Caesars World, Inc. v Poseidon Interactive c/o Stefano Rando

Complainant filed an Additional Submission on April 16, 2009, which was filed timely. Respondent, likewise, filed an Additional Submission which was received by the National Arbitration Forum on April 21, 2009, and was filed timely. Each of these Additional Submissions were fully considered by the Panel and found them helpful in making its final determination.

On April 28, 2009, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Richard DiSalle, Honorable Carolyn M. Johnson and Honorable Robert T. Pfeuffer as Panelists.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that the Respondent’s disputed domain names are identical or confusingly similar to its CAESARS mark registered with the United States Patent and Trademark Office. Complainant contends that Respondent’s use of the <caesarcardclub.com>, <caesarcardclub.net>, <caesar-card-club.com>, <caesar-card-club.net>, and <caesarpokerclub.com> are domain names that are confusingly similar to the Complainant’s CAESARS mark. It asserts that due to the inclusion of the descriptive terms “card,” “club,” and/or “poker,” the additions of hyphens and addition of a generic top-level domain “.com” or “.net” further add to the confusion. On the subject of rights and legitimate interests under Policy ¶ 4(a)(ii), Complainant has asserted that Respondent lacks the authority or permission to use Complainant’s mark and that Respondent is not commonly known by the disputed domain names. Complainant further argues that Respondent is using the disputed domain names to operate directly competitive websites for on-line gambling and poker and that Respondent is intentionally diverting Internet users seeking Complainant to such websites.

Complainant also contends that Respondent requested that Complainant make “an interesting offer” for the disputed domain names.

With respect to registration and use in bad faith pursuant to Policy ¶ 4(a)(iii), Complainant alleges bad faith registration by Respondent due to its demand for “an interesting offer” and that Respondent is primarily intended to disrupt Complainant’s business for commercial gain. Complainant contends that Respondent’s use of the allegedly confusingly similar disputed names to commercially host directly competitive websites has created a likelihood of confusion as to Complainant’s sponsorship and affiliation with the disputed domain names and corresponding websites. It further states that such confusion has been exacerbated by Respondent’s assertions to the public that it is affiliated in some form with Complainant’s famous poker tournaments and the use by Respondent in the past of Complainant’s logo. Complainant believes that Respondent had actual or constructive knowledge of the Complainant and its rights in the disputed marks at the time it registered the disputed domain names.

B. Respondent

Respondent has asserted in its initial Response that the disputed domain names are comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark. See Policy ¶ 4(a)(i). This assertion will be further discussed below since this argument is inapplicable to Policy ¶ 4(a)(i) and will be analyzed under Policy ¶ 4(a)(ii) and (iii). With respect to the issues of rights and legitimate interests under Policy ¶ 4(a)(ii), Respondent says it is running a legal online poker operation that is licensed by a gambling authority in its own country and that this narrow use does not overlap with Complainant’s broader casino and resort operations. It furthermore contends that the terms of the disputed domain names are generic and of common use and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. For all of such reasons Respondent asserts that Complainant has not met its burden of proof.

Policy ¶ 4(a)(iii) concerns registration and use in bad faith. Respondent urges that it removed the offending logo upon Complainant’s request in good faith and that it has never run any infringing poker tournaments. It also contends that the disputed domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s mark. It also says that the registration and use of domain names comprising such common terms is not necessarily done in bad faith.

C. Additional Submissions

Complainant made an Additional Submission, which was received by the National Arbitration Forum on April 16, 2009, stating that Respondent’s arguments are meritless. It asserts that CAESARS is a strong and distinctive mark for casino services and Respondent has transparently registered and used the domain names for the purpose of trading on those rights despite being put on notice of his unauthorized use by CAESARS. In its Additional Submission Complainant points out that CAESARS has an exclusive right to use the CAESARS marks and in recognition of this exclusive right has been granted numerous registrations around the world for its CAESARS mark in connection with casino services. CAESARS points out that its exclusive right to use the CAESARS mark in connection with casino operations and wide spread association between the CAESARS mark and the casino operations and services would result in visitors to the disputed domain names being confused as to the origin of the <caesarcardclub> and would associate the <caesarcardclub> with CAESARS branded casinos. Complainant states that Respondent’s behavior in utilizing an Italian or Roman theme highlights his intent to trade on CAESARS rights in the CAESARS marks which are used for identical goods and services and share the same Italian or Roman theme. Complainant points out that Respondent’s registration and use of the domain names is a transparent attempt to trade on the fame and goodwill of CAESARS mark, but this does not give Respondent bona fide rights or interests in the domain names. It asserts that the CAESARS marks have acquired significant notoriety in connection with a specific type of service and that many UDRP panels have repeatedly found that there can be no legitimate use of a similar mark by a Respondent. Addressing the question of registration and use in bad faith, the Complainant states that Respondent does not attempt to rebut CAESARS allegations, and Respondent has registered and used the domain names in bad faith, but simply reiterates its earlier argument that its logo is not similar to the CAESARS marks. Complainant points out that it is the owner and operator of the World Series of Poker (“WSOP”) which is a satellite poker tournament. It states that Respondent is plainly aware of its rights to the WSOP Tournament and its connection to CAESARS, but nevertheless advertised as a WSOP Satellite tournament on Respondent’s site. But as a result, it was a clear attempt to trade on the rights of CAESARS and its affiliates to mislead consumers. Complainant points out that in spite of its demands, Respondent has not removed the website advertising its WSOP tournament and it is currently available to the public. Complainant disputes Respondent’s arguments that CAESARS acted in bad faith by bringing the present action after the case was allegedly resolved on a “friendly” basis. It asserts that CAESARS never agreed in any fashion that Respondent’s actions were permissible. Complainant steadfastly asserts that Respondent was put on notice of its unauthorized use of the CAESARS marks and when CAESARS did not receive the response it requested to it demands, therefore, filed these proceedings.

