Harrah's License Company,
LLC v. Jerald Thompson a/k/a Educationbeyond.com
Claim Number: FA0704000956391
PARTIES
Complainant is Harrah's License Company, LLC (“Complainant”), represented by Pamela
K. Lina, of Alston & Bird, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harrahspa.com>, registered with Go Daddy
Software, Inc.
PANEL
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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 6, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 6, 2007.
On April 9, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <harrahspa.com> domain name is
registered with Go Daddy Software, Inc.
and that Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 25, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 15, 2007 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@harrahspa.com by e-mail.
A timely Response was received and determined to be complete on May 15, 2007.
A timely Additional Submission was submitted by Complainant and was
determined to be complete on May 21, 2007.
A timely Additional Submission was submitted by Respondent and was
determined to be complete on May 22, 2007.
On May 22, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
According to Complainant, it is a wholly owned subsidiary of Harrah’s
Operating Company (HOC), which owns or manages more than forty casinos on four
continents, making it the largest casino entertainment company in the world.
Since at least 1937, Complainant has continuously used the mark
HARRAH’S to identify casino and other entertainment services and products. Complainant currently operates 19 casinos in
11 states in the
According to Complainant, its mark HARRAH’S is one of the most well
respected and readily recognized marks in the casino entertainment
industry. Complainant owns registered
trademarks for HARRAH’S and operates a website at <harrahs.com>.
Respondent, a resident of
According to Complainant, on October 4, 2006, Respondent filed an
intent-to-use trademark registration application for the mark “HarrahsPA.COM”
for use in connection with the dissemination of advertising for others via the
Internet. This application was refused
by the US Patent and Trademark Office because it was held to be confusingly
similar to Complainant’s marks.
In response to a letter from Complainant, on December 6, 2006,
Respondent wrote to state that his actions were non-commercial in nature and
that his website included links to Harrah’s websites, including the one for
Harrah’s
Complainant replied to the effect that the trademark application
indicated that Respondent’s intent was commercial use and that the admitted
relation to the casino Harrah’s
On March 21, 2007, Respondent offered to transfer the disputed domain
name to Complainant for the sum of US $ 2,500,000 (two million five hundred
thousand), justifying the amount as compensation for “extensive time, effort,
personal and professional expenses including expenses for domain registration
and website maintenance, advertising revenue generated by the site with over
50,000 hits, and personal effort put into this project.”
According to Complainant, the disputed domain name is confusingly
similar to Complainant’s mark HARRAH’S, because the addition of the letters
“PA” at the end of the domain name do not prevent confusion.
Complainant alleges that Respondent has no rights or legitimate
interests in the disputed domain name because his use of that name is a blatant
attempt to trade on the goodwill and fame associated with Complainant’s
mark. Respondent’s allegation that he
registered the disputed domain name for non-commercial use appears to be
nothing more than an after-the-fact fabrication made in an effort to legitimize
Respondent’s actions. It is contradicted
by his trademark application (which mentioned a commercial purpose, namely
advertising) and by his stating that he earned advertising revenue from the
site at the disputed domain name.
According to Complainant, by luring users seeking information on
Harrah’s
Further, alleges Complainant, given that Complainant’s mark is well
known, and that Respondent had actual knowledge of that mark, as shown by his
website (which includes links to the Harrah’s Chester casino), it is clear that
Respondent registered the disputed domain name in order to create the
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation or endorsement of Respondent’s website, which constitutes bad faith
use in violation of Policy ¶ 4(b)(iv).
Finally, says Complainant, bad faith is also established by
Respondent’s offer to sell the disputed domain name for US $ 2,500,000, which
is in excess of documented out-of-pocket costs and shows that Respondent
registered the disputed domain name in order to profit by selling it, which
constitutes bad faith use in violation of Policy ¶ 4(b)(i).
B. Respondent
Respondent states that the website at the disputed domain name was created by him over 2 years ago as an informational website. Complainant does not own every site or trademark with Harrah’s as a part of the identifier and to allow them to do so would violate fair trade rules. After creating the website at the disputed domain name, he offered Complainant to use the website for advertising, which they declined. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
However, Respondent states that he has made no financial profit from ownership of the disputed domain name. In fact, there is no advertising on the site only a link to his blogs. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
Further, Respondent raises an issue regarding an alleged inaccuracy in the Complaint regarding his name. He states: “while the correct form of my name, Jerald Thompson, Respondent, is used, I do not own the domain name eductionbeyond.com.” That is, Respondent notes that the word “education” was misspelled as “eduction” in the Complaint.
Respondent requests that, due to
that inaccuracy, the case be dismissed, since Complainant failed to correct the
inaccuracy within the time limit provided under the Policy, which, according to
Respondent, was April 23, 2007.
C. Additional Submissions
Complainant
Concerning the alleged inaccuracy in the Complaint with respect to
Respondent’s name, Complainant states that, at the request of the Forum, it
amended the Complaint to include a reference to “educationbeyond.com.” However, due to a typographical error, this
was misspelled at “eductionbeyond.com” in the April 23, 2007 version of the
Complaint and was subsequently corrected on April 24, 2007.
