Las Vegas Sands, Inc .v. The Sands of the Caribbean D2001-1157
Las Vegas Sands, Inc .v. George Samuel D2001-1134
Case No. D2001-1134
1.The Parties
The Complainant is Las Vegas Sands, Inc., of 3355 Las Vegas Boulevard,
Las Vegas, Nevada, United States of America.
The Respondents are George Samuel and The Sands of the Caribbean both of
1 Independence Drive, Bencorp Building, 5th Floor, St. John's,
Antigua and Barbuda.
2.The Domain Name and Registrar
The domain names at issue are: <carsands.com> and <thesands.com>
and the Registrar is: Network Solutions, Inc.
3.Procedural History
3.1Procedural History of Case D2001-1134 <thesands.com>
The WIPO Arbitration and Mediation Center [the Center] received the Complaint
in Case D2001-1134 on September 18, 2001, [electronic version] and
on September 19, 2001, [hard copy]. The Center verified that
the Complaint satisfies the formal requirements of the ICANN 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]. The Complainant made the required payment to the Center.
The formal date of the commencement of Case D2001-1134 is September 26, 2001.
On September 20, 2001, the Center transmitted via email to
Network Solutions, Inc a request for registrar verification in connection
with Case D2001-1134 and on September 25, 2001, Network Solutions, Inc
transmitted by email to the Center Network Solutions' verification response
confirming that the registrant is George Samuel and that the contact for
both administrative and billing purposes is Energis Squared Ltd of The
Whitehouse, Melbourne Street, Leeds, West Yorkshire LS2 7PS, United
Kingdom.
Having verified that the Complaint satisfied the formal requirements
of the Policy and the Rules, the Center transmitted on September 26, 2001,
to all the e-mail addresses provided by the Registrar (and the Complainant),
this Notification of Complaint and Commencement of the Administrative
Proceeding. The Center advised that the Response was due by October 16, 2001.
On the same day the Center transmitted by fax and by mail copies of the
foregoing documents to all addresses as provided by the Registrar and
Complainant.
A Response was received from the Respondent on October 16, 2001,
[electronic version] and on November 6, 2001, [hard copy]. On October 18, 2001,
Acknowledgement of Receipt of Response was sent to the Respondent by e-mail,
copying the Complainant, using the contact details for the Respondent’s
authorized representative as provided in the Response. On October 18, 2001,
the Complainant requested leave to amend the Complaint to request a transfer
of the domain name in issue <thesands.com>, rather than cancellation
of that domain name.
Also on October 18, 2001, the Complainant made a request to consolidate the
Complaint in Case No. D2001-1057 <sandsofthecaribbean.com>
with these two other Complaints [Case Nos. D2001-1134 and 1157]. In Case
No. D2001-1057 the Respondent was Red Group of San Francisco, United
States of America. That request was subsequently denied by the Panel in Case
No. D2001-1057.
Having received Declarations of Impartiality and Independence and Statements
of Acceptance, the Center transmitted to the parties a Notification of
Appointment of Administrative Panel and Projected Decision Date, in which
Hilary Phillips QC, Neil Arthur Smith and David Perkins were
formally appointed as the Panel. The Projected Decision Date was December 31, 2001.
The Panel finds that the Administrative Panel was properly constituted
and appointed in accordance with the Rules and the Supplemental Rules.
3.2Procedural History of the Case D2001-1157 <carsands.com>
The Center received the Complaint in Case D2001-1157 on September 21, 2001,
[electronic version] and on September 26, 2001, [hard copy].
The Center verified that the Complaint satisfies the formal requirements
of the Policy, the Rules, and the Supplemental Rules. The Complainant
made the required payment to the Center.
The formal date of the commencement of Case D2001-1157 is September 27, 2001.
On September 24, 2001, the Center transmitted via email to
Network Solutions, Inc., a request for registrar verification in connection
with Case D2001-1157 and on September 25, 2001, Network Solutions, Inc.,
transmitted by email to the Center Network Solutions' verification response
confirming that the registrant of the domain name <carsands.com>
is The Sands of the Caribbean and that the contact for both administrative
and billing purposes is Energis Squared Ltd of The Whitehouse, Melbourne
Street, Leeds, West Yorkshire LS2 7PS, United Kingdom.
Having verified that the Complaint satisfied the formal requirements
of the Policy and the Rules, the Center transmitted on September 27, 2001,
to all the e-mail addresses provided by the Registrar (and the Complainant),
this Notification of Complaint and Commencement of the Administrative
Proceedings. The Center advised that the Response was due by October 17, 2001.
On the same day the Center transmitted by fax and by mail copies of the
foregoing documents to all addresses as provided by the Registrar and
Complainant.
A Response was received by the Respondent on October 17, 2001,
[electronic version] and November 6, 2001, [hard copy]. On October 18, 2001,
Acknowledgement of Receipt of Response was sent to the Complainant and
to the Respondent using the same contact details and methods as were used
for the Notification of Complaint and Commencement of the Administrative
Proceedings.
Having received Declarations of Impartiality and Independence and Statements
of Acceptance, the Center transmitted to the parties a Notification of
Appointment of Administrative Panel and Projected Decision Date, in which
Hilary Phillips Q.C., Neil Arthur Smith and David Perkins were
appointed as the Panel. The Projected Decision Date was December 31, 2001.
The Panel finds that the Administrative Panel was properly constituted
and appointed in accordance with the Rules and the Supplemental Rules.
3.3Procedural History of Consolidated Cases D2001-1134 and D2001-1157
On December 11 and 18, 2001, the Complainant made the following
requests in both cases. First, to submit new evidence. Second, that the
Panel be provided with the Decision in Case No. D2001-1057 <thesandsofthecaribbean.com>.
Third, that these two cases be consolidated. On December 20, 2001,
the Complainant clarified, at the Center's request, the content of the
additional proposed new evidence.
On January 8, 2002, the Panel ordered that
.the two Cases should be
consolidated;
.the Complainant
should have leave to submit the new evidence by January 11, 2002;
.the Respondent
should have until January 18, 2002, within which to answer
such additional new evidence; and
.that the
date for decision of the consolidated cases be extended to February 2, 2002.
On January 11, 2002, [electronic version] and on January 15, 2002,
[hard copy] the Center received a Supplemental Declaration of Gary A Hecker
with Annexes 20 to 32 on behalf of the Complainant.
The Respondent requested an additional week within which to respond and
this was granted by the Panel. At the same time the date for decision
of the consolidated cases was extended by a corresponding period to February 12, 2002.
On January 25, 2002, [electronic version] and on January 29, 2002,
[hard copy] the Center received a Response from the Respondent to the
additional submission from the Complainant with additional Respondent's
Exhibits R to U.
Having reviewed the communication records in the case file, the Administrative
Panel finds that the Center has discharged its responsibility under paragraph
2(a) of the Rules "to employ reasonably available means calculated to
achieve actual notice to Respondents". Therefore, the Administrative Panel
shall issue its Decision based upon the Complaint, the Response, the Supplemental
Evidence from the Complainant, the Response from the Respondent thereto,
the Policy, the Rules and the Supplemental Rules.
4.Factual background
4.1The Complainant
4.1.1The Las Vegas Sands Resort Hotel and Casino
This was opened in 1952 and demolished in 1996. Many famous personalities
stayed at the Sands Hotel over the years, including Presidents Truman
and Kennedy and the so-called Rat Pack [Frank Sinatra etc] whose
film Ocean’s Eleven was filmed at the hotel. Merchandise commemorating
the Rat Pack's performances and escapades at the Sands resort hotel
and casino are apparently still available.
4.1.2The Sands Expo and Convention Center, Las Vegas
This Convention Center is located at the Venetian Resort - Hotel-Casino,
which was built to replace The Las Vegas Sands Resort, Hotel and Casino.
It is said to be one of the most widely used and best convention centres
in the world. The Complainant states that it has spent millions of dollars
to promote the Center. Information about the Center is located under SANDS
EXPO at the <venetian.com> website.
