Harrah's Las Vegas, Inc. v. Yun Cheng
Claim
Number: FA0312000215379
Complainant is Harrah's Las Vegas, Inc., Las Vegas,
NV (“Complainant”) represented by David
J. Stewart, Esq., of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA
30309. Respondent is Yun Cheng, 263 Zuan Rd., Xingxiang,
Guangdong 34215, China (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <harrahsbenefitsnow.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.Com.
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 3, 2003; the Forum received a hard copy of the
Complaint on December 4, 2003.
On
December 3, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by
e-mail to the Forum that the domain name <harrahsbenefitsnow.com>
is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that
Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a
Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com,
Inc. d/b/a Dotregistrar.Com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
December 4, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 24, 2003 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@harrahsbenefitsnow.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
January 2, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <harrahsbenefitsnow.com>
domain name is confusingly similar to Complainant’s HARRAH’S mark.
2. Respondent does not have any rights or
legitimate interests in the <harrahsbenefitsnow.com> domain name.
3. Respondent registered and used the <harrahsbenefitsnow.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
operates twenty-four casino entertainment facilities within the United States
under the HARRAH’S mark. Complainant
has continuously used its mark since 1937 and, as a result, it has become one
of the most readily recognized marks in the casino entertainment industry. The United States Patent and Trademark
Office (“USPTO”) has granted Complainant numerous registrations for its
HARRAH’S mark (e.g. Reg. Nos. 1067887, 1237716, 1831759, 2176952, 2268340). In addition, Complainant has numerous
international registrations for its HARRAH’S mark, including China (e.g. Reg.
No. 772230).
Complainant also
maintains an online presence, located at <harrahs.com> and
<harrahs.benefitsnow.com>. At the
latter site, Complainant’s employees can view complete information regarding
Complainant’s insurance programs and enroll in or modify participation in those
programs.
Respondent
registered the disputed domain name, <harrahsbenefitsnow.com>, on
September 1, 2003. Respondent uses the
name to provide a variety of links to health insurance sites, as well as online
gambling sites. Numerous pop-up
advertisements are showered upon Internet users upon reaching the disputed
domain name. Presumably, Respondent earns
revenue as a member of affiliate programs operated by the owners of these linked
sites.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; 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
established rights in the HARRAH’S mark through registration with the USPTO and
continuous use since 1937.
Respondent’s
domain name is confusingly similar to Complainant’s HARRAH’S mark because the
name incorporates Complainant’s mark in its entirety, and merely adds terms
describing Complainant’s offered services for its employees. The addition of a top-level domain name is
irrelevant for purposes of Policy ¶ 4(a)(i).
See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26,
2000) (holding that confusing similarity under the Policy is decided upon the
inclusion of a trademark in the domain name); see also See Am. Online, Inc.
v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive
terms “traffic school,” “defensive driving,” and “driver improvement” did not
add any distinctive features capable of overcoming a claim of confusing
similarity); see also Westfield
Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
Therefore,
Complainant has established Policy ¶ 4(a)(i).
Respondent has
not asserted any rights or legitimate interests in the domain name. Therefore, the Panel may presume that
Respondent lacks rights and legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
Additionally,
there is no evidence that Respondent is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). The
WHOIS registration information fails to imply that Respondent is commonly known
by the name. See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating, “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Moreover,
Respondent is not using the disputed domain name in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), for the following
reasons: the insurance-related links provided at Respondent’s site compete
directly with Complainant’s offered insurance plans available to Complainant’s
employees; Respondent uses the name to generate revenue through advertisements;
and Respondent is using the name in connection with online casinos. See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001)
(finding no rights or legitimate interests when Respondent is using a domain
name identical to Complainant’s mark and is offering similar services); see
also Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA
157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation
of Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services); see also
Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12,
2003) (finding that Respondent did not have rights or legitimate interests in a
domain name that used Complainant’s mark and redirected Internet users to
website that pays domain name registrants for referring those users to its
search engine and pop-up advertisements); see also Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name); see also Société des Bains de Mer v. Int’l Lotteries,
D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where
Respondent used the <casinomontecarlo.com> and
<montecarlocasinos.com> domain names in connection with an online
gambling website); see also Imation Corp. v. Streut, FA 125759 (Nat.
Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where
Respondent used the disputed domain name to redirect Internet users to an
online casino).
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Complainant’s
HARRAH’S mark is registered throughout the world and has achieved substantial
fame and notoriety. The fact that
Respondent provides content relating to the source of Complainant’s success,
mainly casino entertainment services, evidences an attempt to capitalize on
Complainant’s notorious HARRAH’S mark.
This attempt indicates that Respondent had actual knowledge of
Complainant’s rights in the HARRAH’S mark.
See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the link between Complainant’s mark and the content
advertised on Respondent’s website was obvious, Respondent “must have known
about the Complainant’s mark when it registered the subject domain name”); see
also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19,
2002) (“It can be inferred that Respondent had knowledge of Complainant’s
rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a
means to sell prescription drugs, including Complainant’s CELEBREX drug”).
In light of the
above, Respondent has presumably generated revenue by attracting Internet users
to affiliate sites, as a result of user confusion with Complainant’s HARRAH’S
mark, evidencing bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain
name to attract Internet users to its commercial website); Kmart v. Kahn,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Therefore,
Complainant has established Policy ¶ 4(a)(iii).
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <harrahsbenefitsnow.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
January 16, 2004
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page