Caesars License Company, LLC v. Gary Vandiver
Claim Number: FA1512001654269
Complainant is Caesars License Company, LLC (“Complainant”), represented by David J. Stewart of Alston & Bird LLP, Georgia, USA. Respondent is Gary Vandiver (“Respondent”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <horseshoecasino.com> and <horseshoecasinoes.com>, registered with Wild West Domains, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2015; the Forum received payment on December 28, 2015.
On December 29, 2015, Wild West Domains, LLC confirmed by e-mail to the Forum that the <horseshoecasino.com> and <horseshoecasinoes.com> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@horseshoecasino.com, postmaster@horseshoecasinoes.com. Also on December 29, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 21, 2016.
Complainant submitted an additional submission on January 26, 2106, which complied with Supplemental Rule 7.
On January 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests the domain names be transferred from Respondent to Complainant.
A. Complainant
Caesars bases this Complaint on its rights in the service mark and trademark HORSESHOE. This mark is registered in numerous countries around the world, including in the United States, where Respondent is located. Caesars’ registrations for its HORSESHOE mark include U.S. Registration Nos. 1,839,688; 1,839,764; 2,370,824; and 3,651,098. The first two of these registrations issued on March 22, 1994, well prior to the acts of Respondent complained of herein, and, as discussed further below, Caesars’ predecessors-in-interest established common law rights in the United States in the HORSESHOE mark for casino entertainment services in the 1950s.
FACTUAL BACKGROUND
· Caesars and the Famous HORSESHOE Casinos and Mark.
Complainant Caesars License Company, LLC is a wholly-owned subsidiary of Caesars Entertainment Corporation (collectively, “Caesars”). For more than sixty years, Caesars and its predecessors-in-interest have continuously used the distinctive service mark and trademark HORSESHOE to identify casino entertainment services, hotel services, and a host of related goods and services. The first Horseshoe Casino opened in Las Vegas in the mid-1950’s. The Horseshoe Casino achieved worldwide fame as the creator and host of the famous World Series of Poker tournament. Caesars currently operates eight HORESHOE branded casinos, with locations in Baltimore, Maryland; Tunica, Mississippi; Hammond, Indiana; Bossier City, Louisiana; Council Bluffs, Iowa; Southern Indiana; Cleveland, Ohio; and Cincinnati, Ohio.
Caesars promotes its Horseshoe casinos and hotels through a heavily trafficked website located at the domain name <horseshoe.com> and has done so since 1996. Through its website, and websites specific to the properties, consumers can make reservations to stay at Horseshoe hotels, learn about the hotels’ many amenities, and buy tickets for shows and other entertainment events at the hotels. Millions of unique visitors visit Caesars’ websites each year.
As noted above, Caesars and its predecessors-in-interest have been issued U.S. Registration Nos. 1,839,688; 1,839,764; 2,370,824 and 3,651,098 for the HORSEHOE mark. These registrations are valid and subsisting in law, were duly and legally issued, and are prima facie evidence of the validity of the marks registered therein. See 15 U.S.C. §§ 1057(b) and 1072.
Caesars has invested significant sums in the promotion of its goods and services under the HORSESHOE marks. As a result of these efforts, as well as the now sixty-plus years of continuous and exclusive use of the mark by Caesars and its predecessors-in-interest in the United States, the HORSESHOE mark is “synonymous with casino operations and services around the country.” Horseshoe License Co. v. Mercedes Net A.V.V., NAF Case No. FA0097052 (Nat’l Arb. Forum, May 21, 2001).
· Respondent and His Unlawful Activities
Without Caesars’ knowledge or consent, Respondent registered the domain names <horseshoecasino.com> and <horseshoecasinoes.com> (the “Domain Names”) on February 17, 1999. Both domain names currently serve as the addresses of websites with links to third party commercial websites. One of these links is to Majestic Star Casino in Gary, Indiana, a casino that is a competitor of the Horseshoe Hammond casino and is only 8 miles away from it.
Respondent formerly used the Domain Names to redirect users to a website he operated at the domain name <garyvandiver.com>. On that website, Respondent offered the <horseshoecasino.com> and <horseshoecasinoes.com> domain names for sale or lease. Respondent did not stop the redirection of the site until after he received a cease and desist letter from Caesars’ counsel on December 16, 2015. However, despite stopping use of the Domain Names, Respondent has failed to transfer them.
Caesars has no connection or affiliation of any kind with Respondent, nor has Caesars at any time granted permission to Respondent to register or use the Domain Name.
ARGUMENT
Pursuant to the ICANN Policy, Caesars must establish the following to obtain the relief it seeks in this action: (1) that the Domain Name is identical or confusingly similar to the HORSESHOE mark; (2) that Respondent has no rights or legitimate interests in the Domain Name; and (3) that Respondent has registered and used the Domain Name in bad faith. As set forth below, Caesars’ Complaint satisfies all three of these requirements.
A. The Domain Names are Confusingly Similar to the HORSESHOE Mark.
Caesars owns valid and enforceable rights in the HORSESHOE mark. See supra; see also Caesars License Company, LLC v. Determiner Weekly .Com, et al., Claim Number: FA1206001446945 (Nat. Arb. Forum, July 13, 2012) (finding that Caesars owns rights in the HORSESHOE mark under Policy ¶4(a)(i)). Further, Caesars acquired these rights long before Respondent registered and began using the Domain Names.
