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and Mediation Center
Caesars Entertainment, Inc. f/k/a Park Place Entertainment
Corporation v. Ad Dreamer Inc.
1. The Parties
The Complainant is Caesars Entertainment, Inc. f/k/a Park Place Entertainment Corporation, Las Vegas, Nevada United States of America, represented by Stephen W. Feingold, Esq. of the law firm Pitney Hardin LLP, United States of America.
The Respondent is Ad Dreamer Inc., Lynden, Washington, United States of America.
2. The Domain Names and Registrar
The disputed domain names are <flamingoclubhr.com> and <flamingoclubvip.com>,
which are registered with Go Daddy Software (sometimes hereinafter referred
to as “Registrar”).
3. Procedural History
The Complainant filed its Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2005, via e-mail transmission. A hard copy of the Complaint was received by the Center on March 23, 2005. On the same date that the Center received the hard copy, it transmitted by e-mail to the Registrar a request for verification in connection with the domain names at issue. That evening, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing identification information for the administrative and technical contacts. 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 March 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2005.
The Center appointed Craig Edward Stein as the sole panelist in this matter on April 29, 2005. 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.
Pursuant to the Rules, paragraph 10(c), on May 13, 2005, due to exceptional
circumstances, the Panel re-set the decision date to May 20, 2005. For similar
reasons, the Panel subsequently established the decision deadline for May 22, 2005,
and the decision was transmitted in accordance with this final schedule.
4. Factual Background
A. The Complainant
The Complainant in this administrative proceeding is Caesars Entertainment, Inc. (referred to interchangeably as “CEI”, “Caesars”, or “Complainant”), a Delaware corporation 1 doing business in Las Vegas, Nevada. Among its various enterprises2, Complainant provides gaming, hotel, and entertainment services through its operation of the legendary FLAMINGO casinos and hotels, the most famous of which is located in the City of Las Vegas (the “Casino”, the “Hotel and Casino” or “The Flamingo”). CEI and its predecessors in interest have had a colorful history, which has been briefly recounted by certain documents submitted in the record, including the Affidavit of Melissa Steinberg.3 Because a party’s notoriety can sometimes be a factor in determining the various legal interests that must be established pursuant to the Rules, paragraph 4(a)(i) through (iii), the circumstances concerning the establishment of the Casino and other highlights of Complainant’s past require a brief recitation.
B. History of Complainant
The Casino was first opened in December 1946, by Benjamin “Bugsy” Seigel, the first of Complainant’s predecessors in interest. Mr. Seigel is widely credited with creating what is now known worldwide as the famous Las Vegas Strip. Complainant recounts in its submissions that Mr. Seigel supposedly named the Casino after his girlfriend, Virginia Hill, “who had red hair and long legs”,4 and who, thus apparently evoked, for Mr. Seigel, the image of a flamingo. The Casino - situated several miles from downtown Las Vegas on a street that was concurrently named “Flamingo Drive” - introduced European-style gaming to the United States with an elegant aura featuring men in tuxedos and women in evening gowns. The opening of the Casino was attended by many Hollywood stars of the day, such as Jimmy Durante, Tommy Wonder, Eddie Jackson and Rose Marie. The legend of The Flamingo continued to grow when, only months after its opening, Bugsy Seigel was murdered.
In the more than 50 years since Complainant’s Casino opened, its recognition around the world was spread through various, high-profile methods. One such technique was being featured as a named location in movies whose cast included popular performers of the period, such as “Viva Las Vegas”, starring Elvis Presley, and “The Las Vegas Story”, starring Jane Russell and Vincent Price. In addition, the Casino has hosted shows by major talents including Lena Home, Zsa Zsa Gabor, Jerry Lewis, Judy Garland, Dinah Shore, Burl Ives, Steve Allen, Ella Fitzgerald, Frank Sinatra, and Duke Ellington. Indeed, at the time the Complaint in this proceeding was filed, Gladys Knight was appearing at the Casino as the headline entertainer.5 In 1991, the plot of the movie “Bugsy”, which featured Warren Beatty in the title role and Annette Bening, who played the part of Virginia Hill -- Mr. Seigel’s girlfriend (and the alleged inspiration for selecting the name “Flamingo”), revolved around the legend surrounding the founding of the Hotel and Casino.
