Park Place Entertainment Corporation ("Park Place") v. Anything.com Ltd.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Park Place Entertainment Corporation v. Anything.com Ltd.

Case No. D2002-0530

1. The Parties

The Complainant is Park Place Entertainment Corporation, a corporation organized

in the State of Delaware, United States of America (USA), with place of business

in Las Vegas, Nevada, USA.

The Respondent is Anything.com Ltd., with address in George Town, Grand Cayman,

Cayman Islands.

2. The Domain Name and Registrar

The disputed domain name is <flamingo.com>.

The registrar of the disputed domain name is Tucows, Inc., with business address

in Toronto, Ontario, Canada.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a Complaint via

e-mail received by the WIPO Arbitration and Mediation Center (the "Center")

on June 6, 2002, and via courier mail received by the Center on June

10, 2002. On June 7, 2002, the Center transmitted a Request for

Registrar Verification to the registrar, Tucows, Inc., with the Registrar’s

response received by the Center on June 7, 2002.

(b) On June 11, 2002, the Center transmitted notification of the Complaint

and commencement of the proceeding to Respondent via e-mail and courier mail.

The Center indicated that the last day for filing a response was July 1, 2002.

(c) By e-mail of June 24, 2002, Respondent requested a 20-day extension of

the due date for filing its response. In response to a request from the Center

for any comments, Complainant indicated that it would not object to the extension,

provided that it would be allowed to file a reply to the Response. Respondent

indicated that it would not object to the filing of a reply by Complainant.

On June 25, 2002, the Center granted to Respondent an extension until July

21, 2002, for filing its Response, noting that the question whether supplemental

submissions would be accepted is within the discretion of the panel that would

be appointed to decide the case.

(d) On July 21, 2002, the Center received a Response from Respondent via e-mail,

and subsequently received the Response in hardcopy. Complainant elected to have

this dispute decided by a three-member panel, and paid the requisite filing

fees due in connection with that election.

(e) On August 12, 2002, the Center received via e-mail (and subsequently in

hardcopy) Complainant’s request for leave to file a reply, and the reply. An

exchange of e-mails among the parties and the Center followed in regard to the

form of Complainant’s submission.

(f) On August 20, 2002, the Center received via e-mail Respondent’s petition

for consideration of Respondent’s supplemental reply, and the supplemental reply.

(g) On August 22, 2002, following receipt of executed Statements of Acceptance

and Declarations of Impartiality and Independence, the Center appointed Frederick M. Abbott

(presiding), John R. Keys, Jr. and David E. Sorkin to serve as the Administrative

Panel (the "Panel") in this matter. The Center so notified Complainant

and Respondent. The Center notified the Panel that, absent exceptional circumstances,

it would be required to forward its decision to the Center by September 5, 2002.

The Panel received electronic and hard copy files from the Center.

(h) Following notification from the Panel of circumstances requiring an extension

of the date for decision in this matter, the Center notified the parties that

the projected date for a decision would be extended until September 12, 2002.

At the Panel’s request, a further extension was notified until September 16,

2002.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties. The

proceedings have been conducted in English.

4. Factual Background

Complainant [1] is the holder of service

mark registrations on the Principal Register at the U.S. Patent and Trademark

Office (USPTO) for the term "FLAMINGO" in word and stylized word form

(Reg. No. 1948975, dated January 16, 1996, in International Class (IC) 41, covering

"casino services", claiming date of first use and first use in commerce

of November 1, 1993 (word); Reg. No. 2517266, dated December 11, 2001, in IC

41, covering "casino services and entertainment services" as further

specified, claiming date of first use and first use in commerce of March 1947

(stylized word), and; Reg. No. 2517267, in IC 42, covering "resort

hotel, hotel, bar, restaurant and health spa services", claiming date of

first use and first use in commerce of March 1947 (stylized word)). Complainant

also holds two registrations at the USPTO for service marks that combine "FLAMINGO"

with additional terms (i.e. "FLAMINGO PLAYERS CLUB" and "FLAMINGO

LAS VEGAS"). (Complaint, para. 22 and Exhibit H)

