The Complainant is Caesars License Company, LLC, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2020. On July 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 22, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on August 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on October 6, 2020. 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 operates a well-known casino and gaming venue based in Las Vegas, Nevada in the United States that commenced trading in 1966. The Complainant holds trademark registrations in a number of countries, including in the United States, as exhibited by Registration No. 3,021,734, for the mark The Complainant is also the owner of, inter alia, domain names including The Disputed Domain Name The Complainant cites its trademark registrations of the trademarks CAESARS, CAESARS ENTERTAINMENT and CAESARS REWARDS in various countries as prima facie evidence of ownership. The Complainant submits that the marks CAESARS ENTERTAINMENT and CAESARS REWARDS are well known and that its rights in those marks predate the Respondent’s registration of the Disputed Domain Names (i) in the case of (ii) in the case of The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because they are being used to perpetrate an email scam, and contends that as such the Respondent has no rights or legitimate interests in the Disputed Domain Names. Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademarks, and that they were being used to further the perpetration of a fraud. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) that the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks CAESARS ENTERTAINMENT and CAESARS REWARDS in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Names are identical or confusingly similar to the CAESARS ENTERTAINMENT and CAESARS REWARDS trademarks, respectively, the Panel observes that: 1) the Disputed Domain Name 2) the Disputed Domain Name It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names, specifically: “caesarsentertainmentcorporate” and “caesars-rewards”, respectively. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, a generic descriptive word in the first case and a hyphen in the second: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). This Panel accepts the Complainant’s contention that these additional elements do not prevent a finding of confusing similarity. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in a disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in a disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the marks CAESARS ENTERTAINMENT and CAESARS REWARDS are not dictionary terms but rather are highly distinctive and well-known names associated with the Complainant. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademarks. The Complainant submits, and provided evidence, that the Respondent “used the Disputed Domain Names to create deceptive email addresses that impersonate Complainant and sent unauthorized and fraudulent infringement claims on Complainant’s behalf to the e-commerce website eBay…(to)… impersonate Complainant’s General Counsel, and Intellectual Property Director, who use very similar email addresses”. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by either of the Disputed Domain Names. This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because it is using email communications pretending to be from employees of a corporate entity operating under the brand CAESARS to send “unauthorized and fraudulent infringement claims on Complainant’s behalf”. The evidence supports the contention that the Respondent is also using the address, employee names and titles and other contact details of the Complainant to reinforce the false impression that the fraudulent communications are legitimate. In this respect, the Panel notes that the Disputed Domain Names do not resolve to a website. Naturally too, in view of the Complainant’s allegations, the example of scam email provided in uncontested evidence does not accurately nor prominently disclose the unauthorized nature of the Respondent’s relationship with the Complainant. It could therefore be inferred that the Respondent was opportunistically using the Complainant’s details in the furtherance of the perpetration of a fraud or at the very least, to deceive the recipient of those communications. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy requires that the complainant must also demonstrate that a disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith. On the issue of registration, the trademark CAESARS ENTERTAINMENT and CAESARS REWARDS are such famous marks that it would be inconceivable that the Respondent might have registered the marks without knowing of them. See Telstra Corporation Limited v. Nuclear Marshmallows, supra; Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon,WIPO Case No. D2003-0615 (“the Complainant’s marks and name are so well known and so widely recognized, and have been used for so many years, the Respondent could not have legitimately used either of the contested domain names”). Further, a gap of more than ten years between registration of a complainant’s trademark and the respondent’s registration of a disputed domain name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademarks predate any rights that could possibly flow from the Respondent’s registration by almost 50 years in the case of CAESARS, and 15 years in the case of CAESARS ENTERTAINMENT. On the issue of use, the Complainant’s evidence is that the Respondent attempted to deceive the recipient of the phony emails into believing these were legitimate communications from domain names associated with the Complainant’s CAESARS ENTERTAINMENT and CAESARS REWARDS brands. The Panel accepts the Complainant’s submission that the most likely reason for the Respondent registering the Disputed Domain Names and then using them to send fictitious emails, is that the Respondent was attempting to perpetrate a fraud. The obvious risk of deception or confusion as to the origin of such emails, or affiliation of the email communications with the Complainant is, in this Panel’s view, the very essence of bad faith under paragraph 4(b)(iv) of the Policy. Further, the Panel notes that the Disputed Domain Names do not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use” (See WIPO Overview 3.0, section 3.3). In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s well-known trademarks CAESARS ENTERTAINMENT and CAESARS REWARDS, and incorporated them in the Disputed Domain Names without the Complainant’s consent or authorization for the very purpose of capitalizing on the reputation of the trademarks. The Panel finds that the Respondent has created email addresses comprised of the Disputed Domain Names, then has used those email addresses to pretend to be genuine employees of the Complainant, for the purpose of causing commercial consequences to a third party by having a third party’s goods removed from an e-commence website by contending that the third party’s goods infringe the Complainant’s intellectual property rights. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Names, Nicholas Weston
CAESARS ENTERTAINMENT registered from November 29, 2005, and Registration No. 954684 of the mark CAESARS registered since March 6, 1973. It also holds trademark registrations for the mark
CAESARS REWARDS including United States Registration No. 5,846,935 registered since August 27, 2019, which it uses to designate one of the largest loyalty programs in the world with more than 55 million members.
(a) an exact reproduction of the Complainant’s trademark CAESARS ENTERTAINMENT;
(b) followed by the additional word “corporate”; and
(c) followed by the gTLD “.com”.
(a) an exact reproduction of the Complainant’s trademark CAESARS REWARDS;
(b) with an interposed hyphen between the words “caesars” and “rewards”; and
(c) followed by the gTLD “.com”.
Sole Panelist
Date: October 19, 2020
Full & Egal Universal Law Academy