WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gordon Gaming Corp. d/b/a Sahara Hotel & Casino v. E-Casino Marketing

Case No. D2003-0242

 

1. The Parties

The Complainant is Gordon Gaming Corp. d/b/a Sahara Hotel & Casino, Las Vegas, Nevada of United States of America, represented by Howrey Simon Arnold & White, LLP of United States of America.

The Respondent is E-Casino Marketing, of St. Johnís, Antigua of Antigua and Barbuda.

 

2. The Domain Name and Registrar

The disputed domain name <saharacasino.com> is registered with Network Solutions, Inc. Registrar.

 

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 Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On March 31, 2003, Network Solutions, Inc. Registrar 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 Respondentís default on April 22, 2003.

The Center appointed Ross Carson, R. Eric Gaum and Charters Macdonald-Brown as panelists in this matter on May 13, 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

Registered Trademarks

The Complainant is the registered owner of United States Trademark Registration Number 824612 for the Service Mark SAHARA. A nunc pro tunc assignment of the trademark SAHARA was recorded in the United States Patent and Trademark Office on the Principal Register on October 8, 2002. (Complaint, Annex E). United States Trademark Registration Number 824612 for SAHARA was registered on February 21, 1967, for hotel services based on use in commerce since October 7, 1952, by a predecessor in title Sahara Resorts. ( Complaint, Annex D). The Complainant is also the registered owner of United States Trademark Registration Number 1,242,371 for the trademark SAHARA in stylized form. A nunc pro tunc assignment of the trademark SAHARA in stylized form was recorded in the United States Patent and Trademarks Office on October 8, 2002. (Complaint, Annex E). United States Trademark Registration Number 1,242,371 was registered as a Service Mark on the Principal Register on June 14, 1983, for casino services based on first use in commerce since September 1961, and in relation to hotel, restaurant and nightclub services based on use in commerce since September 1961, by a predecessor in title Sahara-Nevada Corporation. ( Complaint, Annex D).

Domain Name in Dispute

The domain name in dispute <saharacasino.com> is registered in the name of the Respondent E-Casino Marketing. The domain name was recorded on May 22, 1997. The domain name <saharacasino.com> resolves to Omni Casino which advertises: "Welcome to Omni Casino Offering the best in Internet and Online Casino Gambling". (Complaint, Annex L).

 

5. Partiesí Contentions

A. Complainant

As noted above the Complainant is recorded in the United States Patent and Trademarks Office as the Registered Owner of United States Trademark Registration Number 824,612 for the Trademark SAHARA registered in the Principal Register for hotel services. The Complainant is also recorded in the United States Patent and Trademarks Office as the Registered Owner of United States Trademark Registration Number 1,242,371 for the trademark SAHARA (Stylized form) registered on the Principal Register for casino services, hotel, restaurant and nightclub services. The Complainant submits that the records in the United States Patent and Trademark Office shows that the Complainant has exclusive rights to use the registered trademarks in the United States in relation to the services for which the trademarks are registered. NCRAS Mgmt., LP v Cupcake City, WIPO Case No. D2000-1803, (Complaint, Annex F); Chanel, Inc v Torrers, WIPO Case No. D2000-1833, (Complaint, Annex G)

In addition to ownership of the above noted registered trademarks the Complainant states that the Complainant has common-law rights in the trademarks "Sahara Hotel & Casino" and "Sahara Casino" due to adoption and longstanding use of these common-law trademarks by the Complainant and itís predecessorís title. The Saharaís hotel and casino operations have been operated 24 hours a day for nearly a half century and have hosted tens of millions of patrons from around the world at the Sahara Hotel and Casino complex. The Complainant submits that in traditional parlance among customers of the Sahara Hotel and Casino the customers refer to the hotel as the Sahara Hotel and the casino as the Sahara Casino.

The Complainant submits that the domain name in dispute <saharacasino.com> is confusingly similar to the Complainantís registered and common-law trademarks The Complainant submits that the inclusion of the word "casino" in the domain name in dispute does not avoid a finding of confusingly similar with the Complainantís registered trademarks SAHARA which are registered in part in association with casino services. Park Place Entertainment Corp. v International Gaming Ltd., WIPO Case No. D2002-0884. The Complainant further submits that the domain name in dispute is confusingly similar to the Complainantís common-law trademarks "Sahara Hotel & Casino" and Sahara Casino".

With respect to the issue that the Respondent has no rights or legitimate interests in respect of the domain name in dispute the Complainant made a number of submissions. The Complainant states that Sahara Hotel & Casino has never given the Respondent the right to use any of itís registered or common-law trademarks. Complainant submits that the Respondent has never been commonly known by the domain name <saharacasino.com> nor has the Respondent ever offered bona fide goods or services in conjunction with "Sahara", "Sahara Hotel & Casino" or "saharacasino" before the dispute arose. The Complainant further submits that there is no indication whatsoever that Respondent is engaged in business for "legitimate non-commercial gain", as provided in paragraph 4 (b)(iii) of the Policy.

