rule, when a domain name wholly incorporates
a complainant’s 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 Complainant’s 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 Complainant’s marks, the domain name is composed of the Complainant’s
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 Complainant’s,
although Complainant does not offer any games on in its website. This is another
sign of the Respondent’s intent to free-ride on the Complainant’s 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
Complainant’s representatives.
The Panel finds for the Complainant on this third element of the test.
7. Decision
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
Sole Panelist
Dated: September 15, 2003