Harrah's License Company, LLC v. NASA trading Co. c/o Brooks Johnson
Claim Number: FA0511000591390
Complainant is Harrah's License Company, LLC (“Complainant”), represented by David J. Stewart, of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA 30309. Respondent is NASA trading Co. c/o Brooks Johnson (“Respondent”), South Brooklin, 16, New York, NY 10023.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <enterwsop.com>, registered with Names4Ever, http://www.names4ever.com
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 7, 2005.
On November 4, 2005, Names4Ever,
http://www.names4ever.com
confirmed by e-mail to the National Arbitration Forum that the <enterwsop.com>
domain name is registered with Names4Ever, http://www.names4ever.com
and that Respondent is the current registrant of the name. names4ever, http://www.names4ever.com has verified that Respondent is bound by the Names4Ever, http://www.names4ever.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 November 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2005 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@enterwsop.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin
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." 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 makes the following assertions:
1. Respondent’s <enterwsop.com> domain name is confusingly similar to Complainant’s WSOP mark.
2. Respondent does not have any rights or legitimate interests in the <enterwsop.com> domain name.
3. Respondent registered and used the <enterwsop.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Harrah’s License Company, LLC, is a wholly owned subsidiary of Harrah’s Operating Company, Inc. Through licensed subsidiaries, Complainant owns or manages more than forty casinos in three countries, making it the largest casino entertainment company in the world.
In March 2004, Complainant acquired, by assignment from Horseshoe License Company, all worldwide rights in the famous WORLD SERIES OF POWER mark and the goodwill appurtenant thereto. The World Series of Poker, widely known by the acronym “WSOP” is the world’s largest and most prestigious poker tournament. The World Series
Of Poker tournaments began in 1970 and has been staged annually since then. Complainant and its predecessors-in-interest have continuously and exclusively used the WORLD SERIES OF POKER mark since at least as early as 1970 to identify the WSOP tournaments and related merchandise. Complainant also owns trademark registration rights for the WORLD SERIES OF POKER mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,025,395, issued November 18, 1975). Although Complainant does not have registration right for the WSOP mark, Complainant has used the WSOP mark interchangeably with its WORLD SERIES OF POKER mark in commerce since it began using the WORLD SERIES OF POKER mark.
Respondent registered the <enterwsop.com> domain name on June 25, 2004. Respondent is using the disputed domain name to host a website entitled “World series of Poker 2005.” The website bears a prominent image of Complainant’s WSOP logo at the top left corner of the homepage and encourages visitors to play poker at a number of third party websites, including <empirepoker.com> and <partypoker.com>.
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. 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.”).
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 that it has common law rights in the WSOP mark through its continuous use and promotion of the mark in commerce. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established ); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
The domain name registered by Respondent is confusingly
similar to Complainant’s WSOP mark because the domain name incorporates
Complainant’s mark in its entirety and deviates from it only by adding the
generic or descriptive term “enter.”
The addition of the word “enter” does nothing to distinguish
Respondent’s domain name from Complainant’s WSOP mark. A domain name registrant cannot avoid a
finding of confusing similarity with Complainant’s mark merely by adding such a
descriptive term to a mark. See L.L.
Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000)
(finding that combining the generic word “shop” with the complainant’s
registered mark “llbean” does not circumvent the complainant’s rights in the
mark nor avoid the confusing similarity aspect of the ICANN Policy); see
also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding
that “Respondent does not by adding the common descriptive or generic terms
‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks
in which it has rights or legitimate interests, nor does it alter the
underlying [PG&E] mark held by Complainant”); see also Christie’s Inc.
v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding
that the domain name <christiesauction.com>
is confusingly similar to the complainant's mark since it merely adds the word
“auction” used in its generic sense).
Furthermore, the addition of the generic top-level domain “.com” does not negate the confusing similarity of Respondent’s domain name to Complainant’s WSOP mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <enterwsop.com> domain name. When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Additionally, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the <enterwsop.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Moreover, Respondent is using the <enterwsop.com> domain name to host a website entitled “World series of Poker 2005.” The website bears a prominent image of Complainant’s WSOP logo at the top left corner of the homepage and encourages visitors to play poker at a number of third party websites, including <empirepoker.com> and <partypoker.com>. The Panel presumes that Respondent receives click through fees by the nature of Respondent’s website and finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to divert Internet users for Respondent’s own commercial gain does not constitute 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). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent intentionally registered the disputed domain name that contains, in its entirety, Complainant’s well-known mark and did so for Respondent’s commercial gain. Respondent’s domain name diverts Internet users who seek Complainant’s WSOP mark to Respondent’s commercial website through the use of a confusingly similar domain name. Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s WSOP mark. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent registered the domain name to disrupt Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly competes with Complainant. Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where the respondent and the complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enterwsop.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin
Justice, Supreme Court, NY (Ret.)
Dated: December 14, 2005
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