WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Las Vegas Sands, Inc. v. Red Group
Case No. D2001-1057
1. The Parties
The Complainant is Las Vegas Sands, Inc., a Nevada corporation, located at 3355 Las Vegas Boulevard, Las Vegas, Nevada, USA, represented by Gary A. Hecker, Hecker Law Group, 1925 Century Park East, Suite 2300, Los Angeles, CA 90067, USA.
The Respondent is Red Group, an entity of unknown corporate status represented by Zak Muscovitch, Neinstein & Associates, 1200 Bay Street, Suite 700, Toronto, Ontario, Canads M5R 2a5. According to the information in the WHOIS database for the domain name at issue, Red Group is located at Pier 23, Embarcadero, San Francisco, CA 94111-1136, U.S.A.; according to Respondent, though, Red Group is located in South Africa.
2. The Domain Name and Registrar
The domain name at issue is <sandsofthecaribbean.com>.
The domain name is registered with Melbourne, IT, Ltd., doing business as Internet Names Worldwide.
3. Procedural Background
Complainant submitted its Complaint to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") under the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") via e-mail on August 23, 2001, and hardcopy on August 28, 2001. The Center acknowledged receipt of the Complaint on August 24, 2001. On August 29, 2001, the Center formally commenced this proceeding.
Respondent submitted its Response via e-mail on September 19, 2001, and hardcopy on September 25, 2001. The Center acknowledged receipt of the Response on September 19, 2001. Complainant elected to have this dispute decided by a three-member Administrative Panel. On October 15, 2001, the Center notified the Parties that G. Gervaise Davis and Milton L. Mueller had been appointed as Panelists and that David H. Bernstein had been appointed as Presiding Panelist.
On September 19, 2001, and September 21, 2001, Complainant filed two new complaints, which were assigned Case Nos. D2001-1134 (against the Respondent George Samuel) and D2001-1157 (against the Respondent Sands of the Carribean) (together, the "Other Sands Cases"). Also on September 21, 2001, Complainant filed a "Petition to Consolidate Complaints." Respondent objected to consolidation by e-mail on September 22, 2001.
On October 19, 2001, the Panel issued a Procedural Order containing a Request for Further Submissions pursuant to Rule 12, which stated in relevant part:
"Complainant alleged that consolidation of all three cases was warranted because the Respondent in this proceeding is under common ownership or control with the Respondents in the Other Sands Cases, and all three cases relate to the same trademark.
Respondent objected to consolidation in a short e-mail sent on September 22, 2001. Respondent argued that Complainant should have filed a single Complaint if it wanted consolidated treatment of these three matters, and that Respondent would be prejudiced by consolidation because it already has filed its Response. Respondent also complained that Complainant strategically waited until after the filing of the Response to seek consolidation. In addition, Respondentís counsel suggested that he only represents the Respondent in this case, and not the Respondents in the Other Sands Cases, and is thus not in a position to provide a coordinated defense to these three matters. Finally, Respondent requested an opportunity to file a formal opposition to Complainantís petition.
The Center has informed this Panel that the Respondents in the Other Sands Cases are represented by a counsel different from Respondentís counsel in this case, and that those Respondents have already submitted Responses in their respective cases (the Responses were filed on October 16 2001, and October 17, 2001). The Center also advises that the Respondents in the Other Sands Cases have listed, in their choices for the panels for those cases, different panelists than those listed by Respondent in this matter. The Center has stayed appointment of panels in the Other Sands Cases pending this Panelís decision on the Petition to Consolidate.
Meanwhile, on October 9, 2001, Respondent in this matter filed a Supplementary Response. On October 11, 2001, Complainant filed a Reply to the Supplemental Response. These materials have not yet been sent to the Panel pending the Panelís decision on whether to allow these supplemental submissions. . . .
