WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caesars Interactive Entertainment, LLC v. Domain Admin, Whois Privacy Corp.

Case No. D2017-2381

1. The Parties

The Complainant is Caesars Interactive Entertainment, LLC of Las Vegas, Nevada, United States of America (“USA” or “US”), represented by Greenberg Traurig, LLP, USA.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <wsopfreechips.net> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2017. On December 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2018.

The Center appointed Antony Gold as the sole panelist in this matter on January 10, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner and operator of a poker tournament called the World Series of Poker. Since, at least, 2003, the tournament has also been referred to by its acronym, WSOP. The World Series of Poker was founded in 1970 and is large and well known; in 2017, almost 120,000 people from 111 countries participated in it. The Complainant operates a website at “www.wsop.com” which provides information about the World Series of Poker, as well as publishing schedules for events and selling World Series of Poker branded merchandise.

In addition to its website, the Complainant has made available a WSOP app which is produced and distributed by a licensee of the Complainant and has been extensively downloaded. Users can make in-app purchases of virtual chips to play the various games available on the app. Users can also redeem promotional codes issued by the Complainant in order to obtain free chips. No third party is authorized to issue promotional codes for the WSOP app or to supply free chips.

The Complainant has extensively registered trade marks for WORLD SERIES OF POKER and WSOP in multiple jurisdictions. Its WSOP registrations include the following:

US trade mark, registration number 3,499,073 for WSOP, registered on September 9, 2008, for goods in international class 28;

US trade mark, registration number 3,499,087, for WSOP, registered on September 9, 2008, for services in International Class 41;

US trade mark, registration number 3,794,994, for WSOP, registered on May 25, 2010, for goods in International Classes 16 and 28;

Bahamian trade mark number 29538, for WORLD SERIES OF POKER (as a design in logo form), registered on June 21, 2006.

The disputed domain name was registered on April 10, 2017. It points to a website, the home page of which is headed “WSOP Free Chips 2017” with the words “Megabonus Codes Daily” appearing beneath it. Beneath that are words in bold type: “WSOP free chips codes 2017”. Underneath those words is a prominent banner containing the words “WSOP Free Chips” adjacent to a circular logo that surrounds the words “World Series of Poker”. Lower down is a smaller banner with the claim “Get WSOP free chips Here”. This is followed by content relating to, amongst other topics, “What are the in game ways to obtain WSOP free chips?”.

The Respondent is a privacy service. It did not respond to a cease and desist letter sent to it by the Complainant’s representatives on August 17, 2017.

5. Parties’ Contentions

A. Complainant

The Complainant provides information about its registered trade marks for WSOP, as well as for WORLD SERIES OF POKER, including those trade marks in respect of which details are set out above.

The Complainant says that the disputed domain name is confusingly similar to its domain name <wsop.com> and to its WSOP and WORLD SERIES OF POKER trade marks. For the purpose of considering whether the disputed domain name is identical or confusingly similar to its trade mark the Complainant says that the addition of a descriptive term to a complainant’s trade mark will not produce a domain name distinct from the trade mark, where that trade mark is incorporated fully into the domain name; see, Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, WIPO Case No. D2004-0520.

The Complainant says that the only difference between its WSOP trade mark and the disputed domain name is the addition of the term “free chips” to the mark, and the generic Top-Level Domain (“gTLD”) “.net”, neither of which dispels confusion between the disputed domain name and the Complainant’s trade marks.

The Complainant adds that the disputed domain name is also confusingly similar to its WORLD SERIES OF POKER trade marks. It contends that where an acronym has become widely associated with a complainant’s mark and is reproduced entirely within the domain name, as here, this will give rise to confusing similarity. The Complainant asserts that WSOP is so widely known as an acronym for “World Series of Poker” that confusion between its WORLD SERIES OF POKER trade mark and the disputed domain name is unavoidable.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It says that it has never authorised or consented to the Respondent’s registration, or use of the disputed domain name. Nor, to its knowledge, is the Respondent commonly known by the disputed domain name. Moreover, there are no prior trade mark applications anywhere in the world, in the name of the Respondent for WSOP or WORLD SERIES OF POKER.

The Complainant says that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. Rather, it is using the disputed domain name to divert Internet users towards a website which misleadingly purports to offer free WSOP chips for the Complainant’s WSOP app and which makes liberal use of the Complainant’s trade marks, including its WORLD SERIES OF POKER logo. The website resolved to by the disputed domain name purports to offer “cheats” and online hack tools which will allow Internet users to circumvent the Complainant’s online systems and generate free chips that will be placed into the user’s WSOP account. The Complainant points out that the website also contains links to third-party websites offering associated services and products from which the Respondent is likely to derive revenue. The Complainant says that domain name uses of this type do not comprise a bona fide offering of goods and services. It draws attention to decisions of earlier panels which have considered this issue, including Arkema France v. Pepi Robert, WIPO Case No. D2014-1055, in which the panel held that use of a domain name in furtherance of fraud establishes that a respondent lacks a legitimate interest in that domain name.

Lastly, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant says that the Respondent plainly had knowledge of it and its trade marks, when it registered the disputed domain name. Additionally, the Complainant says that registering a domain name which incorporates its well-known WSOP trade mark, amounts, in itself, to bad faith.

