Harrah's License Company, LLC v. Eric Hawkins
Claim Number: FA0809001225284
Complainant is Harrah's License Company, LLC (“Complainant”), represented by Jessica
E. Jacob, of Alston & Bird, LLP, Georgia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <horseshoeindiana.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Sir Ian Barker as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On September 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on
A timely Additional Submission was received from Complainant on October 21, 2008.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a wholly-owned subsidiary of Harrah’s Operating Company Inc. (“HOC”) which, either directly or through its licensed subsidiaries, owns or manages 38 casinos in three countries. It claims to be the largest provider of branded casino entertainment in the world.
For more than 50 years, Complainant and its predecessors in interest
have used the mark HORSESHOE to identify casino entertainment and related
services. HOC or affiliates operates
five casinos under the HORSESHOE mark, including two that are located in the
Complainant owns several
Respondent registered the disputed domain name on January 21, 2006. He operated the disputed domain name, initially with links to third party sites, including links to hotel and casino services. The website also includes the statement at the top of the site: “This domain name is for sale! If you wish to make an offer, please contact firstname.lastname@example.org.”
Complainant caused to be sent to Respondent “cease and desist” letters on July 31, 2008 and on August 11, 2008. In response to these letters, Respondent removed his website. On August 14, 2008, Respondent, by email, advised Complainant he did not intend to transfer the disputed domain name to it without compensation. On August 17, 2008, counsel for Complainant offered to pay Respondent’s registration fees up to US $50.00 in exchange for the transfer. This sum was an amount that exceeded reasonable registration costs. On August 26, 2008, Respondent stated that he would be unable to respond before the date on which the offer would terminate. No further response was received.
Respondent has no affiliation or association with Complainant or any permission from Complainant to use the HORSESHOE mark in any form.
The disputed domain name is confusingly similar to Complainant’s
HORSESHOE mark. The fact that there is an
added geographical indicator in the word “
Respondent has no rights or legitimate interests in the disputed domain name. Complainant gave him none. Respondent does not qualify under Paragraph 4(c) of the Policy in that he does not use the disputed domain name in connection with any bona fide offering of goods and services. Nor is he known by the disputed domain name. Nor is he making a legitimate non-commercial or fair use of the disputed domain name.
Respondent has registered and used the disputed domain name in bad faith, as is shown by his offer to sell it placed at the top of the website. This is shown by his refusal to transfer the disputed domain name in exchange for reimbursement of registration fees.
Respondent has also engaged in conduct constituting bad faith registration and use in violation of Paragraph 4(b)(iv) of the Policy. His registration and use of the disputed domain name has the effect of attracting internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s HORSESHOE mark.
Respondent’s actions are designed to deceive internet users into
Respondent profits from his actions by receiving either free domain name parking services or from being compensated for advertisements that appear on the site.
Complainant does not have exclusive rights to the word HORSESHOE. It is a generic word which predates the establishment of Complainant’s operations by many centuries. The mark HORSESHOE appears in 29 other trademarks, service marks and word-marks not related to casino services.
Complainant’s allegation that Respondent has no rights or legitimate interest is based on the incorrect assumption that Complainant has an all-inclusive right in the word “HORSESHOE.” Respondent quotes from the WIPO Overview of Panel Views on Selected UDRP Questions: “The Respondent is using a generic word to describe his product/business or a product from a generic value of the word without intending to take advantage of the Complainant’s rights in that word when it has a legitimate interest.”
The sale of generic domain names constitutes a bona fide offering of goods and services where the seller is not aware of a party’s rights in a mark. The disputed domain name was available for anyone to register because it incorporated common words.
Respondent has not taken advantage of any confusion in the marketplace. He did not register the disputed domain name to divert customers or to try to sell the disputed domain name to Complainant at a profit or to a competitor or otherwise to interfere with Complainant’s trademark or business.
Respondent was not aware at the time he was contacted by Complainant that his web page contained third party links. The page was automatically generated without his request by his registrar. He had no control over what appeared on it. He has never been compensated for usage of the disputed domain name. Immediately after Complainant’s letter, as an act of good faith, he directed the registrar to remove the page, which it did.
He has never attempted to lure or confuse users looking for information on Complainant’s services. Complainant must proffer evidence that demonstrates that Respondent has specifically intended to confuse consumers.
