Complainant is Hollywood Casinos, LLC and Penn National Gaming, Inc. of Wyomissing, Pennsylvania, United States of America (“United States”), represented by Ballard Spahr LLP, United States.
Respondent is Perfect Privacy, LLC / Holding Account of Jacksonville, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom427, Incorporated (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2018. On June 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 13, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 14, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was July 4, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 5, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 18, 2018. 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
Complainant Hollywood Casinos, LLC is a wholly owned subsidiary of Complainant Penn National Gaming, Inc. (collectively, the “Complainants”).
Complainants are the owners of trademark registrations for the mark HOLLYWOOD CASINO in the United States, Cambodia, Canada, Mexico, New Zealand, and the European Union. For example, Complainants own United States federal trademark registrations for the HOLLYWOOD CASINO mark for computer games, mobile apps, and online games (Reg. Nos. 5,100,555 and 5,147,402, registered December 13, 2016 and February 21, 2017); United States federal registrations for the HOLLYWOOD CASINO mark for casino and hotel services (Reg. Nos. 1,851,759 and 1,903,858, registered August 30, 1994 and July 4, 1995); and a United States federal registration for the HOLLYWOOD CASINO mark for retail store services, various entertainment services, and various restaurant, banquet, and catering services (Reg. No. 4,400,203, registered September 10, 2013). Complainants have used the HOLLYWOOD CASINO mark for more than 21 years.
Complainants’ rights in the HOLLYWOOD CASINO marks pre-date the registration of the disputed domain name, , which occurred on December 29, 2017.
The disputed domain name resolves to a parked page containing sponsored links to third-party websites. 5. Parties’ Contentions A. Complainants
Complainants assert that they own valid and enforceable rights in the HOLLYWOOD CASINO mark for use in connection with various goods and services, including casino and hotel services, retail store services, entertainment, restaurant, banquet, and catering services, and computer, mobile, and online games, and that Complainant acquired these rights prior to the date on which Respondent registered the disputed domain name.
Complainants contend that the disputed domain name is virtually identical to the domain name at which Complainants’ online gaming site is hosted, , and that the disputed domain name contains the entirety of Complainants’ registered trademark, HOLLYWOOD CASINO, with the generic phrase “playforfun” appended. Complainants therefore assert that the disputed domain name is identical or confusingly similar to Complainants’ mark.
Complainants assert that Respondent has no rights or legitimate interest in the disputed domain name, as no relationship exists between Complainants and Respondent and there is no license authorizing Respondent to use the disputed domain name or the HOLLYWOOD CASINO mark. According to Complainants, there is no indication that Respondent has ever been known for its use of the disputed domain name, and Respondent is involved in domain name speculation, using the disputed domain name as “bait” to Respondent’s sponsored link website, rather than as a descriptor of any products or services. Complainants’ rights in the HOLLYWOOD CASINO marks predate Respondent’s registration of the disputed domain name by more than 20 years. Complainant asserts that Respondent’s use of the disputed domain name in connection with a website with links to third-party websites from which Respondent collects click-through fees does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Therefore, Complainants assert they have made a prima facie showing that Respondent lacks any rights or legitimate interests in the disputed domain name.
Complainants contend that Respondent has registered and used the disputed domain name in bad faith, given that Respondent has pointed the disputed domain name to a website that is set up for the exclusive purpose of hosting sponsored links; the disputed domain name contains a well-known trademark; and the disputed domain name is virtually identical to Complainants’ domain name. Complainants note that certain of the third-party websites linked to from the website located at the disputed domain name are for competitors of Complainants, and that such links generate click-through fees for Respondent. Complainants also note that Respondent has listed the disputed domain name for sale at USD 499, a price well above the registration fee, both in a banner advertisement in the WhoIs record for the disputed domain name, as well as in text on the website to which the disputed domain name resolves.
Accordingly, Complainants have requested that the disputed domain name be transferred to Complainant Penn National Gaming, Inc. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
As a procedural matter, this Complaint was filed jointly by two parties, Complainant Hollywood Casinos, LLC, which has been identified as a wholly owned subsidiary of Complainant Penn National Gaming, Inc. Where multiple related parties have rights in the relevant mark on which a UDRP complaint is based, a UDRP complaint may be brought by any one party or both parties filing as joint complainants.See, e.g., Chicago Mercantile Exchange Inc. and CME Group Inc. v. Johnson Atru,WIPO Case No. D2015-1941.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainant has provided evidence that it has rights in the HOLLYWOOD CASINO mark, which has been registered in the United States and elsewhere internationally.
With Complainant’s rights in the HOLLYWOOD CASINO mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD in which it is registered, in this case, “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s HOLLYWOOD CASINO mark because it is fully incorporated into the disputed domain name at the second level. The addition of the phrase “play for fun” appended to the mark does not distinguish the disputed domain name from the mark. As noted above, the addition of the gTLD “.com” may be disregarded for purposes of analysis under this element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the HOLLYWOOD CASINO mark and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainants must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainants make such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainants. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainants will have sustained their burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainants and the HOLLYWOOD CASINO mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent has used the disputed domain name to divert Internet users to its own website, providing links to third-party websites from which Respondent ostensibly collects click-through fees, including websites associated with Complainants’ competitors.
In these circumstances, use of the disputed domain name to redirect Internet users to a website used to generate click-through fees from links to other third-party websites cannot confer any rights or legitimate interest in the disputed domain name to Respondent. See, e.g., Richemont International SA v. Turvill Consultants,WIPO Case No. D2014-0862 (“Respondent is using the disputed domain names as pay-per-click advertisement websites that include a search engine and advertise links to the products of the Complainant’s competitors and/or counterfeit products, which is not a bona fide or legitimate use”).
Complainants have provided evidence supporting their prima facie claim that Respondent lacks any rights or legitimate interests in the disputed domain name. Respondent has failed to produce countervailing evidence of any rights or legitimate interest in the disputed domain name. Thus, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Given that Respondent lacks any rights or legitimate interests in the disputed domain name, the offering of the disputed domain name for sale to the general public at a price well above the cost to register the disputed domain name is evidence of bad faith. See, e.g., Autodesk, Inc. v. Bayram Fatih Aksoy,WIPO Case No. D2016-2000(“Respondent […] is presently offering to sell the disputed domain name registration […] for 9,900 US Dollars, which is an amount significantly higher than the Respondent’s out-of-pocket costs directly related to the disputed domain name. In view of the above, and in the absence of any arguments or evidence to the contrary by the Respondent, the Panel is prepared to accept that the Respondent has … registered the disputed domain name primarily for the purpose of selling its registration […] for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name”).
In addition, use of a domain name incorporating a trademark by an unauthorized third party to redirect Internet users to a respondent-owned website for commercial gain is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: […] redirecting the domain name to redirecting the domain name to a different respondent-owned website […]”). As noted by Complainant, the disputed domain name appears intentionally calculated to reference Complainants’ domain name , further adding to the potential for confusion. Respondent’s use of the disputed domain name to maintain a pay-per-click website displaying links related to Complainant and to generate click through revenue suggests bad faith registration and use under Policy paragraph 4(b)(iv). See, e.g., Hardee’s Food Systems, Inc. v. Morgan Kelsey,WIPO Case No. D2011-1757.
In light of this activity, and given that Respondent registered the disputed domain name without Complainant’s authorization long after Complainant’s rights in this mark had been established, the Panel can only conclude that the disputed domain name was registered and used in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to Complainant Penn National Gaming, Inc.
Brian J. Winterfeldt
Sole Panelist
Date: July 31, 2018
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