WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caesars Entertainment, Inc. ("CEI") v. Modern Limited - Cayman Web Development
Case No. D2004-0267
1. The Parties
The Complainant is Caesars Entertainment, Inc. ("CEI"), New York, United States of America, represented by Pitney Hardin LLP, United States of America.
The Respondent is Modern Limited - Cayman Web Development, George Town, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 9, 2004. On April 13, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 13, 2004, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2004.
The Center appointed Hugues G. Richard as the sole panelist in this matter on May 14, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a company providing, among other things, casino, entertainment, hotel and restaurant services both in Las Vegas, Nevada, USA and online. The Complainant owns several U.S. trademarks for PARIS and related marks, such as PARIS CASINO RESORT (Registration No. 2,465,866, filed on July 18, 1995, and issued July 3, 2001); PARIS (Registration No. 2,475,977, filed on March 29, 1995, and issued August 7, 2001); PARIS AND DESIGN (Registration No. 2,527,696, filed on July 18, 1997, and issued January 8, 2002; and PARIS LAS VEGAS AND DESIGN (Las Vegas disclaimed) (Registration No. 2,432,163, filed on January 14, 1999, and issued February 27, 2001) (hereinafter the Paris and related marks). These four trademarks have been registered in association with Casino services in Class 41, and hotel and restaurant services in Class 42. As of January 5, 2004, the Complainant has changed its corporate name from Park Place Entertainment Corporation to Ceasars Entertainment, Inc. and has submitted documentation to the United States Patent and Trademark Office to change the owner's name in the record.
Furthermore, the Complainant owns the domain names and and operates a Web site in conjunction with casino, dining and entertainment services, located at these domain names.
The Respondent is based in Grand Cayman, United Kingdom and registered the domain name on April 20, 2002.
5. Parties' Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant contends that its Paris and related marks have a worldwide notoriety in the hotel and casino services. The Complainant contends that since the announcement of the construction and at each step of the creation of the Paris hotel and casino, there was significant publicity associated with the Complainant. It adds that there has also been significant publicity on the Paris hotel and casino since it opened on September 1, 1999. The Complainant has submitted numerous evidence showing the fame and distinctiveness of its Paris and related marks, inter alia, the approximate amount of US$21,974,000 spent in publicity for the years 2001, 2002 and 2003, and the approximate 44,348,236 pedestrians passed through the Paris hotel and casino for the years 2000, 2001, 2002 and 2003, including the approximate 24,000,000 pedestrians only for the year 2003. Furthermore, it contends that the decision Park Place Entertainment Corporation v. Intronational Gamin, Ltd., WIPO Case No. D2002-0884, the panel has considered the fame of the Complainant's Paris mark.
The Complainant contends that the disputed domain name is confusingly similar with its registered service marks, as the disputed domain name is merely a slight variation of the Paris Casino Resort, Paris and Paris Las Vegas marks.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights of legitimate interests in the domain name. The Complainant alleges that the Respondent is not commonly known by any under the disputed domain name. Considering the above-mentioned facts, the Complainant contends that the Respondent has registered and has begun using the disputed domain name after the Complainant had established rights in its Paris and other related marks in association with casino services. Therefore, the Complainant contends that the Respondent cannot claim or show any rights in the disputed domain name superior to Complainant's Paris and related marks. In the view of the extensive coverage of its activities, the Complainant adds that the Respondent cannot demonstrate that it was unaware of the Complainant's marks at the time it registered the disputed domain name.
Furthermore, the Complainant contends that the respondent is not using the domain names in connection with a bona fide offering of goods and services. The Complainant contends that the use of the word PARIS was intended to associate the image of "gay Parie" with hotel and casino in Las Vegas, which is thus an arbitrary and fanciful mark not related with the operation of casino services in Paris, France. The Complainant has also shown evidence that the disputed domain name leads users to an "under construction" Web site that provides access to hotels in Las Vegas and to online gaming sites.
Finally, the Complainant alleges that there exists no relationship between itself and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name. It adds that under U.S. laws, a U.S. company is prohibited from offering online gaming without obtaining proper licensing and credentials.
