Harrah's Las Vegas, Inc. v. RaveClub
Berlin
Claim Number: FA0204000109714
PARTIES
Complainant
is Harrah's Las Vegas, Inc., Las
Vegas, NV (“Complainant”) represented by David
J. Stewart, of Alston & Bird,
LLP. Respondent is RaveClub Berlin, Cherry Hill, NJ
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <harrhs.com>,
registered with Joker.com.
PANEL
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.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 16, 2002; the Forum received a hard copy of the
Complaint on April 16, 2002.
On
April 17, 2002, Joker.com confirmed by e-mail to the Forum that the domain name
<harrhs.com> is registered
with Joker.com and that Respondent is the current registrant of the name. Joker.com
has verified that Respondent is bound by the Joker.com 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
April 17, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 7, 2002
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 postmaster@harrhs.com 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
May 20, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Respondent’s domain name <harrhs.com>
is confusingly similar to Complainant’s HARRAH’S mark and <harrahs.com>
domain name.
2. By diverting Internet users for
commercial purposes to a competing website, Respondent has no rights or
legitimate interests in <harrhs.com>.
3. Respondent has intentionally attracted
Internet users for personal gain by using a common misspelling of Complainant’s
trademark. This represents a blatant attempt to divert Internet traffic
intended for Complainant to Respondent’s website. Complainant also contends
that Respondent has engaged in a practice of registering and using misspellings
of others’ trademarks to divert users to competing websites. Thus, Respondent
has registered and used the disputed domain name in bad faith.
B.
Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant is a wholly-owned subsidiary of Harrah’s
Entertainment, Inc., a public corporation trading on the New York Stock
Exchange. Harrah’s Entertainment is one of the largest casino entertainment companies
in the United States operating twenty-five casino entertainment facilities,
eighteen of those under the HARRAH’S mark. In recognition of Complainant’s
exclusive rights in its mark, the U.S. Patent and Trademark Office has granted
Complainant numerous registrations for the HARRAH’S mark, including Reg. Nos.
1,067,887; 1,237,716; 1,831,759; 2,176,952; and 2,268,340. Complainant adopted
the service mark HARRAH’S in 1937 and has continuously used the mark since that
time to identify casinos, nightclubs, theaters and other entertainment
services. Since at least 1952, Complainant has also used the mark HARRAH’S to
identify hotel services, restaurant services and a host of products, including
apparel, jewelry and souvenir novelties. Significantly, Complainant asserts
that no other party owns a U.S. registration for any mark that includes the
term “Harrah’s” for any goods or services.
Respondent registered the disputed domain name <harrhs.com>
on May 27, 2001 and has used it to sell passwords to adult websites,
direct Internet traffic to a pornographic web site located at
<amaturevideos.nl> and to traffic Internet users to an Internet casino
located at <888.com>.
Complainant’s investigation of Respondent revealed
four prior UDRP Complaints filed against it. See Pepsico., Inc. v. RaveClub
Berlin, FA 101819 (Nat. Arb. Forum Dec. 19, 2001); see also MathSoft
Eng’g & Educ., Inc. v. RaveClub Berlin, FA 101825 (Nat. Arb. Forum Dec.
14, 2001); see also Household Int’l, Inc. v. RaveClub Berlin, FA 101507
(Nat. Arb. Forum Dec. 10, 2001); see also Mars, Inc. v. RaveClub Berlin,
FA 97361 (Nat. Arb. Forum July 16, 2001). These cases involved a number of
domain names consisting of typographical variations of the complainants’ marks.
Respondent has established a pattern of linking the domain names to
pornographic content, and has lost every contested case.
DISCUSSION
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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.
Complainant has established its rights in
the HARRAH’S mark through registration with the U.S. Patent and Trademark
Office and continuous and subsequent use. Respondent’s <harrhs.com> domain
name is confusingly similar to Complainant’s marks on two grounds: (1) it is
phonetically the same as Complainant’s mark, and (2) it contains a slight and
common typographical error, represented by the deletion of the letter ‘a.’
