Caesars Entertainment Inc v S N Pepin [2005] DRS 02582 (01 July 2005)

Nominet UK Dispute Resolution Service
DRS 02582
Caesars Entertainment Inc v S N Pepin
Decision of Independent Expert

1.	Parties
Complainant:		Caesars Entertainment Inc
Country:	US
Respondent:		S N Pepin
Country:	GB	
2.	Domain Names
caesars-wembley.co.uk and caesarswembley.co.uk
(“the domain names”)
3.	Procedural Background
Nominet received a complaint about caesarswembley.co.uk on 15 April 2005 and about caesars-wembley.co.uk on 27 April. The Respondent’s responses to these complaints were dated 26 April and 6 May respectively. On 9 and 13 May the Complainant replied to each. The complaint, response and reply in each case are identical in nearly every respect and, on 27 May, Nominet notified both parties that the two disputes would be consolidated. Informal mediation followed. When that did not resolve the dispute, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 13 June. 
On 15 June I, Mark de Brunner, agreed to serve as an Expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.
4.	Outstanding Formal/Procedural Issues
There are no outstanding formal or procedural issues.
5.	The Facts
I accept the following as facts.
The Complainant, through various subsidiaries, owns and runs four casinos in the United States: Caesars Palace in Las Vegas, Nevada; Caesars Tahoe in Lake Tahoe, Nevada; Caesars Indiana in Elizabeth, Indiana; and Caesars Atlantic City in Atlantic City, New Jersey. It makes gambling facilities available on two international cruise ships under the name Caesars Palace at Sea and licenses the use of the Caesars name in holiday accommodation in the Poconos known as Caesars Pocono Resorts. It also sells goods and other services under the Caesars brand. Over the last 40 years, the Complainant has spent more than $200m promoting the Caesars brand.
The Complainant has a range of registrations for the Caesars trade mark. The Complainant’s domain name registrations include caesars.com, caesarspalace.com, caesarstahoe.com, caesarsatlanticcity.com, caesarsindiana.com, caesarswembley.biz and caesarswembley.org.
On 12 October 2004, the Complainant announced plans to open a casino resort adjacent to the redeveloped national stadium at Wembley and Wembley Arena, to be known as Caesars Wembley. A press release of that date refers to an investment of $600m in a joint venture between the Complainant and Quintain Estates and Development PLC. The press release makes clear that the plans are subject to the proposed deregulation of the UK’s gambling laws. There followed some publicity about the proposed development in the national and local press.
The Respondent registered the domain names caesarswembley.co.uk,  caesarswembley.com and caesarswembley.info on 12 October 2004; and the domain name caesars-wembley.co.uk on 13 October 2004.
Visitors to the websites connected to the domain names at issue see the following message:
This web site has no, repeat no, connection with a gaming company located in the USA. This web site is to protest the opening of casinos in the United Kingdom that the UK Government is seeking to allow.
We do not want more casinos in the UK with all the problems that gambling causes!!
6.	The Parties’ Contentions
Complainant
The Complainant’s contentions can be summarised as follows. The domain names are abusive registrations because:
(i)	the name Caesars, alone or in conjunction with a geographical location, is recognised within the UK as referring to the Complainant
(ii)	visitors to the websites at the domain names are likely to be confused into thinking (if only momentarily) either that the sites belong to the Complainant or that there is a connection between those web pages and the Complainant
(iii)	in registering the domain names, the Respondent is appropriating goodwill that belongs to the Complainant. The timing of the domain name registrations (at and immediately after the Complainant announced its investment plans) cannot be co-incidental and must therefore be evidence of bad faith
(iv)	the Respondent has effected a blocking registration
(v)	the Respondent is unfairly disrupting the Complainant’s business
(vi)	the registrations here are part of a pattern of registrations by the Respondent of domain names corresponding to a well known name in which the Respondent has no apparent rights
Respondent
The Respondent’s case is essentially that the domain names are not abusive registrations because:
(i)	the Complainant does not have an exclusive right to the name Caesars and has no rights in the combination of words Caesars and Wembley 
(ii)	the domain names have been used perfectly legitimately to complain about the opening of more casinos in the UK
(iii)	the Respondent is simply taking advantage of a commercial opportunity. She offers an analogy:
if the Complainant found that a field in Wembley contained a large reservoir of oil and I learnt of that intention and quickly went to the owner and persuaded him to sell the field to myself (the Complainant having failed to buy it), then that would be his hard luck
(iv)	the fact that the domain names would put the Respondent in a position to pass herself off as the Complainant does not mean that passing off is in fact taking place
7.	Discussion and Findings
General
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
(i)	he or she has rights in respect of a name or mark which is identical or similar to the domain name; and
(ii)	the domain name, in the hands of the Respondent, is an abusive registration.

