WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Las Vegas Sands, LLC v. Casino Company (CasinoCo)
Case No. D2006-0978
1. The Parties
The Complainant is Las Vegas Sands, LLC, Las Vegas, Nevada, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.
The Respondent is Casino Company (CasinoCo), St. Johns, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <sandsonlinecasino.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2006. On August 5, 2006, the Center transmitted by email to Tucows Inc a request for registrar verification in connection with the domain name at issue. On August 8, 2006, Tucows Inc 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 August 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2006.
The Center appointed David J. A. Cairns as the Sole Panelist in this matter on September 11, 2006. 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.
The Panel issued Procedural Order No. 1 dated September 18, 2006, requesting further information and evidence from the Complainant regarding its rights within the meaning of Rule 4(a)(i) of the Policy in US trademark registration No. 1,209,102 for a device consisting of the word SANDS in a stylized script. Procedural Order No. 1 required the Complainant to make this supplemental filing by September 21, 2006, and allowed the Respondent until September 25, 2006, to submit any response commenting on the supplemental filing made by the Complainant.
The Panel did not receive any supplemental filing from the Complainant in response to Procedural Order No. 1 within the timelimit established in this order, or any additional submission from the Respondent.
Subsequently, on October 2, 2006, the Complainant submitted a supplemental filing explaining various assignments relating to the registered trademark relied upon by the Complainant. Prior to this date, and bearing in mind the Panel’s obligation to ensure a proceeding takes place without delay (paragraphs 10(c) and 15(b) of the Rules) the Panel had proceeded to prepare a draft decision. The letter accompanying the Complainant’s supplementary filing did not, in the Panel’s view, provide evidence of exceptional circumstances justifying the default in providing this evidence within the time period established in Procedural Order No. 1 (as required by paragraph 14 of the Rules), and accordingly this supplemental filing was disregarded by the Panel.
4. Factual Background
The Complainant is a Nevada limited liability company providing hotel, casino and entertainment services.
The Respondent is Casino Company with address at St. Johns, Antigua and Barbuda. The Respondent registered the disputed domain name <sandsonlinecasino.com> on January 27, 2000.
The Respondent does not presently have any website available at the disputed domain name.
United States trademark registration No. 1,209,102 relates to a service mark for a device consisting of the word SANDS in a stylized script in class 41 for ‘entertainment services, namely providing stage show, gambling and casino services’. This mark was registered for a term of 20 years from September 14, 1982. The Complainant asserts current ownership of this mark. The photocopy of the registration submitted in evidence by the Complainant provides the following information regarding the holder of the registration:
“Pratts Properties, Inc. (Nevada Corporation)
4141 Blue Lake Circle
Dallas, Texas 75234, assignee, by mesne of assignment of
Summa Corporation (Delaware corporation)
Las Vegas, Nev.”
5. Parties’ Contentions
A. The Complainant
The Complainant asserts that it “owns a valid and subsisting federal Registration No. 1,209,102 for SANDS (Stylized) that the United States Patent and Trademark Office issued”. It states that the <sandsonlinecasino.com> domain name includes the SANDS mark and is confusingly similar to the said mark within the meaning of paragraph 4(a)(i) of the Policy.
The Complainant states that it has an exclusive right to use the SANDS mark, and that its certificate of registration of the SANDS mark constitutes “conclusive evidence of the validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in connection with the goods or services specified in the registration”.
The Complainant states that since 1952 it has used the SANDS trademark to market and promote its services throughout the United States, and in the past year alone has sold millions of dollars worth of entertainment, hotel and casino services under the SANDS mark. As a result, the Complainant states that the SANDS mark is nowadays well-known and has strong secondary meaning associated with the Complainant and its services.
The Complainant operates its principal website at “www.lasvegassands.com”. In addition, the Complainant and its affiliates own several other domain names which incorporate the word ‘sands’, such as <sandsexpo.com>; <sandscasinomacau.com>; <sandsmacaucasino.com>; <thesandsmacao.net>; and <sandsmacao.com>.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name; and has registered and uses the domain name in bad faith.
