Las Vegas Sands Corp. v. Deryk Grimes
Claim Number: FA1601001658213
Complainant is Las Vegas Sands Corp. (“Complainant”), represented by Michael J. McCue of LEWIS ROCA ROTHGERBER CHRISTIE LLP, Nevada, USA. Respondent is Deryk Grimes (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sands.casino>, registered with GoDaddy.com, LLC (sometimes referred to herein as the “Disputed Domain Name”).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding, Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2016; the Forum received payment on January 26, 2016.
On January 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sands.casino> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2016 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.casino. Also on January 27, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 12, 2016.
A timely Additional Submission was received from complainant on or about February 18, 2016.
On February 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant uses the SANDS mark in connection with its casino business operations internationally. The Complainant has rights in the SANDS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,209,102, registered September 14, 1982). The Disputed Domain Name is identical to the SANDS mark because it contains the entire mark, along with the top-level domain (“TLD”) “.casino.”
The Respondent is not commonly known by the Disputed Domain Name because the available WHOIS information lists “Deryk Grimes” as Registrant. The Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the Disputed Domain Name currently resolves to an inactive website.
The Respondent uses the Disputed Domain Name in bad faith because the website currently resolves to an inactive page. Further, the Respondent registered the Disputed Domain Name in bad faith because it did so with actual knowledge of the Complainant’s rights in the SANDS mark.
B. Respondent
The Respondent admits that the Disputed Domain Name is confusingly similar to Complainant’s SANDS mark. Further, the Respondent acknowledges that he was aware of the Complainant’s rights in the mark. The Respondent intends to create and operate the Disputed Domain Name to review and critiquing the Complainant, and not for commercial gain.
The Complainant sent the Respondent a “cease and desist” letter seventeen days after the creation of the Disputed Domain Name. The Respondent was unable to develop and create an active website within that period. Further, “sands” is a generic term such that Respondent has rights and legitimate interests in the Disputed Domain name.
The Disputed Domain name is not used in bad faith because the Respondent is neither a competitor of the Complainant, nor commercially gaining from the creation of confusion. Instead, the Respondent intends to create a website that focuses on critiques and reviews the Complainant. Further, the Respondent maintains Complainant’s behavior is evidence of reverse domain name hijacking.
B. Complainant’s Additional Submission
The Respondent admits that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark, and therefore the first element of the Policy is satisfied.
The Respondent has failed to use the Disputed Domain Name from more than seven months after having registered it, and such a delay is inconsistent with a bona fide offering of goods or services and a legitimate noncommercial or fair use.
Respondent claims that he intends to use the Disputed Domain Name in connection with a website featuring customer reviews and photographs. Even if Respondent’s claims were true, and there is no evidence that they are, such use still would not establish rights or legitimate interests in the Disputed Domain Name.
Respondent admits that the Disputed Domain Name is confusingly similar to Complainant’s SANDS trademark. Respondent also admits that Respondent’s sole reason for selecting the disputed domain is “because people will search Google for Sands Casino and Disputed Domain Name will be an exact match.” Respondent’s admitted intent to misleadingly divert consumers to the Disputed Domain Name establishes bad faith under UDRP Policy 4(a)(iii).
1. The Complainant is the owner of the USPTO trademark registration No. 1,209,102, registered September 14, 1982, for the mark SANDS.
2. The Respondent registered the Disputed Domain Name with the intent of attracting Internet users seeking information about the 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."
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 Complainant has rights in the SANDS trademark by virtue of its USPTO registration thereof (Reg. No. 1,209,102 registered September 14, 1982) (sometimes referred to herein as the “Complainant’s Mark”). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”); see also Vivendi Universal Games v. XBNetVenture Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)(“complainants federal trademark registration [with the USPTO] establishes complainant’s right in the BLIZZARD Mark.”).
