Caesars World, Inc. v. P.T.Complex Co.,Ltd
Claim Number: FA1206001446942
Complainant is Caesars World, Inc. (“Complainant”), represented by Nadya Munasifi Sand of Alston & Bird, LLP, Georgia, USA. Respondent is P.T.Complex Co.,Ltd (“Respondent”), represented by Gregory Golla of Merchant & Gould P.C., Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caesarsentertainment.com>, registered with Tucows, Inc.
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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2012; the National Arbitration Forum received payment on June 4, 2012.
On June 4, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <caesarsentertainment.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 2012 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@caesarsentertainment.com. Also on June 4, 2012, 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 July 16, 2012.
A timely Additional Submission from the Complainant was received on July 23, 2012.
On July 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.
A timely Additional Submission from the Respondent was received on July 30, 2012.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant has operated the Caesars Palace Casino in Las Vegas since 1966. The mark CAESARS was registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 763,255) on January 14, 1964. Thereafter, Complainant has used the trademark in connection with its world wide famous business and it has also registered a large number of CAESARS marks world wide. Complainant has registered the CAESARS mark with the Thailand Department of Intellectual Property (“DIP”) (e.g., Reg. No. Kor84377 registered November 4, 1988). There are also a number of registrations of the mark CAESARS ENTERTAINMENT world wide.
In 1997 the Respondent changed, without the Complainant’s knowledge or consent, its name of its massage parlor business from Cleopatra to Caesars Entertainment. At some point later Respondent started to use design marks in connection to its business with design portions identical to a prior mark of the Complainant. After a process against the Respondent in The Central Intellectual Property and International Trade Court in Thailand (hereinafter the IP and IT Court), the court cancelled the Respondents registrations of two design marks featuring design portions identical to design marks previously registered and used by the Complaint. The disputed domain name was registered on May 28, 2001, and the Respondent has used and is using the disputed domain name in connection with its, to the Complainant competing, business.
In the legal process in Thailand, the IP and IT Court found that the Respondent had registered and used the Complainant’s trademarks in bad faith with full knowledge of the Complainants trademark rights. The IP and IT Court also enjoined the Respondent from use of the website linked to the disputed domain name.
The disputed domain name is confusingly similar to trademarks to which the Complainant holds rights. The likelihood of consumer confusion is reinforced by the Respondent by its use of the Complainant’s CAESAR word and design mark on the website linked to the disputed domain name and in connection to its business.
Respondent has no connection or affiliation with Complainant and the disputed domain name was registered without the Complainant’s consent.
Respondent registered and is using the disputed domain name in bad faith for its own commercial gain purposely attempting to trade off of the goodwill associated with Complainant’s CAESARS mark, inter alia by using the Complainant’s word and design marks on the webpage linked to the disputed domain name.
B. Respondent
Respondent has operated a well-known, upscale massage parlor in Thailand and used the brand name “Caesars Entertainment” to promote its business since 1997. In 1997 the design mark referred to in the Complaint was registered with Thailand’s DIP (Reg. No. 341824/Bor7027) and it has been used in connection to the Respondent’s business since. Complainant did not apply to register the mark CAESARS ENTERTAINMENT in Thailand until 2003 and has not presented any evidence of use of that mark in Thailand or elsewhere before 1997. Therefore, the Respondent has priority to the mark CAESARS ENTERTAINMENT. Respondent also has priority in Thailand with respect to CAESARS for services, since Complainants registrations only cover goods.
The word “caesars” is a common word used by many different companies around the world and Complainant does not have exclusive rights to this wording. Respondent is not trying to pass itself off as Complainant nor capitalize on the goodwill of Complainant.
Complainant attempted to register the CAESARS mark in Thailand in 2003 but was denied due to Respondent’s mark. Complainant also attempted to challenge Respondent’s mark through the DIP asking the office to cancel Respondent’s mark, but was denied. Respondent’s registration and use of a service mark with a depiction of a face in profile and olive branches encircling the face, predates Complainant’s use of an aesthetically similar mark.
Complainant filed a trademark action in Thailand in 2008 against Respondent and has continued to litigate trademark issues against Respondent since.