The Complainant made numerous submissions in support of itís position that the Respondent has registered and used the domain name in bad faith.

The Complainant submits that the Respondent had substantial knowledge of the Las Vegas Strip and the hotels and casinos operating on the Las Vegas Strip. The Respondent has also targeted at least three other Las Vegas Strip hotel and casino properties. The Complainant states that the Respondent presently cyber squats <stardustcasino.com.> and uses <stardustcasino.com> to operate an on-line gambling casino. (Complaint, Annex Q). The actual Stardust Hotel & Casino is located across the street on the Las Vegas Strip from Sahara Hotel & Casino.

The WHOIS Search Results for the domain name in dispute lists Gwen Roberts, MGM Casino Ltd. of St. Johnís, Antigua as the Administrative and Technical Contact for the domain name in dispute. ( Complaint, Annex A ). The MGM Grand Hotel and Casino operates a hotel and casino on the Las Vegas Strip. The WHOIS Record for the domain name <stardustcasino.com> registered in the name of E-Casino Marketing also lists Gwen Roberts of MGM Casino Ltd. of St. Johnís, Antigua as the Administrative and Technical Contact for the domain name <stardustcasino.com> . (Complaint, Annex Q). The Complainant further states that MGM Casino, a foreign corporation with itís principal place of business in St. Johnís, Antigua, was found by default judgment to be cyber squatting by operating an on-line gambling casino at <tropicanacasino.com>. Complainant, Annex S ).The Court found that the Plaintiff in the action, which operates a hotel and casino on the Las Vegas Strip, was the owner of TROPICANA which was famous in the United States and abroad for casino services. In summation the Respondent is either the registered owner or user of domain names or corporate names relating to three other hotels and casinos on the Las Vegas Strip which support the inference that the Respondent adopted the domain name in dispute with full knowledge that Sahara Hotel and Casino was the name of a famous hotel and casino on the Las Vegas Strip.

The Complainant further submitted that the Respondent registered the domain name in dispute in order to prevent the Complainant from reflecting the mark in a corresponding domain name. Complainant submits that this pattern of conduct constitutes evidence of bad faith as provided in Paragraph 4 (b) (ii) of the Policy.

The Complainant filed evidence that the Respondent is operating an on-line casino in association with the domain name in dispute. The domain name <saharacasino.com> resolves to Omni Casino offering the best in Internet and On-line Casino Gambling. (Complaint, Annex L). The Complainant submits that the facts support a finding that the Respondent has registered the domain name in bad faith to intentionally attempt to attract, for commercial gain, internet users to Respondentís website by creating a likelihood of confusion with the Complainantís mark as to source, sponsorship, affiliation or endorsement of Respondentís website support a finding of bad faith under paragraph 4 (b) (iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

The domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

The Respondent has no rights or legitimate interests in respect of the domain name in dispute; and

The domain name in dispute has been registered and is being used in bad faith.

Where a Respondent, who has been properly notified of the Complaint, fails to respond, the Panel is entitled to draw such inferences as the Panel considers appropriate, Rule 14 (b) of the Rules. Gordon Gaming Corp. v IMC, WIPO Case No. D2001-1047.

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. Rule 15 (a) of the Rules.

As a result of the Complaintís statements and documents and the Respondentís failure to file a Response when notified of the proceeding, the Panel accepts the following uncontroverted assertions of the Complainant.

The Complainant is the registered owner of United States Trademark Registration No. 824,612 for the service mark SAHARA registered for hotel services on February 21, 1967, based on use in commerce since October 7, 1952. The Complainant is also the registered owner of United States Trademark Registration No. 1,242,371 for the service mark SAHARA in stylized form registered in association with casino services based on first use since September 1961, and in relation to hotel, restaurant and nightclub services based on use in commerce since September 1961, by a predecessor in title to the Complainant. The Registered Trademark Certificates and Notice of Recordation of Assignment Documents establish that the Complainant is the owner of the two above noted Service Mark Registrations. (Complaint, Annexes D and E ).

The uncontested statements of the Complainant is that from the date of opening of the Sahara Hotel and Casino on the Las Vegas Strip in 1952, the Sahara Hotel and Sahara Casino have operated continuously and has hosted millions of patrons from around the world in the past fifty years. The Panel finds that Sahara Casino is a common law trademark of the Complainant which is well known in association with the services of operating a casino on the Las Vegas Strip.