Registered and Used in Bad Faith
The Complainant contends that the Respondent is using the domain name in order to offer services competing directly with the Complainant and for the purpose of diverting consumers looking for the Complainant's fame mark. The Complainant contends that the Respondent is a well-known cybersquatter and that its behavior is part of an overall pattern of misuse of famous marks for illegitimate purposes. The Complainant has listed and attached several URDP cases where the Respondent has been involved. In each of these cases, the Panel has transferred a domain name registered by the Respondent to complainants. The Complainant adds that the Respondent's modus operandi is identical in all the listed cases; the Respondent had registered a domain name that was directly infringing on a famous trademark or company name. The Complainant also contends that such behavior has been considered in the decision Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 as an evidence of registration and use of a domain name in bad faith.
The Complainant contends that the Respondent's use of the disputed domain name in connection with gambling or casino services, or link to other sites offering those services creates a likelihood of confusion with the Complainant's marks. The Complainant adds that Web users would inevitably believe that the Respondent's Web site is maintained by, sponsored by, affiliated with, or endorsed by the Complainant, given the fame of its PARIS and related marks. Therefore, the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's Web site, in accordance with paragraph 4(b)(iv) of the Policy. The Complainant adds that as it has established its rights in the Paris and related marks long before the Respondent had registered the disputed domain name, showing therefore that the Respondent has sought to profit from an unauthorized association with the Complainant's marks. The Complainant has cited I v. Tenenbaum Ofer, WIPO Case No. D2000-0075, where the panelist has found that "it appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned Web site for commercial gain due to confusion with Complainant's mark".
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar with the Complainant's PARIS CASINO RESORT, PARIS and PARIS LAS VEGAS marks. It is clear that the Complainant's marks are associated, among other services, with the operation of a hotel and a casino in accordance with their registration. Given the impressive amount of money the Complainant has spent in connection with its marks; given the evidence the Complainant has shown in order to establish the fame of its PARIS and related marks around the world; and given that the fame of the Complainant's Paris mark has been established in Park Place Entertainment Corporation v. Intronational Gamin, Ltd., WIPO Case No. D2002-0884, the Panel finds that the Complainant's Paris and related marks has a worldwide notoriety. It is therefore reasonable to believe that a person referring to the disputed domain, may infer a connection or an interest whatsoever with the Complainant. For these reasons, the Panel finds that the disputed domain name is clearly confusingly similar with the Complainant's marks.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has satisfied its burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name since the Respondent did not provide any contentions. Even if the Respondent provides links to other sites offering gambling and casino services on the Web site located at "", it should not be considered as a bona fide offering of services pursuant to paragraph 4(c)(i) of the Policy. Given the fame of the Complainant's marks at the time the Respondent has registered the disputed domain name in 2002, and given the services offered by the Respondent that are directly competing the Complainant, the Panel finds that the Respondent has registered the domain name to misleadingly divert consumers to its Web site.
The Panel has taken upon itself to visit the Respondent's Web site located at "" and has notice that the Web site is under construction. A Web site under construction does not show demonstrable preparations to use the domain name pursuant to paragraph 4(c)(i) of the Policy when it is not corroborate with other evidence.
Finally, as the Respondent did not provide any contentions against the Complainant's allegation that no license, permission or authorization to use its marks exists in favor of the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has shown sufficient evidence that the Respondent has registered and used the disputed domain name in bad faith, in accordance with Paragraph 4(b) of the Policy. Given the fact that the Respondent has been engaged in a pattern to register domain names confusingly similar with famous marks, and that it provides, through its Web site, services directly competing with the Complainant's services. The Panel considers that the Respondent is using the disputed domain name in a way to intentionally attempted to attract, for commercial gain, Internet users to its Web site by creating a likelihood of confusion. As the domain name is composed of the PARIS famous mark added with the main services in association with this mark, the Panel find that a Web user may infer a reasonable connection with the Respondent and the Complainant created by the likelihood of confusion. For these reasons, the Panel find that the Respondent has clearly registered and used the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Hugues G. Richard
Sole Panelist
Dated: May 28, 2004
Full & Egal Universal Law Academy