Consumers who view the domain name are certain to associate the name with
Complainant, as the domain name is nearly identical in sight and sound to the
HARRAH’S mark.
Respondent’s <harrhs.com> domain
name is pronounced identically to Complainant’s HARRAH’S mark and
<harrahs.com> domain name. The disputed domain name is phonetically the
same as Complainant’s mark, and it is confusingly similar to the mark. See Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the
Policy); see also YAHOO! Inc. v.
Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name
<yawho.com> is confusingly similar to the Complainant’s YAHOO mark).
Furthermore, Respondent’s <harrhs.com>
domain name is confusingly similar to Complainant’s mark because it
incorporates practically the entire mark while simply deleting the letter ‘a.’
It has been found that the deletion of a letter from a famous mark is not
enough to create a distinct mark and overcome a claim of confusing similarity. See
Hewlett-Packard Co. v. Zuccarini,
FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark); see also Compaq Info. Techs. Group,
L.P. v. Seocho , FA 103879 (Nat.
Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See
Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the Complainant that the Respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to the Respondent to demonstrate that such a right or legitimate interest does
exist).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Strum v. Nordic Net Exchange AB, FA 102843 (Nat.
Arb. Forum Feb. 21, 2002) (finding that Respondent's failure to respond to the
Panel's additional requests warranted a finding for Complainant).
By infringing upon Complainant’s
registered mark in order to sell competing gambling services, Respondent is not
making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),
or a legitimate or fair use pursuant to Policy ¶ 4(c)(iii). See Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally and misleadingly
diverting users away from Complainant's site to a competing website); see
also Chip Merchant, Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain
names were confusingly similar to Complainant’s mark and that Respondent’s use
of the domain names to sell competing goods was illegitimate and not a bona
fide offering of goods).
Further, Respondent’s use of the disputed
domain name to distribute pornographic material is not a legitimate use of the
domain name. See Nat’l Football
League Prop., Inc. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000)
(finding that the Respondent had no rights or legitimate interests in the
domain names <chargergirls.com> and <chargergirls.net> where the
Respondent linked these domain names to its pornographic website); see also
Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use).
Additionally, no evidence here suggests
that Respondent is commonly known as “harrhs” or <harrhs.com>
pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel only as
RaveClub Berlin. See Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June
27, 2000) (finding no rights or legitimate interests where (1) Respondent is
not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Respondent registered the disputed domain
name, which is confusingly similar to Complainant’s mark, in order to route
Internet users to a pornographic website and to provide a casino service in
competition with Complainant. The <harrhs.com> domain name is
confusingly similar to Complainant’s mark and the Internet user will likely
believe that there is an affiliation between Respondent and Complainant.
Registration and use of the <harrhs.com> domain name for the
reason that it is nearly identical is evidence of bad faith pursuant to Policy
¶ 4(b)(iv). See MatchNet plc. v.
MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association
of a confusingly similar domain name with a pornographic website can constitute
bad faith); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the
Respondent linked the domain name in question to websites displaying banner
advertisements and pornographic material).
Furthermore, because of the famous and
distinctive nature of Complainant’s HARRAH’S mark, Respondent is thought to
have been on notice of the existence of Complainant’s mark at the time
Respondent registered the infringing <harrhs.com> domain name. See
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in
light of the notoriety of Complainants' famous marks, Respondent had actual or
constructive knowledge of the BODY BY VICTORIA marks at the time she registered
the disputed domain name and such knowledge constituted bad faith).
Given that Complainant and the casino
website attached to Respondent’s domain name, <888.com>, are competitors
in the gambling business, it is reasonable to infer that Respondent registered
the contested domain name in order to disrupt Complainant’s business. This
demonstrates bad faith under Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between Complainant and Respondent, Respondent likely registered
the contested domain name with the intent to disrupt Complainant's business and
create user confusion); see also General
Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26,
2001) (finding bad faith where a competitor of Complainant registered and used
a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a
pornographic website).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under
the ICANN Policy, the Panel concludes that the required relief should be hereby
GRANTED.
Accordingly, it is Ordered that the <harrhs.com> domain name be
TRANSFERRED from
Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 22, 2002
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