Presently, CEI’s Hotel and Casino sits on the intersection of Flamingo and Las Vegas Boulevards in Las Vegas, Nevada, which sees approximately 50,000 people pass by every day. Each year, over one million people stay overnight at The Flamingo’s hotel accommodations. Millions more visit The Flamingo each year without staying overnight. After undergoing renovations in 1996 that expanded its capacity to 3,500 hotel rooms, The Flamingo was the largest hotel in the world. At the time it filed the Complaint in this proceeding, The Flamingo was the tenth largest hotel in the world, and the fifth largest in Las Vegas.
Over the past few years alone, Caesar’s has spent millions of dollars on advertising its hotels and casinos. In 2002, it expended approximately $4,000,000; in 2003, CEI spent roughly $7,000,000; and in 2004, Complainant paid advertisers nearly $5,000,000.
C. Complainant’s Trademarks, Service Marks and Internet Presence
CEI owns several U.S. Patent and Trademark Office registrations for the marks FLAMINGO, FLAMINGO (Stylized), FLAMINGO PLAYERS CLUB and FLAMINGO LAS VEGAS (the “Marks”), which are used to designate and promote Complainant’s services. The Marks are firmly associated with CEI. Caesar’s also owns registrations for the FLAMINGO marks in Egypt and Greece. Since 1946, CEI, (or its predecessors in interest) has been using the FLAMINGO name and mark in brochures, pamphlets, advertisements, and on its websites.
Set forth below is a table summarizing some of those registrations:
Goods and Services
February 21, 1995
January 16, 1996
Casino services and entertainment services
March 22, 2001
December 11, 2001
FLAMINGO PLAYERS CLUB·
Casino services and hotel services
August 21, 1995
November 12, 1996
FLAMINGO LAS VEGAS
Casino services and entertainment services
March 22, 2000
December 4, 2001
Resort hotel, bar, restaurant and health spa services
March 22, 2001
December 11, 2001
In addition, Complainant owns several registrations for its FLAMINGO mark in other countries, as shown in this second table.
Goods and Services
Hotel, resort, restaurant and bar services
FLAMINGO Plus Design
Entertainment services, including casino services
FLAMINGO Plus Design
Entertainment services, including casino services
Hotel, restaurant, bar and related services
Entertainment Services including casino, gaming and related services
Entertainment services, including casino, gaming and related services in this class none being entertainment services with the production or rental of records
Similarly, CEI has had a presence on the Internet in the form of a website devoted to The Flamingo in Las Vegas at <lv-flamingo.com> since August 3, 2000. In addition, on the same day that its Las Vegas Flamingo website became active, the Complainant also launched a second website devoted to its Laughlin Flamingo Hotel and Casino at <laughlinflamingo.com>. Both websites have continuously displayed the FLAMINGO Mark since their respective inceptions. These two websites have also attracted significant interest from Internet users. Thus, from January 2003 through December 2003, there were approximately 2,100,000 visits to Complainant’s·<lv-flamingo.com> website and about 3,000,000 hits in 2004. From January 2003 through December 2003, Complainant’s <laughlinflamingo.com> website experienced approximately 425,000 hits. In 2004, that number increased to over 445,000.
D. Registration of Disputed Domain Names; Communications between Complainant and Respondent – A Chronology
The Respondent registered both challenged domain names on April 10, 2004. When it learned of the existence of the two domain names in dispute, Complainant sent a demand letter to Respondent via United Parcel Service (“UPS”) on June 29, 2004, and e-mail on June 30, 2004. The letter sought to compel Respondent to transfer the challenged domain names to CEI.