On April 21, 2009, the National Arbitration Forum received an Additional Submission from Respondent which was timely filed.

In such submission, Respondent says the name CAESAR is a common name of a famous roman emperor and cannot be trademarked and that adding the letter “s” is irrelevant because Complainant’s name is uniquely identified and distinguished from the words “card” and “club” by Respondent. Respondent also contends that upon notice from CAESARS asking them to cease use of the domain names, they changed the logo into a completely new one but did refuse to cease the use of the registered domain names. It claims that Complainant was not heard from again, therefore showing a satisfactory end to the dispute on a “friendly” basis. Respondent reiterates that Complainant has no trademark on the common name “CAESAR.” It contends that it advertises on a website with more than ten million visitors per month and that no one has ever asked if they were related, part of, or in conjunction with the CAESARS Palace. Therefore, Respondent contends that this demonstrates that the public understands that they are a complete and independent organization.

On Complainant’s assertion that Respondent has not established rights or legitimate interests in the disputed domain names, Respondent says that it does not share the same Italian or Roman theme and in fact, does not have any particular Italian or Roman theme in its site. Respondent states they only used the famous emperor name to identify themselves as Italians because eighty percent (80%) of their customers are from Italy.

In response to Complainant’s assertion that it has failed to legitimately rebut Complainant’s evidence of registration and use and bad faith, Respondent states Everleaf Network offered a “WSOP” and that the offer was cancelled and never took place. It states that it removed any page regarding such tournament and that it was not accessible from the website in any manner. Therefore, no bad faith could be shown. Respondent also attempts to rebut Complainant’s assertion that Respondent acted in bad faith because they completely agreed to change the Roman head logo but did continue to use the disputed domain name. That after such agreement, they heard nothing further from CAESARS until recently when Respondent began to acquire more business.

FINDINGS

The Panel has reviewed the evidence and finds that the Complainant has proved each of the following elements:

1. The domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

2. The respondent has no rights or legitimate interests in respect to the domain name; and,

3. The domain names have been registered and are being used in bad faith.

DISCUSSION

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.

Identical and/or Confusingly Similar

The Panel finds that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i).

See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel finds that neither the use by Respondent of the terms “card,” “club” and/or “poker,” nor the additions of hyphens and the additions of a generic top-level domain “.com” or “.net,” sufficiently distinguishes the disputed domain names from the mark owned by Complainant. The Panel therefore concludes that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Although Respondent contends the disputed domain names are comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed names are identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(a)(ii) and therefore the burden of proof has shifted to the Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

Complainant has asserted that Respondent lacks the authority or permission to use Complainant’s mark and that it is not commonly known by the disputed domain names. The Panel notes that the WHOIS information lists Respondent as “Poseidon Interactive c/o Stefano Rando.” From such evidence the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

Complainant has asserted Respondent is using the disputed domain names to operate directly competitive websites for online gambling and poker, and that the Respondent is intentionally diverting Internet users seeking Complainant to such sites. The Panel so finds from the evidence that this allegation is correct. The Panel therefore finds that the Respondent has failed to create a bona fide offering of goods and services under Policy ¶ 4(c)(i) or 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).

Complainant also argues that Respondent requested that Complainant make “an interesting offer” for the disputed domain names. The evidence supports the Complainant’s assertion that Respondent requested an offer for an amount beyond its registration costs, and therefore, the Panel finds that the Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).

Registration and Use in Bad Faith

The Panel finds that although the Respondent indicated it would sell the disputed domain names to Complainant, if it received an “interesting offer,” the evidence does not support any allegation that Respondent primarily intended to sell the disputed domain names to Complainant.

The Panel finds that the evidence is insufficient to indicate Respondent’s primary intention was to disrupt Complainant’s business for commercial gain through the registration and use of the domain names.

Complainant has argued, and the Panel so finds, that the Respondent’s use of the alleged confusingly similarly disputed domain names to commercially host directly competitive websites has created a likelihood of confusion as to Complainant’s sponsorship and affiliation with the disputed domain names and corresponding websites. The Panel further finds that such confusion has been exacerbated by Respondent’s assertions to the public that it is affiliated in some form with the Complainant’s famous poker tournaments, and by the Respondent’s past usage of the Complainant’s Roman head logo. From such evidence, the Panel finds that the Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).

Because of the long established use of Complainant’s marks and its worldwide recognition of such marks and logos to be associated with CAESARS Palace, the Panel finds that the Respondent had actual notice of Complainant’s rights to the mark the time of the registration of the disputed domain names. In particular, the initial use of the Roman head logo by Respondent is significant. The Panel therefore finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

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 <caesarcardclub.com>, <caesarcardclub.net>, <caesar-card-club.com>, <caesar-card-club.net>, and <caesarpokerclub.com> domain names be TRANSFERRED from Respondent to Complainant.

Panelists:

Robert T. Pfeuffer, (Ret.), serving as Chair

Honorable Richard DiSalle, (Ret.)

Honorable Carolyn M. Johnson, (Ret.)

Dated: May 12, 2009

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