4.1.3The Sands Resort Hotel and Casino, Atlantic City
This is the second largest gambling destination in the United States.
The SANDS trademark is used under licence from the Complainant. A website
promoting the Sands Resort Hotel and Casino may be found at <acsands.com>.
4.1.4The SANDS trademark
The Complainant is the owner of US Trademark Registration No. 1,209,102
for SANDS in Classes 41 and 42 respectively for entertainment services,
namely providing stage shows, gambling and casino services [Class 41]
and for hotel, restaurant and lounge services [Class 42]. First use in
commerce of the SANDS mark was 1952, the date when The Las Vegas Sands
Resort Hotel and Casino was launched [paragraph 4.1.1 above]. The mark
was registered on September 14, 1982. Annexed to the Complaint
is documentary evidence of assignment of the registration to the Complainant.
4.2The Respondent
4.2.1World Wide Telesports
World Wide Telesports [WWTS] is located at the same address as the Respondent
in both cases. WWTS owns or controls the Respondent, The Sands of the
Caribbean [Case D2001-1157] and George Samuel, the Respondent in Case
D2001-1134, is the General Manager of WWTS.
4.2.2The Domain Names in Issue
<thesands.com> was first registered on May 21, 1997 and
was transferred to George Samuel on February 2, 2001. <carsands.com>
was registered by The Sands of the Caribbean on November 20, 2000.
Both domain names are said to be owned by The Sands of the Caribbean and
have been used by that entity and its predecessors in interest since at
least May 1997 in connection with on-line gambling services.
4.2.3WWTS and its business
.WWTS is the
owner of US registered trademark No. 2,235,283 SANDS OF THE CARIBBEAN
in Class 36 for on-line casino and sports betting. The mark was registered
on March 23, 1999 and claims first use in commerce from
August 1997. In March 2001, the Complainant filed a Petition
with the US Patent and Trademark Office to cancel that registration
on the basis of its earlier U.S trademark registration No. 1,209,102
[see paragraph 4.1.4 above]. In June 2001, WWTS filed an Answer
and Counterclaim to that Petition, seeking cancellation of the Complainant's
SANDS registration.
.In March
1998 proceedings were brought in the Southern District Court of New
York by the United States Government against William Scott and Jessica
Davis alleging that WWTS is engaged in operating a sports betting
business over the Internet in contravention of the US Wire Communications
Act of 1961 [18 USC 1084]. An Affidavit from a Federal Bureau of Investigation
agent describes that WWTS offers a toll free telephone number in the
United States providing information concerning sports betting and
how to open a betting account. Wagers, backed up by a US dollar account
established with British American Insurance in Antigua, can then be
placed by a registrant through an allocated PIN. The affidavit states
that Mr Scott is the owner of WWTS - which Mr Scott denies - and that
Ms. Davis is the President of WWTS.
.The Complainant's
Supplementary Complaint exhibits this Complaint under the 1961 Act,
warrants for the arrest of Mr Scott and Ms Davis also dated March 1998
and articles from 5 newspapers and magazines relating to the US Government's
actions against a number of US citizens operating online gambling
from islands in the Caribbean, including Mr. Scott and Ms. Davis.
.According
to a New York Times article wagering on sports is illegal everywhere
in the United States, except for Nevada and Oregon. However, there
are some 60 offshore sports books in operation throughout the Caribbean
and Central America, 25 of which are based in Antigua where, in 1994,
a free trade zone was established to facilitate that business. In
Antigua, the government fee for telephone gambling operations is $75,000 and
for on-line companies $100,000. WWTS is reported to have 85 employees.
Another publication, Gambling Magazine, reports that WWTS accepts
an average of 35,000 bets a week and is one of some 300 online
gambling operations operating on the Internet.
.In February
2000, a Mr Jay Cohen of World Sports Exchange, another Antigua based
online sports betting entity, was reported as convicted under the
US 1961 Wire Communications Act. That conviction was upheld on appeal
in July 2001.
.A print out dated
January 10, 2002, from The Sands of the Caribbean website is
exhibited. This features the words SANDS in upper case prominently by
comparison to the full name. It also carries a disclaimer in the following
terms:
The Sands of the Caribbean ® is not affiliated in any way with
Sands of Atlantic City or Sands of Las Vegas.
.In the Response
to the Complainant's Supplementary Complaint, the inter-relationship of
the Respondent entities is clarified.
-The Respondent in Case No. D2001-1157, The Sands of the Caribbean,
is a business entity owned and operated by Caribbean Casino Management
Holdings Ltd [CCMH].
-CCMH is the assignee of US trademark Registration No. 2,235,283
SANDS OF THE CARIBBEAN from WWTS.
-CCMH operates a website for online casino gambling.
-CCMH and WWTS are co-owned legal affiliates.
-Neither CCMH nor WWTS are in common ownership with Red Group, a South African
Company and the Respondent in WIPO Case No.
D2001-1057, which is referred to further in paragraph 5.7.7 below.
.As to proceedings
brought against Mr Scott and Ms Davis under the US Wire Communications
Act of 1961, and the 5 publications exhibited to the Complainant's
Supplementary Complaint, the Respondent says the following:
-The US Government has taken no action on the 1998 Complaint
and warrants, which are described as stale.
-The newspaper / magazine articles illustrate that the legal
basis for complaints under the 1961 Act is murky.
-Online casino gambling is both legitimate and licensed by
the Government of Antigua.
-Online casino gambling is accepted as a legitimate business
throughout most of the world.
-The United States is the only nation to file complaints regarding
online gambling and has successfully prosecuted only one on-line
gambling business, which related to sports betting.
-The Sands of the Caribbean website to which the two domain
names in issue <the sands.com> and <carsands.com> resolve
is recognised as a legitimate licensed online casino operating on
the Internet and accessible throughout the world. The applicability
of US laws to such casinos is as yet unresolved.
5.The Parties' Contentions
5.1.The Complainant's SANDS Trademark
5.1.1The Complainant relies upon its US registered service mark for
SANDS which was issued in 1982, and was first used in commerce in 1952
[paragraphs 4.1.4 above].
5.1.2The Complainant further relies upon use under license of that
SANDS mark by the Sands Expo and Convention Center at the Venetian Resort
Hotel Casino, Las Vegas [which is the successor business to the Las Vegas
Sands Resort Hotel and Casino demolished in 1996] and by The Sands Resort
Hotel and Casino, Atlantic City, New Jersey [paragraphs 4.1.2 and 4.1.3
above].
5.1.3The Complainant also relies upon the notoriety of the former
Las Vegas Sands Hotel Resort and Casino memorabilia relating to which
and events which feature it are still available today. In short, the Complainant's
case is that the SANDS name and mark is very well known and that due to
the Complainant's long and continuous use of that mark, consumers associate
SANDS with casino, hotel, restaurant and entertainment services provided
by the Complainant and the Complainant alone.
5.2The Respondent's Case on the SANDS Mark
5.2.1The historical significance of the SANDS mark was extinguished
with the very public demolition in 1996 of the Las Vegas Sands Hotel and
Casino.
5.2.2As to the Complainant's licensee, the Atlantic City Sands Hotel
and Casino, it filed for Chapter II bankruptcy in 1998 but was taken over
and refinanced by Carl Icahn. It is his name and reputation which has
since been used to try to resurrect the business.
5.2.3There are numerous third party SANDS US trademark registrations in the
relevant classes which are quite unrelated to the Complainant. They include:
Registration No.
Mark
Class
Applied for / Registered
2,445,204
BAHAMA SANDS
42
August 10, 1999 filed
2,375,595
SANDS RESORTS
36
December 5, 1996
filed
1,947,876
SANDS OCEANFRONT
RESORTS
36
September 17, 1993
filed
1,988,278
MARINER SANDS
36 &
41
May 3, 1995 filed
76144399 [App.]
