Caesars License Company, LLC v. Determiner Weekly .Com / Kathy Coleman / Kathy Maclin
Claim Number: FA1206001446945
Complainant is Caesars License Company, LLC (“Complainant”), represented by Nadya Sand of Alston & Bird, LLP, Georgia, USA. Respondent is Determiner Weekly .Com / Kathy Coleman / Kathy Maclin (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <horseshoecasinocincinnati.org>, <horseshoecasinocleveland.org>, <cincinnaticasinohorseshoe.com>, <clevelandcasinohorseshoe.com>, <horseshoe-casino-cincinnati.com>, <horseshoe-casino-cleveland.com>, <horseshoecasinosohio.com>, <casinohorseshoetoledo.com>, <cleveland-horseshoe-casino.com>, <toledo-horseshoe-casino.com>, <horseshoecasinocincinnati.net>, and <horseshoecasinocincinnati.info>, registered with Godaddy.Com 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2012; the National Arbitration Forum received payment on June 3, 2012.
On June 7, 2012, Godaddy.Com Llc confirmed by e-mail to the National Arbitration Forum that the <horseshoecasinocincinnati.org>, <horseshoecasinocleveland.org>, <cincinnaticasinohorseshoe.com>, <clevelandcasinohorseshoe.com>, <horseshoe-casino-cincinnati.com>, <horseshoe-casino-cleveland.com>, <horseshoecasinosohio.com>, <casinohorseshoetoledo.com>, <cleveland-horseshoe-casino.com>, <toledo-horseshoe-casino.com>, <horseshoecasinocincinnati.net>, and <horseshoecasinocincinnati.info> domain names are registered with Godaddy.Com Llc and that Respondent is the current registrant of the names. Godaddy.Com Llc has verified that Respondent is bound by the Godaddy.Com 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 June 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@horseshoecasinocincinnati.org, postmaster@horseshoecasinocleveland.org, postmaster@cincinnaticasinohorseshoe.com, postmaster@clevelandcasinohorseshoe.com, postmaster@horseshoe-casino-cincinnati.com, postmaster@horseshoe-casino-cleveland.com, postmaster@horseshoecasinosohio.com, postmaster@casinohorseshoetoledo.com, postmaster@cleveland-horseshoe-casino.com, postmaster@toledo-horseshoe-casino.com, postmaster@horseshoecasinocincinnati.net, and postmaster@horseshoecasinocincinnati.info. Also on June 13, 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.
An e-mail Response was received on July 3, 2012. The Panel has determined to consider the Response even though it was technically deficient because it was not served on Complainant on July 3, 2012.
Complainant filed an Additional Submission on July 9, 2012, which addressed the Response and was considered by the Panel.
On July 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <horseshoecasinocincinnati.org>, <horseshoecasinocleveland.org>, <cincinnaticasinohorseshoe.com>, <clevelandcasinohorseshoe.com>, <horseshoe-casino-cincinnati.com>, <horseshoe-casino-cleveland.com>, <horseshoecasinosohio.com>, <casinohorseshoetoledo.com>, <cleveland-horseshoe-casino.com>, <toledo-horseshoe-casino.com>, <horseshoecasinocincinnati.net>, and <horseshoecasinocincinnati.info> domain names are confusingly similar to Complainant’s HORSESHOE mark.
2. Respondent does not have any rights or legitimate interests in the <horseshoecasinocincinnati.org>, <horseshoecasinocleveland.org>, <cincinnaticasinohorseshoe.com>, <clevelandcasinohorseshoe.com>, <horseshoe-casino-cincinnati.com>, <horseshoe-casino-cleveland.com>, <horseshoecasinosohio.com>, <casinohorseshoetoledo.com>, <cleveland-horseshoe-casino.com>, <toledo-horseshoe-casino.com>, <horseshoecasinocincinnati.net>, and <horseshoecasinocincinnati.info> domain names.
3. Respondent registered and used the <horseshoecasinocincinnati.org>, <horseshoecasinocleveland.org>, <cincinnaticasinohorseshoe.com>, <clevelandcasinohorseshoe.com>, <horseshoe-casino-cincinnati.com>, <horseshoe-casino-cleveland.com>, <horseshoecasinosohio.com>, <casinohorseshoetoledo.com>, <cleveland-horseshoe-casino.com>, <toledo-horseshoe-casino.com>, <horseshoecasinocincinnati.net>, and <horseshoecasinocincinnati.info> domain names in bad faith.
