Las Vegas Sands Corp. v. John James
Claim Number: FA1010001354076
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Jonathan Matkowsky of Las Vegas Sands Corp., Nevada, USA. Respondent is John James (“Respondent”), represented by Farzad Nezam of Nezam & Associates, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sands-international.com>, <sandsint.com>, <sandsinternationalresorts.com>, <sandsresortinternational.com>, and <sandsresortsinternational.com>, 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 October 21, 2010; the National Arbitration Forum received payment on October 22, 2010.
On October 22, 2010, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sands-international.com>, <sandsint.com>, <sandsinternationalresorts.com>, <sandsresortinternational.com>, and <sandsresortsinternational.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sands-international.com, postmaster@sandsint.com, postmaster@sandsinternationalresorts.com, postmaster@sandsresortinternational.com, and postmaster@sandsresortsinternational.com. Also on October 27, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 17, 2010.
Complainant’s Additional Submission was received on November 19, 2010 and was deemed timely and complete under Supplemental Rule 7.
On November 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sands-international.com>, <sandsint.com>, <sandsinternationalresorts.com>, <sandsresortinternational.com>, and <sandsresortsinternational.com> domain names, the domain names at issue, are confusingly similar to Complainant’s SANDS mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent filed a response asserting:
1. Complainant does not have the right to exclusive use of the word “sands”.
2. Respondent has rights and legitimate interests in the domain names at issue.
3. Respondent did not register and has not used the domain names at issue in bad faith.
C. Additional Submissions
Each party filed an Additional Submission which was considered by the Panel.
Complainant is a major player in the casino business in Nevada and elsewhere and alleges that it has rights in the SANDS mark as a result of its numerous trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) and the Mexican Industrial Property Institute (“MIPI”):
USPTO
Reg. No. 3,577,701 issued February 17, 2009;
Reg. No. 3,577,702 issued February 17, 2009;
Reg. No. 3,577,703 issued February 17, 2009;
Reg. No. 3,734,615 issued January 5, 2010;
MIPI
Reg. No. 1,098,942 issued May 15, 2008; and
Reg. No. 1,100,646 issued May 15, 2008.
Respondent has spent more than 25 years in management positions in the gaming industry in Las Vegas and elsewhere. On September 15, 2010, Respondent registered <sands-international.com>, <sandsint.com>, <sandsinternationalresorts.com>, <sandsresortinternational.com>, and <sandsresortsinternational.com>, the domain names at issue here. Respondent argues that his disputed domain names are not confusingly similar to Complainant’s SANDS mark, despite the inclusion of the word “sands,” because of the additional terms “international,” “resort,” and “resorts” that comprise the disputed domain names. In connection with Panther Partners, LLC and otherwise, the Respondent says he plans to use the disputed domains to attract international financing and interest in new casino projects and online gambling. These activities, claims Respondent show his rights and legitimate interests in the domains and his good faith registration and use of them.
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."
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.
The Panel finds that trademark registrations with the USPTO and other trademark authorities are conclusive evidence of Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Respondent’s <sands-international.com>, <sandsint.com>,
<sandsinternationalresorts.com>, <sandsresortinternational.com>, and <sandsresortsinternational.com> domain names are confusingly similar to Complainant’s SANDS mark because they each contain Complainant’s mark combined with one or more of the following generic or descriptive terms or abbreviations: “international,” “int,” “resorts,” and “resort.” In addition, all of the disputed domain names attach the generic top-level domain (“gTLD”) “.com,” and the <sands-international.com> domain name includes a hyphen between the terms. The terms “international” or “int,” and the terms “resort” or “resorts” all relate directly to Complainant’s business and enhance the confusing similarity between the domain names and the marks. Introducing generic or descriptive terms into Complainant’s mark does not prevent a disputed domain name from being deemed confusingly similar. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Neither an added hyphen nor an attached gTLD contributes any uniqueness to the disputed domain name that would dispel confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Respondent’s disputed domain names are confusingly similar to Complainant’s SANDS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the disputed domain names. The WHOIS information for each disputed domain name lists the registrant as “John James.” The Panel finds that Respondent is not commonly known by the disputed domain names and thus lacks rights and legitimate interest pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain names to display commercial pay-per-click links to websites that compete with Complainant’s resort offerings. In its Additional Submission, Complainant argues that Respondent’s contention that it is not redirecting Internet users to other websites is clearly false. Further, Complainant rebuffs Respondent’s arguments that it is not financially benefiting from its infringing use of the disputed domain names by arguing that it is irrelevant to the inquiry under Policy ¶ 4(a)(ii) whether Respondent is profiting from its use. Complainant’s Additional Submission also points out that Respondent’s purported intention to use the disputed domain name for online gaming does not change the fact that Respondent is using Complainant’s mark to promote competing services. Accordingly, using the disputed domain names that appropriate Complainant’s mark to host a directory website of pay-per-click links does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent’s disputed domain names feature links to Complainant’s competitors in the resort industry. By directing Internet users seeking Complainant to competing companies, Respondent is disrupting Complainant’s business. Respondent’s registration and use of the disputed domain names therefore shows bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent registered the disputed domain names including Complainant’s SANDS mark on September 15, 2010 intentionally to take advantage of Complainant’s mark and its fame and goodwill. Respondent aimed to attract Complainant’s customers, for commercial gain, by creating a likelihood of confusion with Complainant and its SANDS mark as to the source, sponsorship, affiliation, and endorsement of Respondent and its pay-per-click website. In its Additional Submission, Complaint points out that Internet users are attracted to the domain names because they contain the famous SANDS mark, which works to create confusion as to the source or sponsorship of Respondent’s resolving website. Complainant alleges that the presence of the pay-per-click links on Respondent’s resolving websites generates revenue for Respondent, which likely increases as traffic volume to Respondent’s websites increases. The Panel finds, that these actions represent bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) is 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 <sands-international.com>, <sandsint.com>, <sandsinternationalresorts.com>, <sandsresortinternational.com>, and <sandsresortsinternational.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 2, 2010
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