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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Las Vegas Sands, LLC v. Michael Silver

Case No. D2006-0979

 

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 Michael Silver, Biloxi, Mississippi, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <sandshotelmacao.com> and <sandshotelmacau.com> are registered with Schlund + Partner AG.

 

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 Schlund + Partner AG a request for registrar verification in connection with the domain names at issue. On August 7, 2006, Schlund + Partner AG 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 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 3, 2006. The Respondent did not submit a response by the due date. Accordingly, on September 4, 2006, the Center sent the Respondent by email a Notification of Respondent Default. On September 4, 2006, the Respondent sent an email to the Center stating that he had been displaced from his residence by Hurricane Katrina and had not had access to the Complaint from another location.

The Center appointed Dana Haviland as the Sole Panelist in this matter on September 19, 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.

On October 16, 2006, pursuant to paragraph 12 of the Rules, the Panel issued a Request for Further Statements, limited to the sole issue of the Complainant’s trademark rights. The Request asked Complainant to submit a supplemental statement and documents on the issue by October 21, 2006, and permitted, but did not require, a response by the Respondent on or before October 26, 2006. The date for issuance of the decision in the case was extended until November 2, 2006.

Complainant’s Response to Panel Request for Information, together with copies of various supporting documents, was submitted on October 20, 2006. Respondent did not submit a response.

 

4. Factual Background

The Complainant Las Vegas Sands, LLC (“LVS”), is a Nevada limited liability company which, according to the Complaint, “has (with its predecessors) provided hotel, casino and entertainment services” since the 1950’s. The Complaint states that LVS and its predecessors have provided these services throughout the United States under the SANDS trademark since 1952, and that LVS has spent millions of dollars to promote its casinos and hotels under the SANDS mark throughout the world. The predecessors are not identified in the Complaint.

With the Complaint, LVS submitted a certified copy of Registration No. 1,209,102 for a SANDS service mark, issued by the United States Patent and Trademark Office (“USPTO”) on September 14, 1982 for a term of twenty (20) years, for “entertainment services – namely, providing stage show, gambling and casino services” and for “providing hotel, restaurant and lounge services” (the “Sands Mark”). The certified copy, dated February 21, 2001, reflects that on that date, the USPTO records showed title to the Sands Mark to be in Hughes Properties, Inc., a Nevada corporation. The Complaint and supporting documents did not include or refer to any assignment or license of rights in the Sands Mark to the Complainant LVS, nor any evidence of any relationship between Hughes Properties, Inc. and LVS or any predecessor or affiliate of LVS.

The Complaint states that in 2004, LVS opened The Sands Macao, a casino, hotel and entertainment complex in Macao. LVS has a website at “www.lasvegassands.com” which, according to the Complaint, offers information concerning the services that “LVS and affiliated companies” offer under the SANDS mark. The affiliated companies are not identified in the Complaint. The website states that Las Vegas Sands Corp., a Nevada-based company, owns The Sands Macao.

According to the Complaint, LVS owns a number of domain names, including <lasvegassands.com>, <sandsmacao.com>, <andscasinomacau.com>, <sandsmacaocasino.com>, <sandsmacau.com>, <sandsmacaucasion.com>, the <sandsmacao.com>, <thesandsmacao.net>, <thesandsmacau.com>, and <thesandsmacau.net>.

Respondent registered the domain names <sandshotelmacao.com> and <sandshotelmacau.com> on February 10, 2006. The websites for these domain names include pop-up ads and links to other hotel and travel services. Respondent has also registered domain names referencing other hotels or casinos, including <macaohilton.com>, <hiltonmacao.com>, <fourseasonshotelmacau.com>, and <mgmgrandmacao.com>.

From the allegations and exhibits of the original Complaint, the Panel could not determine whether the domain names at issue were identical or confusingly similar to a trademark or service mark in which the Complainant itself had rights.

In Complainant’s Response to the Panel’s Request for Information (“Complainant’s Response”), Complainant submitted evidence to support its allegations that it owned the Sands Mark and registration and had common law rights in the Sands Mark at the time of Respondent’s registration of the <sandshotelmacao.com> and <sandshotelmacau.com> domain names.

 

5. Parties’ Contentions

A. Complainant

(1) The Original Complaint

(a) The domain name is virtually identical or confusingly similar to a trademark or service mark in which the Complainant has rights

Since the 1950s, LVS (and its predecessors) has provided hotel, casino and entertainment services.