SANDS OF GOLD
9,
21, 23, 26, 36 & 38
October 10, 2000
filed
5.2.4There are several third party online gambling websites which include the
word SANDS. For example:
-ARIZONA SANDS located at <arizonasands.com>;
-CRYSTAL SANDS CASINO located at <crystalsandscasino.com>;
-CRYSTAL SANDS SPORTSBOOK located at <crystalsandsandsportsbook.com>;
-GOLDEN SANDS located at <goldensands.bg>; and
-SAND STAR CASINOS located at <sandstarcasinos.com>.
5.2.5There are third party casinos, hotels and gambling operations
which include the word SANDS. For example
-SANDS Hotel and Casino Beach Resort, Puerto Rico.
-Leelanau SANDS Casino, Peshawbestown, Michigan.
-The SANDS Regency Hotel Casino, Reno, Nevada.
-Golden SANDS Resort, Diamond Point, New York.
5.2.6A Dunn & Bradstreet Business Directory search exhibited
lists the following additional casinos / hotels using the word SANDS
Pacific SANDS Resort and Hotel, Ocean City, Washington State.
Kamade SANDS, Honolulu
Amber SANDS Resort, Lake Leelanau, Michigan
SANDS Motel, Port Lavaca, Texas
SANDS of La Jolla, La Jolla, California
Coral SANDS Motel, Myrtle Beach, South Carolina
Kihei SANDS Beach Combos, Kihei, NI
The Warm SANDS Hotel, Palm Springs, California
Palm SANDS, Escondido, California
SANDS Ocean Club Resort, Myrtle Beach, South Carolina
5.2.7It is, therefore, plain on the evidence that the Complainant
has not been active in the hotel and casino industry in Las Vegas for
the last 5 years. With regard to the Complainant's licensee in Atlantic
City, its continued operation depends on the goodwill and name of Carl
Icahn, not the SANDS name.
5.2.8It follows that whatever fame and distinction the Complainant
may once have enjoyed in the SANDS name and mark has become so diluted
that it can now be viewed only as a generic and commonly used term in
the hotel and casino industry. The Respondent says that as a matter of
US law an entity cannot maintain rights in a mark which is generic, citing
Pilates Inc .v. Current Concepts Inc [120 F. Supp. 2d 286, 57 USPQ
2d 1174 SDNY Oct. 19, 2000].
This was an action involving two registered trademarks for the word PILATES
for goods and services in connection with exercise equipment. The Court
held that both registrations were invalid since, on the evidence, both
were generic and, if there ever was a PILATES trademark, it had been abandoned
long before the Plaintiff applied for its registration. This was despite
the fact that the PILATES service mark [registered in 1986] was incontestable
pursuant to 15 USC §1065.
The facts of the case established that the PILATES name had been derived
from a German national, Joseph Pilates, who emigrated to the United States
in the mid 1920's and developed a successful training / exercise
studio in New York City. Apparently, Mr & Mrs Pilates never
did anything to prevent others from using their name to describe what
they taught. Indeed, their wish was to disseminate the exercise programme
as widely as possible for the benefit of all. On the facts, the PILATES
mark became widely used by a number of different gyms / studios. Then
in 1992, the Plaintiff acquired the trademark registrations and by establishing
a network of license agreements set about resurrecting the mark.
On its facts, the PILATES case is really quite different from the facts
of the consolidated cases to be decided by this Panel and can, in the
Panel's view, only be relevant to establish the proposition that a registered
trademark can in certain circumstances become generic and unenforceable.
Those circumstances will depend upon the facts of each case. The proposition
itself is based on earlier decisions such as Park 'n Fly Inc .v. Dollar
Park and Fly Inc (1985) and Abercrombie & Fitch .v. Hunting
World (1976).
The Respondent also cites the following cases decided under the Policy:
There the Panel found the Complainant's POINTMAIL mark to be descriptive
and not rising to the level of a trademark as required by the Policy.
It amounted to no more than the simple conjunction of the descriptive
word point with the generic word mail.
CRS Technology Corp .v. Condenet Inc [NAF Case No. FA0002000093547]
There the Complainant succeeded in establishing that the <concierge.com>
domain name of the Respondent was identical to its CONCIERGE Canadian
trademark for computer programs. Clearly, this Decision does not assist
the Respondent in its assertion that the SANDS name and mark has become
generic.
There the Panel held that the domain name in issue <eautomotive.com>
was confusingly similar to the Complainant's EAUTO US registered trademark,
"… notwithstanding that EAUTO is on the weaker side of the range of
distinctive marks". Again, the Decision does not assist the Respondent
in relation to the issue of the alleged genericness of the SANDS mark.
The Panel went on to say:
"The Panel expressly rejects Respondent's claim that its name
is not confusingly similar to the mark EAUTO and the domain name
eauto.com because Complainant's US trademark registration for the
Mark is overbroad, and therefore invalid. Even if the trademark
registration were subject to attack (an issue this Panel need not
reach), it would be sufficient for Complainant to rely on its common
law rights in the eauto.com mark. Ownership of a registration is
not a prerequisite to filing an action for abusive domain name registration."
There the Panel found that the Respondent's <thyme.com> domain
name was identical to the Complainant's Canadian trademark THYME for
maternity clothing. Again, although the Complaint failed for other
reasons as did the Complaints in the CONCIERGE and EAUTO cases, this
decision does not assist the Respondent in relation to demonstrating
the Complainant's alleged lack of trademark rights in SANDS in this
case.
5.3Confusing Similarity: the Complainant's Case
5.3.1The Respondents' use of both domain names in issue is certain
to cause confusion with the Complainant's SANDS trademark.
5.3.2Both parties provide casino services. The dominant portion of
both domain names is SANDS. Consumers are likely to believe that the Complainant
has established an online casino or that the Respondent's services are
otherwise sponsored by or associated with the Complainant.
5.3.3Because the Complainant's SANDS US service mark is incontestable and gives
the Complainant exclusive right to use that mark [15 USC § 1065 and 1115(b)],
the Complainant must succeed in establishing likelihood of confusion
as required by paragraph 4(a)(i) of the Policy. The Complainant cites in this
respect Toyota Motor Sales USA .v. Raji Hamid dba Automobile Buyer [WIPO
Case No. D2001-0032]. That case concerned 13 domain names, each of
which incorporated as part of the domain name the Complainant's LEXUS trademark.
That trademark was incontestable [15 USC § 1065] and the Complainant relied
on its LEXUS registrations as evidence of its exclusive right to use that mark
[15 USC § 1115]. No Response was filed by the Respondent. In the absence
of any challenge to the validity of its LEXUS registrations, the Panel found
that the Complainant had enforceable rights in the trademark and that the domain
names in issue were confusingly similar to that mark.
The distinction with the present case is, of course, that the Respondent
challenges the Complainant's rights in the SANDS trademark.
5.3.4Because the primary distinctive element incorporated in both
domain names in issue is SANDS, confusing similarity for the purposes
of paragraph 4(a)(i) of the Policy follows. Here the Complainant cites
a raft of cases decided under the Policy. They are:
There the domain name in issue was <militec.com>, the Complainant
being the owner of US and international trademarks for MILITEC and design
for chemical based metal conditioning fluids and lubricants. The Respondent
retailed the Complainant's MILITEC-1 product at its website at <militec.com>.
Held, the domain name was confusingly similar, since it comprised the
primary, distinctive element of the Complainant's trade name.
Adding geographical names did not avoid likelihood of confusion. The
domain names <attmexico.com> and <att-latinamerica.com> were
held to be confusingly similar to the Complaint's AT&T trademark and
service mark registrations.
The domain names <aolfrance.com>; <aolgermany.com>; <aolireland.com>;
and <aolspain.com>were held to be confusingly similar to
the Complaint's AOL registered service mark. The Panel stated:
"The addition of a place name generally does not alter the underlying
mark to which it is added."
There the domain name <cellularonechina.com> was held to be confusingly
similar to the Complainant's CELLULAONE U.S. and international trademark
registrations.
