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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harrah’s License Company, LLC, Caesars World, Inc. v. Smart Answer S.A.

Case No. D2008-1515

1. The Parties

The First Complainant is Harrah’s License Company, LLC and the Second Complainant is Caesars World, Inc., of Las Vegas, Nevada, United States of America, represented by Alston & Bird, LLP, United States of America.

The Respondent is Smart Answer S.A., of Panama, Panama.

2. The Domain Names and Registrar

The disputed domain names <ballysatlanticcity.net>, <ballyscasino.org>, <ballyshotelandcasino.net>, <ballyshotellasvegas.net>, <ballyshotel.net>, <caesarsindiana.net>, <caesarslasvegas.net>, <caesarspalacelasvegas.net>, <harrahcasino.org>, <harrahsatlanticcity.net>, <harrahscherokeecasino.net>, <harrahscherokee.net>, <harrahshotel.net>, <harrahslaketahoe.org>, <harrahslasvegas.org>, <harrahslaughlin.net>, <harrahsneworleans.org>, <harrahsreno.org>, <harrahstahoe.org>, <parishotelandcasino.net>, <parishotelinlasvegas.net>, <riolasvegas.org>, <showboatatlanticcity.net>, <showboatcasino.org>, <thecaesars.org> are registered with MyDomain, Inc. (fka NamesDirect).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2008. On October 6, 2008, the Center transmitted by email to MyDomain, Inc. (fka NamesDirect) a request for registrar verification in connection with the domain names at issue. On October 6, 2008 MyDomain, Inc. (fka NamesDirect) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2008.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on November 13, 2008. 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 Complainants are wholly-owned subsidiaries of Harrah’s Operating Company, Inc. (“HOC”). Either directly or though its subsidiaries, HOC owns or manages 38 casinos in three countries, together with associated hotels and entertainment facilities and is the world’s largest provider of casinos operated under specific brands.

The First Complainant’s casinos are grouped under the brand names HARRAH’S, BALLY’S, PARIS, PARIS LAS VEGAS, RIO, and SHOWBOAT. The Second Complainant’s casinos are known by the brand name CAESARS and CAESARS PALACE. More particulars of the casinos and other facilities are given hereunder.

The Harrah’s Casinos and Marks

Since 1937, the First Complainant has owned and used the service mark HARRAH’S in the operation of 16 of its Harrah’s casinos, nightclubs, theatres and other entertainment services. Since 1952 it has also used the HARRAH’S mark for hotel and restaurant services and the provision of products such as apparel, jewellery and souvenirs.

The First Complainant is the registered owner of the following service marks registered with the United States Patent and Trademark Office.

Mark

Reg. No.

Priority Date

Goods/Services

HARRAH’S

1,237,716

May 18, 1981

Gaming services-namely, providing casino gaming services to others, in Class 41

HARRAH’S

1,067,887

September 29, 1976

Night club services featuring the presentation of entertainment and theatre services, in Class 41

The First Complainant has registered the domain name <harrahs.com> which resolves to the website “www.harrahs.com”, an interactive site used by the First Complainant to promote its business and at which users may obtain information about the casinos and other facilities and make reservations.

The Bally’s Casinos and Marks

For more than 30 years, the First Complainant and its predecessors-in-interest have owned and used the service mark BALLY’S in the operation of its Bally’s casinos in Las Vegas, Nevada, Atlantic City, New Jersey and, through a license, in Tunica, Mississippi. The BALLY’S casinos attract millions of guests annually from around the world.

The First Complainant is the registered owner of the following service marks registered with the United States Patent and Trademark Office.

Mark

Reg. No.

Priority Date

Goods/Services

BALLY’S

1,515,843

June 12, 1987

Casino services, in Class 41

BALLY’S

1,523,910

June 15, 1987

Hotel services, in Class 42

The First Complainant has registered the domain name <ballys.com> which resolves to the website “www.harrahs.com”, an interactive site used by the First Complainant to promote its business and at which users may obtain information about the casinos and other facilities and make reservations.

The Paris Las Vegas Casino and Marks.