Complainant’s best known "FLAMINGO" hotel and casino is in Las Vegas

Nevada. This hotel was opened in 1946, is heavily advertised (in 2001, Complainant

spent approximately $3,550,000 to promote it), and is the fifth largest hotel

in the world. Over one million visitors stay overnight at the Flamingo Las Vegas

each year. (Id., paras. 15 & 17)

Complainant operates commercial Internet websites at Internet address (URL)

<lv-flamingo.com> and < laughlinflamingo.com>. In 2001, the website

at <lv-flamingo.com> received approximately 2,500,000 visits. (Id.,

para. 18)

According to the registrar’s (Tucows, Inc.’s) verification response to the

Center, dated June 7, 2002, Respondent "Anything.com Ltd."

is the listed registrant of the domain name <flamingo.com>. The registrar’s

response indicates that the record of registration was created on April 15,

1998, and was last updated on March 20, 2002.

Respondent maintains an active commercial website at URL < flamingo.com>.

The <flamingo.com> home page states that "This Site is Planned for

Development" and "In the Meantime, Try Searching the Internet for

These Topics". The first "topic" on the list is "Flamingo".

This link connects the visitor to a page headed "Top Results for: Flamingo".

The "Top Results", with one exception, relate to hotels in Las Vegas.

The first is headed "Rooms at the Flamingo Up to 60% Off", with link

to <tripreservations.com>. This is illustrative of the remainder of the

listings. The one exception is a link to < flamingomania.com>, "For

Flamingo Gifts and Accessories". (Complaint, Exhibits O-P)

On the <flamingo.com> home page, in addition to the first "Flamingo"

search heading, there are headings for "Flamingo hotel" and "Flamingo

Las Vegas". The "Top Results" for "Flamingo Las Vegas"

are links to various travel reservation services, some (but not all) of which

refer expressly to Complainant’s Flamingo Las Vegas Hotel. (Id., Exhibit O-P)

In addition to "Flamingo" search terms, the home page for <flamingo.com>

includes various other terms such as "animal" and "bird seed",

as well as "Other Popular Categories", such as "Airline Tickets"

and "Weight Loss". (Id., Exhibit O)

Respondent indicates that it has registered numerous common word domain names

to develop into websites and has invested over $200,000 in this activity, but

due to the downturn in the Internet economy has postponed such development.

Respondent indicates that it receives over 3 million visitors per month to its

websites. Respondent has entered into an agreement with Overture Services Inc.

(formerly Goto.com) which pays Respondent a share of revenues it receives in

advertising for its links which are hosted on Respondent’s websites. Respondent’s

vice president states "Anything.com registered flamingo.com because it

is a common word which refers to the beautiful tropical bird", denying

any bad faith intent (Response, Affidavit of Bernadette Selim, vice president,

Anything.com Ltd., July 21, 2002).

Prior to initiating this proceeding, an agent of Complainant contacted counsel

for Respondent regarding the status of the disputed domain name. During the

first conversation regarding the name, Respondent’s counsel indicated that Respondent

was not interested in selling the name. In a subsequent e-mail to Complainant’s

agent, Respondent’s counsel indicated that Respondent would be willing to sell

it for $150,000. The parties are essentially in agreement regarding the substance

of these exchanges. (Id., para. 57 & Exhibit Q and Response, para.

III.C)

The Service Agreement in effect between Respondent and Tucows, Inc. subjects

Respondent to Tucows, Inc.’s dispute settlement policy, the Uniform Domain Name

Dispute Resolution Policy (the "Policy"), as adopted by ICANN on August 26, 1999,

and with implementing documents approved by ICANN on October 24, 1999.

The Policy requires that domain name registrants submit to a mandatory administrative

proceeding conducted by an approved dispute resolution service provider, of

which the WIPO Arbitration and Mediation Center is one, regarding allegations

of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the service mark "FLAMINGO"

as evidenced by registration at the USPTO (see Factual Background, supra)

and based on long and extensive use in commerce.

Complainant asserts that the "FLAMINGO" mark is "very well known"

in connection with the hotel and casino industry, and is famous.

Complainant argues that the disputed domain name is identical or similar to

its well known mark.