Consumers who see the Domain Names are certain to associate them with Caesars because the names are identical to the HORSESHOE mark with only the addition of the generic term “casino” to <horseshoecasino.com> and a misspelling of the word casinos to <horseshoecasinoes.com>. Rather than dispel confusion, these additional word elements exacerbate the confusing similarity of the names to Caesars’ HORSESHOE mark because of the casino services Caesars operates under its mark. SeeCaesars Parts, Inc. v. jeff jackson / Jacksons Auto Parts and MW Inc., FA 1597624 (Nat’l Arb. Forum Feb. 10, 2015) ([T]he addition of a descriptive term to complainant’s mark does not mitigate confusing similarity but may instead enhance the likelihood of confusion.”); see also Re/Max Int'l, Inc. v. Domain Active Pty. Ltd., FA 0145277 (Nat. Arb. Forum April 2, 2003) (“The addition of the generic term ‘mainstreet’ does not create the distinction necessary to overcome the confusing similarity between the disputed domain name, [remaxmainstreet.com], and the Complainant’s distinct RE/MAX mark.”).
B. Respondent Has No Rights or Legitimate Interests in the Domain Names.
Respondent registered the Domain Names more than forty years after Caesars’ first use of the HORSESHOE mark for casino services and well after the mark became well-known in the United States. Caesars is the only entity with the legal right to offer casino services in the United States under the HORSESHOE mark. Accordingly, Respondent’s registration of the Domain Names was clearly intended to target Caesars and its mark. Respondent has no connection or affiliation with Caesars, nor has it at any time received from Caesars a license or consent to use the HORSESHOE mark in a domain name or in any other manner.
Caesars has found no evidence that Respondent has ever used HORSESHOE as a name or mark or that he has ever made any legitimate use of any name or mark that includes this term, and Respondent does not identify himself or his business as “Caesars” in the WHOIS information for the Domain Name. Respondent thus is not commonly known by the Domain Names and has no rights or legitimate interest in the Domain Name. See AutoZone Parts, Inc. and ALLDATA LLC v. Above.com Domain Privacy, FA 1522850 (Nat’l Arb. Forum Dec. 2, 2013) (finding Respondent was not commonly known by a domain name where “where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized respondent to register a domain name containing its registered mark.”).
Further, Respondent has used the Domain Name to offer the names for sale and, more recently, to promote the services of Caesar’s direct competitors. Such use of the Domain Names is not a bona fide offering of goods and services, or a legitimate noncommercial or fair use, and further evidences Respondent’s lack of rights or legitimate interests in the Domain Name. See Caesars Parts, Inc. v. Modern Empire Internet Ltd., FA 1497108 (Nat. Arb. Forum, June 3, 2013) (“Respondent’s use of the at-issue domain name to provide competing hyperlinks is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
C. Respondent Has Registered and Used the Domain Names in Bad Faith.
The ICANN Policy includes four circumstances that constitute evidence of registration and use of a domain name in bad faith. (Policy ¶4(b).) These four circumstances are not exhaustive, and this Panel may consider other circumstances which support a finding that the Respondent acted in bad faith. See, e.g., Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (WIPO, Feb. 18, 2000) (noting that the circumstances described in 4(b) are “without limitation” and that “other circumstances can be evidence” of bad faith); Hewlett- Packard Company v. Martineau, FA 95359 (Nat. Arb. Forum, Aug. 30, 2000) (recognizing that the four circumstances set forth in 4(b) are “non-exclusive”).
Respondent clearly registered the Domain Names either to ransom them to Caesars or to sell them to a third party for a profit. Evidence of the former is found through his past use of the <horseshoecasino.com> domain name to redirect Internet users to his personal website, at which he announced himself as being in the business of buying and selling domain names. Although Respondent did not list a price for the Domain Names on his website, it is clear that, as a domain broker, he was offering to sell the Domain Names for a profit. Such conduct constitutes bad faith registration and use in violation of Policy ¶4(b)(i). See Caesars License Company, LLC v. Determiner Weekly .Com, et al., Claim Number: FA1206001446945 (Nat. Arb. Forum, July 13, 2012) (finding that evidence of offer to sell <horseshoecasinocinnati.org> and similar domain names evidences bad faith registration and use); see also E.I. duPont de Nemours & Co. v. Mark Fishman, FA 093889 (Nat. Arb. Forum Mar. 29, 2000).
Respondent is currently using the Domain Names as addresses for pay-per-click websites with links to third-party businesses, including at least one business that is a direct competitor of Caesars. On information and belief, Respondent generates revenue through the operation of these pay-per-click sites. See Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364 (September 23, 2010).1 Such use of the Domain Names shows that Respondent “intentionally attempted to take commercial advantage of Internet users’ mistakes and thus registered and uses [the Domain Names] in bad faith under Policy ¶4(b)(iv).” Caesars Parts, Inc. v. PPA Media Services / Ryan G. Foo, FA 1304001497170 (Nat. Arb. Forum, June 16, 2013).
In light of the inclusion of the words “casino” and “casinos” in the Domain Names, it is inconceivable that Respondent could have registered the Domain Names without knowledge of the HORSESHOE mark and without an intent to trade on the consumer recognition and goodwill of the mark. See Caesars Parts, Inc. v. Anjana Madaan, FA 1518729 (Nat’l Arb.
Forum, Oct. 4, 2013) (holding that “it is quite unlikely that [Respondent] would have planned an e-commerce auto parts venture and registered the domain name<e-Caesars.com> without knowing of Complainant’s internationally famous CAESARS and CAESARS.COM marks” and that it was “more likely than not that Respondent intended to profit improperly from the domain name, if not by using it for a website containing advertising links, then perhaps by seeking to sell the domain name to Complainant or a competitor thereof.”).
CONCLUSION
For the reasons set forth above, Caesars’ submits that its Complaint satisfies all three elements of the UDRP Policy: (1) the Domain Names are confusingly similar to Caesars’ registered HORSESHOE trademark; (2) Respondent has no rights or legitimate interests in the Domain Names; and (3) Respondent has registered and used the Domain Names in bad faith.