Since 1999, the First Complainant has operated Harrah’s PARIS LAS VEGAS branded casino and hotel in Las Vegas and has used the trademarks and service marks PARIS and PARIS LAS VEGAS for its casino entertainment services, hotel services and related goods and services.

The First Complainant is the registered owner of the following service marks registered with the United States Patent and Trademark Office.

Mark

Reg. No.

Priority Date

Goods/Services

PARIS LAS VEGAS & Design

2,432,163

January 14, 1999

Casino services, in Class 41; and hotel and restaurant, in Class 42

PARIS

2,527,696

June 4, 2007

Casino services in Class 41; and Hotel Services in Class 42

PARIS

3,355,033

January 2, 2007

Casino and gaming services; entertainment services, namely, arranging for ticket reservations for shows and other entertainment events; and conducting and providing facilities for special events featuring casino and gaming contests and tournaments in class 41; and Hotel services; bar and restaurant services; provision of conference, exhibition and meeting facilities in Class 43

The First Complainant has registered the domain name <parislasvegas.com> which resolves to the website “www.parislasvegas.com” that is used to promote its casino and hotel business and at which Internet users may obtain information about the PARIS LAS VEGAS casino and other facilities and make reservations.

The Rio Casino and Marks

The First Complainant owns and operates RIO All-Suite Hotel & Casino (“RIO”) in Las Vegas, Nevada, one of the largest and most renowned casino entertainment, hotel and golfing facilities in the world. The RIO facility attracts millions of guests annually from around the world.

Since 1989, the First Complainant has used the service mark RIO for its casino, hotel, entertainment, and restaurant services, as well as products such as apparel, jewellery and novelties.

The First Complainant is the registered owner of the following service marks registered with the United States Patent and Trademark Office.

Mark

Reg. No.

Priority Date

Goods/Services

RIO

1,845,968

September 29, 1993

Casino services, in Class 41

RIO

1,997,791

September 29, 1993

Entertainment services in the nature of presentations in the form of live performance, mixed media presentations, musical and dance activities, and live performances by individuals or groups, in Class 41; and hotel restaurant and bar services, in Class 42

The First Complainant has registered the domain name <riolasvegas.com> which resolves to the website “www.riolasvegas.com” that is used to promote its RIO casino business and at which Internet users may obtain information about the casino and other facilities and make reservations.

The Showboat Casinos and Marks

The First Complainant owns and operates SHOWBOAT Casino (“SHOWBOAT”), located in Atlantic City, New Jersey through affiliated companies. SHOWBOAT is one of the largest and most renowned casino entertainment facilities in the United States of America, offering top-quality casino, hotel, entertainment and restaurant services.

For more than 50 years, the First Complainant has used the service mark SHOWBOAT for its casino, hotel, entertainment, and restaurant services.

The First Complainant is the registered owner of the following service marks registered with the United States Patent and Trademark Office.

Mark

Reg. No.

Priority Date

Goods/Services

SHOWBOAT

1666140

October 10, 1990

Casino services, in Class 41; and hotel, restaurant and nightclub services, in Class 42

SHOWBOAT

1,336,012

October 16, 1984

Entertainment services-namely, providing facilities for gaming, bowling and swimming, presenting vocal, musical and choreographic shows, providing a sports pavilion facility for presenting sporting events and providing golf and country club facilities, in Class 41; and hotel and restaurant services, beauty salon and barber services, in Class 42

SHOWBOAT

1,078,615

August 31, 1976

Entertainment services-namely, providing facilities for gaming, bowling and swimming, and presenting vocal, musical and choreographic shows, in Class 41; and hotel and restaurant services, beauty salon and barber services, in Class 42

The First Complainant has registered the domain name <showboatcasino.com> which resolves to the website “www.showboatcasino.com” that it uses to promote the Showboat business and at which visitors may obtain information about the casino and other facilities and make reservations.

The Caesars Casinos and Marks.

Through wholly owned subsidiaries, the Second Complainant is the owner and operator of the world famous CAESARS PALACE casino in Las Vegas, Nevada, and CAESARS casinos in Atlantic City, New Jersey, Elizabeth, Indiana and, through a license, Windsor, Ontario, Canada. They are internationally renowned as casinos and as prestigious dining, entertainment and sporting venues.