Replying to Complainant’s June 30th e-mail, Respondent sent the message that follows via return e-mail on July 13, 2004. Because this message is the only communication that the Complainant ever received from Respondent and inasmuch as the e-mail contains several pieces of important information, the e-mail transmission is reproduced here without correcting any of its numerous typographical or grammatical errors:
From: bijan s.kottabi
Sent: Tuesday, July 13, 20043:00 PM
To: Dominus, Katherine6
Subject: Re: Trademark Infringement of FLAMINGO Famous Marks
i just checked this email we have no idea regarding the copy trademark of this domains since there is an online casino that we were promoting a website called “flamingoclub.com” that is why we have now several mirror site. We would be more than happy to give you those domain and have no problem with that and are familiar witht the whole system of icann so you do not need to go there. Could you please kindly remit 29.95 for each domain and they are all yours.
you can contact me at [email] thanks again”
After reviewing Mr. Kottabi’s e-mail message, Complainant initiated a series of communications to Mr. Kottabi over the next several months in an effort to effect the transfer on the terms he proposed. These messages were transmitted via both e-mail and UPS. Communications were sent to all available addresses on July 13, 2004; July 15, 2004; July 20, 2004; and December 9, 2004. Significantly, UPS was never able to deliver any package that Complainant sent to Respondent at the sole physical address Respondent had provided, which is the address contained on the WHOIS database.. The reason for the failure, as noted by UPS, was that “Receiver Moved”. Finally, on January 14, 2005, Complainant sent its last email to Respondent insisting upon the immediate transfer of the domains names in dispute, but withdrawing its offer to pay any compensation. Respondent never replied and thereafter, Complainant initiated these proceedings.
E. The Respondent and Its Activities
(1) Record Evidence, Negative Inferences and Limited Examination of Public Records
Pursuant to both documents contained in the case file, one of which was allegedly generated by Respondent’s only known representative, Mr. Kottabi, and the Rules, paragraph 14(b), the Panel has drawn appropriate negative inferences from Respondent’s default and applied them to this portion of its factual findings.
In addition, the Panelist visited the internet site to which one of the challenged
domain names resolve to insure the accuracy of Complainant’s fundamental
allegations. The visit to the internet site, coupled with a thorough examination
of the documents contained in the case file, revealed several significant issues
that caused the Panelist to undertake a discrete review of certain matters of
public record, including previous decisions issued by WIPO Administrative Panels.
In undertaking this task, the Panelist was mindful of the recently published
WIPO Overview of
WIPO Panel Views on Selected UDRP Questions, Section 4.5
that, in relevant part, states
“A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.”
Accordingly, the Panelist’s investigation was specifically tailored to address only those inconsistencies that became apparent from comparing the evidence contained in the case file and information that can be derived from Respondent’s website.
(2) Factual Findings Relating to Respondent
(a) Respondent’s Previous Conduct with Respect to Registering and Using Domain Names in Violation of the Policy
Other than the identification representations provided by the Registrar, there are no records or documents that establish Respondent’s business particulars. Thus, whether such an entity even formally exists is uncertain. Nevertheless, as Respondent itself admits in its July 13, 2004 e-mail message, it, and its only identifiable representative, Mr. Kottabi, are no strangers to UDRP proceedings.8
This Respondent and Mr. Kottabi, although not named Respondents, make what
appears to be their first appearance in a UDRP proceeding in the matter of Gold
Line Telemanagement Inc. v. SquareBox Entertainment, WIPO
Case No. D2002-1102. Certain actions (although not all) taken by Mr. Kottabi
as documented in that matter’s case file are disturbingly similar to the
allegations raised by CEI in this proceeding. In Goldline, after a detailed
rendition of the contacts and communications between the parties, the Panel
determined, or the unrebutted allegations that were supported by documentary
evidence showed that, among other matters:
(i) Mr. Kottabi “allegedly known as Bijan Kotabi9 and Bijan Shamsolkotabi registered … three domain names (personally and through entities that he controls)” including the challenged domain name that was determined to have been registered and used in bad faith;
(ii) One of the entities used for these registrations was “Ad Dreamer…a company that Mr. Kotabi is evidently affiliated with…”;
(iii) Ad Dreamer was also referred to interchangeably as “Ad Dreamer Inc.”