The Complainant states that the Respondent does not have a license or permission from the Complainant to use the SANDS mark or to apply for or use a domain name incorporating it. Moreover, the Respondent is not commonly known by the <sandsonlinecasino.com> domain name and has not acquired any trademark or service mark rights to that name.
The Complainant alleges that the Respondent had constructive and probable actual notice when it registered the disputed domain name that the Complainant had prior rights in the SANDS trademark. Nevertheless, the Respondent obtained the <sandsonlinecasino.com> domain name to intentionally attract, for commercial gain, Internet users to its web pages by creating a likelihood of confusion with its trademark as to source, sponsorship, affiliation or endorsement. The Complainant asserts that the Respondent provided incomplete or false contact information to register the domain name and notes that it makes no use of it.
The Complainant claims the Respondent’s bad faith can also be established under paragraph 4(b)(ii). The Complainant states that the Respondent had engaged in a pattern of registering domain names that correspond to famous trademarks and service marks, and also to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Complainant investigated registered domain names that have the identical telephone number or e-mail address as the Administrative Contact identified by Casino Company. According to the Complainant, this investigation suggests that the Respondent has registered, among others, the following domain names: <carnivalonlinecasino.com>; <cruiselinescasino.com>; <broadwayonlinecasino.com> and <merlinsintergambling.com>.
Finally, the Complainant also states that the Respondent uses the disputed domain name to host a website containing links to various websites that offer services of Las Vegas Sands’ competitors, and that it would not be possible to conceive of any plausible or contemplated active use of the disputed domain name that would not be illegitimate and unlawful.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Complainant states that it owns the United States trademark registration No. 1,209,102 for the SANDS service mark. The photocopy of the trademark certificate submitted with the Complaint indicates that this registration was due to expire on September 14, 2002. Further, the photocopy of the trademark certificate indicates that this trademark registration is owned by Pratts Properties, Inc., and does not connect Pratts Property Inc. to the Complainant, or indicate any transfer of the trademark from this corporation to the Complainant. In its Procedural Order No. 1 the Panel requested a supplementary filing from the Complainant (with an opportunity for the Respondent to respond) regarding its rights within the meaning of Rule 4(a)(i) of the Policy in US trademark registration No. 1,209,102. The Complainant’s supplemental filing arrived late, and for the reasons explained above was not accepted by the Panel. Accordingly, on the basis of the evidence submitted by the Complainant with its Complaint, the Complainant has failed to demonstrate its rights in US trademark registration No. 1,209,102.
In the view of the Panel, the Complainant has the burden of proving its rights in a registered trademark and if it fails to do so, firstly in its Complaint and secondly within the additional time allowed by the Panel specifically for this purpose, then (in the absence of the exceptional circumstances justifying the default referred to in paragraph 14 of the Rules) the Panel must proceed to make its decision on the evidence and documents submitted in accordance with paragraph 15(a) of the Rules.
The Complainant also relies in secondary meaning associating the Complainant with the SANDS trademark through long use and promotion. It is well-established that a complainant can rely on common law trademark rights for the purposes of paragraph 4(a)(i) of the Policy. The Complainant’s evidence of its common law rights are assertions in its Complaint that it has marketed and promoted its services under the SANDS trademark throughout the United States since 1952; that it operates various websites incorporating the word ‘sands’; that it has spent ‘millions’ of dollars in promotion of the SANDS trademark; and that in the past year alone sold ‘millions’ of dollars worth of hotel, entertainment and casino services under the SANDS trademark. There is no further precision or supporting exhibits. However, the Complaint refers to the principal website of the Complainant at “www.lasvegassands.com” and the contents of this website (and particularly the Annual Report 2005 of the Complainant) corroborate the statements in the Complaint of the strong secondary meaning of the SANDS mark associated with and signifying the Complainant.
Accordingly, the Panel accepts that the Complainant has rights in the SANDS service mark in United States within the meaning of paragraph 4(a)(i) of the Policy.
The disputed domain name is not identical with the SANDS trademark, but does incorporate this trademark entirely, adding the suffix ‘onlinecasino’. The practice of adding a prefix or suffix to a well known trademark has been the subject of numerous UDRP Decisions. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).
