Caesars World, Inc. v. JOHN BOB / PMAVMAKER
Claim Number: FA1606001681874
Complainant is Caesars World, Inc. (“Complainant”), represented by Nadya Sand of Alston & Bird, LLP, Georgia, USA. Respondent is JOHN BOB / PMAVMAKER (“Respondent”), Afghanistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caesars-poker.com>, registered with eNom, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2016; the Forum received payment on June 29, 2016.
On June 30, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <caesars-poker.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@caesars-poker.com. Also on July 6, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. 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
1. Respondent’s <caesars-poker.com> domain name is confusingly similar to Complainant’s CAESARS mark.
2. Respondent does not have any rights or legitimate interests in the <caesars-poker.com> domain name.
3. Respondent registered and uses the <caesars-poker.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caesars World, Inc., through its affiliates, operates casinos throughout the world, including Caesars Palace in Las Vegas, Nevada. Complainant’s rights in the CAESARS mark stem from registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 954,684, registered Mar. 6, 1973).
Respondent registered the <caesars-poker.com> domain name on July 16, 2015, and uses it to host a website offering poker services in competition withComplainant.
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.
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(f), 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 (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.”).
The Panel finds that Complainant has rights in the CAESARS mark pursuant to Policy ¶ 4(a)(i) through its registration with the USPTO. Panels have routinely held that a complainant can establish rights in a mark based on its registration of the mark with the USPTO, even where there is geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”)
Respondent’s <caesars-poker.com> domain name incorporates the CAESARS mark and merely adds the generic term “poker.” Panels have held that the addition of a generic term to a mark does not prevent a finding of confusing similarity, particularly when the generic term is related to a complainant’s business. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Respondent’s disputed domain name also includes a hyphen and the generic top-level domain “.com,” both of which have been held not to differentiate a domain name from a mark to which they are added. See Sony Kabushiki Kaisha v. EOS1\EOS-1, Inc., FA 493110 (Forum July 15, 2005) (“Respondent’s <www-sony.com> domain name is confusingly similar to Complainant’s SONY mark, as the domain name incorporates Complainant’s mark and adds a “www” prefix, a hyphen, and the generic top-level domain (“gTLD”) “.com.”). Thus, the Panel finds that Respondent’s <caesars-poker.com> domain name is confusingly similar to Complainant’s CAESARS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 that Respondent is not authorized to use the CAESAR mark and is not affiliated with Complainant. The WHOIS information related to the disputed domain name identifies Respondent as, “JOHN BOB,” of the organization “PMAVMAKER.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant next claims that Respondent’s use of the domain, to promote a website offering competing poker services, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes that Respondent’s disputed domain name resolves to a website that prominently displays the CAESARS PALACE logo, and includes buttons displaying the text “Download Caesars App.” Panels have concluded that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain where the infringing domain was used to promote competing products. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent’s use is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that bad faith is evident through Respondent’s clear intention to confuse and attract Internet users for commercial gain through using the CAESARS mark to promote services that compete with Complainant. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Complainant argues that Respondent’s blatant copying of the CAESARS mark clearly indicates that Respondent had knowledge of Complainant's mark and rights. The Panel agrees that Respondent had actual knowledge of Complainant's mark and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied 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 <caesars-poker.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 3, 2016
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