Since 1966, the Second Complainant has used the service marks CAESARS PALACE and CAESARS for its casino, entertainment, and restaurant services.

The Second Complainant is the registered owner of the following service marks registered with the United States Patent and Trademark Office.

Mark

Reg. No.

Priority Date

Goods/Services

CAESARS PALACE

907,693

June 12, 1968

Hotel and restaurant services in Class 42; Nightclub entertainment services featuring music, dancing and comedy, and casino services in Class 41

CAESARS PALACE
(Stylized)

907,696

June 12, 1968

Hotel and restaurant services in Class 42; Night club entertainment services, featuring music, dancing and comedy, and casino services in Class 41

CAESARS (Stylized)

954,637

January 19, 1972

Providing hotel, restaurant, baby sitting, convention facility, beauty salon, and barber shop services in Class 42

CAESARS

954,684

January 19, 1972

Providing health clubs, night club entertainment, tennis instruction and casino services in Class 41

The Second Complainant has registered the domain names <caesars.com> and <caesarspalace.com>, which resolve to the websites “www.harrahs.com” and “www.caesarspalace.com” that promote the Complainants’ casino, entertainment, restaurant and sporting businesses and at which visitors may obtain information about the facilities referred to above and make reservations.

Registration of the disputed domain names

The Respondent registered the disputed domain names <harrahcasino.org>, <harrahsatlanticcity.net>, <harrahscherokee.net>, <harrahscherokeecasino.net>, <harrahshotel.net>, <harrahslasvegas.org>, <harrahslaughlin.net>, <harrahsneworleans.org>, <harrahsreno.org>, <harrahstahoe.org>, <harrahslaketahoe.org>, <ballysatlanticcity.net>, <ballyscasino.org>, <ballyshotel.net>, <ballyshotelandcasino.net>, <ballyshotellasvegas.net>, <parishotelandcasino.net>, <parishotelinlasvegas.net>, <showboatatlanticcity.net>, <caesarsindiana.net>, <caesarslasvegas.net>, <caesarspalacelasvegas.net> and <thecaesars.org>, on May 7, 2008, the disputed domain name <riolasvegas.org>, on May 18, 2008, and the disputed domain name <showboatcasino.org> on May 20, 2008.

Each of the disputed domain names is linked to identical websites that contain a short description of the hotel and casino referred to in the respective domain name and advertisements for and links to “www.goldencasino.com”, which is an online poker site. The websites also purport to deliver a “ targeted advertising inventory” of goods and services through the Internet.

5. Parties’ Contentions

A. Complainants

The Complainants allege that the disputed domain names <ballysatlanticcity.net>, <ballyscasino.org>, <ballyshotelandcasino.net>, <ballyshotellasvegas.net> and <ballyshotel.net> (“the Bally domain names”), <caesarsindiana.net>, <caesarslasvegas.net>, <caesarspalacelasvegas.net> and <thecaesars.org> (“the Caesars domain names”), <harrahcasino.org>, <harrahsatlanticcity.net>, <harrahscherokeecasino.net>, <harrahscherokee.net>, <harrahshotel.net>, <harrahslaketahoe.org>, <harrahslasvegas.org>, <harrahslaughlin.net>, <harrahsneworleans.org>, <harrahsreno.org> and <harrahstahoe.org> (“the Harrahs domain names”), <parishotelandcasino.net> and <parishotelinlasvegas.net> (“the Paris domain names”), <riolasvegas.org> (“ the Rio domain name”) and <showboatatlanticcity.net> and <showboatcasino.org> (“the Showboat domain names”) should no longer be registered with the Respondent but that they should be transferred to the Complainants.

They contend that this should be done because, within the meaning of paragraph 4 of the Policy, the “Bally domain names” are confusingly similar to the First Complainant’s registered BALLY’S service marks, the “Caesars domain names” are confusingly similar to the Second Complainant’s registered CAESARS PALACE and CAESARS service marks, the “Harrahs domain names” are confusingly similar to the First Complainant’s registered HARRAH’S service marks, the “Paris domain names” are confusingly similar to the First Complainant’s registered PARIS service marks, the “Rio domain name” is confusingly similar to the First Complainant’s registered RIO service mark and the “Showboat domain names” are confusingly similar to the First Complainant’s registered SHOWBOAT service marks.