B. Respondent
THE COMPLAINT SHOULD BE BARRED UNDER THE DOCTRINE OF LACHES
In the instant matter the Complainant waited nearly seventeen (17) years from the dates of registration of the disputed domain names on or about February 17, 1999 to enforce its purported trademark rights against Respondent. Moreover, despite Respondent’s longstanding use and/or registration of the disputed domain names since February 17, 1999, Complainant issued its first Cease and Desist Letter to Respondent concerning the disputed domain names on or about December 16, 2015. Complainant has offered no explanation in this matter as to why it has waited so long, nearly seventeen (17) years, to enforce its purported trademark rights against Respondent.
In Laminex, Inc. v. Yan Smith, FA 1470990 (Nat. Arb. Forum Jan. 7, 2013) the three-member Panel held that because the Panel agreed with the Respondent’s assertion that the claim should be barred on the basis of laches it was unnecessary to consider the three elements of the Policy. Furthermore in Craigslist, Inc. v. Craig Solomon Online Servs. FA 1367598 (Nat. Arb. Forum Mar. 1, 2011) the panel wrote:
“Laches is an equitable defense that has been held to apply in actions to enforce trademark rights. Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 601 (8th Cir.1999). Laches applies when a claimant inexcusably delays in asserting its claim and thereby unduly prejudices the party against whom the claim ultimately is asserted.” Ray Communications, Inc. v. Clear Channel Communications, Inc., 673 F.3d 294, 300 (4th Cir. 2012). To successfully defend on the basis of laches a defendant must demonstrate the presence of three elements: (1) a delay in asserting a right or a claim; (2) that the delay was not excusable; and (3) that there was undue prejudice to the party against whom the claim is asserted.” Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir.1997).
The doctrine of laches should apply in this case insomuch as Complainant has waited nearly seventeen (17) years from the dates of registration of the disputed domain names on or about February 17, 1999 to enforce its purported trademark rights against Respondent. Moreover, despite Respondent’s longstanding use and/or registration of the disputed domain names since February 17, 1999, Complainant issued its first Cease and Desist Letter to Respondent concerning the disputed domain names on or about December 16, 2015. Complainant has offered no explanation in this matter as to why it has waited so long, nearly seventeen (17) years, to enforce its purported trademark rights against Respondent. This delay of nearly seventeen (17) years is not only extremely lengthy but it is not excusable.
If this matter is decided in Complainant’s favor it would cause prejudice to the Respondent as Respondent has spent at least seventeen (17) years utilizing the disputed domain names and has plans to continue to utilize the disputed domain names in the future.
In sum, due to Complainant’s inexcusable delay in asserting their claims with regards to the Respondent’s disputed domain name and the undue prejudice to the Respondent, this Complaint should be barred based upon the doctrine of laches.
RESPONSE TO FACTUAL AND LEGAL ALLEGATIONS MADE IN COMPLAINT
This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for Respondent to retain registration and use of the disputed domain name. Rule 5(b)(i).
a. Respondent has rights or legitimate interests in respect of the domain name. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Complainant presented no evidence supporting its assertion that Respondent has no rights or legitimate interests with regard to the disputed domain names. The Complaint simply restates the language of the Policy. The Policy and Rules are clear that the initial burden, though light, still rests "squarely on the shoulders of Complainant to show that Respondent has no rights or legitimate interest.”
To move forward with this matter, Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed Domain Names under Policy P 4(a)(ii) and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entmt Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Moreover, Pursuant to UDRP ¶4(c)(iii), Respondent has used the websites posted to the disputed domain names for different business purposes over the last seventeen (17) years. While the ultimate use of Respondent’s domain names are in contention at this time, Respondent intends to use the domain names for legitimate business purposes unrelated to Complainant’s casino services in the future.
b. Respondent did not register and use the domain names in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
If the Panel concludes that a Respondent has rights and interests in a domain name pursuant to Policy ¶4(a)(ii), the Panel may also find, without more, that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.).
Nevertheless, should further consideration be warranted it is important to note that there is no evidence that Respondent registered the domain names in bad faith. Specifically, there is no evidence to support that Respondent has used the domain names at issue for commercial gain by creating confusion with Complainant’s trademark. Nor is there evidence of a pattern of bad faith registration of multiple domain names.
Further, Respondent did not register the domain names nearly seventeen years ago in order to prevent the Complainant from registering the domain names corresponding with Complainant’s Marks. Based on the foregoing, it also cannot be established that Respondent registered and is using the domain to disrupt the business of Complainant, much less a competitor of Respondent, of which Complainant is not. Moreover, as set forth above there is no evidence to support that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Additionally, Respondent has not registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names.
As such, it is submitted that Complainant has not established that Respondent registered the disputed domain names in bad faith under Policy ¶4(a)(iii). There is simply no evidence that the domain names were registered in bad faith or that bad faith has ever existed in regard to Respondent’s use and registration of the same. See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant).
In sum, it is respectfully submitted that Complainant fails to establish this element of the Policy.
C. Additional Submissions
Complainant Has Established a Prima Facie Case Under the Policy
a. Respondent Concedes the Domain Names are Confusingly Similar to the HORSESHOE Mark
Respondent does not contest that the Domain Names are confusingly similar to Caesars’ HORSESHOE mark. Respondent has therefore conceded by his silence that the first prong of the Policy is satisfied.
b. Respondent Has Failed to Rebut Caesars’ Evidence that Respondent Has No Rights or Legitimate Interests in the Domain Name.