According to Complainant, Respondent shows bad faith by contradicting
his prior statements. In Respondent’s
letter of March 21, 2007 to Complainant, he stated that he had received
“advertising revenue generated by the site with over 50,000 hits.” Respondent’s statement that he has made no
financial profit from the disputed domain name can only be deemed (according to
Complainant) to be an attempt to deceive the Panel into believing that he has a
legitimate interest in the disputed domain name.
Respondent
Respondent alleges that the amended Complaint filed one day after the
deadline (on April 24, 2007) was still incorrect and thus inadmissible. Further, says Respondent, a version of the
Complaint containing the correct name of Respondent was only filed on May 21,
2007, well after the deadline. Thus, he
alleges, the Complaint is inadmissible.
Respondent states, once again, that he has acquired NO financial gain from his ownership of
the disputed domain name; as previously stated, Respondent was in contact with Complainant
to inquire if it would be interested in advertising on his domain site. Respondent had owned the disputed domain name
for over 1.5 years at the time of his contact with Complainant.
Respondent admits to having received over 50,000 hits through the
disputed domain name; however there was never any financial gain by Respondent
and this was only due to his advertising the site, which required intensive
manpower, blogs, and constant daily monitoring and maintenance of the site.
Respondent has parked the disputed domain name to show good faith
during the UDRP process.
FINDINGS
Complainant owns registered trademark rights
in the string HARRAH’S and is a well-known operator of casinos in the USA and
elsewhere.
Respondent used the disputed domain name to
point to a website providing links to Complainant’s Harrah’s
Respondent derived advertising revenue from
the disputed domain name.
Respondent offered to sell the disputed
domain name to Complainant for the sum of US $ 2,500,000 (two million five
hundred thousand).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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;
(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.
Before addressing the substantive issues, the Panel will address the
procedural issue raised by Respondent, namely the alleged misspelling of “aka
<educationbeyond.com>” in the name of Respondent in the Complaint.
The version of the Complaint transmitted by the Forum to the Panel,
dated April 24, 2007, does not contain the
typographical error described by Respondent.
Since this is the formal document to be considered by the Panel, the
Panel holds that Respondent’s allegation regarding the misspelled name is
without merit.
Further, had there been such a misspelling, the Panel would in any case
(in accordance with Paragraphs 10, 12 and 15(a) of the Rules) have held it to
be immaterial, since the misspelling did not have any practical consequence: it
did not prevent Respondent from receiving the Complaint or from recognizing
himself as the intended recipient of the Complaint, as proven by Respondent’s
filing a Response and an Additional Submission.
It is obvious that the disputed domain name
is confusingly similar to Complainant’s mark HARRAH’S. See Daddy’s Junky Music Stores, Inc. v. Kausar,
FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the
domain name is not a distinguishing difference because punctuation is not
significant in determining the similarity of a domain name and a mark.”); see
also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000)
(finding that <kelsonmd.com> is identical or confusingly similar to the
complainant’s federally registered service mark, KELSON).
On the basis of the evidence, and the information
provided by Respondent, the Panel holds that Respondent registered the disputed
domain name in order to generate advertising revenue by redirecting Internet
users. Indeed, Respondent applied for a
trademark registration for “HarrahPA.COM” for the purpose of “dissemination of
advertising for others via the Internet.”
Further, on March 21,
2007, Respondent stated that he had received significant “advertising revenue
generated by the site with over 50,000 hits.”
Such a use does not establish rights or legitimate
interests under the policy. See
Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb.
Forum June 24, 2002) (holding that the respondent’s use of the disputed domain
name to redirect Internet users to commercial websites, unrelated to the
complainant and presumably with the purpose of earning a commission or
pay-per-click referral fee did not evidence rights or legitimate interests in
the domain name); see also Prudential Ins. Co. of Am. v. Stonybrook Invs.,
LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or
legitimate interests in the disputed domain name where the respondent was using
the complainant’s mark to redirect Internet users to a website offering credit
card services unrelated to those services legitimately offered under the
complainant’s mark).
Respondent is using the disputed domain
name to operate a website that provides links to various commercial websites
related to gambling. This use will likely lead to confusion among Internet users as
to Complainant’s sponsorship of or affiliation with the resulting websites. Indeed, the US Patent and Trademark Office
rejected Respondent’s application for the trademark “HarrahsPA.COM” because of
a likelihood of confusion with Complainant’s marks, stating:
Purchasers of the applicant’s [Respondent’s]
services could mistakenly assume that such services were performed by the
registrant [Complainant], or that applicant and registrant are related in some
way.
By his own admission in his March 21, 2007
correspondence (see above) with Complainant (and despite subsequent denials),
Respondent profited from using the disputed domain name by obtaining revenue,
presumably in the form of referral fees for each redirected Internet user. Such use constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003) (“Registration and use of a domain name that incorporates another's mark
with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain).
Further, it is not contested that Respondent
made an offer to sell the disputed domain name for $2,500,000 (two million five
hundred thousand), justifying the amount as compensation for “extensive time,
effort, personal and professional expenses including expenses for domain
registration and website maintenance, advertising revenue generated by the site
with over 50,000 hits, and personal effort put into this project.” It is clear that the amount requested is well
above out-of-pocket costs.
Thus Respondent’s behavior is conclusive
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harrahspa.com> domain name be TRANSFERRED
from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 4, 2007
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