Caesars World, Inc. v. Whois Agent Whois Privacy Protection
Claim Number: FA1205001444726
Complainant is Caesars World, Inc. (“Complainant”), represented by Nadya Munasifi Sand of Alston & Bird, LLP, Georgia, USA. Respondent is Whois Agent Whois Privacy Protection (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nobucaesarspalace.com>, registered with Wild West Domains, LLC.
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 electronically on May 18, 2012; the National Arbitration Forum received payment on May 18, 2012.
On May 21, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <nobucaesarspalace.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nobucaesarspalace.com. Also on May 21, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
a) Complainant has rights in the CAESARS PALACE mark, which it uses in connection with casinos, hotels, restaurants, spas, and related goods and services;
b) Complainant owns United States Patent and Trademark Office (“USPTO”) trademark registrations for the CAESARS PALACE mark (e.g., Reg. No. 907,693 registered February 9, 1971);
c) The <nobucaesarspalace.com> domain name is confusingly similar to the CAESARS PALACE mark;
d) Respondent is not commonly known by the <nobucaesarspalace.com> domain name;
e) The <nobucaesarspalace.com> domain name resolves to a website that displays links to competing goods and services in the hotel industry;
f) Respondent has attempted to lure Internet users to its website by registering and using the confusingly similar <nobucaesarspalace.com> domain name for the purpose of redirecting Internet users to third-party websites for Respondent’s commercial gain;
g) Respondent registered and began using the <nobucaesarspalace.com> domain name in opportunistic bad faith;
h) Respondent registered and began using the <nobucaesarspalace.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the CAESARS PALACE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its CAESARS PALACE mark.
2. Respondent’s <nobucaesarspalace.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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."
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.
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.”).
Complainant asserts that it has rights in the CAESARS PALACE mark. Complainant contends that it uses its mark in connection with goods and services related to casinos and hotels, among other things. Through the USPTO, Complainant argues that it owns trademark registrations for the CAESARS PALACE mark (e.g., Reg. No. 907,693 registered February 9, 1971). Panels have found that the registration of a mark is evidence of rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the CAESARS PALACE mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <nobucaesarspalace.com> domain name is confusingly similar to the CAESARS PALACE mark. The Panel finds that the addition of the generic term “nobu” fails to differentiate the <nobucaesarspalace.com> domain name from the CAESARS PALACE mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also finds that the deletion of spaces and the addition of the generic top-level domain (“gTLD”) “.com” are irrelevant to the purposes of a determining confusing similarity. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <nobucaesarspalace.com> domain name is confusingly similar to the CAESARS PALACE mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to 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 asserts that Respondent is not commonly known by the <nobucaesarspalace.com> domain name. Complainant notes that Respondent has no connection or affiliation with Complainant and has not been granted a license or consent of any kind to use the CAESARS PALACE mark. Additionally, Complainant asserts that the WHOIS record for the <nobucaesarspalace.com> domain name lists “Whois Agent Whois Privacy Protection” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <nobucaesarspalace.com> domain name pursuant to 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).
Complainant asserts that Respondent’s use of the <nobucaesarspalace.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends that the <nobucaesarspalace.com> domain name resolves to a website that displays links to third parties in the hotel and casino industry that compete with Complainant’s offerings made under the CAESARS PALACE mark. Panels have found that the display of competing links is not a use which provides rights or legitimate interests. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s use of the <nobucaesarspalace.com> domain name to display links to competitive goods and services is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Complainant asserts that Respondent registered and is using the <nobucaesarspalace.com> domain name in bad faith. Complainant contends that Respondent attempted to lure Internet users to the <nobucaesarspalace.com> domain name by using Complainant’s mark. Complainant contends that Respondent intends to redirect Internet users through the links displayed on Respondent’s website so as to make a profit. Complainant asserts that the <nobucaesarspalace.com> domain name resolves to a website displaying link headings, such as “Click for Las Vegas Hotel” and “South Point Hotel Casino,” which Complainant contends diverts Internet users to competing third-party websites. Therefore, the Panel finds that Respondent registered and is using, in bad faith, the disputed domain name in order to attract, for commercial gain, Internet users to the <nobucaesarspalace.com> domain name by creating a likelihood of confusion as to the source of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant contends that Respondent registered and is using the <nobucaesarspalace.com> domain name in opportunistic bad faith. Complainant provides evidence that on March 7, 2011 a press release was circulated discussing Complainant’s coupling with Nobu Hospitality to create a new hotel, restaurant, and lounge in Las Vegas. Complainant asserts that on March 8, 2011 Respondent registered the <nobucaesarspalace.com> domain name, which Complainant contends includes Complainant’s mark along with the term “Nobu” to indicate a relationship with Nobu Hospitality. Therefore, the Panel finds that Respondent registered and began using the <nobucaesarspalace.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Complainant also contends that, in light of the extensive and long-standing trademark registration of Complainant's CAESARS PALACE mark it is inconceivable that Respondent could have registered the <nobucaesarspalace.com> domain name without constructive knowledge of Complainant's rights in the mark. Complainant asserts that Respondent’s actual notice is demonstrated by the fact that the registration of the <nobucaesarspalace.com> domain name occurred the day following a press release regarding Complainant and its new business dealings with Nobu. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See: Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nobucaesarspalace.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 29, 2012
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