Respondent contends that Complainant has presented no evidence supporting its assertion that Respondent has no rights or legitimate interests in the Domain Names. Respondent is incorrect. In its Complaint, Complainant included evidence that Respondent does not identify himself by the name HORSESHOE in the registration records for the Domain Names or any of the websites he has hosted at the names, and the evidence submitted shows that Respondent has never offered casino services or services related to the casino industry. Complainant further proffered evidence that Respondent used the Domain Names to host sites with pay-per-click links and to offer the Domain Names for sale, neither of which constitute bona fide offerings of goods and services or a legitimate noncommercial or fair use. See Kellogg N. Am. Co. v. Hulmiho Ukolen/Poste Restante, FA 1659542 (Nat. Arb. Forum Jan. 4, 2016) (holding that the hosting of pay-per-click links is not a legitimate use); H-D U.S.A., LLC v. Chris Geras/ May be for sale. Serious Inquiries Only Please, FA 1641440 (Nat. Arb. Forum Nov. 11, 2015) (“A willingness to sell a disputed domain can indicate a lack of rights and legitimate interests in the domain.”). The evidence of use of the Domain Names Respondent offers in his Response further shows that he has never been known by the names Horseshoe, Horseshoe Casino, or Horseshoe Casinoes, and that he has never operated a business under any of these names. Caesars submits that all of this evidence more than establishes a prima facie case as to this element of the UDRP Policy.
The burden now shifts to Respondent to come forward with evidence of his rights or legitimate interests in the Domain Names. (citing Hanna-Barbera Prods., Inc. v. Entmt. Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006)). Respondent has failed to introduce any evidence that demonstrates that he has legitimate rights or interests in the Domain Names.
Respondent claims to have used the Domain Names for “different business purposes,”. However, he does not identify what these business purposes were. He provides in his Response a history of his use of the Domain Names, but none of this evidence establishes that he has made legitimate business use of the Domain Names or that he otherwise has rights or legitimate interests in the names. With regard to <horseshoecasino.com>, Respondent submitted the following evidence:
· The first use Respondent submits is a website located at the domain name on April 21, 1999; however, the site was not put there by Respondent but is a holding page with a “Coming Soon” notice put there by his then registrar, Register.com.
· Respondent presents no evidence of use between April 22, 1999 and May 12, 2006.
· The next use Respondent submits is not a print-out of a site located at <horseshoecasino.com>. Rather, it is a printout out of a website located at the domain name <buyselltradesite.com> on May 12, 2006. Based on the records of the Internet Archive, it appears that Respondent was using the <horseshoecasino.com> domain name at this time to redirect Internet users to the <buyselltradesite.com> website, where Respondent purported to be running a classified advertising business. However, there were no classified advertisements actually available on the website, as shown by an archival copy of the “Classifieds” page of the website from May 20, 2006. Respondent has offered no evidence that the <buyselltradesite.com> website was ever operational for a classified advertising business, and he no longer owns the <buyselltradesite.com> domain name.
· Respondent presents no evidence of use of the <horseshoecasino.com> domain name between May 13, 2006 and September 18, 2010.
· The next evidence of use Respondent submitted was from September 18, 2010. However, the screen shot submitted is not from <horseshoecasino.com>. Rather, it is from <desktop-help.com>. Caesars understands based on records from the Internet Archive that the <horseshoecasino.com> domain name redirected to <desktop-help.com> at this time. The website then located at <desktop-help.com> was not operated under the name or mark HORSESHOE, and it is not casino related. Rather, the website offers a number of domain names for sale or lease, including the Domain Names, and advertises custom website and hosting services.
· Respondent presents no evidence of use between September 19, 2010 and October 26, 2012.
· The first evidence of use of the <horseshoecasino.com> as the address for a website other than a parked page from Respondent’s registrar is a printout of a site at the domain name on October 26, 2012. The header information of the website is similar in design to the website that Respondent operated at <desktop-help.com> on September 18, 2010, but most of the content from the prior site is missing. The site is operated under the name DESKTOP-HELP.COM and states “Custom Websites and Hosting You Will Appreciate.” The primary content of the site is a listing of domain names down the left side of the page that Respondent advertises for sale or lease, including the Domain Names. The site was thus not operated under the HORSESHOE name or mark, and the content was not casino related.
· Respondent’s next evidence of use is from April 4, 2013, when he used the <horseshoecasino.com> domain name to offer information technology services under the trade name “DeskTop-Help.com.” Respondent did not brand his website “Horseshoe,” “Horseshoe Casino,” or “HorseshoeCasino.com” or use any of these names on the website located at the domain name at that time.
· By September 23, 2014, the “DeskTop-Help.com” site was down, and Respondent was once again using the <horseshoecasino.com> domain name solely for redirection purposes. This time, the name redirected to what appears to be Respondent’s personal website, located at the domain name <garyvandiver.com>. The site as this name invites offers to buy, sell, trade or barter anything of value, and lists the Domain Names for sale or lease. No use is made of “Horseshoe” as a name or mark on the site to identify any business he is operating, and the site is not casino related in any way.
· At some point thereafter, Respondent abandoned all use of the <horseshoecasino.com> domain name because there are only parked pages at the domain name on December 12, 2015 and January 10, 2016.
With regard to the <horseshoecasinoes.com> domain name, Respondent submitted no evidence of use of the domain name until February 7, 2011, nearly twelve years after he registered the domain name. Thereafter, Respondent’s Response shows evidence of use as follows:
• Respondent purports to present evidence of use of <horseshoecasinoes.com> on February 7, 2011. However, the website shown is actually a screen shot of the website at <desktop-help.com> discussed above. Based on the records of the Internet Archive, it appears that Respondent used the <horseshoecasinoes.com> domain name at this time to redirect Internet users to <desktop-help.com>. As set forth above, the only use of the <horseshoecasinoes.com> name or HORSESHOE mark on the page was to offer the Domain Names for sale or lease.
• Respondent presents no evidence of use between February 7, 2011 and May 17, 2014.
• The next evidence of use is from May 17, 2014; however, the website shown in Respondent’s exhibits was located at <garyvandiver.com> and not <horseshoecasinoes.com>. Based on the records of the Internet Archive, it appears that Respondent was using the <horseshoecasinoes.com> domain name at that time to redirect Internet users to <garyvandiver.com>. The content of this website is the same as discussed above in connection with the <horseshoecasino.com> domain name.