The Disputed Domain Name is confusingly similar to the Complainant’s Mark. The Disputed Domain Name contains the entirety of Complainant’s Mark with the addition of the top-level domain, “.casino.” Whereas top level domains have typically been irrelevant to a Policy ¶ 4(a)(i) analysis (See Trip Network Inc., v. Alviera, FA 914943 (Nat. Arb. Forum Mare. 27 2007)(concluding that the including of a top level domain is irrelevant to a Policy ¶ 4(a)(i) analysis)), in some situations, and perhaps now more given the addition top-level domains that are less generic in character, the presence of a top-level domain may be relevant and either enhance or diminish the possibility for confusing similarity. See Trulia, Inc. v Armen A, FA1586491 (Nat. Arb. Forum Dec. 2, 2014) (finding that the <trulia.rentals> domain name is confusingly similar to the TRULIA mark under Policy ¶4(a)(i) where the TRULIA mark was used in connection with real estate services, including rentals); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)(finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat Arb. Forum May 19, 2004)(finding the addition of generic terms to complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
In the instant matter the addition of the top-level domain “. casino” to the Complainant’s Mark does nothing to alleviate the confusing similarity between the Disputed Domain Name and the Complainant’s Mark, but rather serves to enhance the possibility of confusion.
The Complainant has established the first element of the Policy.
Respondent does not have rights or legitimate interests in the Disputed Domain Name.
The Respondent does not argue that the Disputed Domain Name is his name. Rather, this matter turns on Policy ¶ 4(c)(iii), which reads in pertinent part:
“any of the following circumstances… if found by the panel to be proved… shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): …(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”
The Respondent argues that it obtained the Disputed Domain Name for the sole purpose of developing a fan/customer based site focusing on the Complainant’s business operations (the Sands Casino) and that such a use is allowed as a non-commercial fair use.
The Complainant, in its Additional Submission, argues that: “While the First Amendment may protect the right to own and operate a website featuring reviews or criticism, such protection does not extend to the use of domain names that are confusingly similar to another’s trademark.”
Whereas the Respondent has every right to operate a website focused on the Complainant’s business and make whatever comments he may choose (within broad limits of other applicable legal principles such as defamation, which in any event are generally beyond the scope of the Policy), this right does not extend to the registration and use of a domain name that is confusingly similar to the Complainant’s Mark. See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D 2004-0206 (WIPO April 30, 2004)(“ The Respondent does not make a legitimate non-commercial or fair use of the Disputed Domain Name. The Complainants do not per se object to the operation of a website on which the Respondent publicly and fairly informs the public of criticism it may have with respect to the activities of the Complainants. This does however not grant the Respondent a right to use a domain name which is confusingly similar to the Complainants’ trade mark, especially since it is not clear for the public from domain name itself that Respondent’s website is a complaint site…”); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark).
Some panels have found that such a use is allowable under the Policy when the involved domain name itself includes content that clearly indicates to Internet users that the site is not affiliated with the complainant. See New Jersey Transit Corporation v. Michael Bue, FA 1650108, (Nat. Art. Forum January 13, 2015) (with respect to the respondent’s website at <njtranshit.com>, and in a dicta-like statement, the panel stated that the evidence established that “…the purpose of the website was not to compete with the complainant, but to criticize some of its alleged shortcomings and to stimulate public debate and presumably improve some of complainant services.”)
The arguments of the parties concerning the Respondent’s alleged delay and/or non-use of the Disputed Domain Name are subsumed by the above analysis.
The Complainant has established the second element of the Policy.
Registration and Use in Bad Faith
Policy ¶ 4(b) delineates four circumstances which constitute evidence and use of a domain in bad faith; however, these four circumstances are not exclusive, and a panel may find bad faith for other reasons.
In the instant case, the Disputed Domain Name is confusingly similar to the Complainant’s Mark and the Respondent does not have a right or legitimate interest in the Disputed Domain Name. Even understanding that the Respondent states that he has no intention to profit from his use of the Disputed Domain Name, he would nevertheless use the Disputed Domain Name to
attempt to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s Mark as to source, sponsorship, affiliation, or endorsement. This is sufficiently close to the prohibition of Policy ¶ 4(b)(iv) for the Panel to find bad faith.
The Complainant has established the third element of the Policy.
Reverse Domain Name Hijacking
The Complainant has not engaged in reverse domain name hijacking. The Complainant has established all three elements of the Policy, which is mutually exclusive with a finding of reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
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.casino> domain name be TRANFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: February 28, 2016
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