Since 1952, LVS (and its predecessors) has provided these services throughout the United States under the SANDS trademark.

LVS owns a valid and subsisting federal Registration No. 1,209,102 for Sands (Stylized) that the United States Patent and Trademark Office issued (the “Sands Mark”). The Sands Mark is registered for “entertainment services - namely, providing stage shows, gambling and casino services”.

LVS’ exclusive right to use the Sands Mark as identified in Registration No. 1,209,102, is incontestable under 15 U.S.C. §§ 1065 and 1115, and the certificates of registration of the Sands Mark constitute “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 of the mark in connection with the goods or services specified in the registration”. 15 U.S.C. § 1115. LVS has attached a copy of its registration as an annex to the Complaint.

LVS owns the following domain names, among others:

<lasvegassands.com>, <sandsmacaucasino.com>, <sandsexpo.com>, <thesandsmacao.com>, <sandscasinomacau.com>, <thesandsmacao.net>,

<sandsmacao.com>, <thesandsmacau.com>, <sandsmacaocasino.com>, <thesandsmacau.net>, sandsmacau.com>

LVS operates its principal website at “www.lasvegassands.com”. This site offers information concerning the services that LVS and its affiliated companies offer under the Sands Mark.

During the past year alone, LVS sold millions of dollars worth of entertainment, hotel and casino services under the Sands Mark throughout the world.

LVS has spent millions of dollars to promote its casinos and hotels under the Sands Mark throughout the world.

Long use and promotion have made the Sands Mark well-known and created a strong secondary meaning signifying LVS and the entertainment, hotel and casino services sold under the Sands Mark throughout the world.

In 2004, LVS opened the Sands Macao, a one-million square foot casino and entertainment complex in the former Portuguese colony of Macao on the Southeastern coast of China. This property offers hotel accommodations that include 51 luxurious suites, a full-service spa and several bars, restaurants and entertainment facilities.

The <sandshotelmacao.com> and <sandshotelmacau.com> domain names that Mr. Silver registered include the Sands Mark.

The <sandshotelmacao.com> and <sandshotelmacau.com> domain names are confusingly similar to the Sands Mark within the meaning of Paragraph 4(a)(i) of the Policy.

(b) Rights or legitimate interests in the domain names and registration and use of the domain names in bad faith.

LVS has not licensed or otherwise permitted Mr. Silver to use the Sands Mark or to apply for or use any domain name incorporating the mark. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022.

Mr. Silver is not commonly known by the <sandshotelmacao.com> or <sandshotelmacau.com> domain name and has not acquired any trademark or service mark rights to those names. To the best of LVS’ knowledge, Mr. Silver has not applied for or obtained any state or federal trademark or service mark registrations for the <sandshotelmacao.com> or <sandshotelmacau.com> domain names.

In addition to any actual knowledge Mr. Silver may have of LVS’ rights in the Sands Mark, Mr. Silver has had constructive notice of LVS’ trademark rights in the Sands trademark since at least 1980, when the application to register Sands was filed with the United States Patent and Trademark Office (Reg. No. 1,209,102).

Notwithstanding Mr. Silver’s constructive notice of LVS’ prior rights in the Sands Mark and probable actual knowledge of LVS’ rights in its Sands Mark, Mr. Silver obtained the <andshotelmacao.com> or <sandshotelmacau.com> domain names to intentionally attract, for commercial gain, Internet users to Mr. Silver’s web pages by creating a likelihood of confusion with LVS’ trademark as to the source, sponsorship, affiliation or endorsement of Mr. Silver’s website.

Mr. Silver makes no use of the <sandshotelmacao.com> or <sandshotelmacau.com> domain names. LVS has attached as an annex to the Complaint screen captures from Mr. Silver’s website at the <sandshotelmacao.com> or <sandshotelmacau.com> domain names.

Under Paragraph 4(b)(ii) of the Policy, Mr. Silver’s bad faith also can be shown by evidence that Mr. Silver has “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the registrant has] engaged in a pattern of such conduct”. On May 15, 2006, LVS conducted an investigation of registered domain names that have the identical telephone number (228 385 0719) or e-mail address (silver8962@bellsouth.net) as the Administrative Contact identified by Mr. Silver. This investigation suggests that Mr. Silver has also registered the following domain names, among others:

<wynnmacaojob.com>

<cotaihilton.com>

<macaohilton.com>

<hiltoncotai.com>

<hiltonmacao.com>

<fourseasonshotelmacau.com>

<mgmgrandmacao.com>

LVS has attached as annexes the Whois reports corresponding to these domain names. Upon information and belief, Mr. Silver neither owns nor has rights to the trademarks or service marks that correspond to these domain names (e.g., MGM Grand, Hilton or the Four Seasons). Mr. Silver therefore has engaged in a pattern of registering domain names in order to prevent trademark or service mark owners from reflecting their marks in the corresponding domain names.