5.3.5The Complainant also asserts that points of similarity of conflicting
marks are weighed more heavily in determining likelihood of confusion
under US law than points of difference. In support of this proposition
the Complainant cites two cases. They are:
GoTo.com Inc .v. Walt Disney Co [202 F. 3d. 119, 1206 (9th
Cir. 2000)]
This case concerned the Plaintiff's GoTo logo used on its
website which contained a pay-for-placement search engine, which allowed
consumers to locate items on the web. This mark was held to be infringed
by Disney's logo for its web portal, the Go Network which was
launched some months after the Plaintiff began to use its GoTo
logo. On the facts, the Court found the two logos to be "overwhelmingly
similar". In coming to that conclusion the Court applied, inter alia,
the axiom
"Similarities are weighed more heavily than differences."
Brookfield Communications Inc .v. West Coast Entertainment Corp
[174 F. 3d 1036, 1054 - 55 (9th Cir. 1999)].
The Plaintiff owned the MOVIEBUFF registered trademark for software
featuring a searchable database containing entertainment industry
related information. The Defendant, West Coast, operated over 500
video rental stores and intended to launch a website at <moviebuff.com>.
The Plaintiff was awarded a preliminary injunction to restrain such
infringement of its MOVIEBUFF trademark registration. In addressing
likelihood of confusion, the Court - as in the GoTo case - applied
the Sleekcraft factors holding that the respective marks
"… must be considered in their entirety and as they appear in the
market place … with similarities weighed more heavily than differences."
5.3.6Use of the name SANDS in both the URL and the Respondent's homepage
is grossly disproportionate in size to any of the adjacent words on that
homepage. The Complainant concludes that the Respondent is thereby clearly
trying to associate itself with the Complainant in order to capitalise
on the Complainant's goodwill built up over the decades in the casino
industry.
5.3.7The way the disclaimer [see paragraph 4.2.3 above] is buried
away in the Respondent's website is another indication of likelihood of
confusion. Here the Complainant cites a further three Decisions under
the Policy. They are:
The domain names in issue <estelauder.com>and <.net> resolved
to two customer complaint sites. Those sites contained several disclaimers
to the effect that they were not affiliated with Esteé Lauder.
The sites also expressly stated that they were non-commercial and non-profit
advocacy sites in exercise of rights under the First Amendment (i.e. free
speech) of the US Constitution. The Panel found confusing similarity,
stating
"… the domain names used would be of little use to Respondent if
they were not of sufficient confusing similarity with Complainant's
trade or service marks so as to attract potential complainants. In
fact, Respondent's domain names are clearly, and intentionally, confusingly
similar to Complainant's marks."
The domain names in issue were <bartlesandjaymes.com> and <.net>,
the Complainant Gallo being the owners of US and international trademark
registration for BARTLES & JAYMES. The Respondent Hanna Law Firm
replied that the domain names were registered for consumer complaint sites
to enable constitutionally protected Consumer Advocacy Free Speech. The
Panel found both identity and confusing similarity for the purposes of
paragraph 4(a)(i) of the Policy. The fact that the sites contained disclaimers
that they were not affiliated with Bartles & Jaymes did not alter
this.
The domain name in issue was <dennys.net>, the Complainant being
the owner of the Dennys restaurant chain. The Respondent stated that the
domain name was to be used for a website functioning as a chat group for
DENNY'S restaurant patrons and pointed to a disclaimer appearing on that
website. The Panel found confusing similarity.
5.3.8With reference to the <carsands.com> domain name in issue,
it is no more than the Complainant's famous SANDS trademark preceded by
the geographical descriptor "car" as an abbreviation for Caribbean. The
homepage for <carsands.com> indicates that the owner of the Respondent,
Sands of the Caribbean, is located in Antigua and Dominica, both Caribbean
islands. Through use of Sands of the Caribbean, <carsands.com> is
designed to create the impression that it is an online casino operated
or otherwise sponsored by the Complainant in the Caribbean. The Complainant
relies on the cases cited in paragraphs 5.3.3 to 5.3.5 above.
5.4Confusing Similarity: the Respondent's Case
5.4.1.The Complainant's SANDS trademark is a generic and commonly
used term in the hotel and casino industry [see paragraph 5.2 above] so
that confusing similarity cannot occur.
5.4.2The Complainant's Supplementary Complaint exhibits evidence
in the form of the newspaper and magazine articles which demonstrate that
the online casino, Sands of the Caribbean, which operates in respect of
the domain names <carsands.com> and <thesands.com> is a respected
and dominant online casino known throughout the world.
5.4.3.The Complainant has produced no evidence of actual confusion
between the online casino Sands of the Caribbean and the two domain names
in issue with the SANDS trademark.
5.5Rights or Legitimate Interests: the Complainant's Case
5.5.1Respondent's use of the domain names in issue has not been authorised
by the Complainant.
5.5.2Given the fame of the Complainant's SANDS mark in relation to
hotel and casino services for half a century, the Respondents cannot have
any rights or legitimate interests in respect of the two domain names,
particularly in relation to activities involving gaming or casinos.
5.5.3The Complainant's SANDS mark is arbitrary in relation to hotel
and casino services and, as such, is distinctive. Where a Complainant's
trademark is well known - as it is in this case - registration of a confusingly
similar domain name without a good faith business justification cannot
be legitimate. Although not stated in so many words, the Complainant's
case appears to be that the Respondent's use of the domain names is not
in connection with a bona fide offering of services and/or is not a fair
use of the SANDS trademark in the sense that it misleadingly diverts consumers
and/or tarnishes that trademark.
5.5.4The Complainant cites the following Decisions under the Policy.
The domain name in issue was <dietrite.com> and the Complainant
had sold its DIET RITE soft drinks for decades under its US trademark
registered in 1954. Held that the Respondent had failed to bring itself
within any of the circumstances prescribed by paragraph 4(c) of the Policy
or any other factors which might establish rights or legitimate interests
in respect of the domain name.
The Toyota [LEXUS] case referred to in paragraph 5.3.3 above,
where the Respondent was an employee of an authorised LEXUS Dealer and
where officials from Toyota in Japan had commended him on his ingenuity
for his ideas for e-commerce marketing Toyota vehicles. Held that communications
received by the Respondent from LEXUS Dealerships and from corporate Toyota
officials did not constitute a license to use the LEXUS trademark. Any
marketing done under the domain name in issue was done on behalf of the
Dealerships or Toyota. No rights or legitimate interests to that domain
name were thereby created.
Some 37 domain names were in issue, including <atlantayahoo.com>;
<nyahoo.com>; <yahoofr.com>; <yahoony.com> etc. No Response
was filed. The Complaint succeeded.
The domain names in issue were <chanelstore.com> and <chanelfashion.com>.
Held that the Respondent's elaborate business plan to interconnect the
two domain names with the Respondent's fashion information portal at designerglobe.com
could not constitute a bona fide use of the Complainant's CHANEL trademark,
nor could it be fair use. The Respondent failed to demonstrate rights
or legitimate interests in respect of the domain names.
The domain name was <christiesauction.com>, which the Respondent
used for its website offering catalogues of jewellery for which customers
could bid using a link to an eBay auction site. The Panel held that this
was not a legitimate use of the Complainant's famous CHRISTIE'S trademark.
It was instead an infringing use to attract visitors to the Respondent's
more modest operation.
Veuve Cliquot Ponsardin, Maison Fondée en 1772 .v. The Polygenix
Group Co [WIPO Case No. D2000-0163]
The domain name in issue was <veuvecliquot.org>. Held, the Respondent
had no rights or legitimate interests in that domain name. The Complaint
succeeded, the nub of the decision resting on the issue of registration
and use in bad faith. In that connection, the Panel stated.
<veuvecliquot.org> is so obviously connected with such a well
known product that its very use by someone with no connection with
the product suggests opportunistic bad faith.
5.6Rights or Legitimate Interests: the Respondent's case
5.6.1The sophisticated purchasers of online gambling services know
that the domain name <thesands.com> connects to the website of The
Sands of the Caribbean.
5.6.2The Complainant has no interest in online gambling services
and has never offered such services.
5.6.3Sophisticated purchasers of online gambling services could not,
therefore, confuse either of the domain names in issue with the Complainant.