In the present case, the disputed domain name is confusingly similar to the SANDS trademark for the following reasons: (i) SANDS is an ordinary English word and also a surname, but is not descriptive and is capable of being distinctive in the context of casino or entertainment services and their on-line delivery; (ii) the SANDS trademark is well known in the United States in the entertainment sector and is associated with the Complainant; (iii) the suffix ‘onlinecasino’ is descriptive of a service and its form of delivery; (iv) the suffix emphasises rather than contradicts the trademark element of the disputed domain name, suggesting the online delivery of casino services by an entity called SANDS in the entertainment sector (that is, the Complainant); and therefore, (v) Internet users will associate the disputed domain name with the Complainant’s trademark, and assume that the disputed domain name is the internet location of the Complainant’s casino services.
Accordingly, the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests in respect of the Domain Name
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorised or licensed by the Complainant to use the SANDS trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) there is no evidence of legitimate non-commercial or fair use of the disputed domain name.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) the Panel notes there is a contradiction in the Complainant’s submissions regarding whether or not the Respondent has or is using the disputed domain name. On the basis of the Complainant’s Annex ‘E’ and the Panel’s own efforts to access a webpage at the disputed domain name, the Panel concludes that there is no webpage associated with the disputed domain name, and therefore the Respondent does not use, and there is no evidence of demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. As noted above, the Panel has concluded that there is no webpage associated with the disputed domain name and, in the absence of evidence to the contrary, concludes that there has never been any webpage associated with the disputed domain name since its registration in January 2000.
On the basis of the absence of any webpage associated with the disputed domain name, or evidence of commercial gain, competitive disruption, or attempt to sell the disputed domain name, for a period of over six years the Panel concludes that none of the circumstances referred to in paragraph 4(b)(i),(iii) or (iv) are established. Paragraph 4(b)(ii) also does not apply, because the Respondent’s registration has not prevented the Complainant from reflecting its mark in a corresponding domain name, and in fact the Complainant has registered numerous domain names incorporating its service mark (cf Minnesota Mining and Manufacturing Company v. Mark Overbey Case No. D2001-0727, where the fact that Complainant had registered the domain name <3m.com> lead the Panel to conclude that Respondent had not prevented the Complainant from reflecting its mark in a corresponding domain name in registering the domain names <3mtapes.com>, <3mabrasives.com> and <3madhesives.com>).
However, bad faith may be established on grounds other than those set out in paragraph 4(b) (as the circumstances in paragraph 4(b) are expressed to be ‘in particular but without limitation’). In the present case the following circumstances establish registration in bad faith: (i) SANDS is a well-known service mark in the hotel and casino industries; (ii) the Panel concludes from the evidence that the Respondent’s linkage of the words ‘sands’ and ‘casino’ in a domain name was not coincidental but deliberate; (iii) On this basis, the Respondent knew of the Complainant’s mark when it registered the disputed domain name, and further knew that internet users would mistakenly believe that this web address provided online access to the Complainant’s gambling services; and (iv) the Respondent has engaged in a pattern of registering domain names including marks from the casino industry.
Paragraph4(a)(iii) of the Policy requires that the dispute domain name was not only registered in bad faith, but also ‘is being used’ in bad faith. Paragraph 4(b) also sets out the four circumstances without limitation which if found by a Panel to be present shall be evidence of the registration and use of a domain name in bad faith.. In the present case, there is no evidence of any webpage associated with the disputed domain name for a period of over six years, making this an example of long-term passive holding. Passive holding is not itself evidence of either good or bad faith, but must be interpreted in the context of all of the circumstances of the case (see Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 among others).
In the present case the Panel is satisfied that the Respondent is using the disputed domain name in bad faith because: (i) the Respondent continues to hold the disputed domain name so as to be in a position to take advantage of the commercial reputation of the Complainant’s service mark (see Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti WIPO Case No. D2005-0037 and (ii) it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not in all likelihood amount to be bad faith use within the meaning of the Policy because it would involve the intentional deception of internet users (see Ladbroke Group PLC v. Sonoma International LDC WIPO Case No. D2002-0131).
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <sandsonlinecasino.com> be transferred to the Complainant.
David J.A. Cairns
Dated: September 29, 2006