• The next evidence of use of <horseshoecasinoes.com> is from February 14, 2015. However, the website shown for this date is also from <garyvandiver.com>. The only use of the Domain Names on the <garyvandiver.com> domain name was to offer them for sale or lease, and no use of Horseshoe is made as a name or mark.
• Sometime thereafter, Respondent ceased all use of the domain name, because the most recent use Respondent submits is of a parking page from his registrar.
None of the foregoing evidence establishes that Respondent has rights or legitimate interests in the Domain Names. The evidence confirms that he has never been known by, or operated a business under, the name HORSESHOE (which he does not dispute) and has never operated a casino or casino-related business. His only use of the Domain Names has been to advertise the Domain Names for sale, to capture Internet traffic looking for the Caesars’ website for its Horseshoe casinos and drive this traffic to Respondent’s unrelated and unaffiliated businesses, and to host websites with pay-per-click links, including to those of Caesars’ competitors. None of these uses show that Respondent has made legitimate or fair use of the Domain Names, or that he has legitimate rights or interests in the Domain Names. See Kellogg N. Am. Co. v. Hulmiho Ukolen/Poste Restante, FA 1659542 (Nat. Arb. Forum Jan. 4, 2016) (holding that the hosting of pay-per-click links is not a legitimate use); H-D U.S.A., LLC v. Chris Geras/ May be for sale. Serious Inquiries Only Please, FA 1641440 (Nat. Arb. Forum Nov. 11, 2015) (“A willingness to sell a disputed domain can indicate a lack of rights and legitimate interests in the domain.”).
Respondent’s bare assertion that he “intends to use the domain names for legitimate business purposes unrelated to Complainant’s casino services in the future” is insufficient to overcome Complainant’s prima facie case. See, e.g., Civic Non-Partisan Ass’n v. Ken Charko, FA1489087 (Nat. Arb. Forum May 20, 2013) (“A bare claim that one might commence a legitimate use of a domain name at some undetermined future date does not give rise to a right or legitimate interest for purposes of the Policy.”). This claim is also patently a ruse to avoid an adverse finding. There is no business purpose to which he could put the Domain Names without infringing Caesar’s famous HORSESHOE marks, and, if he was going to use the names for a legitimate business purpose, he certainly would have done so before now. Respondent has therefore failed to rebut the prima facie case set forth in Caesars’ Complaint that Respondent has no rights or legitimate interests in the Domain Names, and this factor should be found in Caesars’ favor.
c. Respondent Has Failed to Rebut Complainant’s Evidence of Registration and Use in Bad Faith.
Respondent contends that Complainant has presented no evidence supporting its assertion that Respondent registered and is using the Domain Names in bad faith. Again, Respondent inaccurately represents the record before this Panel.
Complainant put forth evidence in its Complaint that: (i) the HORSESHOE mark was registered and well known for casino entertainment services at the time Respondent registered the Domain Names; (ii) no other party has the legal right to operate a casino under the name or mark HORSESHOE; (iii) the Domain Names include Caesars’ HORSESHOE mark in full and are plainly designed to target Caesars’ rights as a result of the inclusion of the terms “casino” and “casinos” in the Domain Names; (iv) Respondent’s primary use of the Domain Names has been to offer them for sale, and, given the clear reference in the Domain Names to Caesars’ and its Horseshoe mark and casino, Respondent plainly knew that the only party likely to buy them was Caesars[1]; and (v) Respondent has used the Domain Names to host pay-per-click links to third party websites, including to those of Caesars’ competitors. Such evidence squarely establishes a prima facie case that Respondent registered and used the Domain Names in bad faith under Policy ¶¶4(b)(i) and 4(b)(iv). See, e.g., Caesars Parts, Inc. v. PPA Media Services / Ryan G. Foo, FA 1304001497170 (Nat. Arb. Forum, June 16, 2013) (holding that use of domain names to host a site with PPC links evidences that respondent “intentionally attempted to take commercial advantage of Internet users’ mistakes and thus registered and uses [the Domain Names] in bad faith under Policy ¶4(b)(iv)”).
Respondent has failed to rebut this evidence in any way or to offer evidence that legitimately demonstrates that he registered and has used the Domain Names in good faith. To the contrary, the exhibits Respondent submitted evidences his bad faith use of the Domain Names because they show that he used the Domain Names to profit off them by offering the Domain Names for sale and to redirect Internet traffic to DeskTop-Help.com, a business that has no association or affiliation of any kind with Caesars or its Horseshoe casino.
Respondent claims that it did not register or acquire the Domain Names primarily for the purpose of selling them to Caesars or its competitors for valuable consideration in excess of his out-of- pocket costs. However, given the inclusion of the HORSESHOE mark in full and the clear reference in the Domain Names to Caesars’ business through the inclusion of the terms “Casino” and “Casinoes,” Respondent clearly targeted Caesars and its predecessors-in- interest with the domain name registrations. His primary use of the Domain Names has been to publicly offer them for sale. Because the Domain Names overtly reference and target the Horseshoe casino business, Respondent certainly knew that Caesars would have been the most likely purchaser of the Domain Names (if not the only potential purchaser, since any other purchaser would likely fear a lawsuit or UDRP complaint from Caesars from registration or use of the names). The circumstances thus demonstrate that Respondent registered or acquired the Domain Names with the intent of selling them to Caesars.
