WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. 21LLC
Case No. D2003-0241
1. The Parties
The Complainant is Gordon Gaming Corp. d/b/a Sahara Hotel & Casino, of Las Vegas, Nevada, of United States of America, represented by Howrey Simon Arnold & White, LLP of United States of America.
The Respondent is 21LLC, of Salt Lake City, Utah, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <saharalasvegas.com> is registered with Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2003. On March 28, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On March 31, 2003, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on was April 22, 2003.
The Center appointed M. Scott Donahey, Christopher Thomas and Carol Anne Been as panelists in this matter on May 7, 2003. The Panel finds that it was properly constituted. Each member of 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
Complainant's predecessor, Sahara-Nevada Corporation, registered with the United States Patent & Trademark Office (the "USPTO") the mark SAHARA in connection with hotel service and casino services, showing a first use in commerce in 1952. Complaint, Annex D. Both marks were transferred to the Complainant, effective September 30, 2002. Complaint, Annex E.
Complainant also asserts common law rights in the mark SAHARA LAS VEGAS based on longstanding use of the mark in trade. Since its opening in October 1952, Complainant has used SAHARA LAS VEGAS on gaming chips, signs, advertisements, ashtrays, etc. Complaint, Annexes H, I, J, K, L, and M.
Respondent registered the domain name at issue on March 29, 2000. Complaint, Annex A. The domain name resolves to an "Under construction" web site.
Respondent has registered other trademarked names of hotels and casinos located in Las Vegas, Nevada, United States of America, including <ballyslasvegas.com>, <caeserslasvegas.com>, <excaliburlasvegas.net>, <excaliburlasvegas.org>, <lasvegasmontecarlo.com>, <lasvegasnewyorknewyork.com>, <lasvegastreasureisland.com>, and <mgmgrandlasvegas.com>. Complaint, Annex V.
A company identified as "M-K Park" located at the same address as that given by Respondent applied for a trademark on the phrase SAHARA LAS VEGAS in connection with the dissemination of advertising for real estate agencies and with credit card transactions. That effort was abandoned on March 12, 2002, for failure to respond to an office action. Complaint, Annex S.
5. Parties’ Contentions
Complainant contends that the domain name at issue is confusingly similar or identical to service marks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name at issue is confusingly similar to Complainant's registered trademark in that it includes the registered service mark in the domain name. Wal-Mart Stores v. MacLeod, d/b/a For Sale, WIPO Case No. D2000-0662. The Panel also finds that the domain name at issue is identical to the common law service mark SAHARA LAS VEGAS in which the Complainant has rights. Busy Body, Inc. v. Fitness Outlet Inc. WIPO Case No. D2000-0127.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the domain name at issue. Respondent has failed to respond. The Panel is entitled to infer that Respondent has no rights or legitimate interests in respect of the domain name at issue. Parfums Christian Dior v. QPR Corporation, WIPO Case No. D2000-0023.
C. Registered and Used in Bad Faith
Respondent is not currently making any use of the domain name at issue. However, Respondent has registered several other names and service marks of Las Vegas hotels and Casinos. One can infer from this, and from the fact that Complainant's hotel and casino is one of the oldest and most well-known of the Las Vegas hotels and casinos that Respondent must have been aware of Respondent's service mark rights at the time that Respondent registered the domain name at issue, almost 50 years after Complainant began using the service mark.
There is no evidence that Respondent has used the domain name at issue. Complainant's speculation as to possible uses which Respondent might have in mind for the domain name is just that, mere speculation. However, Respondent's lack of use does not end this enquiry.
The Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
In the present case, Respondent has registered numerous domain names corresponding to the trade names and service marks of well known Las Vegas hotels and casinos. When Respondent attempted to register the service mark SAHARA LAS VEGAS, Respondent must have become aware of Complainant's registered service mark rights in SAHARA. Respondent or a related entity failed to respond to an office action resulting in abandonment of its service mark application. Respondent has made no use of the domain name at issue in the more than three years since it registered the domain name. Respondent has failed to respond to the allegations in the Complaint. Given all of the above facts, the Panel finds that Respondent's "inaction" constitutes bad faith registration and use as first analyzed in Telstra.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name at issue, <saharalasvegas.com>, be transferred to the Complainant.
M. Scott Donahey
Carol Anne Been
Dated: May 27, 2003