The process initiated by the Complainant before the IP and IT Court in Thailand referred to in the Complaint is not yet finally settled. The decision referred to by the Complainant is only an initial decision which was given by the IP and IT Court in Thailand on January 30, 2012. The parties have since appealed and the case is currently up on appeal and pending before the Supreme Court of Thailand. Respondent has filed an application for and received a stay of judgment on the legal actions in Thailand for the appeal to run its course. Respondent is therefore still allowed by the Thai Court to operate under inter alia the trade name “caesars entertainment”.
Due to the pending appeal before the Supreme Court of Thailand, a legal proceeding which was initiated by the Complainant before the Complaint was sent to the UDRP, the Complaint should be dismissed.
In its complaint Complainant has omitted to indicate the fact that the repeatedly cited decision has been appealed by both parties and therefore is a non-final decision and that the decision has been stayed. By failing to disclose this information, with the notice thereof, the Complaint should be denied as it violates the UDRP Rules 3(b)(xi).
The ongoing nature of the trademark proceedings in Thailand and the likelihood of their direct impact of the validity of any decision reached by the Panel, makes an administrative decision by the Panel at this time improper. Therefore, the complaint should be dismissed.
The proper forum for resolving the present dispute is the courts of Thailand. The trademark issues being litigated are extremely complex, as evidenced by the conflicting holdings of the Trademark Office of Thailand and the IP and IT Court together with the approval of Respondent’s petition for a stay of the judgment. Determination of the respective trademark rights surrounding the disputed domain name is beyond the scope of the UDRP, and the Complaint should be dismissed with prejudice.
C. Complainant’s Additional Submission
Even though the parties have appealed the decision of the IP and IT Court, the Panel has discretion to decide the dispute at hand pursuant to the UDRP Rules ¶ 18(a). The ownership of the disputed domain name was not determined by the IP and IT Court. Despite that, Complainant has detailed the disputes between the parties, including the dispute between the parties before the IP and IT Court. The stay of the IP and IT Court Order is not a separate legal proceeding, and the appeals are part of that proceeding.
Complainant’s rights in the CAESARS marks in Thailand and elsewhere predate Respondent’s use of the CAESARS ENTERTAINMENT mark in Thailand and its registration and use of the disputed domain name. The inclusion of the generic term “entertainment” to Complainant’s mark is insufficient to avoid a likelihood of confusion. Complainant has inter alia used the CAESARS mark as well as the design marks in Thailand from 1993-2002.
Several of the Complainant’s registered CAESARS trademarks cover goods and not services because the Thai Trademark Office at the time of these registrations did not offer service mark classifications.
The plural, non-possessive form of the term “caesars” as a mark is uncommon.
Respondent adopted its mark and the disputed domain name with full knowledge of Complainant and its marks and with the intent of trading on those rights. The goal of the registration is to mislead consumers into believing that Complainant is associated or affiliated with, or sponsors or endorses, Respondent and to thereby drive business to its massage parlor.
D. Respondent’s Additional Submission
Complainant’s deliberate non-disclosure of the stay and the appeals of the IP and IT Court’s decision is ground for dismissal of the Complaint.
The pending IP and IT Court’s decision gave the Respondent rights to use “Caesars Entertainment”. Respondent has legitimate rights to use the disputed domain name to describe the content of its services (which it has been doing since 2001) and it was not registered in bad faith.
Respondent is the first user and has priority to use the common word “Caesars” with the common word “Entertainment”. The Complainant’s use of the name and mark CAESARS ENTERTAINMENT is later than Respondents first use and the registration of the disputed domain name.
Respondent is commonly known by the disputed domain name, which is the same as its trade name and business name.
It is popular among the massage parlors in Thailand to use powerful and historical or god names in ancient Roman/Greek language.
FINDINGS
1. The Respondent registered the disputed domain name on May 28, 2001.
2. Complainant is the holder of numerous registered CAESARS and CAESARS ENTERTAINMENT trademarks world wide.
3. Prior to the filing of the Complaint in this case, the Respondent registered Thai service marks Reg. Nos. 341824/Bor7027 and 662683/Bor34922, Respondent’s providing, offers or advertising of services under or use of the trade name CAESARS or Respondents use the word CAESARS in any form,
as well as its right to use the website linked to the disputed domain name, has been challenged in a separate legal proceeding. A decision in the proceeding was taken by the IP and IT Court of Thailand on 30 January, 2012. That decision has been appealed by both Complainant (April 19, 2012) and Respondent (April 27, 2012) and is now pending. A decision to stay the judgment has been given (April 27, 2012).