Complainant asserts that Respondent has no rights or legitimate interests in

the disputed domain name. Complainant states that Respondent is speculating

in generic domain names, and that this does not establish rights or legitimate

interests. Complainant argues that Respondent is not operating a website to

provide information about a bird, but is seeking to divert Internet users seeking

information about Complainant for Respondent’s commercial purposes.

Complainant suggests that Respondent must have been aware of its famous mark

at the time it undertook its registration of the disputed domain name. Complainant

states that Respondent’s corporate situs in Grand Cayman should not be understood

to limit such awareness, since it believes Respondent’s Grand Cayman status

is a sham used to shield it from liability.

Complainant alleges that Respondent registered and has used the disputed domain

name in bad faith. Complainant alleges that Respondent intended to and is in

fact diverting Internet users to Respondent’s commercial website by confusing

such users as to Complainant’s association with that website. Complainant further

indicates that Respondent’s failure to develop content on its website, coupled

with its offer to sell the disputed domain name to Respondent, is evidence of

its bad faith.

Complainant requests the Panel to direct the registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent states that "flamingo" is a common word in the English

language, and that Complainant does not have exclusive rights to control all

uses of that word. Respondent argues that it is in the business of registering

common words as domain names with the intention of using those names to develop

websites, and that it has developed numerous websites that are "custom-developed

with relevant content and links specific to each website".

Respondent states that its current business is based on an arrangement with

Overture Services, Inc., "the world’s leading provider of pay-for-performance

search services", in which Respondent "agrees to host links provided

by Overture on its domain name web pages". Respondent explains that the

links are determined algorithmically to "automatically appear according

to their relevance to the common word appearing in the domain name". Respondent

also provides links on its common word websites for third party advertisement,

such as for cameras.

Respondent states that use of the term "flamingo" on the Internet

is widespread outside the context of Complainant’s hotels and casinos, and that

"There are over 900 third-party Internet domain names (.com, .net and .org)

which incorporate ‘flamingo’". Respondent states that "there are over

50 active and pending registered trademarks and incorporate the common word

‘flamingo’".

Respondent indicates "Not only is there tremendous third party use of

the word ‘flamingo’ generally, but there is also substantial third party use

worldwide in the hotel, resort and casino industry – the same field as

Complainant. It lists a number of such businesses and provides web page support.

Respondent argues that it registered the disputed domain name because it is

a common word with "worldwide appeal" and positive association with

a beautiful bird. It did not register the name to prevent Complainant from registering

it, to sell it to Complainant or any other party, or to confuse consumers as

to an association with Complainant.

Respondent asserts that the associations with Complainant’s hotels that are

generated on its web page are computer generated based on relevance and popularity

of the word "flamingo", and that the majority of links do not relate

to Complainant’s hotels. Respondent argues that its website does not suggest

an association with Complainant. The links to travel services that offer reservations

at Complainant’s hotel are run by third party businesses that do in fact book

rooms at Complainant’s hotel, and have a right (implicitly acknowledged by Complainant

through accepting the reservations) to do so. Respondent indicates that Overture

would remove links to Complainant’s hotel if it was requested by Complainant

to do so, but that Complainant has not done this.

Respondent asserts that it has rights or legitimate interests in the disputed

domain name because it is using the term "flamingo" in connection

with third party advertising in a descriptive sense, and this constitutes bona

fide use in connection with providing services.

Respondent claims that the fact "flamingo" is an "extremely

common word" "vested Respondent with irrevocable rights and a legitimate

interest … at the point of registration". This is a "per se"

right, according to Respondent. Respondent notes that it registered the disputed

domain name over four years ago.

Respondent asserts that Complainant’s failure to object to its use of the domain

name for four years constitutes implicit endorsement of its legitimate interest,

and that Complainant’s inquiry regarding purchasing the name also reflects its

belief that Respondent legitimately holds the registration.

Respondent argues that there is no evidence of bad faith registration and use.

Respondent states that the common nature of the term "flamingo" and

its wide use by third parties effectively precludes a finding that it has acted

to take advantage of the fame of Complainant’s mark, or that it registered the

name to sell it to Complainant.

Respondent argues that multiple registration of common terms does not constitute

evidence of bad faith.

Respondent argues that it could not have intended to attract Internet users

based on an association with Complainant’s mark since the links are based on

Overture’s objective algorithm.