The Panel, having now reviewed the petition to consolidate and Respondentís email in opposition, and having received notice from the Center of the partiesí October and 11, 2001 filings, issues the following Request for Further Submissions pursuant to Rule 12:
The Panel hereby requests one further submission from each party in this case limited to the issues discussed below. The Panel directs the Center to send a copy of this Order to the Respondents in the Other Sands Cases; those Respondents may (but are not required to) submit a submission addressing these consolidation issues. Each partyís submission shall be delivered to the Center via email by 3 p.m., Greenwich Mean Time, on October 31, 2001, with a simultaneous copy by email to the other party, and shall be certified as provided in Rules 3(b)(xiv) and 5(b)(viii). Documents not available in electronic form shall either be scanned and sent with the email or shall be faxed to the Center and the other party with hard copies to follow by courier.
1. Given that Respondents in all three cases have now filed Responses and that the Panel in this case has now been appointed, the parties are asked to consider whether they wish to consent to consolidation of these three matters, whether before this Panel or before another Panel. If the parties agree, they shall so inform the Center (and may disregard items 2 through 4, below); if the parties do not agree, they shall simply inform the Center without disclosing to the Panel which party or parties refused to consent to consolidation.
2. The Respondent (and the Respondents in the Other Sands Cases, if they wish) may respond generally to the petition. In addition, the parties should address whether consolidation would advance the goals of due process to the parties and judicial efficiency for the Center and the UDRP panelists, and whether (and if so, how) any party would be prejudiced by consolidation or the failure to consolidate.
3. Complainant should explain why it filed three separate complaints, and why the complaints in the Other Sands Cases and the petition to consolidate were not filed until after Respondent in this case submitted its Response. A failure to adequately explain these issues will weigh against consolidation.
4. Respondent (and the Respondents in the Other Sands Cases, if they wish) should disclose whether some or all of the three Respondents are under common ownership or control, or have any other affiliation or connection, and whether some or all of the three domain names at issue resolve, or have at any time in the past resolved, to the same website or mirror websites. If there is any relationship between or among some or all of the Respondents, Respondent(s) also should disclose why the Respondents in the Other Sands Cases are represented by different counsel, and whether those Respondentsí request for different panelists should affect this Panelís decision on the petition for consolidation. A failure to adequately explain these issues will weigh in favor of consolidation.
5. If consolidation is granted, the parties should state their positions on any procedural orders that may be appropriate, including whether to allow Complainant the option of filing a new, consolidated Complaint, and/or whether to allow Respondent the option of filing a new, consolidated Response.
6. Bearing in mind the holdings of Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470 (Jan. 5, 2001) and Pacific Fence & Wire Co. v. Pacific Fence, WIPO Case No. D2001-0237 (June 11, 2001) with respect to the filing of supplemental materials, the parties shall explain whether it is appropriate for the Panel to consider the supplemental submissions filed in this case on October 9 and 11, 2001 (e.g., do they raise factual or legal arguments that were not available or reasonably foreseeable at the time of the partyís initial submission, or are such submissions otherwise appropriate for review by the Panel)."
The parties in all three matters timely filed submissions responding to the Panelís request. Thereafter, on November 13, 2001, the Panel issued the following Procedural Order:
"Petition to Consolidate
Consolidation may be appropriate where separate complaints against the same Respondent (or Respondents under common ownership and control) raise related issues that, in the interests of fairness and efficiency, should be resolved before a single Panel in a single proceeding. On the truncated record before the Panel, we conclude that Complainant has not carried its burden of showing that consolidation is warranted.
Complainant notes (and Respondents concede) that all three domain names resolve to the same website. Complainant also alleges that there are "numerous instances of overlap in ownership and contact information for the various Respondents." These allegations tend to support consolidation.
Respondents, however, certify that there is no common ownership. Respondents in Case Nos. D2001-1134 and D2001-11157, Sands of the Caribbean and George Samuel, who are represented by the same counsel, state that "there is no common ownership or control between [them] and the Red Group." The Red Group similarly states that there is "no common ownership" between it and the other Respondents, although it admits that it "directs traffic to the Other Respondents and receives a commission for all traffic sent." These assertions, although not as detailed as the Panel would have liked, tend to weigh against consolidation.