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 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.
It is proven in this case that there is an ongoing legal process in Thailand regarding inter alia trademark rights with relevance to this case and use of the webpage linked to the disputed domain name.
In its Complaint, the Complainant partly grounds its transfer request on the IP and IT Courts decision stating that the Respondent’s service mark registrations have been cancelled and that the Court has enjoined the Respondent to use the website linked to the disputed domain name. This is illustrated by the following quotations from the Complaint: “Accordingly, the IP & IT Court cancelled Respondent’s registrations and enjoined it from “use of the website under the domain name www.caesarsentertainment.com.” Ownership of the Domain Name was outside the scope of the IP & IT Court proceeding. Caesars therefore now brings this proceeding to secure transfer of the Domain Name based on Respondent’s adjudged bad faith conduct.” and “The IP & IT Court, after full presentation of evidence, found that Respondent does not have the right to use the CAESARS mark and that, “in doing his business [Respondent] rides on the fame of the service marks and the Caesars Head Device of [Caesar].” However, the Complainant fails to mention that the decision referred to has not entered into force and effect.
After the Respondent’s remarks regarding the preliminary status of the decision of the IP and IT Court, the Complainant has pleaded that “In the case at hand, even though ownership of the Domain Name was not determined by the proceeding, Caesars [Complainant] outlined in great detail the dispute between the parties in the IP & IT Court proceeding for the Forum. The stay of the IP & IT Court is not a separate legal proceeding, and the appeals are part of that proceeding”, see page 2-3 of Complainant’s Additional Submission.
The UDRP Panels are dependant on the completeness and accuracy of the evidence and information supplied by the parties. A complainant must certify in its complaint inter alia that “[…] the information is to the best of the Complainant’s knowledge complete and accurate […]”, See the Rules 3 (b)(xiv). The Complainant of this case has made such a certification.
The Panel finds that the Complainant, already having appealed the decision of the IP and IT Court, had knowledge of the indefinite status of the Court’s decision when filing the Complaint. See Respondent’s Annexes 3-4. The Panel also finds that the Complainant of this case, despite this knowledge, has omitted to inform the Panel that the IP and IT Court’s decision cited and adduced had not obtained final force and effect. If the judgment of the referred litigation in Thailand would have been final, it may have presented decisive reasons for the Panel. Therefore, and notwithstanding its certification, the Complainant has in its Complaint not presented complete and accurate information. The Panel finds this acting of the Complainant in itself a reason to deny the Complaint. See Edelgard & Horst Liebl v. Drug-Aware Ltd FA1106001395617 (Nat. Arb. Forum Aug. 8, 2011) (finding that: “By omitting to identify the existence of the proceedings in relation to the validity of Complainant’s trademark rights, makes the Complaint incomplete. For this reason alone the Complaint could be denied.”)
Further, this domain name dispute is related to a dispute that is well beyond the scope of UDRP Proceedings. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”)
The Panel notes that the full dispute between the parties is already the subject of civil litigation. The Panel finds that the civil court is a better suited arena for the presenting of evidence for the comprehensive adjudication of the dispute. See AutoNation Holding Corp. v. Rabea Alawneh, D2002-0058 (WIPO May 2, 2002) (“ICANN proceedings, which by their very nature are highly abbreviated with very limited fact finding, are not designed to nor should they be used as a substitute for trademark infringement actions.”)
In any case, no purpose is served by giving a decision based on the merits of this case when it is likely that it will not have any practical consequences. See AmeriPlan Corp. v. Gilbert, FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN does not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”)
For the foregoing reasons, the Panel has decided to terminate this proceeding without expressing its view as to the merits of the case.
The Complaint of the Complainant with respect to the domain name <caesarsentertainment.com> is hereby dismissed.
Jonas Gulliksson, Panelist
Dated: August 7, 2012
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