(iv) The named Respondent was a business entity that could not be identified except for a post office and an e-mail address contained in the WHOIS database and was alleged to be “merely the current shell transferee of the [disputed] domain name”;
(v) Mr. Kottabi conceded to have registered the disputed domain name, despite not having secured Complainant’s authorization;
(vi) Mr. Kottabi further expressly represented, in writing, to have transferred the challenged domain name to Complainant, when, in fact, he had not;
(vii) Mr. Kottabi eventually demanded payment of an exorbitant10 sum to effectuate the transfer of the three domain names he registered, one of which was the subject of the WIPO proceeding and two of which were not, but were deemed relevant to determining the issues raised;
(viii) When Complainant refused to meet Mr. Kottabi’s payment demands, the challenged domain name was linked to graphic pornographic websites;
(ix) Mr. Kottabi allegedly made oral representations via a telephone call with Complainant’s counsel that if his monetary demands were not met, that the other two domain names which he registered, but for which Complainant claimed an interest, would also be linked to pornographic websites, including those that Complainant would find even more offensive than those already in use;
(x) That Mr. Kottabi allegedly followed through on his threat to add these more offensive pornographic websites;
(xi) That “simple on-line checks” established that the domain name <addreamer.com> and the domain in dispute were “hosted on the same server”;
(xii) The Panel concluded that “Complainant’s assertions regarding [Mr. Kottabi and Ad Dreamer’s] control of the domain name are in all probability correct”;
(xiii) That the evidence suggested that the transfer of the disputed domain names to the named Respondent was more than likely “a sham”;
(xiv) The above-described events apparently occurred in the Province of Ontario, Canada.
(b) Identity of Respondent; Use of Domain Name
The Panel decision in Goldline sheds more light on the evidentiary documents submitted by Complainant and compels a closer look at the active website to which one of the challenged domain names, <flamingoclubvip.com>, is linked. Such an inspection yields information which, without the memorialization of events contained in the Goldline decision, might have otherwise gone unnoticed. However, the relevance of these matters becomes readily apparent, especially when compared with items that are of public record. Thus, herein follows a list that catalogs various facts that are necessary to understand the activities of this Respondent with regard to the registration of the domain names in dispute:
(i) The e-mail address provided by Mr. Kottabi in response to Complainant’s initial demand letter was returnable to a location connected to a domain name <coasar.com>;
(ii) According to the WHOIS database, the domain name <coasar.com> is registered by “addreamer inc” at the same street address and city provided by the Respondent here, except that the zip code is 1990111 instead of 98264;
(iii) The administrative and technical contact e-mail address, phone number and physical address for mailing purposes (except for the zip code) for <coasar.com> is the same as that provided by Respondent for the domain names at issue here;
(iv) The website to which the challenged domain name resolves contains links to, among other sites, “coasarcasino.com” and a number of other websites that contain the name “coasar”;
(v) “addreamer inc” or some variation on that name also appears as the Registrant for these other domain names that contain the term “coasar”;
(vi) The links which are listed on the “coasar” websites almost exclusively describe either pornographic subjects or on-line wagering websites12;
(vii) Most, if not all, of the registration information regarding the domain names that contain the “coasar” label identify the Respondent as the registrant and Mr. Kottabi as both the administrative and technical contact;
(viii) Several of the “coasar” related domain names are hosted on the same server as that which hosts the domain name in dispute in this proceeding;
(ix) The IP location for the “flamingoclubvip.com” and all of the websites referred to in this list is the same and these IP locations are all situated in Mississauga, Ontario, Canada;
(xi) In addition, that same document states that “Ad Dreamer Inc” or “its representatives” are located in “Delaware, Washington and Florida in the United States of America”.13
(c) The Ultimate Facts Concerning The Two Disputed Domain Names
All of the above-information leads to the following inescapable conclusions.
The challenged domain name <flamingoclubvip.com> directs users to an on-line
gaming site named “Flamingo Club Online Casino” which is located
at a website with the domain name <flamingoclub.com>14.