The Complainant contends that the Respondent also had constructive knowledge of its trade marks through their registration with the USPTO and trade mark registries in other jurisdictions, which the Respondent could and should have searched prior to registering the disputed domain name. The Complainant refers to Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, in which the panel held that, where a respondent could have carried out a trade mark search which would have revealed the existence of a complainant and its trade marks, it will be held to have had constructive notice of them.

The Complainant says that the use of the website to which the disputed domain name resolves, as described above, is further evidence of bad faith. The Complainant says that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks, as to the source, sponsorship, affiliation or endorsement of the website. It refers to previous panel decisions including Booz Allen Hamilton, Inc. v. Hongjie Shi, WIPO Case No. D2015-1009, which found that using a website pointed to by a domain name to re-direct Internet users to another website, where they were asked to complete surveys to win a gift card unrelated to the complainant, constituted bad faith registration and use of the domain name.

The Complainant adds that the Panel should also look at the totality of circumstances which might be suggestive of bad faith in addition to the specific circumstances which will evidence bad faith, as set out at paragraph 4(b) of the Policy.

Lastly, the Complainant claims that the Respondent’s failure to answer its cease and desist letter, and the use of a privacy service by the Respondent to shield its identity, are both indicative of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences from this as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided a schedule of its many registered trade marks for WSOP, including details of the specific trade marks referred to above. These establish that it has rights in WSOP.

When considering whether the disputed domain name is confusingly similar to the Complainant’s trade mark, the gTLD “.net” is disregarded as it is a technical requirement of registration. The disputed domain name accordingly comprises the Complainant’s WSOP trade mark, coupled with the phrase “freechips”. The addition of this phrase does not serve to reduce the confusing similarity between the disputed domain name and the Complainant’s trade mark.

The Panel accordingly finds that the disputed domain name is confusingly similar to trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:

(i) before any notice of the dispute, it can show 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) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or

(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

How these provisions are usually applied in practice is explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The use to which the Respondent has put the disputed domain name, namely, amongst other uses, as a platform for information as to how to obtain the Complainant’s virtual poker chips without payment, is not bona fide. There is no evidence that either the privacy service or the person named as the underlying registrant is commonly known by the disputed domain name or has acquired any trade mark rights in it, nor has the registration and use of the disputed domain name by the Respondent been authorized by the Complainant. Lastly, the website to which the disputed domain name points is not “legitimate, noncommercial or fair” in character.

Accordingly, none of the grounds set out at 4(c) of the Policy appear to be applicable to the current facts. The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production therefore shifts to the Respondent to show that it does have such rights or interests. The Respondent has failed to respond to the Complaint and has thereby declined to take the opportunity available to it to provide evidence which might suggest that it might do so, whether on the specific grounds set out at paragraph 4(c) of the Policy or on any other basis.

Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered on April 10, 2017 and, by August 17, 2017, the Complainant’s representatives had sent a cease and desist letter to the Respondent complaining of the Respondent’s website and, in particular, its references to the Complainant’s World Series of Poker events and the false offer of promotional codes and free chips which could be used at the Complainant’s website at “www.wsop.com”.

The Panel finds, on a balance of probabilities, that the disputed domain name was registered by the Respondent with a view to establishing a website which purported to offer the same, or essentially the same, goods and services as those which are depicted in the screen prints of the Respondent’s website which the Complainant has provided. Those offers include many questionable services such as the offer of “WSOP free chips” as well as “Different WSOP hack tools” and other advice such as “Benefits of using Online WSOP hack tools”.

Internet users are likely to assume that the phrase, “freechips” refers to the virtual poker chips which are a component of the services provided by the Complainant to its customers. These words accordingly exacerbate, rather than reduce, the confusing similarity between the disputed domain name and the Complainant’s WSOP trade marks. This is particularly the case because users of the Complainant’s WSOP app are able to redeem promotional codes issued by the Complainant in order to obtain free WSOP chips for use on the WSOP app.

Whilst many of the services which the Respondent purports to offer on its website are promoting means of obtaining free virtual poker chips, thereby depriving the Complainant of revenue, the liberal use of the Complainant’s marks create the strong initial impression to Internet users that the Respondent’s website is, in some way, associated with the Complainant. The Respondent is earning revenue by attracting Internet users to its website (and the other websites) as a result of this purported association.

Paragraph 4(b) of the Policy sets out a number of circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) provides that bad faith registration and use will be found if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website. See, also, Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 which held that using confusingly similar domain names to redirect Internet users away from a complainant’s website amounted to bad faith.

The Respondent’s registration and use of the disputed domain name, falls within the circumstances outlined at paragraph 4(b)(iv) of the Policy. Specifically, the registration and use of the disputed domain name by the Respondent has been as bait to increase traffic to its website from Internet users who are seeking the Complainant or its products and who are confused by the seeming connection between the disputed domain name and the Complainant’s products into visiting the Respondent’s website.

For these reasons, the Panel accordingly finds that the disputed domain name was registered and is being used in bad faith. It is therefore not necessary to consider the Complainant’s additional submissions in respect of bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <wsopfreechips.net> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: January 24, 2018