Harrah's License Company, LLC v. Whois ID Theft Protection
Claim Number: FA0609000797840
Complainant is Harrah's License Company, LLC (“Complainant”), represented by Pamela K. Lina, of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA 30309, USA. Respondent is Whois ID Theft Protection (“Respondent”), P.O. Box 116WB, West Bay, Grand Cayman GT KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <horseshoetunica.com>, registered with Dotster.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 19, 2006.
On September 19, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <horseshoetunica.com> domain name are registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 September 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 2006 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@horseshoetunica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <horseshoetunica.com> domain name is confusingly similar to Complainant’s HORSESHOE mark.
2. Respondent does not have any rights or legitimate interests in the <horseshoetunica.com> domain name.
3. Respondent registered and used the <horseshoetunica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Harrah's License Company, LLC, a wholly-owned subsidiary of Harrah’s Operating Company, is part of one of the largest casino entertainment companies in the world.
In 1955, Benny Binion founded Binion’s Horseshoe Hotel & Casino (“Binion’s”) in downtown Las Vegas. Since inception, the casino was operated and promoted under the distinctive HORSESHOE service mark. In connection with the operation and promotion of its casino and entertainment services, Binion’s registered the HORSESHOE service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,839,688 issued June 14, 1994). In the 1990’s Binion’s expanded the Horseshoe brand to areas outside of Nevada, including: Hammond, Indiana; Tunica, Mississippi; and Bossier City, Louisiana.
Through a series of transactions in 2004, Complainant acquired the Horseshoe Casino in Tunica, Mississippi and the rights to the HORSESHOE mark. Complainant has since operated the Horseshoe Casino in Tunica under the HORSESHOE mark.
Respondent registered the <horseshoetunica.com> domain name on March 30, 2002. The disputed domain name resolves to a website that provides sponsored links for third-party websites related to casinos, travel, entertainment and real estate. Many of the advertisements direct Internet users to third-party websites that directly compete with Complainant’s casino and entertainment business.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 mark
through its contractual acquisition of Binion’s registration of the HORSESHOE
mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks
hold a presumption that they are inherently distinctive [or] have acquired
secondary meaning.”).
Complainant contends that the <horseshoetunica.com> domain name is confusingly similar to its HORSESHOE mark. The disputed domain name incorporates Complainant’s HORSESHOE mark in its entirety and affixes “Tunica,” the name of the city in which Complainant operates one of its Horseshoe Casinos. The Panel finds that the addition of a geographic indicator, such as the name of a city in which Complainant operates, fails to distinguish a disputed domain name from a registered mark. Accordingly, the Panel finds the <horseshoetunica.com> domain name to be confusingly similar to Complainant’s HORSESHOE mark. See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark); see also BPM Productions, Inc. v. Bog, FA 125814 (Nat. Arb. Forum Nov. 14, 2002) (finding the <salemhauntedhappenings.com> domain name to be confusingly similar to the complainant’s HAUNTED HAPPENINGS mark because “Salem” has an obvious relationship to the complainant’s festival that takes place in Salem, Massachusetts).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant holds the initial burden of proof to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant’s successfully establishes such a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds Complainant to have successfully established a prima facie case that Respondent lacks rights and legitimate interests through its uncontested assertions and evidentiary submissions.
Respondent’s failure to submit a Response in this proceeding
raises a presumption that Respondent lacks rights and legitimate interests in
the disputed domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Nevertheless, the Panel chooses to analyze the record to determine if
Respondent has rights or legitimate interests in the disputed domain name.
The disputed domain name was
originally registered with identity theft protection. Upon further investigation upon the initiation of this
proceeding, Dotster, the registrar of the disputed domain name, confirmed that
the underlying registrant information was listed as “Whois ID Theft Protection”
of “West Bay, Grand Cayman.” The Panel
finds that, without any evidence in the record to suggest otherwise, Respondent
cannot be commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). The Panel wishes to emphasize
that the use of identity protection services does not, as a Rule, prevent a
respondent from being commonly known by the subject domain name. Rather, Policy ¶ 4(a)(ii) requires a showing
that Respondent is commonly known by the domain name in question. Here, Respondent has failed to come forward
with evidence that suggests that it is commonly known by the disputed domain
name. See Tercent Inc.
v. Lee 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 Ian Schrager Hotels,
L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Additionally, the disputed domain name resolves to a website that provides sponsored links for third-party websites related to casinos, travel, entertainment and real estate, many of which directly compete with Complainant. The Panel finds that Respondent’s use of the confusingly similar <horseshoetunica.com> domain name to redirect Internet users to a website that advertises third-party websites, including those that are in competition with Complainant, fails to amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services; see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent registered and used the disputed domain name in bad faith. Because the resulting website is entirely centered around the deliverance of sponsored third-party links, the Panel reasonably infers that Respondent is receiving commercial gain from the operation of the resulting website. Additionally, there is a likelihood that the consuming public will be confused as to Complainant’s affiliation with the resulting website due to the related nature of the advertisements to its line of business. It follows that Respondent has registered and used the disputed domain name in effort to commercially benefit from the goodwill associated with Complainant’s HORSESHOE mark. The Panel thereby finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements).
Moreover, due to the fact that Respondent actively
advertised competitors of Complainant, its registration and use of the disputed
domain constitutes disruption and evidences bad faith pursuant to Policy ¶
4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see also EBAY, Inc.
v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <horseshoetunica.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 24, 2006
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