This Respondent is almost certainly a member of an affiliate program promoted
by the owners of the Flamingo Club online gaming site. As described in the materials
submitted by the Complainant, this particular program provides Respondent a
fee each time a visitor arrives at the on-line “casino” via the
Respondent’s web page. This transfer is accomplished by means of click-through
buttons, links and banners. Moreover, “casino” on-line affiliate
programs contain an additional incentive. Should the user who arrived by means
of the website actually gamble, and “lose”, the referring website
(“affiliate”) shares in a portion of the income directly attributable
to the specific user. Thus, the more internet “traffic” that a referrer/affiliate
can generate, the higher the monies it stands to be paid.
5. Parties’ Contentions
(1) The domain names in dispute are identical or confusingly similar to Complainant’s FLAMINGO, FLAMINGO (Stylized), FLAMINGO PLAYERS CLUB and FLAMINGO LAS VEGAS trademarks in which the Complainant has prior rights because:
(a) The Complainant’s above-listed registered marks are incontestable.
(b) Because of Complainant’s efforts, Complainant’s Marks have gained wide recognition and have become very well known.
(c) All of Complainant’s marks were registered long before Respondent’s registration of the challenged domain names.
(d) The <flamingoclubvip.com> and <flamingoclubhr.com> domain names simply inserts the initials “VIP” or “HR” after the words “flamingo” and “club”. Since the term “VIP” is commonly understood in the gaming industry to mean “Very Important Person”, and the term “‘HR” stands for “High Roller”, it is obvious that these initials relate to gambling and casinos. Therefore, “Flamingo Club VIP” and “Flamingo Club HR” create the same commercial impression as CEI’s “Flamingo” trademarks.
(e) Combining a generic word with the Complainant’s registered mark does not circumvent the Complainant’s rights in the mark nor does it avoid making the domain name in dispute confusingly similar.
(f) Internet users are likely to believe that the domain names Respondent has registered are related to, associated with, or authorized by Complainant. Indeed, this was precisely why Respondent chose the domain names that are now in dispute.
(g) The fame and distinctiveness of the Complainant’s Flamingo Marks
has been recognized in previous WIPO UDRP decisions. Most recently, in Caesars
Entertainment. Inc. v. WW Processing, WIPO
Case No. D2004-0225, in transferring the domain name in question, <flamingobeachcasion.com>
the Panel stated, “it is clear that as used on the Internet as part of
a domain name, the term ‘Flamingo’ is identified with the Complainant”.
To the same effect is the decision in Park Place Entertainment Corporation
v. Anything.com, WIPO Case No. D2002-0530.
In directing that the domain name <flamingo.com> be transferred to CEI,
the Panel stated that Complainant’s Marks are “well known in the
field of hotels and casinos..”. Similarly, the Panel determined that there
was “strong consumer identification of the mark with Complainant’s
service business, extensive advertisement of the mark, and its continuous long
use in commerce”.
(2) The Respondent has no rights or legitimate interests with respect to the disputed domain names because:
(a) Respondent is not commonly known by the domain names at issue.
(b) Long before Respondent registered the challenged domain names, Complainant had firmly established rights in its Marks.
(c) No other entity operates a casino under the name FLAMINGO anywhere in the world.
(d) Where, as here, Complainant’s marks and name are so well known and
so widely recognized, and have been used in connection with gaming services
for so many years, there can be no legitimate use by Respondent. For instance,
in Nike Inc. v. B.B. de Boer, WIPO
Case No. D2000-1397, the Panel concluded that the trademark NIKE was so
well-known that it was difficult to comprehend how the Respondent could not
have been aware of its existence.
(e) Furthermore, there is no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain names.
(f) Respondent is not making legitimate, non-commercial use of the challenged domain names. Indeed, the only use to which the names have been associated has been from diverting users to on-line gaming sites and casinos to the Respondent’s profit.
(3) Respondent registered and is using the disputed domain names in bad faith as demonstrated because:
(a) Respondent’s use of the domain names is to intentionally attract,
for commercial gain, Internet users to its website, or other on-line locations,
by creating a likelihood of confusion with the Complainant’s Marks as
to the source, sponsorship, affiliation or endorsement of its website or location
of a service on its website or location, Barnes & Noble College Bookstores.
