Las Vegas Sands Corp. v. Paul Pavelco a/k/a Pavelco Associates Inc.
Claim Number: FA0803001157028
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Susan
Okin
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <lasvegaspalazzo.info>, <lasvegaspalazzo.mobi>, <lasvegaspalazzo.net>, <sandsbethworkscasino.info>, <sandsbethworkscasino.mobi> and <sandsbethworkscasino.net>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2008.
On March 5, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lasvegaspalazzo.info>, <lasvegaspalazzo.mobi>, <lasvegaspalazzo.net>, <sandsbethworkscasino.info>, <sandsbethworkscasino.mobi> and <sandsbethworkscasino.net> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@lasvegaspalazzo.info, postmaster@lasvegaspalazzo.mobi, postmaster@lasvegaspalazzo.net, postmaster@sandsbethworkscasino.info, postmaster@sandsbethworkscasino.mobi, and postmaster@sandsbethworkscasino.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lasvegaspalazzo.info>, <lasvegaspalazzo.mobi> and <lasvegaspalazzo.net> domain names are confusingly similar to Complainant’s PALAZZO mark, and the <sandsbethworkscasino.info>, <sandsbethworkscasino.mobi> and <sandsbethworkscasino.net> domain names are confusingly similar to Complainant’s SANDS mark.
2. Respondent does not have any rights or legitimate interests in the <lasvegaspalazzo.info>, <lasvegaspalazzo.mobi>, <lasvegaspalazzo.net>, <sandsbethworkscasino.info>, <sandsbethworkscasino.mobi> and <sandsbethworkscasino.net> domain names.
3. Respondent registered and used the <lasvegaspalazzo.info>, <lasvegaspalazzo.info>, <lasvegaspalazzo.mobi>, <lasvegaspalazzo.net>, <sandsbethworkscasino.info>, <sandsbethworkscasino.mobi> and <sandsbethworkscasino.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns and operates casinos, hotels, and resorts,
and offers related goods and services, in several countries around the world. Complainant registered the PALAZZO mark with
the United States Patent and Trademark Office (“USPTO”) on February 4, 2003 (Reg.
No. 2,683,895). Complainant registered
the SANDS mark with the USPTO on September 14, 1982 (Reg. No. 1,209,102). Complainant also has a pending registration
with the USPTO for the SANDS BETHWORKS mark (Ser. No. 77/202,497). Complainant’s business ventures include the
SANDS resort and casino in
Respondent registered the <sandsbethworkscasino.info>, <sandsbethworkscasino.mobi> and <sandsbethworkscasino.net> domain names on September 22, 2007, and registered the <lasvegaspalazzo.info>, <lasvegaspalazzo.mobi> and <lasvegaspalazzo.net> domain names on October 21, 2007. The disputed domain names resolves to websites which provide links to third-party websites that are competitors of Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the PALAZZO and the
SANDS marks for purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Complainant contends that
Respondent’s <sandsbethworkscasino.info>, <sandsbethworkscasino.mobi>
and <sandsbethworkscasino.net> domain
names are confusingly similar to its SANDS mark. These disputed domain names differ from
Complainant’s mark in two ways: (1) the terms “bethworks” and “casino” have
been added; and (2) a generic top-level domain (“gTLD”) – “.info,” “.mobi,” or
“.net” - has been added to each. The
addition of the terms to Complainant’s mark especially do not distinguish the
disputed domain names in light of Complainant’s current plans to open a casino
under the SANDS BETHWORKS, mark, for which it currently has USPTO applications
pending. The Panel finds that these
changes do not minimize or eliminate the resulting likelihood of confusion, and
so Respondent’s disputed domain names are not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum
Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to the complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which the
complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230
(WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined
the complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
Complainant also contends that
Respondent’s <lasvegaspalazzo.info>,
<lasvegaspalazzo.mobi> and <lasvegaspalazzo.net> domain names are confusingly similar to its PALAZZO mark. These disputed domain names differ from
Complainant’s mark in two ways: (1) the geographic term “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain names. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Complainant contends that Respondent is not commonly known
by the disputed domain names, nor has Respondent ever been the owner or
licensee of the PALAZZO or SANDS marks. The
WHOIS record for the disputed domain names lists Respondent as “Paul Pavelco a/k/a Pavelco Associates Inc.” This evidence, along with the fact that
Respondent has failed to show any evidence contrary to Complainant’s
contentions, compels the Panel to find that Respondent is not commonly known by
the disputed domain names pursuant to Policy ¶ 4(c)(ii). See
Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use).
Respondent maintains websites at the disputed domain names that link visitors to websites of Complainant’s competitors. The Panel finds that this use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain names to divert Internet customers from Complainant’s website to
Respondent’s websites, through the confusion caused by the similarity between
Complainant’s marks and the disputed domain names. The Panel finds that Respondent’s use of the
disputed domain names disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining commercially
by this diversion through click-through fees.
The Panel finds that this is an intentional use of the disputed domain
names for commercial gain through a likelihood of confusion with Complainant’s
mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of
registration and use in bad faith. See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); see also TM
Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”).
Complainant also contends that Respondent’s registration of the disputed domain names that incorporate the BETHWORKS mark, while that mark is still pending and before that construction project is finished, but after is has been announced, is an opportunistic registration of those disputed domain names in bad faith. Similarly, Complainant contends that Respondent opportunistically registered the disputed domain names that incorporate the SANDS mark, because they did so two days after Respondent received Complainant’s cease and desist letter regarding domain names incorporating Complainant’s marks. The Panel finds that Respondent’s registration of the disputed domain names does constitute opportunistic registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad faith where the respondent was aware of the complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lasvegaspalazzo.info>, <lasvegaspalazzo.mobi>, <lasvegaspalazzo.net>, <sandsbethworkscasino.info>, <sandsbethworkscasino.mobi> and <sandsbethworkscasino.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 25, 2008
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