In this case, any lingering doubt is resolved by the timing of Complainantís petition. Rather than file all three complaints contemporaneously along with a request for consolidation, Complainant filed the complaints sequentially. Thus, the Red Group had no notice that Complainant intended to seek consolidation until after it already had retained counsel and prepared its Response. In these circumstances, there is no efficiency to the Respondents (who, it should be noted, retained separate counsel and already have prepared and filed separate responses).
The Panel thus concludes that consolidation of all three cases is not warranted .
Filing of Supplemental Submissions
As noted in Procedural Order No. 1, the parties in this matter have each filed supplemental submissions (Respondent on October 9, 2001, and Complainant on October 12, 2001). Those materials are being held by the Center pending further instructions from the Panel.
From the partiesí descriptions of their supplemental submissions, it is not clear to the Panel whether the submissions are, in their entirety, appropriate. Nevertheless, there does appear to be at least some new material in each submission that could not reasonably have been included in each partyís initial submission.
Complainant explains that its supplemental submission addresses the claim, made for the first time in the Response, that Respondent is located in South Africa despite the California and New York addresses in the publicly available registry information. This information is, allegedly, relevant to Complainantís assertion of bad faith. Respondent did not address this issue, nor did it request leave to file a sur-reply in response.
Meanwhile, Respondent states that its supplemental submission includes citation to new UDRP case law that was not available at the time of its initial Response. Complainant agrees with Respondentís characterization, and does not object to the Panelís consideration of this new case.
Under the circumstances, the Panel directs the Center to forward both supplemental submissions to the Panel. To the extent the submissions raise relevant facts or case law that either did not exist at the time of the partyís initial filing, or could not reasonably have been foreseen, the Panel will consider that material in reaching its decision.
In light of the delay caused by the petition to consolidate and the Panelís need to receive and review the partiesí supplemental submissions, and pursuant to Rule 10(c), the date of the Panelís expected decision is extended. A decision is expected on or before November 30, 2001." [that date was subsequently extended by the Panel, pursuant to Rule 10(c), to December 14, 2001].
On November 14, 2001, Complainant submitted a request to further supplement the record with evidence that allegedly would show that, in a cancellation proceeding before the United States Patent and Trademark Office, World Tele-Sports has stated in interrogatory responses that it has not assigned licensed or authorized Red Group to use the SANDS OF THE CARIBBEAN mark. Complainant also sought leave to file a supplemental brief to address this evidence and the significance of Respondentís statements in its opposition to the Petition to Consolidate. Finally, Complainant asked the Panel to consider the partiesí submissions in connection with the Petition to Consolidate in ruling on the merits of this dispute. On November 14, 2001, Respondent opposed these requests on the ground that they would unnecessary lengthen this already delayed dispute. Because the Panel concludes that the proffered evidence would not affect its decision, and because the Panel believes that the partiesí submissions in connection with the Petition to Consolidate are already part of the record of this matter, the Panel denies the Complainantís request.
4. Factual Background
Complainant is the owner of the registered SANDS trademark, which has been used in connection with hotel and casino services in the United States since 1952. The original Sands Hotel in Las Vegas, Nevada, became famous as a hotel and casino, attracting numerous celebrities and providing the setting for several famous Hollywood films. The original Sands Hotel and Casino was demolished in 1996, and Complainant currently operates the Sands Expo and Convention Center at the Venetian Resort-Hotel-Casino in Las Vegas, Nevada, and licenses the Sands, a hotel and casino in Atlantic City, New Jersey.
Respondent is an affiliate of an Internet casino called "The Sands of the Caribbean" operated by World Wide Tele Sports Company of Antigua and Barbuda [sic], which has been active since August 1997. The Internet casino has over 100,000 customers.
5. Partiesí Allegations
Complainant claims that the domain name <sandsofthecaribbean.com> is confusingly similar to Complainantís mark, as it is nothing more than the SANDS trademark with a descriptive designation added at the end. Complainant states that it has used geographical designations for Las Vegas and Atlantic City in conjunction with its mark, so that "of the Caribbean" is likely to create the impression that Respondentís site is associated with Complainant.