With regard to whether he intended to sell the Domain Names for more than his out of-of-pocket costs, his website located at <garyvandiver.com>, to which both Domain Names at one point redirected, clearly states that Respondent is in the business of buying and selling Domain Names. Nowhere on that website did Respondent state that the Domain Names were for sale only for his out-of-pocket costs, and any contention that he was in the domain name arbitrage business merely to break even is simply not credible. The circumstances therefore indicate that Respondent primarily registered the Domain Names to sell them to Caesars for more than his documented out-of-pocket costs. See Am. Anti-Vivisection Society v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (“While the Respondent has not directly contacted the Complainant regarding sale of the domain name, UDRP Panels have held that general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith.”). For these and the other reasons set forth in Caesars’ Complaint, Caesars submits that its Complaint establishes that Respondent has registered and used the Domain Names in bad faith.
Respondent Has Failed to Establish a Laches Defense.
The UDRP is intended to be a simple procedure for the resolution of domain names that are registered and used in bad faith, and not a procedure that is to be encumbered by the myriad defenses that can be available to litigants in civil courts around the world. See The E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 1, 2003). For that reason, the clear majority of panelists have held that laches does not apply to UDRP proceedings. See Playworld Sys., Inc. v. Domain Manager/Giant Distributors Inc., FA1613470 (Nat. Arb. Forum May 21, 2015); The Univ. of Durham v. Amit Matalia, FA1529420 (Nat. Arb. Forum Dec. 19, 2013) (finding that the doctrine of laches does not apply as a defense); Broadcasting Bd. of Governors v. Voice of Am., FA1414846 (Nat. Arb. Forum Dec. 21, 2011) (“As the complainant correctly points out, laches, being an equitable rather than a contractual remedy, is simply not available under the Policy. Once a complainant makes a prima facie showing of each of the elements set forth in the Policy, it is entitled to the relief requested under the Policy.”).
Assuming for the sake of argument that laches applies to this proceeding, Respondent bears the burden of proving the following three elements to prevail on the defense: “(1) a delay in asserting a right or a claim; (2) that the delay was not excusable; and (3) that there was undue prejudice to the party against whom the claim is asserted.” Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir.1997); accord Electronic Arts Inc. v. Michele Dinoia, FA 1403750 (Nat. Arb. Forum Sept. 30, 2011)(respondent bears the burden of showing complainant’s lack of diligence). When applied, “[the doctrine] should be applied sparingly.” MG Icon LLC v. DNS Manager/HTTP Grp., FA 1649222 (Nat. Arb. Forum Jan. 4, 2016). “If there is no evidence that the trademark owner knew or should have known of the infringing use, sometimes decades can pass without a laches defense being created.” J. Thomas McCarthy, 6 McCarthy on Trademarks and Unfair Competition § 31.17 (4th ed.) (citing Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321 (5th Cir. 2008)(denying laches defense despite twenty years of infringing use by defendant on the grounds that plaintiff did not know, and should not reasonably have known, of the infringing use). Respondent has failed to bear his burden of establishing either inexcusable delay by Caesars or that he has suffered undue prejudice as a result of any delay.
a. Caesars Did Not Unreasonably Delay in Filing this Proceeding
Caesars has checked its records and found no evidence that it had knowledge of Respondent’s registration of either Domain Name until April 2013. At that time, it became aware only of Respondent’s registration of the <horseshoecasino.com> domain name. Caesars did not discover Respondent’s registration of the <horseshoecasinoes.com> domain name until Caesars referred the <horseshoecasino.com> registration to outside counsel in November 2015, and outside counsel discovered the registration. Significantly, Respondent makes no claim and introduces no evidence that Caesars knew of his registration of either Domain Name prior to April 2013.
Caesars elected not to take action against Respondent related to the <horseshoecasino.com> domain name in 2013 because it did not have a business need for the name and because the name was not being used to promote casino related services. Caesars’ Law Department reviewed the domain name again at the end of 2015 because of a business need for the domain name and referred the matter to outside counsel for review and investigation. Outside counsel sent a cease and desist letter to Respondent on December 16, 2015. Shortly thereafter, Respondent began using the Domain Names for pay-per-click links, and Respondent filed the Complaint initiating this action less than two weeks later.
Caesars should not reasonably have become aware of either Domain Name prior to April 2013 for a number of reasons. Caesars License Company, LLC (formerly known as Harrah’s License Company, LLC) acquired the HORSESHOE trademark by assignment from Horseshoe License Company on September 15, 2004. Horseshoe License Company, its predecessors-in-interest, affiliates, and licensees (collectively “HLC”) used the mark in connection with the operation of HORSESHOE branded casinos. HLC registered and used the domain name <horseshoe.com> as the address for the Horseshoe casino website beginning at least as early as 1996.
Neither HLC nor any of its affiliates provided notice to Caesars of the existence of the Domain Names at closing, and it is logical to conclude that HLC would not have known of the existence of the Domain Name registrations because HLC already had the domain name it needed prior to registration of the Domain Names, and Respondent made no use of the Domain Names until well after HLC’s sale of the HORSESHOE mark to Caesars. Significantly, Respondent makes no claim that HLC knew of the Domain Name registrations, and Respondent has introduced no evidence from which the Panel could reasonably conclude that HLC should have known of the registrations, despite Respondent bearing the burden of proof on this issue.
When Caesars bought the HORSESHOE mark, it implemented a domain name watch on the HORSESHOE mark. However, because the Domain Names had already been registered, Caesars did not learn of the registrations through this service. Like many companies, Caesars relies upon watch notices to identify infringing domain names and does not run separate scans of gTLDs to identify other potentially infringing domain names that are not picked up by its watch services. Caesars instead relies upon its employees and the public to identify other domain names that infringe its marks, and most names come to Caesars’ attention only when (i) one of their business teams wants to use a new domain name that is already registered, (ii) the names are used for competing services (such as for an online casino) or (ii) the sites are reasonably trafficked websites that otherwise come to Caesars’ attention. The Domain Names do not fall into any of these categories. Indeed, the Domain Names were not used when Caesars purchased the HORSESHOE mark.
