Caesars World, Inc., v. Atlantic West Gaming Entertainment Ltd; Starnet Communications

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Caesars World, Inc. v. Starnet Communications and

Atlantic West Gaming Entertainment, Ltd.

Case No. D2002-0066

1. The Parties

The Complainant in this administrative proceeding is Caesars World, Inc.

("Caesars"), a Florida corporation doing business at 3930 Howard

Hughes Parkway, 4th Floor, Las Vegas, Nevada 89109, USA. Complainant

is represented in this administrative proceeding by its attorneys, Fross

Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York,

New York 10017, USA.

Respondents are cited as (1) Starnet Communications of either Suite #2,

Po Box W1227, Woods Center, St. Johns, Antigua, or 425 Carrall

Street, Mezzanine Level, Vancouver, BC V6B 6E3, Canada; and (2) Atlantic

West Gaming Entertainment, Ltd., of either 60 Nevis Street / Box 2167,

St. Johns, Antigua, or Suite #2, Po Box W1227, Woods Center, St. Johns,

Antigua.

2. The Domain Names and Registrar

The Domain Names the subject of this Complaint are:

<teaserspalace.com>

<teaserspalace.net>

<ceasarsonlinegaming.net>

<ceasersonlinegaming.net>

The Registrar of the Domain Names is: Network Solutions, Inc., (NSI), 505 Huntmar Drive,

Herndon, VA 20170-5139, USA.

3. Procedural History

3.1. The Complaint in respect of the disputed Domain Names was received

by the World Intellectual Property Organization Arbitration and Mediation

Center (WIPO Center) by email and in hard copy on January 23, 2002.

Complainant states that on January 22, 2002, a copy of the Complaint

was sent or transmitted to the Respondents in respect of each Domain Name,

(1) without exhibits by email to the Administrative and Billing contact

of each Domain Name holder (amounting to two email addresses in total);

and (2) with exhibits by DHL to the street or postal addresses provided

for each Domain Name holder (amounting to three physical addresses in

total). A copy of this Complaint has been sent or transmitted to the Registrar,

NSI, on January 22, 2002, by email without exhibits and by DHL

with exhibits.

3.2. On February 7, 2002, verification was received from the Registrar,

NSI that the Domain Names were registered as follows:

3.2.1. For <teaserspalace.com> the Domain Name holder is

Starnet Communications, Suite #2, Po Box W1227, Woods Center, St.

Johns, AG; administrative and billing contact is Mark Anton, Atlantic

West Gaming Entertainment Ltd., Suite #2, Woods Center, St. Johns,

AG.

3.2.2. For <teaserspalace.net> the Domain Name holder is

Starnet Communications, 425 Carrall Street, Mezzanine Level, Vancouver,

BC V6B 6E3, Canada; administrative and billing contact is Mark

Anton, of SoftNetGaming Inc., 11601 Biscayne Boulevard, Suite 101,

Miami, FL 33181.

3.2.3. For <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>

the Domain Name holder is Atlantic West Gaming Entertainment, Ltd.,

60 Nevis Street / Box 2167, St. Johns, Antigua, AG; administrative

and billing contact is Mark Anton, of SoftNetGaming Inc., 11601 Biscayne

Boulevard, Suite 101, Miami, FL 33181.

3.3. The Administrative Panel is satisfied that the Complaint satisfies

the formal requirements of the Uniform Domain Name Dispute Resolution

Policy (Policy), the Rules for Uniform Domain Name Dispute Resolution

Policy (Rules) and the Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy (Supplemental Rules) all as approved by the Internet

Corporation for Assigned Names and Numbers (ICANN).

3.4. On February 11, 2002, Formal Notification of Complaint

and Commencement of Administrative Proceeding (with enclosures) was sent

by WIPO Center by post/courier to the registered addresses of Respondents.

Email copies without enclosures were sent to Respondents, copied to Complainant,

ICANN and NSI.

3.5. No Response was received from Respondents by the due date of

March 3, 2002, and Notification of Respondent Default was sent

to the Parties on March 14, 2002.

3.6. On March 30, 2002, a communication by way of acknowledgement

and an outline Response to the proceedings was received from a Respondent.

3.7. On April 5, 2002, Dr. Clive Trotman, having provided

the WIPO Center with a Statement of Acceptance and Declaration of Impartiality,

was appointed as a single member Administrative Panel and notification

was sent by email to Complainant, Respondents and the Administrative Panel.

An electronic copy of the Case File was sent by email to the Administrative

Panel on April 5, 2002, and the complete Case File was sent

by courier.