Furthermore, Complainant claims that Respondent has no right or legitimate interest in the domain name, because Complainantís mark has been famous for casino services for half a century. Complainant alleges that its mark is arbitrary as applied to hotel and casino services, and is therefore entitled to strong legal protections. Complainant further argues that there is no bona fide business justification for using <sandsofthecaribbean.com> as a gambling site other than to trade on the fame of Complainantís mark.
Complainant also alleges that Respondent has registered and used the domain name in bad faith. Complainant points to the prominence and placement of "SANDS" on Respondentís website as evidence of intentional attempts to profit from the fame of Complainantís mark. "SANDS" appears in all capital letters, several times larger than "of the Caribbean," which appears almost illegible on some portions of the site. Although Respondent has placed a disclaimer of any affiliation with Complainant on its website, Complainant contends that this is insufficient to cure the initial and illegitimate diversion of Internet users. In addition, Complainant alleges that Respondent was constructively on notice of Complainantís registered mark and thus should be deemed to have acted in bad faith. Finally, Complainant alleges that Respondent provided incomplete and inaccurate registration information, initially providing only "New York, NY 10020" with no street address or individual. Moreover, after Complainant contacted WorldWide Telesports, Inc., the registrant of <thesands.com> (another domain name that resolves to the same site as <sandsofthecaribbean.com>), Respondent registered the domain name at issue the next day. Complainant contends that the timing of the registration cannot credibly be attributed to coincidence and instead evidences bad faith.
Complainantís supplementary submission contains factual allegations the Panel finds unnecessary to resolving the Complaint.
In its defense, Respondent claims that there is no confusion between "Sands" and "Sands of the Caribbean." Respondent points to ninety-five registered trademarks in the United States that consist of "Sands." Thus, Respondent argues, Complainant has no exclusive rights in "Sands." Respondent claims that, given the descriptive and common nature of the mark, Respondent can use the domain name without any confusion with Complainant, and that Internet users would not type in <sandsofthecaribbean.com> when looking for a hotel and casino in Atlantic City, New Jersey. As a result, there is no confusing similarity as required by the Policy.
Respondent states that the domain name at issue was selected because it is evocative of the sands on a Caribbean beach and because Respondentís affiliates are based in the Caribbean. Respondent also argues that Complainant has no trademark in South Africa, Antigua or Dominica, where Respondent has connections. Further, Respondent alleges that there is no evidence that Complainantís mark has international fame, and that Respondentís principals had never heard of the Sands Hotel.
Respondent argues that it has a legitimate interest because it has a valid registered United States trademark for SANDS OF THE CARIBBEAN. Respondent states that the trademark was applied for by its affiliate, World Wide Tele Sports Company, on July 14, 1997, the trademark was published for opposition on June 30, 1998, and was registered on March 23, 1999. Respondent claims that Complainantís delay in objecting to the registration disproves any genuine issue of confusion. Moreover, Respondent argues that it would be unfair to deprive it of a domain name used in a business that has been operating since 1997 and that has processed over $2 billion of wagers.
Respondent claims that there can be no bad faith, because it has its own trademark registration and provided complete contact information. Respondent further argues that, though it registered the disputed domain name after receiving a cease and desist letter to its affiliate, Respondentís position has always been that Complainant has no rights to its domain name, and Respondent feared that Complainant would wrongly register <sandsofthecaribbean.com> in an attempt to interfere with Respondentís business.
Finally, Respondent requests a finding of Attempted Reverse Domain Name Hijacking.
Respondentís Supplementary Response brings the case of Grand Bay Management Co. v. Allegory Investments, No. D2001-0874 (WIPO Sept. 21, 2001), to the Panelís attention.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, Complainant must establish each of the following elements in order to state a claim for transfer of a domain name:
(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) that Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that Respondent has registered and used the domain name in bad faith.