Caesars had no reason to discover the Domain Name registrations sooner than it did because Respondent never made anything more than nominal and transitory use of the names.. As set forth in Section A.2 above, there is no evidence that Respondent used <horseshoecasinoes.com> until 2011, and no evidence that he has ever used the domain name as the address for a website. The only use the record reflects is fleeting use to redirect Internet users to other websites he owned where he offered the Domain Names, and others, for sale or lease. There is then no evidence in the record of use of the domain name until 2014.
As to <horseshoecasino.com>, there is no evidence Respondent made any use of the domain name until 2006, and no evidence that he used the domain name as the address for a website until late October 2012. Before then, Respondent merely used the domain name to redirect users to a classified advertising site that appears never to have launched and to a website that offered the domain name for sale and contained minor promotion of a website creation and hosting business. There are also long periods of time where the record is devoid of any evidence of use of the domain name.
Even once Respondent finally launched a website at <horseshoecasino.com> in October 2012 ‒ a mere three years before Caesars discovered Respondent’s use and registration of the Domain Names and addressed it with him ‒ Respondent did not do anything with the Domain Names that was reasonably calculated to bring them to Caesars’ attention. There is no evidence that he ever promoted the websites. He never operated a business under a name that included the term “Horseshoe” in a manner that would have caused Internet search engines to optimize the site in searches on “Horseshoe” (and there is no other evidence of any action by Respondent to optimize the sites in search engines). He never used the Domain Names for an online casino or for any other use in Caesars’ industry likely to bring the names to Caesars’ attention. And he does not allege that his use of either of the Domain Names generated any Internet traffic. Given the limited content on the websites and his lack of promotion thereof, only limited traffic to the websites would be expected, and this is confirmed by traffic data searches in Alexa.com and Compete.com. These searches show that the traffic to the Domain Names is too low to register. The Domain Names and Respondent’s sites also do not show up in the most logical Google search in which the names might be returned: “horseshoe casino.”[2] Caesars, its employees, and customers thus would not logically have been expected to discover the Domain Names. Accordingly, the record is devoid of any evidence from which the Panel could reasonably conclude that Caesars should have learned of the existence of the Domain Name registrations prior to when it did. See Am. Rice, Inc., 518 F.3d at 334 (no evidence that plaintiff knew or should have known of defendant’s twenty-year use of infringing mark due to defendant’s small sales); 6 McCarthy on Trademarks and Unfair Competition § 31.17.
Based on the foregoing, Respondent submits that the evidence fails to demonstrate that Caesars knew, or reasonably should have known, of Respondent’s registration of the <horseshoecasino.com> domain name until April 2013, and did not known, and should not reasonably have known, of Respondent’s registration of the <horseshoecasinoes.com> domain name until November 2015. The alleged delay in this case is therefore at most two years and seven months between when Caesars discovered the first domain name registration and filed this action, and one month between when Caesars learned of the second domain name and filed this action. This short period of delay is insufficient to give rise to a meritorious defense of laches. See Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d 362, 366 (6th Cir. 1985) (holding that a 32 month delay in filing suit in a trademark case was insufficient to support a claim of laches); Frito-Lay, Inc. v. Bachman Co., 3 U.S.P.Q.2d 1472 (S.D.N.Y. 1987) (denying laches defense based on four years delay); MG Icon LLC, FA 1649222 (finding five year delay was not an undue delay).
b. Respondent Has Failed to Show That He Has Suffered Undue Prejudice
Even if Caesars had delayed unreasonably in bringing this action, in order to successfully raise a laches defense, Respondent must further prove that he has suffered undue prejudice as a result of Caesars alleged delay in filing this proceeding. (citing Kason Indus., Inc. v. Component Hardware Grp., Inc., 120 F.3d 1199, 1203 (11th Cir. 1997)). As with the other elements of his claim, Respondent has not established this element either.
Prejudice is generally shown by evidence that, in reliance on plaintiff’s silence, the defendant built up a valuable business or goodwill during the time that plaintiff never objected. See 6 McCarthy on Trademarks and Unfair Competition § 31.12; see also Elvis Presley Enters., Inc. v. Simon Higgs, FA 1540234 (Nat. Arb. Forum March 6, 2014) (panelist found no undue prejudice to sustain Respondent’s laches defense where Internet traffic to Respondent’s website was generated through use of Complainant’s goodwill and Respondent presented no evidence of his investment of time and money into producing website’s content). Although Respondent makes a general allegation that he has suffered undue prejudice, he offers no evidence or argument as to why or how he will suffer prejudice if the Domain Names are transferred to Caesars. Respondent contends that he has been “utilizing” the Domain Names and has plans to continue to “utilize” them in the future, but, as his Response evidences, he is not making any use of the Domain Names at this time, and he has never used the Domain Names for the operation of a legitimate or ongoing business. His primary use of the Domain Names has been fleeting and primarily to offer them for sale. More recently, Respondent has used both Domain Names to host links to third-party commercial websites, including to the websites of Caesars’ competitors. Such uses are not legitimate uses of the Domain Names and therefore do not demonstrate that he has suffered legitimate or undue prejudice as a result of Caesars’ alleged delay in initiating this proceeding. MG Icon LLC, FA 1649222 (“Usually the question of latches arises when Respondent has made some legitimate use of the domain name at issue.”); see also Kellogg N. Am. Co., FA 1659542 (holding that the hosting of pay-per-click links is not a legitimate use); H-D U.S.A., FA1641440 (“A willingness to sell a disputed domain can indicate a lack of rights and legitimate interests in the domain.”).