Inc. v. Leasure Interactive, WIPO Case
No. D2001-1216, (“it is more probable than not that Respondent in
registering the disputed domain name, was motivated by a desire to benefit from
the widespread reputation of the BARNES & NOBLE marks. That being the case,
Respondent cannot be found to have used the domain name in connection with a
bona fide offering of goods and services.”)
(b) While Complainant does not operate any on-line casinos (as they are illegal in the United States), Complainant is aware that a major concern for consumers interested in such activity is integrity of the website that is a portal for on-line gaming. By operating on-line gaming portals under the FLAMINGO marks, Respondent is clearly trading off the reputation of Complainant’s famous FLAMINGO properties by implying some association or connection with one of the most trusted names in the industry.
(c) The continuous use of these domain names not only allows Respondent to profit from an unauthorized use of Complainant’s trademarks, but also could even lead to inquiries from various gaming authorities and place Complainant’s gaming license at risk.
(d) Respondent has registered the domain names at issue for the sole purpose of deriving income by attracting users to an on-line gaming site. Respondent receives a fee for users it diverts to the on-line gaming and casino site.
(e) Complainant has many registrations for their marks in the United States.
Clearly, Respondent knew of the fame of Complainant’s Marks when it registered
the two domain names. Under the trademark law of the United States, Respondent
is deemed to have been on constructive, if not actual, notice of Complainant’s
rights in their 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 Brien, 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 Complainant’s Marks in their entirety
or that 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. In these circumstances, the Respondent must have registered
the domain names in bad faith. Guerlain S.A. v. Pei Kang, WIPO
Case No. D2000-0055: Veuve Clicquot Ponsardin, Maison Fondйe en 1772
v. The Polygenix Group Co., WlPO 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.”),
(f) Respondent moved its physical address without updating the WHOIS database. Respondent’s email address is also different from his contact information listed on the WHOIS database. The fact that Respondent changed both its e-mail and physical addresses without updating the WHOIS database is also evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Standards and Burdens of Proof
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
(i) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
1. Paragraph 4(b) of the Policy sets out four illustrative, non-exclusive circumstances, which, if demonstrated by the Complainant, for the purposes of paragraph 4(a)(iii) shall be deemed evidence of a Respondent’s bad faith registration and use of a challenged domain name.
2. Paragraph 4(c) of the Policy sets out three descriptive, non-exclusive situations, any one of which, if proved by a Respondent, shall be considered as evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Identical or Confusingly Similar
Complainant more than meets its burden of proof with regard to meeting the test set forth in paragraph 4(a)(i). CEI has at least five registered trademarks in the United States and eight in three other countries which contain the word “flamingo” and other information that identifies the Marks with the gaming, entertainment, and leisure industries, as well as the landmark “Flamingo Hotel and Casino” in Las Vegas.
Furthermore, this Complainant has previously demonstrated to the satisfaction of other WIPO Panels that the domain names <flamingo.com>15 and <flamingobeachcasino.com>16 were either identical or confusingly similar to its various registered marks. So too here, the addition of the term “club” to the Flamingo Mark followed by either the initials “vip” or “hr”, when viewed in the context of gaming industry parlance, strongly supports Complainant’s interpretation of the challenged domain names. Accordingly, the Panel agrees with CEI’s position that both domain names which are in dispute are most certainly confusingly similar to the Flamingo registered marks.
C. Rights or Legitimate Interests
Again, the Panel turns to the language contained in WIPO
Decision Overview which clearly articulates the consensus view for the procedure
to follow in determining whether Complainant has proven this prong of the Policy
requirements. As stated at Section 2.1,
“While the overall burden of proof rests with the Complainant, Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore, a Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
Here, CEI has more than met its burden of making out a prima facie case. In sum, the Panel concurs with Complainant’s contentions that:
(1) there is no known relationship between Complainant and Respondent;
(2) while known by many other names, this Respondent has no connection to these two disputed domain names;
(3) no Casino, other than Complainant’s, that is named “Flamingo” is known to exist anywhere else in the world;
(4) Complainant had rights to the registered Flamingo marks prior to the registration of the two domain names in dispute.
By failing to respond in the face of Complainant’s prima facie showing on this point, there is no need to examine the possible justifications contained in paragraph 4(c) that might have provided a defense to Complainant’s challenge. Therefore, CEI has satisfied this portion of the Policy.
