Horseshoe License Company et. al. v. Eric
Bouchard
Claim Number: FA0301000142943
PARTIES
Complainant is Horseshoe License Company et. al., Las Vegas, NV, USA (“Complainant”) represented by John F. Prescott, Jr., of Ice Miller. Respondent is Eric Bouchard, St. John, ANTIGUA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <binionscasino.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.Com.
The undersigned certifies that he or she 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 27, 2003; the Forum received a hard copy of the Complaint on January 27, 2003.
On January 30, 2003, Computer Services Langenbach Gmbh d/b/a Joker.Com confirmed by e-mail to the Forum that the domain name <binionscasino.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.Com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.Com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a 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 January 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 19, 2003 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@binionscasino.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 February 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <binionscasino.com> domain name is confusingly similar to Complainant’s BINION mark.
2. Respondent does not have any rights or legitimate interests in the <binionscasino.com> domain name.
3. Respondent registered and used the <binionscasino.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Horseshoe License
Company et. al., currently holds several registered trademarks for marks incorporating
the BINION mark (e.g. U.S. Reg. No. 2,150,944, registered on the
Principal Register of the United States Patent and Trademark Office (“USPTO”)
on April 14, 1998). Complainant uses its BINION family of marks in connection
with the operation of its Binion’s Horseshoe Hotel and Casino located in Las
Vegas, Nevada, U.S.A.
Along with its federal trademark
registrations and additional registration with the State of Nevada, Complainant
has established rights in the BINION mark. Complainant’s predecessors in
interest have operated under the BINION mark since 1951, creating recognition
for its mark through its policy of permitting much higher wagers than most
casinos then operating in Las Vegas, Nevada. Currently, Complainant is the
largest privately held casino company in the United States. Complainant also
maintains a website at <binion.com>.
Respondent, Eric Bouchard, registered the <binionscasino.com> domain name on February 22, 2000, and is not licensed or authorized to use Complainant’s BINION mark for any purpose. Respondent uses the domain name to operate an on-line casino. In addition, Respondent offers Internet users the opportunity to wager on sporting events.
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.
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.
Complainant has established rights in the BINION mark through registration on the Principal Register of the USPTO as well as through half a century of continuous use of the mark in commerce.
Respondent’s <binionscasino.com>
domain name is confusingly similar
to Complainant’s BINION mark. Respondent’s domain name is a pluralization of
Complainant’s mark with the addition of the word “casino.” Respondent’s
pluralization is an insignificant change to Complainant’s mark for the purposes
of Policy ¶ 4(a)(i). Furthermore, its addition of the word “casino,” a word
that describes the type of business that Complainant engages in under its
BINION mark, acts to increase rather than decrease confusing similarity with
the mark. See Cream Pie
Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that
“the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does
not prevent the likelihood of confusion caused by the use of the remaining
identical mark. The domain name <creampies.com> is similar in sound,
appearance, and connotation”); see also Brown
& Bigelow, Inc. v. Rodela, FA 96466
(Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain
name is confusingly similar to Complainant’s HOYLE mark, and that the addition
of “casino,” a generic word describing the type of business in which
Complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity).
Accordingly, the Panel finds that the <binionscasino.com> domain name is confusingly similar to Complainant’s BINION mark under Policy ¶ 4(a)(i).
Complainant carries the initial burden of proving that Respondent has
no rights or legitimate interests in a dispute domain name under Policy ¶
4(a)(ii). Complainant can meet this burden with a showing that the provisions
of Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. As Respondent did not
respond to the Complaint, the Panel will view the Complaint in a light
favorable to Complainant, and if the Panel is satisfied by Complainant’s evidence,
will find for Complainant on this element. See Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the
Respondent’s failure to respond: (1) that the Respondent does not deny the
facts asserted by the Complainant, and (2) the Respondent does not deny
conclusions which the Complainant asserts can be drawn from the facts); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has no rights or legitimate interests in the <binionscasino.com> domain name. Respondent appropriated Complainant’s BINION mark and used it to operate in the exact same industry as Complainant, the gambling industry. Such infringing and competing use of a domain name does not evidence a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it evidence a noncommerical or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).
There is no evidence before the Panel indicating that Respondent, Eric Bouchard, is “commonly known by” any derivative of Complainant’s BINION mark, or by the name BINIONSCASINO or <binionscasino.com>. Therefore, the Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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").
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <binionscasino.com> domain name under Policy ¶ 4(a)(ii).
Respondent registered and used the <binionscasino.com> domain name in bad faith. Respondent registered an infringing domain name, one which incorporated Complainant’s mark with the addition of a word describing Complainant’s business. Respondent then chose to operate an online casino, a business activity that directly competes with Complainant. In appropriating Complainant’s mark for its own commercial gain, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).
Additionally, Respondent’s
operation of the <binionscasino.com> domain name appears to violate 18 U.S.C. §1081, which prohibits the use of
a “wire communication facility” (such as the Internet) to engage in the placing
of wagers on sporting events or contests. Respondent’s operation of a
sportsbook at the disputed domain name would appear to violate this law. The
Panel views Respondent’s infringement of Complainant’s mark to facilitate a
violation of U.S. law as additional evidence that Respondent is using the
domain name in bad faith. See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001)
(finding bad faith because it would be illegal for Respondent to use the domain
name <mnlottery.com>
without government approval); see also Int'l Olympic Comm.
& United States Olympic Comm. v. Russell Ritchey d/b/a EZ Fixin's, FA
128817 (Nat. Arb. Forum Jan. 20, 2003) (finding that Respondent's registration
was done in violation of a federal statute, and as such was held to be ipso
facto bad faith).
The Panel thus finds that Respondent registered and used the <binionscasino.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <binionscasino.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 28, 2003
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