Mr. Silver registered and uses the <sandshotelmacao.com> and <sandshotelmacau.com> domain names to unlawfully divert and siphon off visitors seeking LVS’ services. Mr. Silver’s use of the <sandshotelmacao.com> and <sandshotelmacau.com> domain names for such purposes is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names and is itself evidence of bad faith. See Nat’l Ass’n of Professional Baseball LeaguesInc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

As evidenced by LVS’ use throughout the world of, and wide reputation in, the SANDS Mark, “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name[s]” <sandshotelmacao.com> and <sandshotelmacau.com>. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035 (“. . . the Panel finds that it is inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business”).

The facts that (i) LVS’ Sands Mark has a strong reputation and is widely known throughout the world; (ii) Mr. Silver had constructive and probable actual notice of LVS’ rights in the Sands Mark when it registered the <sandshotelmacao.com> and <sandshotelmacau.com> domain names; (iii) Mr. Silver provided incomplete or false contact information for the <sandshotelmacao.com> and <sandshotelmacau.com> domain names; (iv) Mr. Silver has a history of registering domain names that correspond to famous trademarks and service marks; (v) Mr. Silver uses the <sandshotelmacao.com> and <sandshotelmacau.com> domain names to intentionally divert traffic away from LVS’ websites; (vi) Mr. Silver uses the <sandshotelmacao.com> and <sandshotelmacau.com> domain names to host a website containing links to various commercial websites that offer the services of LVS’ competitors, and (vii) it is not possible to conceive of any plausible or contemplated active use of the <sandshotelmacao.com> and <sandshotelmacau.com> domain names by Mr. Silver that would not be illegitimate or unlawful, all constitute evidence of the registration and use of the domain names in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.

(2) Complainant’s Response to Panel Request for Information

Complainant owns the United States Trademark Registration for Sands, No. 1,209,102, along with the trademark subject to that registration. Hughes Properties, Inc., is a previous owner of the registration. Complainant obtained the registration by assignment, and that assignment was duly recorded with USPTO. Attached to the submission are copies of the USPTO assignment records that show the assignments in question. Complainant also attached to its submission a list of registrations of its Sands Mark in Macao and Singapore.

With respect to Complainant’s common law rights in the Sands Mark, Complainant alleges that Complainant “through its predecessors and affiliates” has operated (1) the Sands Hotel and Casino in Las Vegas, Nevada until 1996, when it closed, (2) the Sands Expo and Convention Center in Las Vegas since 1990, and (3) the Sands Hotel and Casino in Macao since 2004. Complainant attached to the submission a screen capture of the Complainant’s website page for the Macao property. Complainant’s Response further alleges that Las Vegas Sands Corp. is (1) the sole member and owner of Complainant Las Vegas Sands, LLC, the registrant of the Sands Mark, (2) the ultimate parent entity of the corporate entity which is the owner and operator of the Sands Hotel and Casino in Macao, and (3) the ultimate parent entity of the corporate entity that is the owner and operator of the Sands Expo and Convention Center. Attached to the submission is an organizational chart showing the relevant corporate structure.

B. Respondent

On September 4, 2006, the Respondent sent an email to the Center stating that his delay in responding had been due to the fact that he had been displaced from his residence in Biloxi, Mississippi by Hurricane Katrina, was at that time away from his temporary residence, and had not had access to the Complaint from another location. He stated that he had “voluntarily removed the subject domains from their respective nameservers several days ago”, that he was not a cybersquatter, and that he agreed to transfer or cancellation of the domain names. The Panel has exercised its discretion under the Rules to consider this late response by the Respondent. Respondent did not submit a response to Complainant’s Response to the Panel’s Request for Further Statements.

 

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, Complainant must not only allege but prove all three elements of its claim for transfer of the Respondent’s domain names: (i) that the domain names are 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 rights in respect of the domain names and (iii) that the Respondent registered and uses the domain names in bad faith. This burden of proof must be satisfied even though the Respondent has not challenged the sufficiency of the allegations or evidence submitted by the Complainant. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case. No. D2002-1064 (“It is not sufficient for the Complainant to make allegations without providing proof”); Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383 (“Respondent’s default does not mean that the Panel must accept as true factual allegations in the Complaint that are unsupported by evidence”).

