Harrah's License Company, LLC v. Federico
Schiavio
Claim Number: FA0605000720792
PARTIES
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 Federico Schiavio (“Respondent”),
represented by Darren S. Rimer, of Rimer & Mathewson LLP, 28202
Cabot Road, Suite 300, Laguna Niguel, CA 92677.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wsop.com>,
registered with Encirca Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Hon. Ralph Yachnin (Ret.), Paul M. DeCicco, Esq., and James A. Carmody,
Esq., as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 30, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 30, 2006.
On June 6, 2006, Encirca Inc confirmed by e-mail to the National
Arbitration Forum that the <wsop.com>
domain name is registered with Encirca Inc and that the Respondent is the
current registrant of the name. Encirca
Inc has verified that Respondent is bound by the Encirca Inc 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 June 12, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 3, 2006 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@wsop.com by e-mail.
On June 19, 2006, Respondent requested additional time to submit a
Response to the Complaint and submitted information in support of this
request. The National Arbitration Forum
found extenuating circumstances to exist and extended the Response deadline to
July 24, 2006.
A timely Response was received and determined to be complete on July
24, 2006.
On August 3, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed the Hon. Ralph Yachnin (Ret.), Paul M. DeCicco,
Esq. and James A. Carmody, Esq. (Chair) as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <wsop.com> domain name (the sole “domain name at issue”) is confusingly similar to Complainant’s registered WORLD SERIES OF POKER mark and to Complainant’s WSOP mark in which common law rights are asserted.
2. Respondent does not have any rights or legitimate interests in the above described marks or in the domain name at issue.
3. Respondent registered and has used the domain name at issue in bad faith.
4. Counsel for Complainant specifically represented, in para. IX. OTHER LEGAL PROCEEDINGS, that, “No other legal proceedings have been commenced or terminated in connection with or relating to the Domain Names.” [sic]
B. Respondent
1. Respondent defends on the grounds that the
domain name at issue is not identical or deceptively similar to Complainant’s
WORLD SERIES OF POKER mark and that, if Complainant has any common law rights
in the WSOP mark, they are not exclusive and, in any event, are inferior to
Respondent’s rights.
2. Respondent, accordingly, asserts that its
use of the domain name at issue is legitimate and not in bad faith. In particular, Respondent points out that
Complainant acquired the WORLD SERIES OF POKER mark in March of 2004 by
assignment in a transaction with Horseshoe Club Operating Company. The assignment conveyed numerous registered
marks and many applications for registrations of marks, including the WORLD
SERIES OF POKER mark but did not make any reference to the WSOP mark in which
Complainant asserts common law rights by virtue of that assignment. 3. Finally, Respondent notes that, in January
of 2004, he applied for registration of the WSOP mark with the U.S. Patent
& Trademark Office and that such legal proceeding has involved office
actions of the examiner and the active participation of the Complainant who
filed an Opposition to the Respondent’s application using the same law firm which
represented to this Panel that “no other legal proceedings” were afoot.
C. Additional Submissions
Each of the parties submitted very extensive Additional Submissions
which essentially provided more factual data with respect to the controversy
and which were taken into consideration by the Panel.
D. Correspondence from counsel
Following the time allotted for additional submissions, the Forum and
the Panel were advised by counsel for both parties that the Respondent had
filed suit against Complainant in the U.S. District Court for the Central
District of California, seeking a declaratory judgment to the effect that its
registration and use of the domain name at issue is not unlawful and involving
other issues closely related to the controversy before this Panel.
FINDINGS
The Panel is unanimous in finding that it
would be inappropriate for it to render a decision
on the merits in this UDRP controversy in light of the pending proceeding before the
U.S. Patent & Trademark Office in which the Respondent seeks to register
the mark WSOP, and is opposed in
such proceeding by the Complainant. The
outcome in the USPTO might well be
determinative with respect to rights in the WSOP mark and any UDRP consideration of the <wsop.com> domain name at issue. Further, the litigation brought
by Respondent in the U.S. District Court for the Central District of California
involves the domain name at issue and stands as another strong reason
for this panel to decline to
issue a decision on the merits of the controversy.
This action of the Panel is
authorized by Rule 18 of the Policy which provides in pertinent part:
Effect of Court Proceedings
(a)
In the event of any legal proceedings initiated prior to or during an
administrative proceeding
in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to
decide whether to suspend or terminate the administrative
proceeding, or to proceed to a decision.
Other UDRP panels have responded in similar fashion. See AmeriPlan Corp. v. Gilbert, FA 105737 (Nat. Arb. Forum Apr. 22,
2002) (holding that it was appropriate for the panel to dismiss the UDRP action
because civil litigation was pending against the complainant involving
ownership of the domain name at issue); see also Life Extension Found., Inc.
v. Vitacost.com, FA 288377 (Nat. Arb. Forum Sept. 2, 2004) (holding that it
was appropriate to dismiss the UDRP case involving <lef.com> without
prejudice due to the pending and opposed application to register the mark LEF
with the USPTO by respondent).
DECISION
Accordingly, the Panel orders that the Complaint be and hereby is DISMISSED.
Hon.
Ralph Yachnin (Ret.),
Paul
M. DeCicco, Esq.,
James A.
Carmody, Esq. (Chair)
For the Panel
Dated: August 22, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National Arbitration Forum