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DECISION

 

Harrah's License Company, LLC v. Roger McClannen

Claim Number: FA0807001217546

 

PARTIES

Complainant is Harrah's License Company, LLC (“Complainant”), represented by Jessica E. Jacob, of Alston & Bird, LLP, Georgia, USA.  Respondent is Roger McClannen (“Respondent”), Indiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <worldseriesofpokergazette.com>, registered with Godaddy.com, Inc.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 28, 2008.

 

On July 28, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <worldseriesofpokergazette.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 July 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 19, 2008
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@worldseriesofpokergazette.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:

 

1.      Respondent’s <worldseriesofpokergazette.com> domain name is confusingly similar to Complainant’s WORLD SERIES OF POKER mark.

 

2.      Respondent does not have any rights or legitimate interests in the <worldseriesofpokergazette.com> domain name.

 

3.      Respondent registered and used the <worldseriesofpokergazette.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Harrah’s License Company, LLC, is a subsidiary of Harrah’s Operating Company, Inc. and owns or manages more than forty casinos in three countries.  One of Complainant’s most important events is the “World Series of Poker” held each year at the Rio All-Suite Hotel and Casino in Las Vegas, Nevada.  The poker tournament was founded in 1970 and is world’s largest and most prestigious poker tournament.  Complainant holds a registration for the WORLD SERIES OF POKER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,025,395, issued November 18, 1975).  In addition, Complainant operates a website resolving from the <worldseriesofpoker.com> domain name.

 

Respondent registered the <worldseriesofpokergazette.com> domain name on June 1, 2008.  The website that resolves from the disputed domain name displays Complainant’s WORLD SERIES OF POKER mark and several hyperlinks to various third-party websites, some of which appear to be in competition with Complainant.

 

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 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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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

 

Because Complainant holds a registration with the USPTO for the WORLD SERIES OF POKER mark, the Panel finds that Complainant has sufficiently established its rights in the mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

 

Respondent’s <worldseriesofpokergazette.com> domain name contains Complainant’s entire mark and merely adds the generic term “gazette.”  The Panel finds that adding this generic term to Complainant’s entire mark does not distinguish the <worldseriesofpokergazette.com> domain name from Complainant’s WORLD SERIES OF POKER mark for the purposes of confusing similarity under Policy ¶ 4(a)(i).  Thus, the Panel finds that the disputed domain name is confusingly similar to Complaint’s mark under Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); 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).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

In the beginning, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the <worldseriesofpokergazette.com> domain name.  Thereafter, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has sufficiently made its prima facie showing pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).

 

Respondent is using the disputed domain and its corresponding website to display hyperlinks to third-party websites, some of which appear to be in competition with Complainant.  The Panel infers that Respondent receives click-through fees for these hyperlinks.  Accordingly, the Panel finds that this commercial use of a confusingly similar domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

 

Although Complainant did not explicitly allege that Respondent is not commonly known by the <worldseriesofpokergazette.com> domain name, Complainant did assert that Complainant did not authorize Respondent to use the WORLD SERIES OF POKER mark.  Furthermore, Respondent’s WHOIS information contained in the record does not indicate that Respondent is commonly known by the disputed domain name.  Thus, the Panel finds that Respondent is not commonly known by the <worldseriesofpokergazette.com> domain name under Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent displays hyperlinks to third-party websites on its resolving website, some of which appear to be in competition with Complainant. Because this diverts Internet traffic to a competitor’s website, the Panel finds that Respondent’s registration and use of the disputed domain name is in bad faith pursuant to Policy ¶ 4(b)(iii).  See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Respondent uses Complainant’s entire mark in the <worldseriesofpokergazette.com> domain name, displays Complainant’s mark on its corresponding website, and receives click-through fees from displaying hyperlinks to third-party websites, some of which appear to be in competition with Complainant.  Accordingly, the Panel finds that Respondent’s conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).

 

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 relief shall be GRANTED.

 

Accordingly, it is Ordered that the <worldseriesofpokergazette.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 8, 2008

 

 

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