The Complainants also submit that the Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and subsequently used in bad faith. The Complainants maintain that they can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to the Complainants.

In support of their case on the first of these three elements, the Complainants rely on the registered BALLY’S, CAESARS PALACE, CAESARS, HARRAH’S, PARIS, RIO and SHOWBOAT service marks to which reference has already been made.

They then say that it is self-evident that the respective domain names are confusingly similar to the respective service marks, as each domain name consists of the relevant service mark, together with a geographical indicator such as “atlanticcity” or a descriptive or generic word such as “casino” or “hotel”.

The Complainants then contend, to establish the second element, that the Respondent has no rights or legitimate interests in the domain names because it has no connection or affiliation with either of the Complainants and neither of them has ever granted a licence or consent to the use by the Respondent of any of their service marks; the Respondent has never used the domain names in connection with a bona fide offering of goods or services; and the Respondent is not making a legitimate non commercial or fair use of the domain names, but rather is making a commercial use of them, designed to trade on the fame and goodwill of the Complainants’ marks by linking the domain names to websites that offer casino and gambling facilities and giving the false impression that they are provided or endorsed by the Complainants.

Finally, the Complainants contend that the domain names were registered and are being used in bad faith. They contend that this is so because the Respondent’s conduct comes squarely within paragraph 4(b)(iv) of the Policy, for it has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainants’ service marks specified above. The confusion is said to arise because the Respondent has attempted to deceive Internet users into believing that the Respondent is affiliated with or endorsed by the Complainants or that the Complainants sponsor or endorse the services advertised on the Respondent’s sites, neither of which is true.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to 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.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainants to make out their case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainants to succeed they must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith

It is to be noted that paragraph 4 of the Policy provides that the Complainants must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the “Bally domain names” are confusingly similar to the First Complainant’s registered BALLY’S service marks. That is so because they all contain the totality of the BALLY’S service marks, with the addition of words that do not detract from the confusing similarity thus created, for the domain name <ballysatlanticcity.net> merely indicates that the well-known Bally’s casino is at Atlantic City; the domain name <ballyscasino.org> indicates that the famous Bally’s enterprise is a casino; the domain name <ballyshotelandcasino.net> indicates that the famous Bally’s enterprise is a casino and a hotel; the domain name <ballyshotellasvegas.net> indicates that the Bally’s hotel is in Las Vegas; and the domain name <ballyshotel.net> indicates that the Bally’s enterprise is a hotel, all of which are true and all of which thus tends to increase the confusion between the domain names and the service marks.

The Panel also finds that the “Caesars domain names” are confusingly similar to the Second Complainant’s registered CAESARS PALACE and CAESARS service marks. That is so because they all contain the totality of the CAESARS PALACE or CAESARS service marks, with the addition of words that do not detract from the confusing similarity thus created, for the domain name <caesarsindiana.net> indicates that a facility of the well-known Caesars Casino is in Indiana; the domain name <caesarslasvegas.net> indicates that the well-known Caesars Casino itself is in Las Vegas; the domain name <caesarspalacelasvegas.net> indicates that the well-known Casino known widely as Caesars Palace is in Las Vegas; and the domain name <thecaesars.org> does nothing more than invoke the name of the well-known Caesars Casino and precede it by the definite article. The statements contained in all of these additions are true and all of them thus tends to increase the confusion between the domain names and the service marks.