Respondent contends that its offer to sell the disputed domain name in response

to an unsolicited inquiry is not evidence of bad faith, particularly since Respondent

held the registration for four years and never contacted Complainant.

Respondent requests the panel to make a finding of reverse domain name hijacking

since Complainant had no plausible basis for making a complaint on the basis

of Respondent’s registration and use of a common word as a domain name.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent have notice

of proceedings that may substantially affect its rights. The Policy, and the

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

establish procedures intended to ensure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., para. 2(a), Rules). In this proceeding, Respondent

filed detailed responsive pleadings. The Panel is satisfied that Respondent

had adequate notice and opportunity to participate.

As a preliminary matter, the Panel notes that Complainant filed a request for

leave to file a reply and reply, and Respondent thereafter filed a petition

for consideration of a supplemental reply and reply. The Panel has discretion

to accept supplemental pleadings (paras. 10 & 12, Rules). While the legal

arguments in Respondent’s Response should have been (and largely were) anticipated

by Complainant, Respondent presented certain facts and legal arguments based

on them that may not reasonably have been foreseen by Complainant. In light

of the fact the Respondent also filed a supplemental pleading responsive to

Complainant’s reply, the Panel has decided to accept the supplemental pleadings

of both parties.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a complainant to merit a finding that a respondent has engaged in abusive

domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

Complainant is the holder of service mark registrations for the term "FLAMINGO"

in the United States and is using that mark in commerce in connection with providing

hotel and casino services (see Factual Background, supra). Complainant’s

registration of the "FLAMINGO" mark on the Principal Register at the

USPTO establishes a presumption of its validity in U.S. law.[2]

Although Respondent has contested the extent of Complainant’s right to exclude

third parties from use of its mark, it has not disputed that Complainant has

rights in "FLAMINGO" as a service mark in its registered classes.

Complainant asserts that its mark is well known or famous in the field of hotel

and casino services. Complainant has presented evidence of its heavy advertisement

and promotion of its services, and of extensive consumer use of its hotel and

casino services. Respondent properly suggests that a service mark holder’s burden

of proof in establishing the well known or famous character of a common descriptive

term (that has acquired service mark distinctiveness) is greater than that for

an arbitrary or coined term.[3] The Panel

nonetheless concludes that Complainant’s "FLAMINGO" mark is well known

in the field of hotels and casinos based on demonstrated strong consumer identification

of the mark with Complainant’s service business, extensive advertisement of

the mark, and its continuous long use in commerce.

Respondent does not contend that the domain name <flamingo.com> is not

identical or confusingly similar to Complainant’s mark. The mark and the name

are the same, with only the addition of the .com gTLD. In the present context,

addition of .com does not serve to distinguish the mark and the domain name.

The Panel determines that the disputed domain name is identical to Complainant’s

mark.

Complainant has established the first element necessary for a finding of abusive

domain name registration and use.

The second element of a claim of abusive domain name registration is that the

Respondent has no rights or legitimate interests in respect of the domain name

(Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a

respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue." (Policy, para. 4(c)).

Respondent advances several arguments to support a finding of rights or legitimate

interests to the disputed domain name. The principal argument is that it is

using the term "flamingo" in a common descriptive sense in connection

with a website that furnishes information and commercial links regarding a variety

of subject matters, and that the appearance and use of Complainant’s "FLAMINGO"

mark and related business links (of third parties) is a mere a coincidence based

on an algorithm that identifies Complainant’s business as the most frequent

subject matter reference of that term.

The Panel does not accept Respondent’s line of reasoning. If Complainant’s

business is in fact most commonly identified by Respondent’s commercial partner’s

algorithm in connection with the term "FLAMINGO", this would appear

mainly to constitute strong evidence of Complainant’s rights in its mark.

"Flamingo" in a descriptive sense (for a bird) may in fact have an

association with "bird seed", and the term "bird seed" also

appears as a link on Respondent’s website. Respondent is not, however, using

the disputed domain name to market or sell bird seed. Respondent is using <flamingo.com>

to sell business links to a third party (Overture), that in turn is obtaining

advertising revenues based on links associated principally with Complainant’s

business (and to a lesser extent with other businesses). Yet Complainant has

not authorized Respondent to advertise its business for commercial purposes.