4. Factual Background

4.1. Caesars Palace (Caesars), which opened on August 5, 1966,

is famous and its name is widely recognized. Many people, including those

having no interest in the services provided by Caesars Palace, would be

familiar with its name as one of the best known providers of gaming services

in one of the best known gaming cities in the world, namely Las Vegas,

Nevada, USA.

4.2. According to Complainant, Caesars provides not only gaming services,

but also hotel and entertainment services through its operation of Caesars

Palace in Las Vegas and also casinos and hotels operating under the Caesars

name in Stateline Nevada, Atlantic City New Jersey and Bridgeport Indiana.

On average, approximately 1,500,000 people stay at the Caesars Palace

casino and hotel each year.

4.3. Caesars owns a number of USA Patent and Trademark Office registrations

for the marks Caesars Palace and Caesars, including stylized marks and

designs. Registration of some of these trademarks extends into services

ancillary to its core activities in gaming, hotels and entertainment.

Complainant's trademarks are registered in at least 26 countries other

than the USA. The Complainant has spent approximately $96,000,000 in the

period 1995-2000, on advertising and promotion. In addition it receives

considerable publicity through the media, including through its hosting

or sponsorship of televised sporting events (Complainant's Exhibit G).

4.4. Complainant has had a website at the address "www.caesars.com"

devoted to its services since June 1996, and automatically directs users

who type "www.caesarspalace.com" to the same website. The portion

of the website devoted to the Caesars Palace casino and hotel at "www.caesars.com/palace/body.html"

received over 2 million hits in year 2000. The website has displayed

the Caesars Palace and Caesars trademarks since June 1996.

5. Parties’ Contentions

A. Contentions of Complainant

5.1. The contentions of Complainant include (paragraphs 5.2-5.6

below) that:

5.2. The dispute is properly within the scope of the Policy. The

registration agreement, pursuant to which the Domain Names being the

subject of this Complaint were registered, incorporates the Policy

by reference.

5.3. The disputed Domain Names are confusingly similar to trademarks

in which Complainant has rights.

5.4. Respondents have no rights or legitimate interests in the

disputed Domain Names, which were registered relatively recently on

February 25, 1999, (<teaserspalace.com> and <teaserspalace.net>)

or on May 23, 2000, (<ceasarsonlinegaming.net> and

<ceasersonlinegaming.net>).

5.5. Registration and use of the disputed Domain Names by Respondents

is in bad faith in the terms of the Policy. Respondents are using

the Domain Names to exploit Complainant’s fame for the purpose of

attracting users to their own gaming website.

5.6. The remedy requested by Complainant is that the disputed

Domain Names shall be transferred to Complainant.

B. Contentions of Respondents

5.7. The contentions of Respondents include (paragraphs 5.8-5.11

below) that:

5.8. Respondents have not done anything wrong; in effect they

do not admit the Complaints.

5.9. The disputed Domain Names <teaserspalace.com> and <teaserspalace.net>

are operated as sports wagering sites, having nothing to do with Caesars

Palace. These sites are based on a type of wager known as a "teaser".

5.10. Many names could rhyme with Caesars Palace.

5.11. A potential disclaimer on Respondents' websites could confirm

that these are not associated with Complainant.

6. Discussion and Findings

Jurisdiction of Administrative Panel

6.1. Paragraph 4(a) of the Uniform Policy states:

"You are required to submit to a mandatory administrative proceeding

in the event that a third party (a "Complainant") asserts to

the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a

trademark or service mark in which the Complainant has rights; and

(ii) you have no rights or legitimate interests in respect of

the domain name; and

(iii) your domain name has been registered and is being used in bad

faith."

6.2. Complainant has made the relevant assertions as in 6.1 above.

This dispute is properly within the scope of the Uniform Domain Name Dispute

Resolution Policy and the Administrative Panel has jurisdiction to decide

the dispute.

6.3. In Rules (1) (Definitions) a Respondent is defined as the holder

of a Domain Name registration against which a Complaint is initiated.

The Panel is satisfied that all four Complaints against the Respondent

companies identified in Paragraph (1) above should be considered together

because the same Mark Anton is the administrative contact, billing contact

and guiding mind behind all four and there are other instances of commonality

in the registration details. Furthermore Mark Anton in his email Response

dated March 30, 2002, has responded at least in respect of the

Domain Names <teaserspalace.com>, <teaserspalace.net> and

<ceasarsonlinegaming.net>. Respondent will therefore be referred

to hereafter in the singular.

Procedural

6.4. The Panel notes that Complainant is a large corporation and legally

represented whereas Respondent states by email that it is a small company

that cannot afford to be represented in this Proceeding. Rules 10 (b),

and the principles of natural justice, require the Panel to ensure that

the Parties are treated with equality and that each is given a fair opportunity

to present its case. Furthermore it is for Complainant to establish its

case. The email received from Respondent on March 30, 2002,

although later than the closing date of March 3, 2002, and later

than the service of the Notification of Respondent Default dated March 14, 2002,

will be taken into account.