The Panel also finds that the Harrahs domain names are confusingly similar to the First Complainant’s registered HARRAH’S service marks. That is so because they all contain the totality of the HARRAH’S service marks, with the addition of words that do not detract from the confusing similarity thus created, for the domain name <harrahcasino.org> indicates that the well-known Harrah’s is a casino; the domain name <harrahsatlanticcity.net> indicates that the well-known Harrah’s is in Atlantic City; the domain name <harrahscherokeecasino.net> indicates that the well-known Harrah’s Casino has a facility at Cherokee in North Carolina; the domain name, <harrahscherokee.net> indicates that the famous Harrah’s business has a facility at Cherokee; the domain name <harrahshotel.net> indicates that the well-known Harrah’s business includes a hotel; the domain names <harrahslaketahoe.org> and <harrahstahoe.org> indicate that the well-known Harrah’s business has a facility at Lake Tahoe; the domain name <harrahslasvegas.org> indicates that the well-known Harrah’s business is situated in Las Vegas; the domain name <harrahslaughlin.net> indicates that it has a facility in Laughlin, Nevada; the domain name ,<harrahsneworleans.org> indicates that it has a facility in New Orleans; and the domain name <harrahsreno.org> indicates that it has a facility in Reno, Nevada. The statements contained in all of these additions are true and all of them thus tends to increase the confusion between the domain names and the service marks.

The Panel also finds that the “Paris domain names” are confusingly similar to the First Complainant’s registered service marks PARIS. That is so because they all contain the totality of the PARIS service marks, with the addition of words that do not detract from the confusing similarity thus created, for the domain name <parishotelandcasino.net> indicates that the well-known Paris Casino is a casino and a hotel; and the domain name <parishotelinlasvegas.net> indicates that the well-known Paris hotel is in Las Vegas, both of which statements are true and thus tends to increase the confusion between the domain names and the service marks.

The Panel also finds that the “Rio domain name”, <riolasvegas.org>, is confusingly similar to the First Complainant’s registered service mark RIO as it consists of the totality of the trademark RIO with the addition only of the geographic indicator Las Vegas which, in any event, is the full name of the casino and hotel and thus increases the confusion between the domain names and the service mark.

The Panel also finds that the “Showboat domain names” are confusingly similar to the First Complainant’s registered service marks SHOWBOAT. That is so because they all contain the totality of the SHOWBOAT service mark, with the addition of words that do not detract from the confusing similarity thus created, for the domain name <showboatatlanticcity.net> indicates that the well-known Showboat Casino is in Atlantic City and the domain name <showboatcasino.org> indicates that the well-known Showboat entertainment business is a Casino of that name. Both of these statements are true and thus tends to increase the confusion between the domain names and the service marks.

With respect to the additions that are geographic indicators, it is now well-established that they do not generally detract from or diminish confusing similarity which is otherwise established, as in the present case; see, for example, Caesars World, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2005-0425. It is equally well-established that the generic additions such as, in the present case, “hotel” or “casino” do not generally detract from confusing similarity that is otherwise present; see Caesars World, Inc. v. Contessa Marketing Services, Inc., WIPO Case No. D2003-0529.

It is also now well-established that if it is found, as in this case, that a domain name is confusingly similar to a service mark, that finding is not negated by the presence in the domain name of suffixes such as the gTLD suffix “. com”.

As the Complainants clearly have rights in the service marks referred to above as their registered owners, the Panel finds that the domain names are confusingly similar to the service marks and that the Complainants have accordingly established the first of the three elements that they must prove.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainants have the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain names.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a 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.

Thus, if a respondent proves any of these elements or indeed anything else that shows that he or she has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.

The Panel’s task in deciding if a respondent has any rights or legitimate interests in a domain name is made more difficult when the respondent is in default and does not file a Response or any other form of submission. The Respondent in the present case was formally notified of the Complaint and the proceedings commenced on October 9, 2008, and was therein given notice that it had until October 29, 2008 to send in a Response, that the Respondent would be in default if the Response were not received by that date and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

It is also well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, a complainant is required to make out a “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.”

The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in any the disputed domain names. That prima facie case is made out from the following considerations.

First, the Respondent chose for the domain names the prominent and famous service marks HARRAH’S, BALLY’S, PARIS, PARIS LAS VEGAS, RIO, SHOWBOAT, CAESARS and CAESARS PALACE and added to them geographic indicators to show that the domain names referred to the famous casinos and hotels that were operating at those places. Lest anyone should remain in doubt, it also added in some cases the word “casino” or “hotel” to underline the notion that the domain names were seeking to invoke the famous casinos and hotels covered by the respective service marks.

Secondly, having registered the disputed domain names, the Respondent then linked them to websites that promote a casino and provide online gambling facilities.