C. Additional Submissions
Respondent’s arguments are meritless. Complainant has a strong distinctive mark for casino services and Respondent has transparently registered and used the disputed domain name for the purpose of trading on those rights. As has been found by many NAF Panels, a registrant of a domain name is responsible for the content of any website located at the domain name and the registrant cannot pass that responsibility off to a registrar or a third party.
Complainant has, through years of continued use of the trademark, had a significant investment in the promotion of goods and services offered under the HORSESHOE mark. In the words of Horseshoe License Co. v. Mercedes Net A.V.V.., FA97052 (Nat. Arb. Forum May 21, 2001), it was held by the panel that the HORSESHOE mark “is synonymous with casino operations and services around the country.”
A geographic indicator in a domain name - particularly where it is a location where the owner of the trademark operates - cannot overcome a finding of confusing similarity.
There is no requirement to prove actual confusion to internet users. The test is likely confusion. See Gateway, Inc. v. Pixelera.com, Inc., D2000-0109 (WIPO April 12, 2000) (“Evidence of lack of actual confusion is irrelevant since the test is confined to a consideration of a disputed name and the trademarks.”).
Respondent provided no evidence that he is using the term HORSESHOE to describe any product or business. He is using the domain name as a website for third party advertisements and links to casino and hotel related services available to visitors on the site. Respondent does not argue that he was unaware of Complainant’s rights in the mark. Nor could he do so in good faith in view of the fame of the mark.
It is insufficient for Respondent to allege that he was unaware of the links automatically generated by his registrar on the click-through site. He must take responsibility for the contents of the site; otherwise every cyber-pirate would avoid the reach of the Policy simply by getting someone else to put infringing content on the sites.
As to Respondent’s contention that there is no confusion in the marketplace, that the disputed domain name was registered to divert customers, actual confusion does not need to be proved. It was said in Consultour Inc. v. Travel Options Inc., D2003-0352 (WIPO July 10, 2003) that “[t]o require Complainant to provide direct evidence of Respondent’s bad faith intentions would allow a Respondent with a certain level of skill to easily evade the application of the Policy, hence rendering its application moot or irrelevant.”
(1) Complainant has trademark rights in respect to the word “HORSESHOE,” which rights have been held for many years.
(2) The disputed domain name is confusingly similar to Complainant’s trademark.
(3) Respondent has no rights to or legitimate interest in respect of the disputed domain name.
(4) The disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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.
Complainant has clearly established rights in the HORSESHOE name for its casino and entertainment services through registration of a trademark with the United States Patent and Trademark Office (“USPTO”) as long ago as 1993. It is not for the Respondent to gainsay the registration once the USPTO has made a determination that a mark is registrable. A panel is not empowered to disturb that determination.
Many cases under the ICANN Policy show that a
registered trademark followed by a geographical locator, such as the word “
Accordingly, Complainant has made out the first limb of Paragraph 4(a) of the Policy.
Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to show that he has rights and/or legitimate interests.
In the view of the Panel, Respondent has failed to do that. He is not commonly known by the disputed domain name, which originally resolved to a website featuring sponsored links, some of which advertised or directed internet users to competing gaming and casino services.
Moreover, the notation on the website that the disputed domain name was for sale is an indication that Respondent has no legitimate right or interest in the disputed domain name. Advertising competing services offering to sell the name and making no active use are all situations that indicate no bona fide offering of goods or services.
Respondent fails to come within
The initial statement that the disputed domain name was for sale is indicative of bad faith. Moreover, the use of the “click-through” services constitutes using the disputed domain name to attract internet users to Respondent’s website for commercial gain. Such conduct cannot help but create a likelihood of confusion with Complainant’s mark.
Moreover, as was pointed out in Complainant’s submissions, Respondent cannot abrogate responsibility for the contents of the “click-throughs” shown on the website which he says were put there by the registrar. A registrant must take responsibility for what appears on his website.
As at the date of registration of the
disputed domain name, Complainant’s mark must have been well-known in the
Accordingly, the Complainant has satisfied Paragraph 4(a)(iii) of the Policy. Bad faith registration and use can easily be inferred.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <horseshoeindiana.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker, Panelist
Dated: October 31, 2008
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