5.6.4The Complainant first notified WWTS of its dispute in relation
to <thesands.com> domain name on November 3, 2000.
That domain name was registered in May 1997 and has been used in
connection with online gambling services since that date by predecessors
in interest to the Respondent.
5.6.5Therefore, more than three years prior to receiving that notice,
the Respondent through its predecessors in interest had begun using that
domain name in connection with bona fide online gambling services. In
that respect, the Response cites two decisions under the Policy.
The domain name in issue was <sweeps.com>, which was used by the
Respondent to resolve to a site on which was located a directory page
featuring links to various sites involving sweepstakes and related games.
This use had begun at least six months prior to receiving the Complainant's
cease and desist letter. This was a bona fide descriptive use of the types
of businesses (sweepstakes related) listed on the directory. Held, that
the Respondent had established rights and legitimate interests in the
domain name under, inter alia, paragraph 4(c)(i) of the Policy.
Wherehouse Entertainment Inc .v. The Wherehouse? Inc
The domain name in issue was <the-wherehouse.com>. The Complainant's
THE WHEREHOUSE trademark had been registered and used since 1970. That
use was in the United States and internationally and was well known in
the media retail industry.
The Respondent registered the domain name in issue in September 1998
but since 1977 had used the unique spelling wherehouse in connection
with its banquet-related goods and services business. First notice of
the dispute was the Complainant's cease and desist letter of October 1999.
Held that the Respondent had used that name for 24 years and that it had
become commonly known by that name. There was also strong evidence of
fair use of the domain name by the Respondent. The Respondent succeeded
in demonstrating rights and legitimate interests in the domain name and
the Complaint was rejected.
5.6.6The <carsands.com> domain name was registered on November 20, 2000.
It was not referenced in the Complainant's cease and desist letter of
November 3, 2000, nor is it confusingly similar with the SANDS
mark claimed by the Complainant.
5.6.7The Sands of the Caribbean website to which both domain names
in issue resolve contains a clear disclaimer of any affiliation with the
Complainant.
5.6.8.The Complainant's SANDS trademark has become so diluted that
it has lost any distinctiveness. There is multiple third party use of
SANDS in relation to hotels, gambling, casinos and online gambling. The
Complainant has acquiesced in the third party uses identified in paragraphs
5.2.4 and 5.2.6 above. Demolition of the Las Vegas Sands Hotel and Casino
in 1996, has contributed to extinguishment of any distinctiveness the
SANDS trademark might once have had. The Complainant has no interest in
online gambling and has never offered such services [paragraph 5.6.2 above].
In the circumstances, there cannot be any likelihood of confusion with
the Complainant's SANDS mark as to the source, sponsorship, affiliation
or endorsement of The Sands of the Caribbean website to which the two
domain names in issue resolve.
5.6.9The Respondent points to its submissions made in reply to the
Complainant's Supplementary Complaint [see paragraph 4.2.3 above] as evidencing
its rights and legitimate interests in the two domain names. The Respondent
states that it is beyond the authority of this Panel to rule on the legality
or otherwise of online gambling under US law. In that respect, the Respondent
cites two Decisions under the Policy.
There the domain name in issue was <krylon.net>. The
Complainant had made and sold paints and coatings under the KRYLON
mark since 1868. The Respondent used the domain name in issue to link
to the main page of a so-called piracy website, where Internet-users
would be provided with emulators and copies of ROMs for video games
from companies such as Nintendo of America, a practice deemed illegal
and vigorously opposed by that company.
In relation to rights or legitimate interests, the Panel held that
- in the absence of a judicial finding of illegality - the legality
of the Emulator Playaz website was in question but determination of
such legality was beyond the scope of the authority of a panel in
a UDRP proceeding and cannot thus form the basis for adverse inferences.
The domain name at issue was <ittag.com>, registered in August 1997
by a Swiss Company, IT&T A.G. which had been trading since 1994.
The Respondent operated a website on which it had published commercial
communications directories and databases. The Complainant owned the
well-known ITT trademark worldwide. The US Postal Service initiated
an administrative action against the Respondent for allegedly deceptive
unsolicited mass mailings for what appeared to be invoices for previously
ordered listings in the Respondent's putative business directory.
An Order was made in that action that the Respondent should cease
and desist such mailings through the US Postal Service. The Respondent
ignored that Order and continued such mailings.
The Complaint was denied for failure to establish confusing similarity.
No holding in relation to rights or legitimate interests was, therefore,
made. However, in relation to the proceedings brought by the US Postal
Service, the Panel said:
"This activity is not material. The Policy is concerned with
the criteria therein. A Panel cannot sit in judgement on the business
activities of parties who come before it except where such activities
contravene the Policy. Disputed claims relating to fair trading
/ consumer laws or trademark infringement are better suited for
determination by a Court than under the Policy."
5.7Registered and Used in Bad Faith: The Complainant's Case
5.7.1The Respondent has constructive notice of the Complainant's SANDS registered
trademark and, therefore, is to be deemed to have registered both domain names
in bad faith. The Complainant cites in this respect Robotel Electronique
Inc .v. KapCom Inc [WIPO Case No. D2001-0038].
The domain name in issue was <robotel.com>. The Complainant was the proprietor
of a US registered trademark for ROBOTEL for personal computers and other related
goods which it had used in the United States since 1988, and in Canada since
1984. No Response was filed and so nothing was known about the Respondent except
for a dialogue with the Complainant and its attorneys during which Mr Kaplan
offered to sell the domain name in issue. Although the Complainant sought, as
in this case, to rely upon the Respondent having constructive notice of the
Complainant's exclusive right to use the registered trademark pursuant to section
22 of the US Trademark Act, the Panel did not decide that issue, finding bad
faith made out under the different ground in paragraph 4(b)(i) of the Policy.
5.7.2.The attempt to hide behind a weak disclaimer [see paragraph
4.2.3 above] indicates Respondent's knowledge that they were all along
acting in bad faith by registering and using the domain names in issue.
5.7.3.By virtue of the well-known status of the Complainant's SANDS
trademark, it is simply straining credulity to suggest that the Respondent
did not have actual notice of that mark when registering the two domain
names in issue. The Complainant cites the Christies and Veuve
Cliquot cases [see paragraph 5.5.4 above].
5.7.4The registration of the two domain names in different names
- <the sands.com> in George Samuel's name and <carsands.com>
in the name of The Sands of the Caribbean - when both resolve to the same
Sands of the Caribbean Online Casino & Sportsbook homepage. This is
evasive conduct of the type that has been taken to indicate registration
and use in bad faith in other cases under the Policy. In that connection,
the Complainant cites the following Decisions.
The domain names in issue were <huntonandwilliams.com>
and <huntonwilliams.com>. The Complainant, Hunton & Williams,
was a well known US based law firm. The Respondent had registered
the names of numerous other well known professional service firms
including, for example, <vinsonandelkins.com>. Citing the Telstra
case [see below] the Panel found bad faith on, amongst others, the
following grounds:
"Respondent's bad faith is further evidenced by Respondent's
attempts to hide its true identity behind several different trade
names, by using a post office box address instead of its actual
address, and by using false names for contact persons such as "Billing
Contact" instead of the name of an actual person."
Here the Panel held that the circumstances set out in paragraph 4(b)
of the Policy are not exhaustive of those evidencing registration
and use in bad faith. Other circumstances may also indicate bad faith,
including where a Respondent has taken active steps to conceal its
true identity by operating under a name that is not a registered business
name.
The domain name in issue was <hyosung.com> and the Complainant
was a Korean Corporation which had international trademark registrations
for the HYOSUNG mark dating from 1978 for electrical and electronic
apparatus, audio and video cassettes and other related goods. No Response
was filed but there was evidence that the Respondent had attempted
to sell the domain name in issue to the Complainant. The evidence
also showed that the Respondent had registered some 50 other domain
names, a proportion of which incorporated third party trademarks,
many [including, the domain name in issue] registered under fictitious
names. In finding bad faith registration and use the Panel did not
specifically address this issue, relying instead on dilution of the
Complainant's well-known HYOSUNG trademark and likelihood of confusion
in the event that the Respondent should be permitted to use the domain
name in issue.
