Harrah's Las Vegas Inc v. Online Casino Bonding Group
Claim Number: FA0110000100571
Complainant is Harrah's Las Vegas, Inc., Las Vegas, NV (“Complainant”) represented by David J. Stewart, of Alston & Bird, LLP. Respondent is Online Casino Bonding Group, Washington, DC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harrahs-online-casino.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 12, 2001; the Forum received a hard copy of the Complaint on October 19, 2001.
On October 16, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <harrahs-online-casino.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 7, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 26, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The <harrahs-online-casino.com> domain name is confusingly similar to Complainant’s HARRAH’S mark.
Respondent does not have any rights or legitimate interests in the <harrahs-online-casino.com> domain name.
Respondent registered and used the <harrahs-online-casino.com> domain name in bad faith.
No Response was received.
Complainant has continuously used the mark since 1937 to promote its casino and entertainment services. Moreover, Complainant has numerous trademark registrations for the HARRAH’S mark. Finally, Complainant has a heavily trafficked <harrahs.com> interactive website that promotes its services and goods to Internet users.
Respondent first used the domain name to offer online casino gaming. In reply to a cease and desist letter sent by Complainant, Respondent asserted its website was not operational, but a passive site advertising Mr. Edwardo Harrah’s casino and sportsbook software. Further, Respondent added that Mr. Harrah had offered to sell the domain name to Complainant before and would “entertain any reasonable offer” to buy the domain name now. Complainant does not recall any offer from Mr. Harrah. Moreover, Respondent has provided no evidence that Mr. Harrah exists.
Additionally, Respondent has not given evidence that <harrahs-online-casino.com> was a non-commercial website. In fact all of the evidence indicates that this was a commercial website. For example, for-profit banners were at the top of Respondent’s homepage.
Finally, Respondent has a pattern of registering domain names that infringe on famous casino marks. For example, Respondent has registered <mirage-casino-online.com>, stardust-online-casino.com>, and <excaliburcasino-online.com>, all of which are domain names confusingly similar to famous casino marks. Respondent has subsequently removed all content from the Internet under the domain name.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Respondent’s <harrahs-online-casino.com> domain name is confusingly similar to Complainant’s registered HARRAHS mark because the addition of “online”, the generic term “casino”, hyphens, and a top level domain name do not sufficiently distinguish it from Complainant’s mark. See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s mark “Marriott”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent does not have any rights or legitimate interests in <harrahs-online-casino.com> because it has not given any legitimate reason for using the HARRAHS name other than to infer an association with Complainant’s business. This use is not a bona fide offering of goods. Respondent’s claim that a “Mr. Harrah” advertised his services on the website appears to be a post hoc fabrication because Respondent has not provided any evidence for this. See Telstra Corp. Ltd. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant is that the Respondent lacks rights or legitimate interests in the domain name).
Respondent does not have any rights or legitimate interests in the domain name at issue because it is not commonly known by the name. Complainant’s HARRAHS mark is well known throughout the United States due to its advertising campaigns on the Internet and elsewhere. As a result, Respondent could not be commonly known by a mark confusingly similar Complainant’s famous mark. See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Respondent’s willingness to sell the domain name indicates that it has no rights or legitimate interests in the domain name at issue. See Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (finding respondent’s willingness to transfer the domain name at issue to complainant, as reflected in its response, is evidence that he has no rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).
The Panel finds that policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s willingness to sell the domain name to Complainant is evidence of bad faith pursuant to ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”).
Moreover, Respondent’s pattern of registering domain names that infringe upon famous casino marks is evidence of bad faith pursuant to ¶ 4(b)(ii). See Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).
Finally, the likelihood of confusion between the Respondent’s domain name offering Internet casino services and the Complainant’s famous casino mark indicates bad faith pursuant to ¶ 4(b)(iv). See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his web-site as the Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <harrahs-online-casino.com> be tranferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 3, 2001
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