DECISION

Harrah's Las Vegas, Inc. v. Thomas Richardson

Claim Number:  FA0312000215378

PARTIES

Complainant is Harrah's Las Vegas, Inc. (“Complainant”), represented by David J. Stewart, of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA, USA 30309.  Respondent is Thomas Richardson (“Respondent”), Silcherstr. 3500, Erkenbrechtsweiler, Hamburg, Denmark 73268.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harrahsbenefits.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com (hereinafter “Dotregistrar.Com”).

PANEL

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.

PROCEDURAL HISTORY

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, Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <harrahsbenefits.com> is registered with Dotregistrar.Com and that Respondent is the current registrant of the name. Dotregistrar.Com has verified that Respondent is bound by the 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@harrahsbenefits.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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <harrahsbenefits.com> domain name is confusingly similar to Complainant’s HARRAH’S mark.

2. Respondent does not have any rights or legitimate interests in the <harrahsbenefits.com> domain name.

3. Respondent registered and used the <harrahsbenefits.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Harrah's Las Vegas, Inc., is the owner of the HARRAH’S mark (registered on the Principal Register of the U.S. Patent and Trademark Office as Reg. No. 1,067,887 on June 14, 1977). On its own and through licensed sister corporations, Complainant operates twenty-four casino entertainment facilities in the United States, twenty of which operate under the HARRAH’S mark. This mark has been used since 1937 to identify casino, nightclub, theater and other entertainment services. Since 1952, the HARRAH’S mark has also denoted hotel services, restaurant services and a host of products ranging from apparel and jewelry to souvenir novelties.

In addition to its registrations of the HARRAH’S mark in the United States, Complainant has obtained registrations for marks incorporating the HARRAH’S mark in more than thirty-five countries worldwide, including Germany (Reg. No. 2,025,360) and in the European Community (e.g. CTM Reg. No. 18077).

Complainant’s casino entertainment services under the HARRAH’S mark are supplemented by the use of the <harrahs.com> domain name, where Complainant offers information about each of its casinos (including special promotional offers and scheduled entertainers), makes reservations at Complainant’s hotels, makes airline reservations to destinations in Nevada, and provides information about its “Total Rewards” VIP program. One portion of Complainant’s website also permits “Total Rewards” members to play casino-style games for fun. Complainant also operates a website at the <harrahs.benefitsnow.com> domain name, where its employees have online access to the company’s insurance programs.

Respondent, Thomas Richardson, registered the <harrahsbenefits.com> domain name on September 22, 2003, without license or authorization to use Complainant’s HARRAH’S mark for any purpose. Respondent uses the disputed domain name to operate a search engine website that includes links to a variety of websites that offer travel reservation and online casino services that compete with Complainant’s services. Internet users are also exposed to numerous pop-up advertisements upon accessing the disputed domain name.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established rights in the HARRAH’S mark though registration of the mark with the proper governmental agencies worldwide, as well as through use of the mark in commerce. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <harrahsbenefits.com> domain name is confusingly similar to Complainant’s HARRAH’S mark. The addition of the generic word “benefits” to Complainant’s HARRAH’S mark is not a significant addition for the purposes of Policy ¶ 4(a)(i), and the elimination of the apostrophe in the HARRAH’S mark was necessitated by the nature of the Domain Naming System, which does not permit apostrophes in Uniform Resource Locators (URLs). 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 Complainant combined with a generic word or term); see also Gen. Elec. Co. v. Momm Amed Ia, D2000-1727 (WIPO Mar. 21, 2001) (finding the <gebenefits.com> domain name to be confusingly similar to Complainant’s GE and GE.COM marks).

Accordingly, the Panel finds that the <harrahsbenefits.com> domain name is confusingly similar to Complainant’s HARRAH’S mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the disputed domain name, which not only incorporates Complainant’s HARRAH’S mark but is strikingly similar to its <harrahs.benefitsnow.com>domain name, to host an online search engine that features both links to commercial competitors of Complainant and commercial pop-up advertising. Presumably, Respondent receives referral fees from the target domain names for both the hyperlinks and the pop-up advertisements hosted at the disputed domain name. This attempt to ensnare Internet users for commercial gain via the use of the HARRAH’S mark is evidence that Respondent does not have rights or legitimate interests in the disputed domain name. See Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a misspelled domain name as Respondent was merely using it to redirect Internet users to, inter alia, an online casino); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 25, 2003) (finding that Respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <harrahsbenefits.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered a domain name that creates a likelihood of confusion as to whether Complainant is the source or sponsor of the <harrahsbenefits.com> domain name. Internet users who arrive at Respondent’s domain name will likely be confused by both Respondent’s use of the HARRAH’S mark in its domain name and the similarity of the domain name to Complainant’s <harrahs.benefitsnow.com> domain name. Respondent’s attempt to capitalize on this confusion for commercial gain is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“Since the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website”; therefore, the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements).

The Panel thus finds that Respondent registered and used the <harrahsbenefits.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <harrahsbenefits.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  January 16, 2004

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