B. Respondent makes the following assertions:
“Respondents herein deny each and every allegation in the complaint including allegations involving the Plain Dealer News[paper as false and defamatory and object to this administrative proceeding without a contractual or any other agreement by Respondents to this forum as illegal and unconstitutional
Respondents bought the domain names in good faith and have never tried to sale or benefit and no trademark existed when bought from godaddy.com and Respondent has done nothing illegal
The complainant lacks standing to bring the complaint and godaddy.com and any other entity that sold the domain names must be a necessary party to this proceeding
Respondents have been singled out where Whites and men with similar domain names are not being harassed becuase she is Black, female and a community activists and journalist as to previously the Call and Post Newspaper and now Cleveland Urban News.Com, <clevelandurbannews.com>.
The complaint fails to state a claim upon which relief can be granted and the National Arbitration Association lacks jurisdiction for this administrative proceeding.
Respondents alleged any other applicable reason relative to theses proceedings.”
C. In its Additional Submission, Complainant makes the following assertions:
1. Complainant is the owner of the HORSESHOE mark, which it has used for more than 50 years, and therefore has standing in this case. Respondent is the registrant of all of the disputed domain names. Registrars are not parties to UDRP cases. The National Arbitration Forum has jurisdiction through the registration agreements Respondent signed with the registrars.
2. Complainant reiterated and provided additional evidence of its various arguments on bad faith.
Complainant is the owner and operator of HORSESHOE branded casinos and hotels. Complainant owns trademark registrations for the HORSESHOE mark with several trademark authorities including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,839,688 registered June 14, 1994).
Respondent registered the disputed domain names in December 2011 and March 2012, and uses them to host websites containing links to various third-party websites.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the disputed domain names are effectively controlled by the same person and/or entity operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel notes that the mailing address, telephone number, administrative contact, and technical contact for each disputed domain name are identical. Further, in its Response, Respondent refers to “Respondent Kathy Coleman, Kathy Wray Coleman, the Determiner Weekly.com, and Kathy Maclin.” Therefore, the Panel finds that the disputed domain names are controlled by the same person.
The Panel finds that Complainant has established rights in the HORSESHOE mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <horseshoecasinocincinnati.org>, <horseshoecasinocleveland.org>, <cincinnaticasinohorseshoe.com>, <clevelandcasinohorseshoe.com>, <horseshoe-casino-cincinnati.com>, <horseshoe-casino-cleveland.com>, <horseshoecasinosohio.com>, <casinohorseshoetoledo.com>, <cleveland-horseshoe-casino.com>, <toledo-horseshoe-casino.com>, <horseshoecasinocincinnati.net>, and <horseshoecasinocincinnati.info> domain names are confusingly similar to Complainant’s HORSESHOE mark because they merely add a generic or descriptive term. The Panel finds that the addition of a descriptive term, a geographic term, and/or hyphens does not distinguish the disputed domain names from Complainant’s mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). The addition of a generic top-level domain (“gTLD”), such as, “.com,” “.org,” “.net,” or “.info,” is not relevant to a Policy ¶ 4(a)(i) analysis. 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). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s HORSESHOE mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), 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 argues that Respondent is not commonly known by the disputed domain names and has not been granted permission to use the HORSESHOE mark. Respondent did not offer any contrary evidence. The WHOIS information does not contain any support for the proposition that Respondent is commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant argues that Respondent is using the disputed domain names to host commercial links to third parties. The Panel notes that all of the resolving websites contain third-party links to various companies, some of which appear to directly compete with Complainant in the casino and hotel industry. The Panel finds that Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the disputed domain names with a goal to sell the domain names to Complainant for profit in excess of Respondent’s out-of-pocket expenses, long held as evidence of bad faith. Complainant provides a news article from the Cleveland Plain Dealer that supports this contention. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(i). See E.I. duPont de Nemours & Co. v. Mark Fishman, FA 093889 (Nat. Arb. Forum Mar. 29, 2000.)
Respondent’s disputed domain names resolve to websites that feature third-party links to Complainant’s competitors in the hotel and casino industry as well as to unrelated websites. The Panel finds that Respondent has created a likelihood of confusion with Complainant’s mark in an attempt to profit from such confusion, further evidence of bad faith under 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).”).
The Panel notes a further indication of bad faith in Respondent’s deliberate registering some of the disputed domain names after Complainant sent a letter asserting its trademark rights in the first, similar group of disputed domain names registered by Respondent.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <horseshoecasinocincinnati.org>, <horseshoecasinocleveland.org>, <cincinnaticasinohorseshoe.com>, <clevelandcasinohorseshoe.com>, <horseshoe-casino-cincinnati.com>, <horseshoe-casino-cleveland.com>, <horseshoecasinosohio.com>, <casinohorseshoetoledo.com>, <cleveland-horseshoe-casino.com>, <toledo-horseshoe-casino.com>, <horseshoecasinocincinnati.net>, and <horseshoecasinocincinnati.info> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 13, 2012
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