6.5. For convenience this Discussion refers to contentious words without

necessarily distinguishing between singular, plural, possessive, possessive

with the apostrophe omitted, and combinations of these, however the Panel's

deliberations have tested all such permutations.

Whether the Domain Names are Identical or Confusingly Similar to a Trademark

6.6. The Panel will first consider the disputed Domain Names <ceasarsonlinegaming.net>

and <ceasersonlinegaming.net>. The question is whether these Domain

Names are confusingly similar to Complainant's trademarks CAESARS and

CAESARS PALACE. Each Domain Name contains one or more mis-spellings of

the Complainant's trademark name CAESARS that are predictably likely to

be typed by some Internet users. One contains "Cea..." in place

of "Cae..." and the other additionally spells the name Caesar

ending in "...er" instead of "...ar". These mis-spellings

represent the ways many people would be expected to speak, think and write

the name Caesar and are among the most likely mistakes that people could

make. They are confusingly similar to the element CAESARS.

6.7. The disputed Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>

begin with what is effectively the Complainant's trademark, albeit with an erroneous

or phonetic spelling. They continue with the explicit proclamation "onlinegaming".

Ignoring punctuation, the words "on line gaming" are ordinary descriptive

words such as might be tried by a person searching for on-line gaming. Domain

Names consisting of a trademark and generic words are in general confusingly

similar to the trademark (Sony Kabushiki Kaisha v. Inja,

WIPO Case No. D2000-1409, in which nineteen

Domain Names consisting of a trademark with appended ordinary words were transferred).

6.8. The Panel finds the disputed Domain Names <ceasarsonlinegaming.net>

and <ceasersonlinegaming.net> to be confusingly similar to Complainant's

trademarks in terms of Paragraph 4(a)(i) of the Policy.

6.9. The same considerations do not apply to the disputed Domain Names

<teaserspalace.com> and <teaserspalace.net>. Complainant posits

that these two Domain Names are confusingly similar to its trademarks

CAESARS and CAESARS PALACE. They rhyme in a simplistic way. However, the

narrow question to be decided is whether they are confusingly similar

to Complainant's trademarks. The exceptionally high and universal profile

of CAESARS PALACE itself diminishes the likelihood of confusion with words

based on Teaser.

6.10. It can be expected that virtually anyone familiar with Complainant's

trademarks knows that they begin with the sound of a soft "C".

The first letter might erroneously be thought to be a different letter

from "C", but it is inherently unlikely that anyone would think

it is a "T".

6.11. It is established precedent that many abusive website names

are concocted in the expectation that inexpert typists will hit an adjacent

key by mistake, when either logging on or searching. There can be little

realistic expectation that a significant number of users of the almost

universal QWERTY... or AZERTY... keyboards would hit "T" in

mistake for "C". In any case such an error would need to be

followed by further errors such that "TEASE..." was typed in place of

"CAESA..." in order to find Respondent's website by mistake for Complainant's

6.12. Caesar is well known to be a person's proper name and has no

other meaning except by association with a person's name. The word Teaser

is the opposite, being to all intents and purposes not derived from a

person's proper name and having many meanings that have nothing to do

with a person's name.

6.13. The word Teaser in the disputed Domain Names is spelled in the

ordinary way. It is not like the Complainant's trademarks.

6.14. Thus far the Panel does not find the word Teaser to be confusingly

similar to Caesar. However, the Panel also approached the question from

another direction by considering what mental images were evoked by the

disputed Domain Names <teaserspalace.com> and <teaserspalace.net>

and whether those images conflicted with the Complainant's intellectual

property. The Panel was able to resolve several different images of a

Teaser and of a Teasers Palace, but was unable to match any of them with

the gaming and associated services stated to be on offer by the Complainant.

6.15. The word Caesar in connotation with gaming and associated services

is highly specific and unquestionably protected, and the same applies

to Caesars Palace. Nevertheless, the word Palace in isolation is a generic

word used widely in the cinema, theatre, entertainment, hotel, hospitality

and other industries. The word has wide everyday usage that includes the

descriptive (royal palace), the institutional (palace of justice), the

hyperbolic (cinema name) and the flippant (floating gin palace). The Panel

does not find that the association of the words Teasers and Palace conflicts

with Complainant's trademarks sufficiently for a finding of confusing

similarity to be made.