Thirdly, the evidence is that the Respondent has no connection or affiliation with either of the Complainants and neither of them has ever granted a licence or consent to the use by the Respondent of any of their service marks in a domain name or anywhere else.

These facts give rise to the prima facie case made out by the Complainant. The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain names.

The Complainant has thus made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainants must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the 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) the 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 the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the site or location.”

The Panel finds that the Complainants have shown that the Respondent registered and used the domain names in bad faith and that in particular the Respondent’s conduct puts the case squarely within paragraph 4(b)(iv) of the Policy.

The reasons why the Complainants’ case has been made out are as follows.

First, by registering domain names incorporating the Complainants’ prominent and famous service marks HARRAH’S, BALLY’S, PARIS, PARIS LAS VEGAS, RIO, SHOWBOAT, CAESARS and CAESARS PALACE and without any legitimate reason provided for doing so, it is more probable than not that the Respondent’s intention in registering them was to create confusion with the service marks and also with the Complainants’ casino, hotels and entertainment businesses conducted under their respective names.

Secondly, the Respondent has, within the meaning of paragraph 4(b)(iv) of the Policy, undoubtedly been attempting to attract Internet users to each of the websites to which the disputed domain names resolve, for the domain names have been used and are currently being used for active websites for an apparently commercial purpose.

Thirdly, the confusion likely to be created is confusion with the HARRAH’S, BALLY’S, PARIS, PARIS LAS VEGAS, RIO, SHOWBOAT, CAESARS and CAESARS PALACE service marks about the affiliation of the casino facilities being promoted on the Respondent’s websites and as to whether those facilities are the Complainants’ casinos and hotels or in some way associated with them.

The Panel has been able to verify this matter for itself by visiting the websites to which the disputed domain names resolve. The domain names resolve to separate websites and each of them contains a description of the Complainants’ casino and hotel to which the domain name relates. The Panel draws the inference that this has been done to give an air of verisimilitude to the various websites and to convince visitors to the sites that they have indeed landed at one of the Complainants’ website. Apart from containing that description of one of the casinos and hotels, each of the websites is the same, for they then promote the attractions of the Golden Casino, via “www.goldencasino.com”, which is an online gambling site with no connection to the Complainants.

The intention is apparently to give the false impression that the Golden Casino is a service provided by the Complainants or one which the Complainants endorse or with which they are affiliated. Examining the websites, it is apparent that there will be confusion in the mind of the visitor as to whether or not the gambling services being promoted are those of the Complainants or endorsed by them.

The Panel finds that these circumstances create confusion with the Complainants’ service marks as to the sponsorship, affiliation and endorsement of the Respondent’s sites and the services on them and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain.

The facts therefore constitute bad faith in the generally accepted sense of that expression and also come within paragraph 4(b)(iv) of the Policy and constitute bad faith, both in registration and use, within the meaning of the Policy, a conclusion that has often been reached by UDRP panels on analogous facts; see, for example, the many decisions relating to gambling and casinos such as Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.

Accordingly, the Complainant has made out the third of the three elements that it must establish.

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:

(i) the domain names <harrahcasino.org>, <harrahsatlanticcity.net>, <harrahscherokee.net>, <harrahscherokeecasino.net>, <harrahshotel.net>, <harrahslasvegas.org>, <harrahslaughlin.net>, <harrahsneworleans.org>, <harrahsreno.org>, <harrahstahoe.org>, <harrahslaketahoe.org>, <ballysatlanticcity.net>, <ballyscasino.org>, <ballyshotel.net>, <ballyshotelandcasino.net>, <ballyshotellasvegas.net>, <parishotelandcasino.net>, <parishotelinlasvegas.net>, <riolasvegas.org>, <showboatatlanticcity.net>, and <showboatcasino.org> be transferred to the First Complainant; and that (ii) the domain names <caesarsindiana.net>, <caesarslasvegas.net>, <caesarspalacelasvegas.net> and <thecaesars.org> be transferred to the Second Complainant.


The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: November 27, 2008

 

: https://internet-law.ru/intlaw/udrp/2008/d2008-1515.html

 

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