D. Registered and Used in Bad Faith
The final test which Complainant must meet is to prove that the domain names were registered and used in bad faith. The facts presented in this case establish both points.
At the outset, the Panel incorporates its Findings from paragraphs 6 A and 6 B of this decision which also sustain a determination of bad faith. In addition, the facts discussed in paragraphs 4 D and 4 E, in their entirety, further support Complainant’s argument. In light of these already stated conclusions, only a few brief additional comments are warranted.
First, the Complainant’s contention that the Respondent should have added to the WHOIS database its return e-mail address, which is associated with the <coasar.com> domain name and was disclosed for the first time in Mr. Kottabi’s July 13, 2005 e-mail, is well taken. So too, the street address in Lynden, Washington is also inaccurate. What is more striking, however, is what is underscored by the assorted details listed in paragraph 4E(2)b(i) through (xiv) of this decision and, to a certain extent, some of the findings contained in the Goldline case. In brief, this evidence tends to render suspect any of Respondent’s representations concerning its identity. In point of fact, obscuring the identity of the true Registrant of its domain names is one of the few consistencies that can be attributed to this Respondent.
The next comment concerns the question that logically follows from the intentional confusion the Respondent generates to guard against the disclosure of its identity, i.e., who (or what) is the Respondent? However, because of the nature of these proceedings, that inquiry need not be answered. It is enough that the Panel is able to ascertain that the appropriate notices and other documents were sent to the contacts that the Registrant supplied the Registrar for inclusion in the WHOIS database. Thus, such issues as piercing corporate veils or finding an individual or other entity liable in the stead of a named party are simply not matters that need to be made in the context of UDRP proceedings. Nevertheless, there are occasions, such as the situation presented here, where certain facts that in another forum might lead to other legal consequences, must still be reviewed to ascertain the true nature of a domain name’s registration and use.
The third point concerns Respondent’s passive holding of the <flamingoclubhr.com>
domain name. As succinctly stated in the WIPO
Decision Overview, Section 3.2.
“The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Here, all four issues cited in the above analysis apply. The Complainant’s trademark is not only “well-known”; it is almost synonymous with the word “casino”. So too, there has been no formal response to the Complaint, and the only communication in this record from Respondent, Mr. Kottabi’s e-mail, seems to concede that this domain name should be transferred as well. In addition, the Respondent, as discussed above in this section, has made several misrepresentations in an effort to conceal its identity. Similarly, the Panel is at a loss to explain in what manner the domain names could be put to a good faith use. Thus, a finding of bad faith as to the registration and use of the passively held domain name <flamingoclubhr.com> is amply supported by this record.
The final observation relates to the severity of Respondent’s conduct.
In this case, Respondent goes far beyond the type of abusive practice that has
been condemned in such decisions as in Compagnie Gйnйrale des Etablissements
Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v.
Horoshiy Inc., WIPO Case No. D2004-0752
(“use of domain names containing … Complainants’ famous trademark
…to capture … Complainants’ customers who are seeking the
Complainants’ … services, and to re-direct them to other websites”
and thereby garner “click-through” revenue is bad faith use).
No doubt, here the challenged domain names were specifically designed to confuse, capture, and divert internet users away from Complainant’s websites, and then direct this traffic to a site for which Respondent is an “affiliate”. Similarly, there can be no question but that the purpose underlying Respondent’s entire scheme is to derive income at the expense of Complainant. But here, there is more. As noted by Complainant, on-line gambling is illegal in the United States. Moreover, the gaming business in which Complainant is a legitimate participant is a highly regulated industry. Thus, trading off of Complainant’s registered trademarks and engendering public confusion as to Complainant’s involvement in an activity that is clearly against the law of the jurisdiction where Complainant conducts its business poses an even more nefarious threat as it could place at risk the very governmental licenses that allows Complainant to conduct business. In short, it is one thing to lose income as a result of an abusive domain name registration; it is quite a different matter when, as here, a Complainant’s ability to operate altogether is put in jeopardy.