Because Respondent has failed to satisfy his burden that he will suffer undue prejudice as a result of Caesars’ alleged delay in filing this proceeding, his laches defense should be denied.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Paragraph 15(a) of 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Complainant has rights in the HORSESHOE mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,839,688, registered on June 14, 1994). Registration of a mark with a governmental authority (such as the USPTO) is sufficient to demonstrate rights in the HORSESHOE mark under Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant claims Respondent’s <horseshoecasino.com> and <horseshoecasinoes.com> domain names are confusingly similar to the HORSESHOE mark because they each contain the entire mark along with the gTLD “.com” and the words “casino” or “casinoes.” These terms are generic and descriptive terms (“casinoes” is just a misspelling of the plural word “casinos”). Respondent’s <horseshoecasino.com> and <horseshoecasinoes.com> domain names are confusingly similar to Complainant’s HORSESHOE mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). It is well settled every domain name must contain a TLD (whether a gTLD or a ccTLD). Therefore, the TLD must be ignored when determining confusing similarity under Policy ¶4(a)(i). To hold otherwise would be to eviscerate the UDRP. See also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Respondent has raised the issue of latches. There is some debate as to whether or not latches, as a general defense, really exists under the UDRP. Within the UDRP, the question is really whether Respondent has acquired any rights to the domain name (which can happen during the period of Complainant’s inaction). The question is not whether Respondent had rights at the time Respondent registered the domain name, but whether Respondent has rights to the name at the time of the Proceeding. While this is not a mechanical test, this Panel would note the following cases:
· Yupi Internet v. Mercantil, Inc. (FA0207000117302) - Rights acquired 3 months
· United Press International, Inc. v. United Photographers Internationals (FA1304001492678) - Rights acquired 3 months
· Global Informational Licensing v. Bankers Online (FA0405000267427) - Rights not acquired 4 months
· Target Brands, Inc. v. ALDnet Media Group (FA0401000227647) - Rights acquired 1.75 years
· Target Brands, Inc. v. 4160894 Canada Inc. (FA0401000227648) - Rights acquired 4 years
· VideoCall Company v. M Koenig c/o Techton LLC (FA0307000167922) - Rights acquired 5.3 years
· Opus Northwest Construction v. Opus Realty (FA0408000318960) - Rights acquired 10 years
If an active use is being made, a respondent can acquire rights pretty quickly (roughly 3 months if the cases above are to be credited).
If latches does exist in the UDRP, it would require:
(1) a delay in asserting a right or a claim;
(2) that the delay was not excusable; and
(3) that there was undue prejudice to the party against whom the claim is asserted. [emphasis added]
The way undue prejudice would be shown is if a respondent has acquired rights during the period of a complainant’s inaction. As shown below, this Respondent has not acquired rights. Therefore, there would be no undue prejudice under a latches analysis, even though the domain name was registered 17 years ago. This case will have to be added to the foot of the list above.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <horseshoecasino.com> and <horseshoecasinoes.com> domain names. Although Respondent has filed a response, Respondent does not dispute (or even mention) this point. There is no evidence to indicate Respondent is commonly known by the <horseshoecasino.com> and <horseshoecasinoes.com> domain names. Respondent is not affiliated with Complainant in any way. The WHOIS information lists “Gary Vandiver” and that name bears no obvious relationship to the disputed domain names. Respondent is not commonly known by the domain names under Policy ¶4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant claims Respondent fails to provide (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use because the <horseshoecasino.com> and <horseshoecasinoes.com> domain names have previously been offered for sale. The domain names have periodically provided links to Complainant’s competitors (and third parties). Sometimes the parking page suggested the domain names were for sale (without specifying a price). Sometimes the resolving splash page at <garyvandiver.com> suggested the domain names were for sale. When a domain name resolves to websites hosting pay-per-click links to competitors of Complainant, that simply does not quality as (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
While the Panel has some sympathy to the fact there was a 17 years delay, Respondent has not made demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. If Respondent was going to actually use the domain name, he would have made some plans and disclosed them to the Panel. Simply saying the domain names would be used in the future does not constitute “demonstrable preparations.”
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <horseshoecasino.com> and <horseshoecasinoes.com> domain names in bad faith because he planned to sell them. The domains previously redirected Internet users to <garyvandiver.com>, where each of the disputed domains was listed as being for sale. This is persuasive to the Panel and Respondent has not disputed this point. Respondent registered and used the domains in bad faith under Policy ¶4(b)(i). See, e.g., Gen. Elec. Co. v. FORDDIRECT.COM, INC., D2000-0394 (WIPO June 22, 2000) (finding that the respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale).
Complainant claims Respondent uses the <horseshoecasino.com> and <horseshoecasinoes.com> domain names in bad faith because they each resolve to websites providing links to competitors of Complainant. Snapshots of the resoling dynamic parking pages have been provided. Some of the pay per click links go to competitors and some go to unrelated third parties. This Panel finds Respondent registered and uses the domains in bad faith pursuant to Policy ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant claims Respondent registered the <horseshoecasino.com> and <horseshoecasinoes.com> domain names in bad faith because it did so with actual knowledge of Complainant’s rights in the HORSESHOE mark. Complainant’s marks are used in conjunction with casino related services. Respondent does not explain why he would pair the word “horseshoe” with the word “casino.” Respondent’s decision to register the specific domain names in dispute would be inconceivable without knowing about Complainant’s rights. Simply saying there is “no evidence” is not persuasive. Respondent registered and uses the domains in bad faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <horseshoecasino.com> and <horseshoecasinoes.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, January 29, 2016
[1] See Caesars License Co., LLC v. Determiner Weekly .Com, et al., FA 1446945 (Nat. Arb. Forum, July 13, 2012) (finding that evidence of offer to sell <horseshoecasinocinnati.org> and similar domain names evidences bad faith registration and use).
[2] In connection with this Supplemental Response, Caesars’ counsel has reviewed the 240 unique hits in Google on the noted search phrase. The search results indicate that thereafter results become merely repetitive of previous hits. Neither the Domain Names nor Respondent’s websites were returned in these hits.
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