A. Identical or Confusingly Similar

Since the allegations and exhibits of the original Complaint were insufficient to establish Complainant’s rights to the Sands Mark as required by Paragraph 4(a) of the Policy, the Panel issued a Request for Further Statements on the issue of Complainant’s trademark rights. Paragraph 12 of the Rules gives the Panel the discretion to request further statements and documents from the parties.

In Complainant’s Response to the Panel’s Request for Information (“Complainant’s Response”), Complainant submitted evidence from USPTO records of a series of assignments of the Sands Mark and registration from Hughes Properties, Inc. to and through various companies, culminating in an assignment from Las Vegas Sands, Inc. to Complainant Las Vegas Sands, LLC. on August 16, 2005. Thus it appears from these documents that Complainant owned the Sands Mark and registration at the time the Respondent registered the <sandshotelmacao.com> and <sandshotelmacau.com> domain names (the “Domain Names”). The organizational chart submitted by the Complainant shows the corporate relationships between Complainant and its parent company, Las Vegas Sands Corp., which is also the ultimate parent company of the two corporate entities which, respectively, own and operate the Sands Expo and Convention Center in Las Vegas and the Sands Hotel and Casino in Macao. It also appears from the documents submitted with Complainant’s Response that Complainant had common law rights in the Sands Mark at the time the Respondent registered the Domain Names.

The Respondent has not objected to nor provided any evidence in opposition to Complainant’s assertion of trademark rights in this proceeding.

The Domain Names include Complainant’s Sands Mark plus the generic term “hotel” and a geographically descriptive term (“macao” and “macau” ). The Panel therefore finds that the Domain Names are confusingly similar to Complainant’s Sands Mark.

For these reasons, the Panel finds that the Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights, within the meaning of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Complainant states that it has not licensed or otherwise permitted Respondent to use the Sands Mark or to register any domain name incorporating the mark. Complainant argues that Respondent had actual knowledge or constructive notice of Complainant’s rights by virtue of the federal registration of the Sands Mark. Complainant further argues that Respondent has no independent rights or interests with respect to the Domain Names. Respondent has not asserted any independent right or interest and has presented no evidence in opposition to Complainant’s assertions in this regard. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

Complainant asserts that the Respondent’s registration of the Domain Names constituted bad faith under Paragraph 4(b)(ii) of the Policy, alleging that Respondent has registered the Domain Names in order to prevent Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct. Complainant lists a number of other domain names registered by Respondent which contain other well-known hotel names. However, Complainant has registered a number of domain names related to The Sands Macao, as set forth in the Complaint, and it does not appear that Respondent’s registration of the Domain Names was either intended to prevent or successful in preventing Complainant from reflecting its mark in a corresponding domain name. The Panel does not find bad faith under paragraph 4(b) (ii) of the Policy.

Complainant further argues that the Respondent registered and used the Domain Names to unlawfully divert and siphon off visitors seeking Complainant’s services at The Sands Macao hotel casino. This conclusion is buttressed by Respondent’s registration of similar domain names for other hotels and casinos in Macao. Respondent’s Domain Name websites appear to be for commercial purposes to obtain revenue from pop-up ads and links to hotel and travel sites offering services by competitors of the Complainant. Under Paragraph 4(b)(iv) of the Policy, bad faith may be shown where a respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. The Panel finds that the Respondent’s use of the Domain Names constituted bad faith within the meaning of Paragraph 4(b)(iv) of the Policy.

 

7. Decision

In conclusion, the Domain Names are confusingly similar to the Sands Mark, and Complainant has shown trademark rights in the Sands Mark at the time of the Respondent’s registration of the Domain Names. The Respondent has not objected to the Complainant’s assertion of rights in the Sands Mark, has not asserted or established any independent rights or interests in respect of the Domain Names, and has registered and used the Domain Names in bad faith to profit from confusion with the Complainant’s Sands Mark. The Respondent has further stated that he consents to transfer or cancellation of the Domain Names.

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 5 of the Rules, the Panel orders that the Domain Names <sandshotelmacao.com> and <sandshotelmacau.com> be transferred to the Complainant.


Dana Haviland
Sole Panelist

Dated: November 2, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0979.html

 

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