The domain name in issue was <lasambucamolinari.com>. The Complainant
owned the registered trademarks MOLINARI and SAMBUCA MOLINARI for
alcoholic beverages and in particular for a liquor based on Anise.
The registrations were international and dated from 1958. No Response
was filed. In relation to registration and use in bad faith, the Panel
drew an adverse inference from the fact that the Respondent had hidden
his real identity when registering the domain name.
5.7.5Despite cease and desist letters addressed by the Complainant
to WWTS on November 3, 2000, and March 23, 2001, in
relation to <thesands.com> domain name, the Respondent has wrongly
continued to use that domain name. Such use is in bad faith.
5.7.6From the above, it is apparent that the <carsands.com>
domain name was registered [on November 20, 2000] after WWTS
was put on notice of the Complainant's rights in respect of the SANDS
trademark by the cease and desist letter dated November 3, 2000.
This registration was, therefore, made with full knowledge of the Complainant's
SANDS tradename, such registration being in bad faith. Continued use of
the domain name following the two cease and desist letters [referred to
in paragraph 5.7.5 above] is evidence of use in bad faith.
5.7.7The Complainant also relies upon the Panel Decision in Las Vegas Sands
Inc .v. Red Group [WIPO Case No. D2001-1057].
The domain name in issue was <sandsofthecaribbean.com>. As noted above
[see paragraph 4.2.3] the Respondents in these consolidated cases state that
neither WWTS nor CCMH are in common ownership with Red Group, which they refer
to as a South African Company. The Panel found for the Complainant and the Complainant
in these cases relies upon those findings. Relevant passages from that Decision
are set out below.
Confusing Similarity
"Respondent argues that, because the Caribbean is associated with beaches,
<sandsofthecaribbean.com> is not identical or confusingly similar to the
Complainant's SANDS trademarks. The Panel concludes, however, that where the
domain is comprised of the Complainant's 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. D2000-0102 (Nov. 14, 2000) (<quaifeusa.com> created
impression that respondent was complainant's United States representative or
distributor). Accordingly, Complainant has satisfied its burden on the first
factor."
Rights or Legitimate Interests
"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 Respondent's insistence that it is a South African entity despite
its United States contact information."
Registered and Used in Bad Faith
"One of the examples of bad faith is set forth in Policy, Paragraph 4(a)(iv)
- 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 Complainant's 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 geographical identifiers
- 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 Respondent's 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 Complainant's 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)."
5.7.8Applying the Decision in Case No. D2001-1057
to the facts in these consolidated cases, the Complainant argues that the addition
of the definite article "the" in the <thesands.com> domain name creates
no distinguishing feature over the SANDS trademark. The Respondent states that
the prefix "car" in the <carsands.com> is an abbreviation for Caribbean
[see paragraph 5.3.8 above]. The Complainant argues that this does not distinguish
over its SANDS trademark either and, further, gives the misleading impression
that the Complainant has multiple business locations and is using a geographic
identifier in the domain name.
5.7.9The Complainant also cites Venetian Casino Resorts LLC .v. International
Services Inc [WIPO Case No. D2001-0678]
where the domain names in issue were <venetiancasino.com>, <.net>
and <.org> and the Respondent was the owner and operator of Internet casinos.
The Respondent owned a large number of domain names containing the word casino
and many other geographical related casino domain names. In relation to confusing
similarity, the Panel stated:
"Two of the Complainant's registered marks are for "The Venetian
Resort Hotel Casino". Members of the public seeing the Domain Names
could easily believe that they were connected with the Complainant
due to the similarity between these registered marks of the Complainant
and the Domain Names, particularly if they were aware of the field
in which the Complainant operates."
5.7.10In relation to the Respondent's activities which the US Government
considers breach the US Wire Communication Act 1961 [see paragraph 4.2.3
above], the Complainant argues that their valuable goodwill in the SANDS
trademark will be tarnished and damaged. Where the Respondent's use of
the domain names in issue is not fair use, which the Complainant maintains
it is not in these consolidated cases, and may mistakenly be attributed
to the Complainant, such use is in bad faith. Here, the Complainant cites
two Decisions under the Policy.
The domain name in issue was <americansingle.com> registered in
1999. The Complainant had been a supplier of Internet dating services
operating under domain names including <americansingles.com> and
<.org> since 1995. The Respondent's domain name resolved to a website
with browser screens, one offering Internet dating services in competition
with the Complainant and the other offering pornographic material. No
Response was filed. In finding for the Complainant the Panel concluded
"Finally, the Administrative Panel accepts that the Respondent
has intentionally attempted to attract for commercial gain Internet
users to its website by using the domain name which is likely to cause
confusion with the Complainant's websites. The Respondent has used
its website to furnish sexually explicit and pornographic material
under the domain name and in the circumstances, given the likelihood
of confusion, there is a prima facie case that this could tarnish
the Complainant's goodwill in its common law service mark."
The domain name in issue was <talkabout.com>. TALKABOUT had been
a registered trademark of Motorola's predecessor in title since 1981.
The Respondent informed Motorola that it intended to use the domain name
for a sex site. A majority of the Panel found for the Complainant. The
majority stated in relation to bad faith use:
"This panel need not consider whether or not CFR's use of the
disputed domain name was "bona fide" because it suffices to consider
the respondent's subsequent use. The respondent stated that it wished
to use the domain name for an adult sex site (Complaint, Annex G).
While (as the respondent correctly points out) many adult sex sites
are perfectly legal and constitute bona fide offerings of goods or
services, the use of somebody else's trademark as a domain name (or
even as a meta-tag) clearly does not constitute a "bona fide" offering
of goods or services when the website owner has no registered or common
law rights to the mark, since the only reasons to use the trademark
as a domain name or meta-tag is to attract customers who were not
looking for an adult sex site, but were instead looking for the products
or services associated with the trademark. Such use of a trademark
can create customer confusion or dilution of the mark, which is precisely
what trademark laws are meant to prevent. And actions that create,
or tend to create, violations of the law can hardly be considered
to be "bona fide"."
5.8Registered and Used in Bad Faith : the Respondent's Case
5.8.1There is no likelihood of confusion between the two domain names
in issue and the Complainant's SANDS mark for the reasons set out in paragraphs
5.2.4 to 5.2.6 and in paragraph 5.6.8 above, hence no use of the domains
in bad faith.
5.8.2Registration and use of the two domain names is not a bad faith
attempt to capitalise on the Complainant's SANDS trademark. For the same
reasons as in the preceding paragraph, the Complainant's SANDS trademark
has lost whatever distinctiveness it might once have had and has now become
diluted by third party use in the relation to hotels and casinos.
5.8.3There is no blocking by registration of the domain names in
issue of the Complainant from reflecting its SANDS trademark in a corresponding
domain name. The Respondent points to the <acsands.com> domain name
of the Complainant's licensee in Atlantic City [see paragraph 4.1.3 above]
5.8.4Further, on the facts, there is no evidence of a pattern of
conduct by the Respondents evidencing registration of domain names in
order to prevent trademark owners reflecting their marks in a corresponding
domain name.
5.8.5The domain names in issue were not registered primarily for
the purpose of selling them to the Complainant at an overvalue. Both domain
names have been used by the Respondent in connection with a bona fide
offering of services [see paragraphs 4.2.3 and 5.6.9 above], namely online
gambling services since 1997. It follows from that usage that the domain
names were not registered in bad faith for the purposes of selling them
to the Complainant.
5.8.6Because the Complainant has no presence in connection with online
gambling services, the domain names in issue plainly were not registered
nor have they been used for the purposes of disrupting the Complainant's
business.
5.8.7The disclaimer posted on the Sands of the Caribbean website [paragraph
4.2.3 above] is further evidence of the Respondents' bona fides and also that
consumers are not likely to confuse that website with the Complainant's SANDS
trademark. In this respect, the Respondent cites Bang & Olufsen America
Inc v. Beo World.com [WIPO Case No. D2001-0159].