In light of these conclusions, the Panel determines that both challenged domain
names were registered and utilized in bad faith. Thus, Complainant has satisfied
the last prong of paragraph 4(a) 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 <flamingoclubhr.com>
and <flamingoclubvip.com> be transferred to the Complainant.
Craig Edward Stein
Dated: May 22, 2005
1 The case file contains a copy of a Certificate of Amendment to Complainant’s Certificate of Incorporation that CEI filed on January 5, 2004 with the State of Delaware’s Secretary of State, Division of Corporations. This document evidences the change in Complainant’s corporate name from Park Place Entertainment Corporation to Caesar’s Entertainment, Inc.
2 For example, Caesar’s also provides hotel, gaming, entertainment, and shopping arcade services through its operation of the Flamingo Laughlin Hotel in Laughlin, Nevada. In the past CEI also operated a hotel named “The Flamingo” in Reno, Nevada.
3 Ms. Steinberg is Complainant’s Vice President of Marketing. The Panel notes that the facts set forth in this section of its Administrative Decision are derived from a review of the full record, which includes the unrebutted allegations contained in the Complaint. These allegations are amply supported by a compendium of attached exhibits.
4 Steinberg Affidavit at paragraph 2.
5 Ms. Horne’s appearance is also confirmed by information contained on the website that Complainant maintains for The Flamingo.
6 Ms. Dominus is an attorney who, at the time of this e-mail exchange, represented Complainant.
7 As explained last month in the
matter of Scotsman Publishing, Inc. v. LaPorte Holdings ,Inc, WIPO
Case No. D2005-0228, “although the WIPO
Decision Overview is not precedential in nature, it does reflect a studied
and considered summary of consensus positions culled from the decisions of numerous
panelists during the first five years of administration of the UDRP. Fresh
Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO
Case No. D2005-0061. Accordingly, when such a consensus has developed, it
is incumbent upon panels to follow the consensus (or the majority view) to promote
consistency among UDRP decisions. See Howard Jarvis Taxpayers Association
v. Paul McCauley, WIPO Case No. D2004-0014
(April 22, 2004).”
8 Here, the matters relied upon
are limited to certain factual findings that relate to the type of business
activities the same party previously has been found to conduct in the past.
Of course, such facts may eventually lead to a legal determination that a particular
party has prevailed under one of the three tests required by paragraph 4(a)
of the Policy. This procedure is similar to that adopted by WIPO Panels when
determining whether a party’s “bad faith”, as that term is
used in paragraph 4(a)(iii), is established by showing “a pattern of conduct
… [through]multiple UDRP cases with similar fact situations or a single
case where the respondent has registered multiple domain names which are similar
to known trademarks”. WIPO
Decision Overview, Section 3.3. Thus, in accordance with paragraph 15(a)
of the Rules, the Complainant is still required to carry its burden of proof
with regard to each element of paragraph 4(a) of the Policy.
9 The Panel is aware that in this matter the person identified as Mr. Kottabi spells his name with two “t”s, while in the Goldline case; the spelling of this surname contained only one “t”. However, in light of the many similarities and other connections between the facts as recited in the Goldline decision, this record and other matters revealed after a review of the Respondent’s website to which one of the challenged domain names resolves, there can be no other conclusion that the individuals in both cases are the same person. Thus, unless quoted directly from the text of the Panel decision, here the spelling with two “t”s will be employed.
10 The Panelist described the demand as “disproportionate, if not extortionate”.
11 This zip code is designated by the United States Postal Service (“USPS”) for Dover, Delaware, not Lynden, Washington. See USPS website at http://zip4.usps.com/zip4/citytown.jsp.
12 Notwithstanding the decision
in Goldline, two of the listed links include one for “Goldline
Sluts” and another for “goldlineslots”.
14 The <flamingoclubhr.com> domain name is inactive. That fact, however, does not prevent a finding that it was registered and used in bad faith. See Discussion at paragraph 6 C of this decision.
15 Caesars Entertainment, Inc.
v. WW Processing, WIPO Case No. D2004-0225.
16 Park Place Entertainment
Corporation v. Anything.com, WIPO Case