The Respondent knew of the Sahara Casino and other Casinos on the Las Vegas Strip at the time of Registration of the domain name in dispute.

The Respondent intended to operate an on-line casino at the date of registration of the domain name in dispute and the Respondent used the domain name in dispute to resolve to an on-line casino in which the Complainant had no interest. (Complaint, Annex L ).

The Respondent is not commonly known as the Sahara Casino. The Administrative and Technical Contact for the domain name in dispute is Gwen Roberts, MGM Casino Ltd., St. Johnís, Antigua. (Complaint, Annex A ).

The Respondent has registered other domain names incorporating as the distinctive element the names of other casinos on the Las Vegas Strip. The Respondent is the registrant of the domain name <stardustcasino.com> (Complaint, Annex G). The Respondent had also registered the domain name <tropicanacasino.com> incorporating the distinctive element of the Tropicana Casino. In Azter Corporation v MGM Casino and tropicanacasino.com, in a default decision, the United States District Court For The Eastern District Of Virginia, Alexandria Division, ordered that MGM Casino a corporation having itís principal place of business in St.Johnís, Antigua, was permanently restrained and enjoined from using any domain name that is confusingly similar to the name and mark "TROPICANA". It was further ordered that the service provider, Network Solutions Inc., transfer the domain name <tropicanacasino.com> to the Plaintiff. (Complaint, Annex S).

A. Identical or Confusingly Similar

The Complainant is the owner of the Registered Service Mark SAHARA in stylized format registered in relation to casino services, hotel, restaurant and nightclub services. The domain name <saharacasino.com> is confusingly similar to SAHARA in stylized form registered in relation to the service of operating a casino The first portion of the domain name in dispute is identical when sounded to the distinctive portion of the service mark SAHARA in stylized form. The second portion of the domain name in dispute "casino" is descriptive of casino services. The Panel concludes that the domain name in dispute is confusingly similar to the Complainantís registered service marks. Venetian Casino Resort LLC v International Services Inc., WIPO Case No. D2001-0678, (Complaint, Annex I ). The Panel further finds that the domain name in dispute is confusingly similar to the Complainantís common law trademark SAHARA CASINO which has been extensively used by the Complainant and itís predecessors in title for half a century hosting millions of patrons from around the world at the Sahara Casino. American Home Products Corporation v Ben Malgioglio, WIPO Case No. D2000-1602. (Complaint, Annex N ).

B. Rights or Legitimate Interests

The Respondent has no registered or common law trademarks for SAHARA or SAHARA CASINO. The Respondent was never known as SAHARA or SAHARA CASINO. The Respondent was never licensed by the Complainant to use a domain name incorporating SAHARA in association with an on-line casino. The Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

C. Registered and Used in Bad Faith

The Respondent was aware of the Hotels and Casinos on the Las Vegas Strip at the time that the Respondent registered the domain name in dispute including the name SAHARA CASINO. The Respondent also registered other domain names incorporating the names of other casinos on the Las Vegas Strip in combination with the word "casino" eg. <stardustcasino.com>. (Complaint, Annex Q); <tropicanacasino.com> (Complaint, Annex. S).

Paragraph 4 (b) of the Policy sets out a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith. Subparagraph 4 (b) (iv) provides one circumstance which is evidence of bad faith by a Respondent is that, by using the domain name you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location. The Complainantís registered trademark SAHARA and common law trademark Sahara Casino are well known throughout the world in association with the services of operating a gambling casino. The Respondent registered the domain name <saharacasino.com> for the purpose of attracting web surfers to itís website by creating a likelihood of confusion with the Complainantís registered and common law service marks leading web surfers to believe that Respondentís website is sponsored by, affiliated with or endorsed by the Complainant. The Respondentís registration of other domain names combining the names of casinos on the Las Vegas Strip with the word casino is further evidence of intentional use of domain names to attract on-line gamblers to Respondentís website by creating a likelihood of confusion. The Panel further finds that the use of the domain name in dispute to attract customers to the Respondentís website which resolves immediately to another website unassociated with the Complainant is further evidence of use of the domain name in dispute in bad faith.

The Panel concludes that the domain name in dispute has been registered and is being used in bad faith.

 

7. Decision

Based on the information and documentation provided to the Panel and the findings of fact made by the panel, the Administrative Panel concludes that the Complainant has established all three elements of itís claim.

The Complainant asks that the domain name <saharacasino.com> be transferred to it. Pursuant to Paragraph 4 (i) of the Policy, the Panel orders that the domain name <saharacasino.com> be transferred to the Complainant.

 


 

Ross Carson
Presiding Panelist

R. Eric Gaum
Panelist

Charters Macdonald-Brown
Panelist

Dated: May 27, 2003