6.16. The Respondent's admission that <teaserspalace.com> and

<teaserspalace.net> are intended to be sports wagering sites (that

by implication may be in competition with Complainant) does not impinge

on the question of whether those Domain Names are confusingly similar

to Complainant's trademarks, which has to be decided narrowly.

6.17. The Panel finds on the facts that the disputed Domain Names

<teaserspalace.com> and <teaserspalace.net> are not confusingly

similar to Complainant's trademarks in terms of Paragraph 4(a)(i) of the

Policy. Since it is not necessary to proceed further in respect of these

two Domain Names, the remainder of this Discussion (Section 6) will be

concerned with <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>.

Whether Respondent Has Rights or Legitimate Interests in Respect of the

Domain Names

6.18. In accordance with Paragraph 4(a)(ii) of the Policy, Complainant

is required to prove that Respondent has no rights or legitimate interests

in respect of the Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>.

Complainant has provided evidence that it is the proprietor of the trademarks

CAESARS and CAESARS PALACE in at least twenty-seven countries. Evidently

Complainant has not licensed its trademarks to Respondent. The Respondent

has the opportunity to rebut Complainant's assertions, either in accordance

with Paragraph 4(c) of the Policy or otherwise.

6.19. Respondent has not responded with any claim to use the disputed

Domain Names or names corresponding to the Domain Names in connection

with a bona fide offering of goods or services in terms of Paragraph

4(c)(i) of the Policy.

6.20. There is no evidence that Respondent as an individual, business,

or other organization has been commonly known by the Domain Names in terms

of Paragraph 4(c)(ii) of the Policy.

6.21. Respondent has not provided any evidence that it is making a

legitimate noncommercial or fair use of the Domain Names in terms of Paragraph

4(c)(iii) of the Policy.

6.22. Having considered the totality of the Complaint and the Response,

the Panel finds that Respondent has no rights or legitimate interests

in the disputed Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>

in terms of Paragraph 4(a)(ii) of the Policy.

Whether Domain Names Have Been Registered and Are Being Used in Bad Faith

6.23. Paragraph 4(a)(iii) of the Policy requires the Complainant to

prove that a Domain Name has been registered and is being used in bad

faith. Paragraph 4(b)(iv) of the Policy provides for a finding of bad

faith where "by using the domain name, you have intentionally attempted

to attract, for commercial gain, Internet users to your website or other

on-line location, by creating a likelihood of confusion with the Complainant's

mark as to the source, sponsorship, affiliation, or endorsement of your

website or location or of a product or service on your website or location".

6.24. Having regard to all the evidence there can be no plausible

explanation for Respondent's activities in establishing the Domain Names

<ceasarsonlinegaming.net> and <ceasersonlinegaming.net> other

than to attract Internet users to its locations by relying on their confusion

with the trademarks of the Complainant that are famous in connection with

on-line gaming; and Respondent has done so for commercial gain. The Panel

finds registration in bad faith to be proved in the terms of Paragraph

4(a)(iii) of the Policy.

6.25. In summary in respect of the Domain Names <teaserspalace.com>

and <teaserspalace.net>, as concluded in 6.17 above these are not

confusingly similar to Complainant's trademarks. The Panel gives its Decision

for Respondent and against Complainant.

6.26. In summary in respect of the Domain Names <ceasarsonlinegaming.net>

and <ceasersonlinegaming.net>, as concluded in 6.8 above these are

confusingly similar to trademarks in which Complainant has rights and

Complainant succeeds under Paragraph 4(a)(i) of the Policy. As concluded

in 6.22 above, Respondent has no rights or legitimate interests in these

two Domain Names and Complainant succeeds under Paragraph 4(a)(ii) of

the Policy. As concluded in 6.24 above, Respondent has registered and

used these two Domain Names in bad faith and Complainant succeeds under

Paragraph 4(a)(iii) of the Policy. The Complainant has proven all three

points required by Paragraph 4(a) of the Uniform Policy and in respect

of the Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>

the Panel gives its Decision for the Complainant and against the Respondent.

7. Decision

The Decision of the Administrative Panel is that the Complaints in respect

of the disputed Domain Names <teaserspalace.com> and <teaserspalace.net>

are dismissed. The disputed Domain Names <ceasarsonlinegaming.net>

and <ceasersonlinegaming.net> are confusingly similar to the trademarks

CAESARS and CAESARS PALACE in which Complainant has rights; Respondent has

no rights or legitimate interests in the disputed Domain Names; and Respondent

has registered and is using the disputed Domain Names in bad faith. The

Domain Names <ceasarsonlinegaming.net> and <ceasersonlinegaming.net>

shall be transferred to the Complainant.

Dr. Clive N. A. Trotman

Sole Panelist

Dated: April 19, 2002