There the domain name in issue was <beoworld.com>. The Complainant
had various registered US trademarks having the Beo prefix, for example
BEOCENTER, BEOSOUND, BEOVISION etc. The Respondent was not an authorised Bang
& Olufsen Dealer but obtained their products through alternative channels
and offered those products for sale on its website. The Respondent clearly indicated
on its website that its business was not associated with Bang & Olufsen
and that he was not an authorised Bang & Olufsen Dealer.
The Complaint failed under both paragraphs 4(a)(ii) and (iii) of the
Policy. On the particular facts the Panel considered that the disclaimer
was a factor in demonstrating the Respondent's bona fides. The decision
reads:
"Paragraph 4(a)(iii) of the Policy requires that the Complainant
show that the domain name has been registered and used in bad faith.
Complainant alleges that Respondent is using the domain name to attract
users by creating a likelihood of confusion as to source, sponsorship,
or affiliation. The facts, however, do not support a conclusion that
Respondent is deliberately attempting to create confusion. First,
the fact that Respondent's name is not identical to any of the marks
owned by Complainant supports Respondent's claim that it is not deliberately
seeking to create confusion and it is not apparent from the evidence
before us that Internet users are initially likely to believe that
the domain name "beoworld.com" is owned or authorized by Complainant.
In addition, Respondent clearly notes on its website that it is not
an authorized B&O dealer and that it is not affiliated with B&O.
Although disclaimers may not always suffice to negate an allegation
of bad faith, in this case, the disclaimers used by Respondent appear
to accurately describe its business and further support its claim
that it is not deliberately seeking to create and profit from confusion,
particularly since the domain name is not identical to any of Complainant's
marks."
5.8.8The Respondent also refers to its Counterclaim to revoke the
Complainant's SANDS registration [see, first bullet point, paragraph 4.2.3
above] which, if successful, would extinguish the basis for the Complaints
in the consolidated cases.
5.8.9As to the Red Group Case [see, paragraph 5.7.7 above],
the Respondent says that The Red Group was in fact, a cybersquatter on
their own, The Sands of the Caribbean website. The Panel in that case
pointed out that The Red Group was not the owner of US Trademark 2,235,283
SANDS OF THE CARIBBEAN, originally registered by WWTS and subsequently
transferred to CCMH. In that respect, see also paragraph 4.2.3 above,
first bullet point.
However, the Respondent maintains that the Panel erred in its decision
in that Case by concluding that
-the Complainant's SANDS trademark was and continues to be
a famous mark; and that
- the <sandsofthecaribbean.com> domain name was confusingly
similar to the SANDS mark.
In that respect, the Respondent again refers to the reasons set out in
paragraphs 5.2.4 to 5.2.6 and in paragraph 5.6.8 above. It also points
to paragraph 5.2.2 in relation to the reputation of the Complainant's
licensee in Atlantic City. Further, the Respondent refers to the conflicting
claims of the parties in the U.S. Patent and Trademark Office proceedings
relating to the marks SANDS and SANDS OF THE CARIBBEAN [see again paragraph
4.2.3 above, first bullet point]. In coming to its decision on confusing
similarity, the Panel in The Red Group Case overstepped its authority:
here the Respondent refers again to the ITT Case [see, paragraph
5.6.9 above].
5.9.9As to alleged evasive tactics in registering the two domain
names in names other than WWTS or CCMH, the Respondent has already explained
the relationship of the parties [see, paragraph 4.2.3 above]. The address
of both registrants is the same as that of WWTS/CCMH. As to WWTS this
is apparent from the applicant's address shown on US Trademark registration
2,235,283 SANDS OF THE CARIBBEAN
6.Discussion and Findings
6.1The Policy paragraph 4(a) provides that the Complainant must prove
each of the following
(i)that the Respondent's domain name is identical or confusingly
similar to a trademark or service mark in which the Complainant has
rights; and
(ii)the Respondent has no rights or legitimate interests in respect
of the domain name; and
(iii)the domain name has been registered and is being
used in bad faith.
6.2Paragraph 4(c) of the Policy identifies circumstances which, in
particular, but without limitation, if found by the Panel to be proved
based on its evaluation of all the evidence presented, shall demonstrate
the Respondent's rights or legitimate interests for the purpose of paragraph
4(a)(ii) of the Policy.
6.3Paragraph 4(b) of the Policy sets out circumstances which, if
found by the Panel to be present, shall be evidence of the registration
and use of a domain name in bad faith.
The Complainant's trademark rights
6.4The Respondent's challenge to the Complainant's trademark rights
in the SANDS mark cannot be justiciable by this Panel. As the Respondent
has demonstrated by reference to the ITT Case [see paragraph 5.6.9
above], issues of U.S. trademark policy are the preserve of the US. Patent
and Trademark Office and do not fall to be decided under the Policy. The
limited jurisdiction of Panels under the Policy is also addressed in another
case cited by the Respondent, the DIMC Case [see, also paragraph
5.6.9 above].
6.5The fact that the Complainant has a registered US trademark for
SANDS is sufficient to establish rights in a trademark under the Policy,
absent some clear and unequivocal evidence of loss of such rights which
is not made out on the evidence here.
6.6It is also clear that at least in respect of casinos, the Complainant
had extensive common law rights in the name and mark LAS VEGAS SANDS.
Those common law rights may have extended to the mark SANDS simpliciter.
But, whether they did or not and, if they did, whether such rights have
now been lost by acquiescence and/or abandonment is not necessary for
this Panel to decide.
Confusingly Similar
6.7The Policy is silent as to the test for confusingly similarity,
the Rules providing that the Panel may have regard also to any rules and
principles of the law that it deems applicable. The Panel does not regard
this as indicating that the U.S test of likelihood of confusion in relation
to trademark infringement must be applied.
6.8In The Red Group case the Panel were comparing the Complainant's
SANDS trademark with the domain name <sandsofthecaribbean.com>.
Here the domain names in issue are <thesands.com> and <carsands.com>.The U.S. based Panel in that Case considered that the Complainant's
SANDStrademark is famous. The Respondents cannot have it both
ways. If, as the Panel agree, validity of the Complainant's SANDS trademark
registration is not an issue which they are empowered to decide under
the Policy [see, 6.4 and 6.5 above], then it is not for this Panel to
investigate whether the trademark has lost its distinctiveness by reason
of acquiescence and/or abandonment.
6.9Also, the Red Group Panel found that the parties in that
case were - as they are in this case - in the same general business; i.e.
the provision of gambling/casino services. The Complainant's activities
in that business were for 50 years (until 1996) centred in Las Vegas
and use of the SANDS name is currently continued by its licensee in Atlantic
City, despite the fact that the Atlantic City casino has sought to boost
its business by reference to its owner, Mr Carl Icahn. Those casinos are,
or were, operated in situ [Las Vegas and Atlantic City]. The Respondents'
Sands of the Caribbean Casino is operated online from premises in Antigua.
Plainly, the finding in the Red Group Case of operating in the
same general business was justified.
6.10In relation to <thesands.com> domain name, equally plainly use of
the definitive article, as a prefix is not sufficient to avoid confusing similarity.
6.11As to <carsands.com>, the "car" abbreviation
prefix could, it seems to the Panel, have been sufficient to distinguish
it from the Complainant's SANDS trademark for the purposes of paragraph
4(a)(i) of the Policy. However, given the notoriety of the Complainant's
SANDS mark, the Panel is satisfied that the Respondents intended to attract,
for commercial gain, users to its Sands of the Caribbean website, by creating
a likelihood of confusion with the SANDS mark [see paragraph 6.23 below].
6.12The disclaimer appearing on that website is not relevant to the
issue of confusing similarity under this requirement of the Policy. That
is, in the Panel's view, relevant to the issue of use in bad faith under
paragraph 4a(iii) of the Policy.
6.13The Panel concludes that both the domain names in issue are confusingly
similar to the Complainant's SANDS trademark and that the Complaint, therefore,
satisfies the first limb of paragraph 4(a) of the Policy. In so holding,
this Panel applies the same approach as the Panel in the Red Groupcase and rejects the Respondent's criticism of how the Panel erred
in that case.