Complainant’s Rights
The Complainant has invested a great deal of money in the name Caesars. It has registered rights in the name. It has also established a series of names linking Caesars with geographical locations. Its registered rights do not appear to include Caesars in combination with a geographical location but, given the goodwill I infer it has built up in Caesars Tahoe, Caesars Indiana, Caesars Atlantic City and Caesars Pocono, its unregistered rights clearly do include such combinations.
Caesars Wembley is arguably different, in that the development is only at the proposal stage (and the proposal is dependent on changes the Government intends making to Britain’s gaming laws). But the Complainant has evidently invested significantly in preparations for the announcement of this $600m joint venture, including detailed plans for the use of the space at Wembley. That level of investment will clearly have generated protectable goodwill and established common law rights in the name Caesars Wembley.
It is possible to argue, as the Respondent does, that the Complainant does not have exclusive rights in the name Caesars. But the relevant point is that, in the gaming world, the Complainant evidently does have rights in the name Caesars and, in this context, those rights extend to the name Caesars Wembley.
Ignoring the standard suffixes, one of the domain names is identical to the name in which the Complainant has rights. The other domain name includes a hyphen between Caesars and Wembley. In this context, I do not regard that as a significant difference. I conclude that the Complainant has rights in respect of a name which is identical or similar to the domain names.
Abusive Registration
The Dispute Resolution Service rules define an abusive registration as a domain name which either
(i)	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s rights; or
(ii)	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.
It is clear from the Policy (in its illustrative lists of factors that may be evidence that a domain is (or is not) an abusive registration) that it can be important to look both at the use to which a domain has been put and at the motives for the registration.
Here there is little use of the domain names. They have been connected to a web page that rather cursorily protests about the effect of proposed relaxations of the gaming laws.
But why select the domain names in the first place? The Complainant argues that the motives can only have been illegitimate, designed to confuse people, or make unfair use of its goodwill, or prevent the Complainant from registering the domain name, or disrupt the Complainant’s business. In fact, those claims cover most of the non-exhaustive list of factors that may be evidence that the domain name is an abusive registration.
A number of Nominet Dispute Resolution Service decisions have made clear that taking someone else’s name and using it as a domain name is effectively impersonating that person (however briefly, and however soon the confusion is cleared up once interest has been created). Those decisions have also shown that such action will require an exceptional explanation to avoid the conclusion that the registration is abusive. I note, too, that the Respondent here has registered a number of similar domain names which correspond to names in which she has no apparent rights; and that the registration of the domain names here coincides with or immediately follows the Complainant’s announcement of its plans. Together, these raise a significant question about the Respondent’s motives in registering the domain names.
So what is the Respondent’s reply on this question? She offers two answers: that the domain name was intended to be used as part of a legitimate protest against the possibility of more casinos in the UK; and that she was simply taking advantage of a commercial opportunity that presented itself (like an investor snapping up an oil field, as she herself puts it). It seems to me that these tend to pull in opposite directions: the two possible motives are not necessarily mutually exclusive, but together they do not lend themselves to a satisfactory explanation of motive here. Nevertheless, I can take each singly and on its own terms.
To complain about changes to the gaming laws it was not necessary to use a domain name identical or similar to a name in which the Complainant has rights. Caesars Wembley was presumably chosen on the back of the Complainant's announcement of its joint venture, because internet visitors would be likely to think they were going to a site put up by the Complainant.
The commercial opportunity presents itself only in the sense that the Complainant has created an asset that the Respondent seeks to exploit. The registration of the domain names does not seem to me to be a preparatory step, putting the Respondent in a position to take advantage of the asset. It is, rather, the first step in taking advantage of the asset. The question becomes whether the advantage taken is fair. As previous DRS decisions have recognised, impersonation can rarely be fair.
The analogy used by the Respondent to describe her seizing a commercial opportunity is telling. It simply does not work, because the parallel is invalid. A reservoir of oil has an intrinsic value. Here, the domain name has no intrinsic value: it has acquired value only because of the investment in preparatory work for Caesars Wembley made by the Complainant.
I conclude that the Respondent registered the domain names in order to impersonate the Complainant - either to mount a protest or to exploit an asset that actually belonged to the Complainant – and that, in doing so, she took unfair advantage of the Complainant’s rights.

8.	Decision
I find that the Complainant has rights in respect of a name which is identical or similar to the domain names; and that the domain names, in the hands of the Respondent, are abusive registrations.
In the light of that, I direct that the domain names be transferred to the Complainant.

Mark de Brunner	1 July 2005