A. Identical or Confusingly Similar to Complainantís Trademarks
Respondent argues that, because the Caribbean is associated with beaches, <sandsofthecaribbean.com> is not identical or confusingly similar to Complainantís SANDS trademarks. The Panel concludes, however, that where the domain is comprised of the Complainantís trademark and a geographical addition, and where the mark is famous and the domain name registrant is in the same general business as that of the trademark owner, the domain name is "confusingly similar" to the trademark for purposes of Paragraph 4(a)(i) of the Policy. See, e.g., Quaife Engineering, Ltd. v. Luton, WIPO Case No. D2000-1201 (Nov. 14, 2000) (<quaifeusa.com> created impression that respondent was complainantís United States representative or distributor). Accordingly, Complainant has satisfied its burden on the first factor.
B. Rights or Legitimate Interests
In this case, Respondent is hoist on its own petard: although a United States trademark registration for SANDS OF THE CARIBBEAN could be evidence of a legitimate interest sufficient to prevent a finding for Complainant given the summary nature of proceedings under the Policy, Respondent vehemently insisted in its opposition to the petition to consolidate that it is merely an "affiliate" of World Wide Tele Sports, the actual owner of the trademark registration (contrary to Respondentís initial representation to the Panel, Response Paragraph 35, that Respondent owned the registration, before the Petition for Consolidation was filed). Moreover, both Respondent and the respondents in the Other Sands Cases have certified that there is no common ownership or control among the three of them. As a result, the existence of a trademark registration in another partyís name is insufficient to prove that Respondent has rights or legitimate interests in the domain name.
Nor is the name "sandsofthecaribbean" naturally or logically associated with gambling; nor is it a generally laudatory term that could logically be applied to numerous businesses. Respondent might have had a legitimate interest in using "Sands of the Caribbean" to describe a travel site, a tourist information site, or some other business directly related to Caribbean beaches, but none of those circumstances are present, particularly given Respondentís insistence that it is a South African entity despite its United States contact information.
The Panel concludes that Respondent lacks rights or legitimate interests in the domain name at issue.
C. Bad Faith
One of the examples of bad faith is set forth in Policy, Paragraph 4(a)(iv) Ė use of a domain name intentionally to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant's mark. The use of a domain name incorporating Complainantís world-famous mark (which is arbitrary in relation to gambling) in exactly the field in which Complainant operates fits within this category. Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (June 29, 2000).
It should be emphasized that it is not the simple incorporation of "SANDS" into the domain name that evidences bad faith; the word "sands" is common and in itself unobjectionable. It is the use of "SANDS" for a gambling website. Internet users, when they see the domain name at issue as a result of a search for gambling sites or direct advertising, may assume that there is a connection between Respondent and Complainant because they use the same name in the same field. The additional "of the Caribbean" in the name is no protection, as many famous businesses have multiple locations and may use domain names including geographic identifiers Ė such as, in this case, the Sands Hotel and Casino in New Jersey and the Sands Expo and Convention Center in Las Vegas. Cf. Quaife, supra.
Moreover, when an Internet user encounters Respondentís website, "SANDS" is the most prominent word identifying the site; "of the Caribbean" is in significantly smaller and less clear type. This presentation further justifies the conclusion that Respondent wishes to trade on the fame of Complainantís trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered this gambling site. Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (April 17, 2001); see also Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344 (June 14, 2001).
Although further evidence of bad faith is unnecessary, bad faith also is suggested by the timing of the registration of the domain name. The domain name was registered immediately after Respondentís affiliate was notified by Complainantís counsel that Complainant objected to any use of "SANDS" in a domain name connected to casino gambling.
7. Attempted Reverse Domain Name Hijacking
Because Complainant has sustained its burden under the Policy, the Panel denies Respondentís request for a finding of Attempted Reverse Domain Name Hijacking.
For all of the foregoing reasons, the Panel decides that Complainant has met its burden of proof under paragraph four of the Policy. Accordingly, this Panel concludes that the domain name at issue should be transferred to the Complainant.
David H. Bernstein
G. Gervaise Davis
Milton L. Mueller
Dated: December 6, 2001
1. It is not appropriate for this Panel to determine whether the remaining two cases should be consolidated. For the sake of efficiency, and to avoid further delay in the resolution of these matters, this Panel urges the Complainant and Respondents in the other two matters to confer and, if they agree on consolidation, to promptly inform the Center so that it can determine whether to appoint a single panel or two separate panels.