Respondent is obtaining revenues from advertising Complainant’s business – that

is, using its mark in commerce -- without its consent.

Respondent places a high value on the disputed domain name because it generates

substantial revenues based on the frequency with which it is entered by Internet

users. The Panel finds it extremely unlikely that a large number of Internet

users are entering <flamingo.com> in their browsers in search of bird

seed. The value in the name lies in Complainant’s mark.

Respondent further argues that because third party reservation services that

are identified through its website in fact make reservations at Complainant’s

business, and Complainant accepts these reservations, that Complainant is implicitly

consenting to Respondent’s use of its mark. This argument fails to adequately

distinguish between fair use of the mark and misappropriation of the mark holder’s

rights. Third party reservation services that identify Complainant’s hotels

and casinos by its name and service mark are using the mark in a fair nominative

sense to identify the hotels and casinos for their customers. These third party

reservation services are not identifying themselves by Complainant’s name.

Respondent has failed to establish rights or legitimate interests in the mark.

Complainant has established the second element necessary for a finding of abusive

domain name registration and use.

Paragraph 4(b) of the Policy provides:

"Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph

4(a)(iii), the following circumstances, in particular but without limitation,

if found by the Panel to be present, shall be evidence of the registration and

use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your web site 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 web site or location

or of a product or service on your web site or location."

Complainant has argued that Respondent’s offer to sell the disputed domain

name in response to its approach regarding the status of the name constitutes

evidence of bad faith registration and use. In the circumstances of this proceeding,

the Panel does not accept this argument. Respondent registered the disputed

domain name four years prior to Complainant’s approach to it, and made no offer

to sell the name to Complainant or to any third party until it was approached.

Although it is not inconceivable that Respondent was merely "biding its

time" in anticipation of the opportunity to sell the name to the mark holder,

having initially registered the name with that intention, the Panel does not

consider the evidence strong enough to support such an inference.

It is clear to a majority of the Panel, however, that Respondent registered

and used the disputed domain name to intentionally attract, for commercial gain,

Internet users to its website by creating a likelihood of confusion with Complainant’s

mark as to the sponsorship of or affiliation of Complainant with Respondent’s

website. The entire Panel accepts that Respondent’s current use of the disputed

domain name creates a likelihood of confusion for Internet users, and that Respondent

is diverting such users to its website based on that confusion for commercial

gain. Internet users seeking Complainant’s business by entering its well known

mark in a browser find themselves at Respondent’s website, where they are diverted

to third party service providers for Respondent’s commercial gain. The fact

that a third party is effectively operating the website on behalf of Respondent,

and making payments to Respondent on the basis of that use, does not insulate

Respondent from the conduct of its authorized agent.

As the dissenting panelist acknowledges, paragraph 4(b)(iv) of the Policy is

framed in language different than that of paragraphs 4(b)(i)-(iii). Paragraph

4(b)(iv) states that "using" the domain name to divert Internet users

(relating back to 4(b), chapeau) "shall be evidence of the registration

and use of a domain name in bad faith". The Panel is instructed that Respondent’s

present conduct evidences its intention for registering the name. The Panel

majority considers the facts of Complainant’s well known mark and Respondent’s

conduct to more than adequately support an inference regarding Respondent’s

intention on registering the disputed domain name in this proceeding. The Panel

majority considers it improbable that Respondent selected the term "FLAMINGO"

because it intended to host a website devoted to the beauty of birds.

The dissenting panelist is troubled by the majority’s inference of bad faith

based on the acts of a third party, namely Respondent’s agent with respect to

the operation of its website. Yet to the majority, Respondent’s action in selecting

the well known name of a major Las Vegas hotel as a domain name, followed by

farming out its mining to a third party, merely demonstrates that Respondent

has operated its diversionary enterprise in what for it may be the most efficient

manner. Is it possible that Respondent, a Cayman Islands business purchasing

multiple domain names and operating multiple websites for profit said to itself

in 1998, "Flamingos are beautiful birds. Let’s register <flamingo.com>

and later on perhaps we will think of something to associate with the name,

like an on-line bird food shop"? Many things are possible, including this.