Rights or Legitimate Interests
6.14The Panel does not regard existence of US Trademark 2,235,283
SANDS OF THE CARIBBEAN as assisting the Respondent to demonstrate rights
or legitimate interests in either of the two domain names in issue.
6.15Does the Respondents' use of <thesands.com> since 1997,
and <carsands.com> since November 2000, amount to use in connection
with a bona fide offering of services before the Respondents were put
on notice of the dispute? The Complainant's case is put on three levels.
First, that by virtue of the SANDS U.S. service mark registration the
Respondents had constructive notice that the Complainant had the exclusive
rights to use that mark. Second, that as regards the <carsands.com>
domain name, it was registered on November 20, 2000, only 17
days after the Complainant's cease and desist letter to WWTS of November 3, 2000,
which WWTS had acknowledged on November 17, 2000. Therefore,
the Respondent in that Complaint was on actual notice of the Complainant's
SANDS trademark. Third, that the services offered under both domain names
are not bona fide because they potentially breach U.S law [the U.S Wire
Communications Act of 1961].
6.16As to whether or not the Respondent's Sands of the Caribbean
online casino is illegal under the law of certain States of the United
States of America is not, in the Panel's opinion, relevant to the issue
of bona fides for the purposes of paragraph 4(c) of the Policy. First,
there is no concluded verdict against Mr Scott and Ms Davis. Second, there
is evidence that online gambling is not illegal in many other parts of
the world.
6.17The Panel considers that the Respondents must have known of and,
indeed, do not deny prior knowledge of the Complainant's SANDS trademark
and/or of its long notoriety and reputation in Las Vegas. That location
is recognised by many as one of the world's leading cities providing casino/gambling
services. How could the offering of gambling services through two domain
names where Sands is the predominant feature have been bona fide
in the circumstances? In the Panel's view, bona fide use could only have
occurred if, in the circumstances of this case where the parties are in
the same general business, the Respondent could show that the Complainant's
trademark rights in the SANDS name and mark had been extinguished. This,
however is an issue presently pending before the US Patent and Trademark
Office. In the circumstances, the Panel does not consider that, on the
evidence, the Respondents have demonstrated rights or legitimate interests
under paragraph 4(c)(i) of the Policy.
6.18Even though the Sands of the Caribbean website may have become
well known amongst sophisticated online gamblers - it is reported to accept
an average of 35,000 bets a week [see paragraph 4.2.3 above] - there is
no evidence that the organisation has become commonly known by either
of the domain names. In any event, in the Panel's view the underlying
business must qualify as bona fide which, in the light of its holding
in the preceding paragraph, it does not in the circumstances of this consolidated
case. It follows that the Respondents have not shown rights or legitimate
interest under paragraph 4(c)(ii) of the Policy.
6.19It also follows from the above, that the Panel does not regard
the Respondents' use of the domain names as fair use, so that they
are unable to demonstrate rights or legitimate interests under paragraph
4 (c)(iii) of the Policy either.
6.20The Complainant, therefore, satisfies the second limb of paragraph
4(a) of the Policy.
Registered and Used in Bad Faith
6.21There is no evidence that the Respondents have registered and
used the domain names in the circumstances set out in paragraphs 4(b)(i)
and (ii) of the Policy.
6.22Nor does the Panel believe that the evidence indicates that the
Respondents registered the domain names primarily (emphasis added)
for the purpose of disrupting the business of a competitor [paragraph
4(b)(iii) of the Policy]. Is the Complainant a competitor? The Panel believes
that it is by virtue of the fact that it has licensed the Atlantic City
Sands Hotel and Casino. However, given the closure of the Complainant's
Las Vegas Sands Casino in 1996, and the fact that the Respondents first
began to use the SANDS mark for their online casino business in the following
year, the Panel cannot see how at least <thesands.com> domain name
could have been registered primarily to disrupt the Complainant's
well-known Las Vegas business. The position may well be different with
regard to the <carsands.com> domain name which was not registered
until November 20, 2000, some 17 days after the Complainant's
cease and desist letter to WWTS. This need not, however, be determined
in the light of the Panel's findings below in relation to paragraph 4(b)(iv)
of the Policy.
6.23Given the notoriety of the Complainant's SANDS mark, the Panel
is satisfied that the Respondents intended to attract, for commercial
gain, users to its Sands of the Caribbean website, by creating a likelihood
of confusion with the SANDS mark. How can this be in the absence of any
evidence of actual confusion? The answer is that confusion is qualified
by likelihood of confusion as to the source, sponsorship, affiliation
of endorsement of the Sands of the Caribbean website with the Complainant's
SANDS trademark. Here the criteria for assessing confusingly similarity
also apply, namely the domain names have as their dominant feature the
word Sands and the parties are both in the same general business
of providing gambling /casino services.
6.24Does the disclaimer then save the Respondents? In this respect
the Panel considers that the Decision in the Bang&Olufsen Case
[see, paragraph 5.8.7 above] is correct but turns very much on the
particular facts of that case. There, the domain name was not identical
to any of the Complainant's BEO prefixed trademarks and the Respondent
was selling genuine Bang & Olufsen products from his <beoworld.com>
website. Here, the Respondents' use of the SANDS trademark bears no connection
whatsoever with the former casino activities of the Complainant, the continuing
casino business of its licensee in Atlantic City and the continuing sale
of Las Vegas SANDS memorabilia. Also, use of the word Sands in
the Respondents' website is disproportionately prominent by comparison
to the other words comprising the full name of the website and the disclaimer
itself does not appear on that website with any prominence. Here, the
Panel considers the facts to be closer to the other disclaimer cases cited
by the Complainant [see, paragraph 5.3.7 above].
6.25The Panel is not persuaded by the Complainant's argument that
bad faith registration and use should be implied from the fact that the
two domain names were registered other than in the name of WWTS or CCMH.
Both resolve to the Sands of the Caribbean website which operates from
the same address in Antigua as WWTS, and no attempt to hide this can be
imputed to the Respondent.
6.26However, for the reasons set out in paragraphs 6.23 and 6.24
above, the Panel finds that the Complainant has succeeded in satisfying
third requirement of paragraph 4(a) of the Policy by demonstrating circumstances
falling within paragraph 4(b)(iv).
The US Patent Trademark Office Cancellation Proceedings
6.27As noted in paragraph 4.2.3 above, in March 2001, the Complainant
filed a Petition with the US Patent and Trademark Office to cancel US
Trademark Registration No. 2,235,283 SANDS OF THE CARIBBEAN [Class 36]
in the name of WWTS on the basis of the Complainant's earlier US 1,209,102
SANDS [Classes 41 & 42] registration. In June 2001, WWTS filed
an Answer and Counterclaim to that Petition seeking cancellation of the
Complainant's SANDS registration.
6.28The Panel considered whether, in those circumstances, it might
be appropriate to stay its Decision pending resolution of the Counterclaim
to cancel Complainant's SANDS US trademark registration. The Panel do
not believe that a stay is appropriate. Further, the Complaint relies
not only on the SANDS trademark as evidenced by the US registration but
also on the overall notoriety of the SANDS name and mark [see, paragraph
5.1.3. above].
6.29The Panel is mindful that the Policy is an administrative mechanism
that neither is intended nor in practice operates to prevent a party to
submit a dispute to a court of competent jurisdiction for independent
resolution. In addition, it is always open to a Respondent to apply to
such a court after a Decision is made in the administrative proceeding
as provided for in paragraph 4(k) of the Policy.
7.Decision
For all the foregoing reasons, the Panel decides that the Complainant has
proved each of the three elements of paragraph 4(a) of the Policy. Accordingly,
the Panel requires that the registrations of the domain names <thesands.com>
and <carsands.com> be transferred to the Complainant.
David Perkins
Presiding Panelist
Hilary Phillips Q.C.
Panelist
Neil Arthur Smith
Panelist
Dated: April 25, 2002
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