However, the Panel must weigh the evidence before it and decide whether Complainant’s

present evidence of diversionary conduct reasonably supports an inference that

Respondent registered the disputed domain name for that purpose, as the Panel

is instructed by paragraph 4(b)(iv) of the Policy. The majority is satisfied

that the inference is supported by the weight of the evidence before it.

The Panel determines that Respondent registered and used the disputed domain

name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Complainant

has established the third element necessary for a finding of abusive domain

name registration and use.

The Panel will direct the registrar to transfer the disputed domain name to

Complainant.

7. Decision

Based on its finding that the Respondent, Anything.com Ltd., has engaged in

abusive registration and use of the domain name <flamingo.com> within

the meaning of paragraph 4(a) of the Policy, the Panel orders that the

domain name <flamingo.com> be transferred to the Complainant, Park Place

Entertainment Corporation.

Frederick M. Abbott

Presiding Panelist

John R. Keys, Jr.

Panelist

Dated: September 16, 2002

Dissenting Opinion

I respectfully dissent. I am not persuaded that Respondent’s motivation for

registering the disputed domain name had anything to do with Complainant or

its marks. I would therefore find that Complainant has failed to meet its burden

of proving that the disputed domain name was registered in bad faith, an essential

element of Complainant’s case under the Policy.

It is true, as the majority notes, that paragraph 4(b)(iv) of the Policy instructs

the Panel to consider certain bad faith uses of a domain name as evidence of

registration and use in bad faith. As previous decisions have noted, this provision

is rather perplexing, in that the Policy elsewhere provides explicitly that

both bad faith registration and bad faith use must be demonstrated. See,

e.g., Passion Group Inc. v. Usearch, Inc., No. AF-0250 (eResolution

Aug. 8, 2000); Shirmax Retail Ltd. v. CES Marketing Group Inc., No. AF-0104

(eResolution March 20, 2000). The Panel in Passion Group resolved the

apparent inconsistency thus:

"This contrasting language indicates that use of the kind described in

4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence

of bad faith use. But this evidence is not necessarily conclusive. Furthermore,

the panel is not required to assign substantial weight to evidence of constructive

bad faith registration furnished by paragraph 4(b)(iv), and the panel may have

regard to other evidence in determining whether the requirements of 4(a)(iii)

have been proved.

This approach accords with the Policy by enabling a finding of bad faith registration

to be made where bad faith use within 4(b)(iv) is the only evidence tending

to show the purpose for which the domain name was registered. Where, however,

there is other relevant evidence, such as evidence that the domain name was

registered for a permissible purpose, it must be weighed against any evidence

of bad faith registration constituted by evidence of bad faith use within 4(b)(iv)."

Though there certainly are circumstances in which conclusions about a registrant’s

initial motivations can be inferred from subsequent conduct, I do not believe

that such an inference is appropriate in this case. And even if the Policy is

interpreted to require the Panel to draw such an inference, I believe that it

is adequately rebutted by the evidence Respondent offers concerning its initial

motivations, though neither of these is particularly probative. In any event,

we are asked to draw an inference concerning Respondent’s initial motivations

not from Respondent’s subsequent conduct, but from the conduct of a third party.

I do not dispute the majority’s conclusion that it is appropriate to hold Respondent

vicariously responsible for activities undertaken by a third party to whom it

has effectively delegated partial control over the domain name, but merely its

willingness to use such third party conduct as the primary or sole basis for

inferences regarding Respondent’s prior state of mind.

In my view Complainant has failed to sustain its burden of proving bad faith

registration. I would dismiss the Complaint.

David E. Sorkin

Dissenting Panelist

Dated: September 16, 2002

Footnotes:

1. The Panel notes that Complainant has assigned

certain of its service mark registrations to enterprises that appear to be controlled

by it based on the Panel’s visit to its corporate website (http://www.parkplace.com).

It is preferable in these proceedings that parties clarify trademark ownership

in a way that does not require independent inquiry by panels.

2. 15 USCS § 1057(b). See, e.g., Avery

Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).

3. See discussion, e.g., in

The Dial Corporation v. Perpetual Advantage, Inc., WIPO

Case No. DBIZ2002-00100.